The Complainant is International Business Machines Corporation, United States of America (“United States”), internally represented.
The Respondent is 北京保蓝时空科技有限公司 (Beijing Baolan Shikong Keji youxiangongsi), China. 2. The Domain Name and Registrar
The disputed domain name is registered with Tianjin Zhuiri Science and Technology Development Co Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2019. On August 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On August 22, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on August 22, 2019. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on August 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2019.
The Center appointed Sok Ling Moi as the sole panelist in this matter on September 24, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a leading innovator and manufacturer of computers and computer related goods (such as hardware, software and accessories). Incorporated on June 16, 1911, the Complainant officially became International Business Machines Corporation on February 14, 1924, and has been offering products under the trade mark IBM ever since.
The Complainant spends nearly USD 6 billion each year on advanced research in addition to product development, and spends over USD 1 billion marketing its goods and services globally under the IBM trade mark. In 2018, the Complainant was ranked the 11th most valuable global brand by BrandZ.
The Complainant owns trade mark registrations for IBM in 170 countries around the world for several decades, including the following:
Jurisdiction
Trade Mark
Registration Number
Registration Date
Class
United States
IBM
3,002,164
September 27, 2005
9
United States
IBM
1,058,803
February 15, 1977
1; 9; 16; 37; 41; 42
China
IBM
1,914,464
August 7, 2002
9
China
IBM
771,396
November 7, 1994
42
The disputed domain name was registered by the Respondent on February 28, 2009. The disputed domain name resolves to a website which reproduces the Complainant’s IBM trade mark, and purported to offer for sale new, used and refurbished desktops, laptops, hard drives and server technology under the Complainant’s brand and third party competitors’ brands (e.g., Dell, HP). 5. Parties’ Contentions A. Complainant
The Complainant claims that the disputed domain name is confusingly similar to its world famous trade mark.
The Complainant contends that the Respondent has registered the disputed domain name in order to promote its website for illegitimate commercial gains on the fame of the Complainant’s trade mark. The Complainant alleges that the Respondent is offering on its website new, used and refurbished desktops, laptops, hard drives and server technology under the Complainant’s brand and third party competitor’s brands (e.g. Dell, HP). Hence, the Complainant claims that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant contends that the disputed domain name was used to create confusion and mislead Internet users into believing that the Respondent’s website is authorised by the Complainant. Hence, the Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith.
For all of the above reasons, the Complainant requests for the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Paragraphs 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
The Panel notes that:
(a) the disputed domain name is registered in Latin characters, rather than Chinese script;
(b) the website to which the disputed domain name resolves have contents in English (e.g. “Copyright © 2006-2009 IBM Inc All Rights Reserved” and “system netfinity parts listing”, “after sales service”);
(c) the website to which the disputed domain name resolves states the English name of the Respondent as “Beijing Baolan Spacetime Technology CO., LTD”;
(d) the Center has notified the Respondent of the proceeding in both Chinese and English;
(e) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but chose not to do so; and
(f) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to all Parties and is not prejudicial to any of the Parties in their ability to articulate the arguments for this case. The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
In view of all the above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English. 6.2 Substantive Finding
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in IBM by virtue of its use and registration of the same as a trade mark.
The disputed domain name incorporates the Complainant’s trade mark IBM in its entirety. The addition of the numerals “1818” does not avoid the confusing similarity between the disputed domain name and the Complainant’s trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark in this case.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of proof to establish that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence in support of its rights or legitimate interests in the disputed domain name. The respondent may establish its rights in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd,WIPO Case No. D2013-0974.
According to the evidence submitted by the Complainant, the Respondent is using the disputed domain name to publish a website which reproduced the Complainant’s IBM trade mark and purporting to offer for sale new, used and refurbished desktops, laptops, hard drives and server technology under the Complainant’s brand and third party competitors’ brands (e.g., Dell, HP). This suggests that the Respondent is using the disputed domain name to mislead Internet visitors by creating an affiliation with the Complainant where there is none.
There is no evidence suggesting that the Respondent is commonly known by the disputed domain name or has acquired any trade mark rights in the term “ibm”.
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to come forward with evidence of its rights or legitimate interests in the disputed domain name. Since the Respondent has failed to respond, the Panel determines that the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant has used IBM as its trade name and trade mark since 1924, and have used IBM as a trade mark for its computers and computer hardware, software and accessories since 1952. There is no doubt that the Complainant enjoys a worldwide reputation as a manufacturer of computers and computer-related products and that its trade mark IBM is well known around the world. A strong presumption arises that the Respondent was aware of the Complainant’s trade mark when it registered the disputed domain name, given that it has reproduced on its website the Complainant’s IBM trade mark and product images and was offering for sale computer parts and computer-related products under the IBM brand.
The Panel is satisfied that the Respondent’s purpose of registering the disputed domain name was to trade on the reputation of the Complainant and its trade mark by diverting Internet users seeking the Complainant’s branded products to its own website for commercial gain. Irrespective of whether the products offered on the Respondent’s website are in counterfeit, the reproduction of the Complainant’s trade mark on the Respondent’s website without also displaying a clear disclaimer of a lack of relationship between the Respondent and the Complainant, is indicative of bad faith.
The Panel therefore determines that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel is satisfied that the Respondent is using the disputed domain name for mala fide purposes and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
Further, the Panel also finds that such use of the disputed domain name not only misleads the public but also causes disruption to the Complainant’s business.
The Center was not able to send the Written Notice to the Respondent by facsimile and courier which may be a further indication of bad faith.
The Respondent has not denied the Complainant’s allegations of bad faith. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Sok Ling Moi
Sole Panelist
Date: October 12, 2019
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