The Complainant is International Business Machines Corporation, United States of America (“United States”), internally represented.
The Respondent is Le Van Hai, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2019. On December 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 24, 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 January 6, 2020, the Center notified the Parties in both English and Vietnamese that the language of the registration agreement for the Disputed Domain Name is Vietnamese. On January 8, 2020, the Complainant requested for English to be the language of the proceeding. The Respondent did not submit any request regarding 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 Vietnamese of the Complaint, and the proceedings commenced on January 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2020. The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on February 20, 2020. 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, International Business Machines Corporation, is a United States-based company founded in 1911, which designs and manufactures products that record, process, communicate, store and retrieve information, including computers and computer hardware, software and accessories. The Complainant’s trademark IBM has been registered for goods and services in numerous classes in a variety of countries under a number of trademark registrations, including, but not limited to, the United States trademark registrations No. 640,606 registered January 29, 1957, No. 1,058,803 registered February 15, 1977, and No. 1,205,090 registered August 17, 1982. In Vietnam, where the Respondent resides, the IBM trademarks have been registered in many classes of goods and services under Vietnamese registration Nos. 1423, 7394, 7395, 15748 and 155721 since as early as in 1990. In 2019, Complainant’s IBM trademark was ranked the 13th most valuable global brand by BrandZ, the 12th best global brand by Interbrands the Complainant ranked the 38th largest company on the Fortune U.S. 500 list, and the 114th largest company on the Fortune Global 500 list. The IBM trademark was valued by BrandZ as worth over USD 86 billion in 2019, USD 96 billion in 2018, and over USD 102 billion in 2017. The Complainant’s IBM trademark has been recognized as famous in many earlier decisions (e.g., International Business Machines Corporation v. Sadaqat Khan,WIPO Case No. D2018-2476; International Business Machines v. Niculescu Aron Razvan Nicolae,WIPO Case No. DRO2010-0003; International Business Machines Corporation v. Linux Security Systems srl,WIPO Case No. DRO2010-0004). The Respondent registered the Disputed Domain Name The Complainant sent a cease and desist letter on October 10, 2019 and a reminder on October 24, 2019 to the Respondent, requesting for a transfer of the Disputed Domain Name. However, the Respondent did not respond to the cease and desist letter. 5. Parties’ Contentions A. Complainant The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows: (i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights. First, the Complainant contends that the Complainant is the registered owner of trademark registrations for IBM in numerous countries all around the world. The Complainant further asserts that the IBM trademark is a world-famous trademark. Second, Complainant contends that Disputed Domain Name is identical or confusingly similar to IBM Trademarks owned by the Complainant since the Disputed Domain Name merely employs the element “ibm” as the dominant element, and the addition of the element “vietnam”, which is a geographical term, could not dispel any likelihood of confusion. Finally, the Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” and the usual prefix “www.” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name. (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled. First, the Complainant contends that the Respondent has not been licensed, contracted, or otherwise permitted by Complainant in any way to use the IBM trademark, or to apply for any domain name incorporating such trademark, nor has Complainant acquiesced in any way to such use or application of the IBM trademark by Respondent. Second, the Complainant contends that there is no evidence that “ibm” or “ibmvietnam” is the name of Respondent’s corporate entity nor is there any evidence of fair use. According to the content hosted on the domain name, Respondent’s corporate company name is “Wood Nguyen Quang, Loc Ha, Mai Lam, Dong Anh, Hanoi”. Finally, the Complainant submits that there is no evidence that Respondent is using or plans to use the IBM trademark or the domain name incorporating the IBM trademark for a bona fide offering of goods or services. On the contrary, the Respondent’s use of the IBM trademark in the Disputed Domain Name to promote its website by displaying housing pictures and luminous materials are likely to cause consumers into erroneously believing that Complainant is somehow affiliated with Respondent, which is not true. (iii) The Disputed Domain Name was registered and is being used in bad faith. The Complainant asserts that the Respondent’s bad faith in the registration and use of the Disputed Domain Name is established by the fact that the Disputed Domain Name was registered by the Respondent after the Complainant’s IBM Trademark became famous around the world. Secondly, the Complainant contends that the Complainant separately sent a Cease and Desist Letters dated October 10, 2019 and a reminder dated October 24, 2019 to the Respondent asking the Respondent to disable and transfer the Disputed Domain Name to the Complainant. However, no response was ever received. Moreover, the Complainant asserts that the Respondent has been actively using the Disputed Domain Name for illegitimate commercial gains by attracting visitors to the Respondent’s website and to increase traffic with the IBM trademark. Finally, the Complainant submits that the Disputed Domain Name can rely on the previous similar decision, in which another UDRP panel ordered that the domain name With the said arguments, the Complainant requests that the Disputed Domain Name The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issues (i) Language of the Proceeding The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese. As the Complaint was filed in English, the Center, in its notification dated January 6, 2020, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) submit the Complaint translated into Vietnamese, or (ii) a substantiated request for English to be the language of the proceeding. On January 8, 2020, the Complainant submitted a request that English be the language of the proceeding. According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the 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. Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfortability with each language, the expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679). In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to: (i) the fact that the Complainant, an American business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation; (ii) the English language is quite popular in Viet Nam, where the Respondent is located, and the website under the Disputed Domain Name contains English contents; these suggest that the Respondent has ample knowledge of the English language and be able to communicate quite well in English; (iii) the Respondent did not object for English to be the language of the proceeding and did not submit a response in neither English nor Vietnamese. Therefore, for the purpose of easy comprehension of the Complainant (the party majorly taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English. (ii) The Respondent’s Failure to Respond The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default. B. Identical or Confusingly Similar The Complainant is required to establish the following: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark. First of all, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to IBM, well before the Disputed Domain Name was registered. Also, the Complainant has sufficiently demonstrated and evidenced that the Complainant’s IBM trademark has been widely used and become a famous trademark. In the case at hand, the Panel notes that the Complainant does not have a registered trademark for IBM for rare earth and self-luminous products. However, it is well established that the goods and/or services for which the trademark is registered or used in commerce are irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. See the section 1.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Second, the Disputed Domain Name comprises the Complainant’s IBM mark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the suffix “vietnam”, which is a geographical term of the country where the Respondent resides. The Panel finds that “ibm” remains the dominant element in the Disputed Domain Name. It is well established that the addition of a geographical term “vietnam”, to a trademark does not prevent confusing similarity, as it was found in previous UDRP decisions (see, e.g., Sika AG v. Gia Nhu, Cong Ty Co Phan Truyen Thong Suc Manh Viet,WIPO Case No. D2019-2224; NTT DOCOMO, Inc. v. Nguyen Minh Dai, Vien May Tinh, WIPO Case No. D2018-2477). Third, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the Disputed Domain Name does not constitute an element as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s IBM trademark, and the first element of the Policy is established. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions. The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the complainant, once a prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating its rights or legitimate interests in the disputed domain name (see, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted with evidence to the contrary. Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction. Thus, the Panel finds that the Respondent has no rights in the trademark IBM. The Panel further finds that the Respondent is offering for sale of the rare earth and self-luminous products, which are products unrelated to the Complainant’s goods. However, the Respondent is using the Complainant’s famous IBM trademark in the Disputed Domain Name. Hence, the Panel is of the view that the Respondent, by using the famous IBM mark in the Disputed Domain Name, intends to bait consumers and then switch them to its products. In addition, given that the trademark IBM is famous, the addition of the geographical term “vietnam” to such a mark by the Respondent is seen as tending to suggest sponsorship or endorsement by the trademark owner. See the section 2.5.1 of the WIPO Overview 3.0. Hence, with the above reasoning, the Panel finds the Respondent’s use of the Disputed Domain Name is not a bona fide offering of goods or services. Regarding paragraph 4(c)(ii) of the Policy, the Panel finds that there is no evidence showing that the Respondent has been commonly known by the Disputed Domain Name. On the contrary, in the Website under the Disputed Domain Name, the Panel finds the name of Respondent as “Gỗ Nguyễn Quang, Lộc Hà, Mai Lâm, Đông Anh, Hà Nội” (in English: “Nguyen Quang Wood, addressed at Loc Ha Village, Mai Lam Commune, Dong Anh District, Hanoi”). Therefore, it is not evidenced that the Respondent is identified by “ibm” or that it has any right in it. Regarding paragraph 4(c)(iii) of the Policy, the Panel finds that there is no evidence that the Respondent is making any noncommercial or fair use of the Disputed Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The second element under paragraph 4(a)(ii) of the Policy is established. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including: “(i) circumstances indicating that you have registered or you have acquired the 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”. The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions. The Panel further finds that the Complainant’s IBM trademarks have been registered in numerous countries, including in Viet Nam, where the Respondent resides. According to what the Complainant established and similar to previous UDRP panels’ decisions, the Panel finds that the mark IBM is famous / world-wide, including in Viet Nam (see e.g., International Business Machines Corporation v. Sadaqat Khan, WIPO Case No. D2018-2476; Physik Instrumente GmbH. & Co. v. Stefan Kerner and Jeremy Kerner and Magic Moments Design Limited,WIPO Case No. D2000-1001). Given the famous nature and wide use of the IBM trademark by the Complainant, which occurs in numerous countries, including in Viet Nam, where the Respondent resides and well predated the registration date of the Disputed Domain Name, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, the Panel is of the view that the nature of Disputed Domain Name, incorporating the Complaint famous trademark plus the geographical term “vietnam”, indicates itself that the Registrant deliberately selected the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent to take advantage of the Complainant’s goodwill. See the section 3.2.1 of the WIPO Overview 3.0. Further, as the Disputed Domain Name comprises the Complainant’s famous IBM mark as the unique distinctive element, it is undisputed that many Internet users attempting to visit the Complainant’s website through a search for “ibm” may end up on the web page set up by the Respondent, and by this way, the Respondent baits those consumers and then switch them to its products, which is totally unrelated to the products of the Complainant that the consumers may actually search for. In the Panel’s view, by using the Disputed Domain Name in such a way, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The diversion of Internet traffic from the Complainant’s site to the Respondent’s site, without any consent from the Complainant, supports a finding of bad faith under paragraph 4(b)(iv) of the Policy. Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith, and the third element under paragraph 4(a)(iii) of the Policy is established. 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 Pham Nghiem Xuan Bac
Sole Panelist
Date: March 4, 2020
Full & Egal Universal Law Academy