The Complainant is International Business Machines Corporation, United States of America (“United States”), internally represented.
The Respondents are Ibm Corp, Viet Nam and Stanley Diaz, United States. 2. The Domain Names and Registrars
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2020. On April 2, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On April 2, 2020, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 15, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on April 16, 2020. On April 24, 2020, the Center sent an email communication to the Parties regarding consolidation of the Respondents. On April 15, 2020, the Center transmitted an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on April 16, 2020. The Respondents did not comment on the language of the proceeding. The Center verified that the Complaint together with the amended 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 Respondents in English and Japanese of the Complaint, and the proceedings commenced on April 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 22, 2020. The Center appointed Teruo Kato as the sole panelist in this matter on May 29, 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 According to the Complaint, the Complainant is and has been a leading innovator in the design and manufacture of a wide array of products that record, process, communicate, store and retrieve information, including computers and computer hardware, software and accessories. Incorporated on June 16, 1911 as an amalgamation of three previously existing companies, the Complainant officially became International Business Machines Corporation on February 14, 1924. The Complainant is the holder of a large number of trade and service mark registrations across various jurisdictions throughout the world, for the mark IBM, which it uses in connection with its information technology products and services. The Complainant’s trademark portfolio includes trademark registrations in Viet Nam and the United States, where the Respondents reside, as well as in Ukraine, where the Respondents’ business locates according to their websites, as more particularly set out in paragraph 6.2A below. The disputed domain name The Complainant submits that the disputed domain names are confusingly similar to the Complainant’s IBM trademark since they incorporate the Complainant’s trademark in its entirety with the addition of the generic term “capital”. The Complainant further submits that the Respondents have no rights or legitimate interests in the disputed domain names. The Complainant has not authorized the Respondents to use its trademarks neither in the disputed domain names nor on the corresponding websites. The Respondents’ actions are therefore not bona fide offering of goods or services under the Policy. Also, the Respondents are not making legitimate noncommercial or fair use of the disputed domain names, and the Respondents has not been commonly known by the disputed domain names. The Complainant also submits that the disputed domain names were registered and are being used in bad faith. The Complainant registered and has used its mark extensively throughout the world prior to the Respondents’ registration of the disputed domain names. Further, the Respondents intentionally attempt or attempted to attract Internet searchers to their websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website. B. Respondents The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issues A. Consolidation of Multiple Respondents Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) establishes that: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.” Notwithstanding that the registrants of the disputed domain names are not identical, the Complainant has requested the Complaint be accepted as one consolidated Complaint for the following reasons: both disputed domain names incorporate the Complainant’s registered mark in its entirety, use a similar naming convention, redirect to webpages that purport to be affiliated with “IBM Capital”, and share nearly identical contents, including the use of the same logo, leadership information and general design/layout. To support its contention the Complainant has cited a UDRP decision, International Business Machines Corporation v. Linney Leensey and Brizees Martins,WIPO Case No. D2019-0310, in which the Complainant contends the panel accepted a consolidation in circumstances similar to the present case. Based on the evidence and the arguments submitted by the Complainant, in particular, the disputed domain names are identical save for the Top-Level Domain (“TLD”) and they both resolve to the websites purportedly offering financial services under the same company “IBM Capital”, the Panel concludes that there is at least common control over the disputed domain names, and accepts the consolidation of the Complaint to be fair and equitable to the Parties. Accordingly, the Respondents may be referred to collectively as the “Respondent” hereafter. B. Language of the Proceeding Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise having regard to the circumstances of the administrative proceeding. The Panel notes that in the present case the language of the Registration Agreements confirmed by the Registrars is English in respect of the disputed domain name The Complainant has filed the Complaint and amended Complaint in English for both of the disputed domain names and requests that the language of the proceeding be English and contends, among others, that “proceedings would be unduly delayed if this proceeding were required to be translated into Japanese”. The Panel notes that information of the proceeding was provided to the Respondent both in English and Japanese. In particular, the Panel notes that the Respondent was advised in both English and Japanese that, if the Respondent was to object to the Complainant’s request for English, the Respondent was invited to indicate that objection and to submit any arguments or supporting materials as to why the proceeding should not be conducted in English by April 20, 2020. The Respondent did not respond by this deadline nor later. The Panel would have accepted a Response from the Respondent in Japanese, but none was filed. Further, the Panel has decided that the disputed domain names are under common control, and the language of the Registration Agreement for one of the disputed domain names is in English. Moreover, the Panel notes that the disputed domain names include “capital”, which is an English word. In view of the circumstances of this case, and in accordance with paragraph 11(a) of the Rules, the Panel decides that English be the language of the proceeding. 6.2 Substantive Issues A. Identical or Confusingly Similar The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain names are identical or confusingly similar to that trademark or service mark. The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of IBM registered trademarks, including inter alia the United States trademark IBM No. 4,181,289 registered on July 31, 2012, covering goods and services in international classes 6, 8, 9, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 28, 30, 35 and 41, the Vietnamese trademark IBM No.155721, registered on September 25, 2008, covering goods in international classes 9 and 16, and the Ukrainian trademark IBM No.3969, registered on March 15, 1994, covering goods in international classes 9 and 16. As to the confusing similarity element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain names to the IBM trademark in which the Complainant has rights. Section 1.11.1 of WIPO Overview 3.0 states that “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”, and the Panel finds no reason why this established practice should not be applied to the present case. Apart from the TLDs, the disputed domain names consist of the Complainant’s trademark IBM and the term “capital”, which is a dictionary word. The Panel finds that the recognizable element of the disputed domain names is the Complainant’s trademark IBM. It is well established that, where a disputed domain name incorporates, as here, the entirety of a complainant’s trademark, the addition of other terms does not prevent a finding of confusing similarity. (See Salvatore Ferragamo S.p.A v. Ying Chou,WIPO Case No. D2013-2034; Salvatore Ferragamo S.p.A. v. Haonan Hong,WIPO Case No. D2013-2040; Salvatore Ferragamo S.p.A. v. Brian E. Nielsen,WIPO Case No. D2014-1123; Salvatore Ferragamo S.p.A. v. Wei Huan,WIPO Case No. D2014-1290; and Yamaha Motor Corporation, U.S.A. v. Domain Admin, Hush Whois Protection Ltd.,WIPO Case No. D2018-1359). The Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name: (i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is 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 consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0). In the present case, the Complainant contends that there is no evidence of any Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with any bona fide offering of goods or services; that the Respondent has not been commonly known by any of the disputed domain names; and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. The Complainant submitted to the Panel documentary materials to support its contentions as above. The Panel notes, in particular, that, even though the record shows that the Respondent’s purported business is called “IBM Capital” and the disputed domain names resolve to the websites providing financial services through the AI trading system under this purported name,there does not appear to be sufficient evidence on record showing that the Respondent is commonly known by the disputed domain names, which has not been rebutted by the Respondent. See section 2.3 of the WIPO Overview3.0 . Having carefully examined the materials submitted by the Complainant, the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain names. By not submitting a Response, the Respondent has failed to rebut such prima facie case and has also failed to invoke any of the defenses as set out in paragraph 4(c) of the Policy. In view of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith To fulfill the third requirement, the Complainant must prove that the disputed domain names were registered and are being used in bad faith. As to the registration in bad faith, the Panel notes and accepts that the trademark IBM was registered and is known internationally, before the disputed domain names were registered on May 23, 2018 and December 23, 2019, respectively. In the premises, the Panel is satisfied that the Respondent was most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain names and that it registered the disputed domain names in bad faith. As to the use in bad faith, the Panel notes that the Complainant has sent a number of cease and desist letters to the Registrar and the Respondent by email, to which the Respondent did not reply. The Panel further notes that the Respondent is purportedly offering financial services through cryptocurrency, block chain, AI and data platform technology on the websites at the disputed domain names. The Complainant contends that this creates a likelihood of confusion as to the relationship between the Complainant and the Respondent as well as to the source, sponsorship or endorsement of the Respondent’s websites and/or goods and services. The Respondent has submitted no comments on any of the Complainant’s contentions as above. Having considered all the circumstances, including the apparent overlaps between the Complainant’s established business areas and the services purportedly offered by the Respondent, the Panel holds, on balance, that the Respondent has chosen the disputed domain names to take unfair advantage of the Complainant’s IBM trademark and is using the disputed domain names in bad faith. In the premises, the third requirement of the Policy has been satisfied. 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 names Teruo Kato
Sole Panelist
Date: June 5, 2020
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