The Complainant is International Business Machines Corporation, United States of America (“United States”), represented internally.
The Respondent is Claus Linder, Germany. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2020. On August 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 26, 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 amendment to the Complaint on August 28, 2020. The Center verified that the Complaint together with the amendment to 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 of the Complaint, and the proceedings commenced on September 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2020. The Respondent did not submit any response. However, the Center received two emails from the Respondent on August 26, 2020, asking about the procedure and that the disputed domain name is registered for noncommercial purposes and by the Respondent as an individual and not a company. Further, the Respondent wants to remain the registrant of the disputed domain name. Accordingly, the Center notified the Parties of the commencement of Panel Appointment on September 24, 2020. The Center appointed Johan Sjöbeck as the sole panelist in this matter on October 1, 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 owns trademark registrations for IBM in 131 countries for a broad range of goods and services, including, although not limited to, information technology related goods and services. The Complainant has submitted evidence that it is the owner the following IBM trademark registrations that are valid in Germany where the Respondent is located: European Union Trademark (“EUTM”) trademark IBM (word) with registration number 003630282 and registration date July 22, 2005, for international classes 3, 9, 16, 35, 37, 38, 41, and 42; EUTM trademark IBM (fig) with registration number 003630258 and registration date June 30, 2005, for international classes 3, 9, 16, 35, 37, 38, 41, and 42; EUTM trademark IBM (fig) with registration number 001248061 and registration date September 1, 2000, for international classes 9, 16, and 42; EUTM trademark IBM (fig) with registration number 001247543 and registration date February 13, 2001, for international classes 7, 9, 10, 11, 12, 25, and 28; EUTM trademark IBM (fig) with registration number 008299554 and registration date December 23, 2009, for international classes 36, 37, and 38; EUTM trademark IBM (fig) with registration number 000710228 and registration date May 5, 1999, for international class 16; EUTM trademark IBM (word) with registration number 008300048 and registration date December 3, 2009, for international classes 36, 37, and 38; EUTM trademark IBM (word) with registration number 001495076 and registration date April 9, 2001, for international classes 9, 16, 38, 41, and 42; EUTM trademark IBM (fig) with registration number 001496462 and registration date June 11, 2001, for international classes 3, 9, 16, 38, 41, and 42; EUTM trademark IBM (fig) with registration number 001492495 and registration date March 19, 2001, for international classes 38, 40, and 41. German trademark IBM (fig) with registration number 685249 and registration date December 7, 1955, for international classes 9, 16, and 21; German trademark IBM (fig) with registration number 1084983 and registration date November 27, 1985, for international classes 1, 9, 10, and 16; German trademark IBM (fig) with registration number 1123897 and registration date June 27, 1988, for international classes 9, 16, 37, 41, and 42; German trademark IBM (fig) with registration number DD640340 and registration date August 21, 1974, for international classes 2, 3, 9, 10, 16, 17, and 20; German trademark IBM (fig) with registration number DD644932 and registration date June 24, 1985, for international classes 9 and 16; German trademark IBM (fig) with registration number 1010923 and registration date November 26, 1980, for international classes 35, 37, 41, and 42; German trademark IBM (fig) with registration number 945355 and registration date June 8, 1976, for international class 16; German trademark IBM (word) with registration number 650227 and registration date December 17, 1953, for international classes 7, 9, 14, and 16; German trademark IBM (fig) with registration number 1029354 and registration date February 15, 1982, for international classes 9, 16, and 28; German trademark IBM (fig) with registration number 1084984 and registration date November 27, 1985, for international classes 1, 9, 10, 16; German trademark IBM (fig) with registration number 1010924 and registration date November 26, 1980, for international classes 35, 37, 41, and 42; German trademark IBM (fig) with registration number 764567 and registration date August 17, 1962, for international class 9; and WIPO trademark IBM (fig) with registration number 1079460 and registration date December 21, 2010, for international classes 6, 8, 9, 11, 12, 14, 16, 18, 20, 21, 22, 24, 25, 26, 28, 30, 35, and 41. The disputed domain name The Complainant contends that the IBM trademark is a world-famous trademark. Tracing its roots to the 1880s, 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. In 2019, the Complainant was ranked the 13th most valuable global brand by BrandZ, the 12th best global brand by Interbrand, the 38th largest company on the Fortune United States 500 list, and the 114th largest company on the Fortune Global 500 list. The IBM trademark was valued by BrandZ as worth over USD 86B in 2019, USD 96B in 2018, and over USD 102B in 2017. Incorporated on June 16, 1911, as an amalgamation of three previously existing companies, the Complainant officially became International Business Machines on February 14, 1924. The Complainant has been offering products under the trademark IBM ever since. In the early days, these products included office and research equipment such as punch machines, calculating machines, clocks and scales. The Complainant introduced its first large vacuum tube computer under the name IBM 710 in 1952 and has continuously used the trademark IBM in association with computers and computer hardware, software, and accessories since then. In 1961, IBM introduced the IBM Selectric typewriter. This was a significant innovation in the business sector, and the United States Postal Service issued a 2011 postage stamp featuring the IBM typewriter, commemorating the industrial designer as part of its Pioneer of American Design series of stamps. As a result of the high quality of goods and services the Complainant has provided to its customers for over 100 years, and its reputation as one of the premier manufacturers of computer and computer related goods and services throughout the world, the Complainant’s name and the IBM trademark are famous and valuable assets. Indeed, in the decision International Business Machines v. Niculescu Aron Razvan Nicolae,WIPO Case No. DRO2010-0003, the panel concluded that the Complainant’s “trademark is well-known around the world […] and is registered for decades. Also, the IBM trademark is distinctive and therefore it is difficult to imagine someone randomly choosing three letters composing the trademark to register as a domain name, especially in light of the lack of Response in this case.” The Complainant spends over USD 1B annually marketing its goods and services globally, using the IBM trademark, and has undertaken extensive efforts to protect its name and enforce the IBM trademark. The Complainant exerts careful control over the use of the IBM trademark and imposes strict quality control measures over goods and services offered in connection with the trademark. The Complainant further protects its brand and the IBM trademark by diligently pursuing infringers of the IBM trademark. Within the meaning of paragraph 4 of the Policy, the disputed domain name The Respondent has not been licensed, contracted, or otherwise permitted by the Complainant in any way to use the IBM trademark, or to apply for any domain name incorporating such trademark, nor has the Complainant acquiesced in any way to such use or application of the IBM trademark by the Respondent. Additionally, there is no evidence that “IBM” is the name of the Respondent’s corporate entity, nor is there any evidence of fair use. Furthermore, there is no evidence that the Respondent is using or plans to use the IBM trademark or the disputed domain name incorporating the IBM trademark for a bona fide offering of goods or services. On the contrary, the Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the registration to the Complainant or another party at a profit. In fact, since its registration date, the Respondent has been directing visitors to a sales offer webpage at Sedo, where the domain name is listed for sale for USD 18,960,000 or “enter your Best Offer.” Furthermore, the Respondent has configured an email server on the disputed domain name, even though the disputed domain name does not lead to an active website. This indicates the intention of the Respondent to potentially use the disputed domain name for purposes other than hosting a website, including potentially for constructing an email composition containing the disputed domain name, to be used for deceiving purposes. The Respondent’s unauthorized use of the IBM trademark in the disputed domain name and on the sales offer webpage are likely to cause Internet users into erroneously believing that the Complainant is somehow affiliated with the Respondent or endorses its commercial activities, while in fact no such relationship exists. Therefore, the Complainant can affirm with good faith that there is no evidence of any 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 any bona fide offering of goods or services. The Respondent has not been commonly known by the disputed domain name and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent was well aware of the Complainant’s IBM trademark at the time the Respondent registered the disputed domain name The disputed domain name is confusingly similar to the Complainant’s IBM trademark, and the Respondent has no relationship to the Complainant or the trademark. Therefore, the Respondent has registered the disputed domain name in bad faith. Under paragraph 4(b) of the Policy, bad faith registration and use can be found when a registrant seeks to profit from the sale of a domain name in which it has no legitimate interest. See UMB Financial Corporation v. Cynthia Galant,WIPO Case No. D2010-1855. Stated otherwise, a registrant has acted in bad faith if he/she has registered or has acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring that domain name to a complainant who is the owner of a trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name. Here, the Respondent registered the disputed domain name primarily to sell to the Complainant at a profit or to prevent the Complainant from reflecting its trademark in a corresponding name. To the best of the Complainant’s knowledge, the disputed domain name has not been used in connection with an active website, or any bona fide use, since its registration date. Instead, visitors have been redirected to a sales offer webpage where the disputed domain name is listed for sale for an exorbitant sum of money, namely USD 18,960,000. This number is undoubtedly much higher than the Respondent’s out-of-pocket expenses, considering that similar domain names are listed for about USD 162 per year on the Registrar’s website. The Respondent was well-aware of the Complainant’s IBM mark at the time it registered the disputed domain name. The IBM mark “is distinctive, widely-known, and readily identified with the Complainant’s products and services.” See International Business Machines Corporation v. Noorinet,WIPO Case No. D2016-2353. The disputed domain name is listed for sale on a public platform for USD 18,960,000 or “enter your Best Offer.” Immediately after registering the disputed domain name, the Respondent attempted to resell it at a large profit. In fact, the disputed domain name was never associated with an active website. As such, there is no evidence suggesting that the Respondent had a credible rationale for registering the disputed domain name. This is especially supported by the fact that the disputed domain name is identical to the Complainant’s “distinctive” and “widely-known” trademark and that the high resale price corresponds solely to the trademark value of the domain name. Under Paragraph 4(b) of the Policy, bad faith registration and use can also be found when a registrant intentionally attempted to attract for commercial gain users to its website by creating a likelihood of confusion with a complainant’s mark. The Respondent’s use of the IBM mark in the disputed domain name is clear evidence of bad faith, because generating more traffic will result in more exposure to his sales offer and a higher likelihood of selling the disputed domain name at a substantial profit. Additionally, the Respondent has connected the disputed domain name, which currently does not lead to an active website, to a mail server responsible for sending and accepting email messages on behalf of the disputed domain name. This suggests that the Respondent may have intended to use disputed domain name for phishing or other fraudulent purposes. The disputed domain name was never used to host a website, and instead was offered for sale since the registration date. Furthermore, there is no evidence of contemplated bona fide use. The Respondent has masked its identity on the WhoIs records by using a privacy shield service. Lastly, it is implausible that there would be any good faith use to which the disputed domain name may be put. Therefore, the Respondent is using the disputed domain name in bad faith. B. Respondent Although the Center received two emails from the Respondent on August 26, 2020, the Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceedings The Complainant has submitted a request for English to be the language of the administrative proceeding. Pursuant to paragraph 11 of the UDRP Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement. The language of the registration agreement for the disputed domain name is German. According to paragraph 11(a) of the UDRP Rules, the Panel may decide to conduct the proceeding in a language other than the language of the registration agreement under the condition that the administrative proceeding takes place with due expedition and that both parties are treated with equality and given a fair opportunity to present its case, in accordance with paragraphs 10(b) and (c) of the Rules. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceedings. The Complainant sees no foreseeable procedural benefit by requiring German to be used and has requested that English shall be the language of the proceeding for the following reasons: 1) when the Respondent registered the disputed domain name, the Respondent certified that it had read and agreed to the Registrar’s General Terms and Conditions, including portions that are only offered in English; 2) on the Registrar’s website, the series of webpages through which the Respondent must have gone to complete the purchase of the disputed domain name, are primarily in English; 3) the disputed domain name redirects to a public sales offer webpage which is offered in both German and English; 4) the gTLD suffix “.onl” is an abbreviation of the English term “online”; 5) the Complainant, a United States corporation, is unable to communicate in German without incurring substantial translation costs and delaying the proceeding; 6) the Respondent has not requested that the proceeding shall to be conducted in German; and 7) on August 28, 2020, the Respondent sent an email to the Complainant in both English and German which demonstrates the Respondent’s ability to comprehend and communicate in English. From the submitted evidence of the communications between the parties, it is clear that the Respondent has adequate knowledge of English for the present proceeding to be conducted in English. Furthermore, the Respondent did neither object to the Complaint being in English nor to the request made that the proceedings be conducted in English. Although the Respondent has been given a fair opportunity to raise objections and to inform the Center on its language preference, the Respondent has chosen not to address any of these issues. In addition, the Panel finds that additional expense and delay would likely be incurred if the Complaint had to be translated into German. Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion, according to paragraph 11(a) of the Rules and allow the proceedings to be conducted in English. According to paragraph 4(a) of the Policy, the Complainant must prove each of the following: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant is, according to the submitted evidence, the owner of the registered trademark IBM. The disputed domain name Having the above in mind, the Panel finds that the disputed domain name is identical to the Complainant’s trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: (i) that the Respondent uses or has made 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 prior to the dispute; or (ii) that the Respondent is commonly known by the disputed domain name, even if the Respondent has not acquired any trademark rights; or (iii) that 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 trademark. The Complainant’s trademark registrations for IBM predate the Respondent’s registration of the disputed domain name Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. The Respondent has not submitted any evidence indicating that the Respondent has made preparations to use the disputed domain name Instead, the evidence in the case file demonstrates that the Respondent, shortly after the registering the disputed domain name, offered it for sale for USD 18,960,000. The requested amount, which is substantially higher than the official registration cost, clearly contradicts the Respondent’s claim that the disputed domain name was registered for noncommercial purposes. There is no evidence in the case file indicating that the Respondent is the owner of any trademark rights or that the Respondent is commonly known by the disputed domain name By not submitting a response, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation: (i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or (ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a pattern of such conduct; or (iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the disputed domain name has intentionally been used in an 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 trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location. The Complainant’s trademark registrations for IBM predate the registration of the disputed domain name Furthermore, the Complainant has argued that the disputed domain name has never been associated with an active website. Instead, the submitted evidence in the case file demonstrates that the Respondent, shortly after the registration date, offered the disputed domain name for sale via a public domain name auction platform for the amount of USD 18,960,000. The Panel finds that the above-mentioned circumstances indicate that the disputed domain name was registered primarily for the purpose of selling it to the owner of the older corresponding trademark or to a competitor of the trademark owner, for consideration in excess of the out-of-pocket costs directly related to the disputed domain name. There is no evidence in the case file that refutes the Complainant’s submissions. The Panel concludes that the Complainant has proved the requirements under paragraph 4(b)(i) of the Policy and that the disputed domain name 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 Johan Sjöbeck
Sole Panelist
Date: October 12, 2020
Full & Egal Universal Law Academy