Complainant is International Business Machines Corporation, United States of America, internally represented.
Respondent is 杨智超 (Zhichao Yang), China. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2021. On January 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 29, 2021, the Registrar transmitted by email to the Center its verification response 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 Complainant on January 30, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint in English on February 2, 2021. On January 30, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On February 2, 2021, Complainant submitted a request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding. 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on February 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 2, 2021. The Center appointed Yijun Tian as the sole panelist in this matter on April 11, 2021. 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 A. Complainant Complainant, International Business Machines Corporation, is a company incorporated in the United States of America (hereinafter “USA” or “U.S.”). Tracing its roots to the 1880s, 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 2020, Complainant was ranked the 14th most valuable global brand by BrandZ, the 14th best global brand by Interbrand, the 38th largest company on the Fortune U.S. 500 list, and the 118th largest company on the Fortune Global 500 list (Annex 5 to the Complaint). Complainant has exclusive rights in IBM and IBM related marks (hereinafter “IBM marks”). Complainant is the exclusive owner of several IBM marks worldwide, including a U.S. trademark registration for IBM registered on January 29, 1957 (the U.S. trademark registration number 640606) (Annex 4.8 to the Complaint); and a Chinese trademark registration for IBM registered on February 27, 1985 (Chinese trademark registration number 221319) (Annex 4.11 to the Complaint). B. Respondent Respondent is 杨智超 (Zhichao Yang), China. The disputed domain names Complainant contends that the disputed domain names are identical or confusingly similar to Complainant’s registered trademark. The disputed domain names include Complainant’s IBM trademark in its entirety. The additions of the descriptive words “employee” and “benefit” or “benfits” (misspelled “benefits”) or “benifits” (misspelled “benefits”) in tandem with the IBM trademark do not inhibit the finding of confusing similarity. Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names. Complainant contends that Respondent has registered and is using the disputed domain names in bad faith. Complainant requests that the disputed domain names be transferred to Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding The language of the Registration Agreements for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following main reasons: (a) Respondent’s websites feature advertisements as related PPC links incorporating various examples of English text, including Respondent’s use of “ibm”, “employee”, and “benefit” and variations thereof in the disputed domain names. (b) The disputed domain names in this case are all in English and include Latin script words, indicating that Respondent is familiar with the English language. (c) Respondent has a history of registering domain names in the English language, which constitutes further evidence that Respondent is familiar with the language. Respondent has been involved in numerous prior UDRP proceedings using the same Registrar. (d) Prior UDRP decisions have found that language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding. Paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states: “Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case. Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (WIPO Overview 3.0, section 4.5.1; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585). On the record, Respondent appears to be a Chinese resident and is thus presumably not a native English speaker. However, considering the following, the Panel has decided that English should be the language of the proceeding: (a) the disputed domain names include Latin characters (“ibm”) and particularly English words “employee” and “benefit” or “benfits” (misspelled “benefits”) or “benifits” (misspelled “benefits”), rather than Chinese scripts; (b) the gTLD of the disputed domain names are “.com”, so the disputed domain names seem to be prepared for users worldwide, particularly English speaking countries; (c) the disputed domain names are resolved to English websites, which contain links labeled in English, such as “Personnel Hr Software”, “People Soft Payroll”, and “Copyright 2021. All rights reserved. Privacy Policy”; (d) the Center has notified Respondent in both Chinese and English regarding the language of the proceeding, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; (e) the Center has notified Respondent in both Chinese and English of the Complaint, and has indicated that it would accept a Response in either English or Chinese. The Panel would have accepted a response in Chinese but none was filed; (f) Respondent has a history of registering domain names in the English language; and (g) Complainant is a company from the USA, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. Accordingly, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Substantial Issues Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred: (i) the disputed domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a)-(c)), the Panel concludes as follows: A. Identical or Confusingly Similar The Panel finds that Complainant has rights in the IBM marks. The disputed domain names comprise the IBM mark in its entirety. The disputed domain names only differ from Complainant’s IBM marks by adding the terms “employee” and “benefit” or “benfits” (misspelled “benefits”) or “benifits” (misspelled “benefits”), as well as the gTLD “.com” to the IBM marks. This does not compromise the recognizability of Complainant’s IBM marks within the disputed domain names, nor eliminate the confusing similarity between Complainant’s registered IBM marks and the disputed domain names (Decathlon v. Zheng Jianmeng,WIPO Case No. D2019-0234). Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”. (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). Further, in relation to the gTLD, WIPO Overview 3.0, section 1.11.1 states: “The 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.” The Panel therefore holds that the disputed domain names are confusingly similar to Complainant’s IBM marks, and the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain names: (i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or (ii) Respondent has been commonly known by the disputed domain names, even if Respondent has acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks. The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein). According to the Complaint, Complainant is a leading innovator in the design and manufacture of a wide array of products that record, process, communicate, store and retrieve information. In 2020, Complainant was ranked the 14th most valuable global brand by BrandZ, and the 38th largest company on the Fortune U.S. 500 list. Moreover, Respondent has no relationship with Complainant, and Complainant has not licensed, contracted, or otherwise permitted Respondent to use its IBM marks in a domain name or otherwise. Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names: (a) There has been no evidence adduced to show that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the term “ibm” in the disputed domain names and in his business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the IBM marks or to apply for or use any domain names incorporating the IBM marks. (b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain names. Respondent registered the disputed domain names in 2020, long after the IBM marks became internationally known. The disputed domain names are confusingly similar to the IBM marks. (c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. By contrast, the websites, currently resolved by the disputed domain names, are websites, containing PPC advertisement links such as “Personnel Hr Software” and “People Soft Payroll” that lead to payroll or human resources management as well as services websites. It seems that Respondent is making profits through the Internet traffic attracted to the websites under the disputed domain names. (See BKS Bank AG v. Jianwei Guo,WIPO Case No. D2017-1041; BASF SE v. Hong Fu Chen, Chen Hong Fu,WIPO Case No. D2017-2203.) Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, which has not been rebutted by Respondent. The Panel therefore holds that the Complaint fulfils the second condition of 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 names in bad faith, namely: (i) circumstances indicating that Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or (ii) Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on the websites or location. The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and is using the disputed domain names in bad faith. (a) Registration in Bad Faith The Panel finds that Complainant has a widespread reputation in the IBM marks with regard to its products and services. As mentioned above, the IBM marks are registered internationally, including IBM marks registered in China (since at least 1985). Complainant is a world leading innovator in the design and manufacture of a wide array of products that record, process, communicate, store and retrieve information. In 2020, it was ranked the 14th most valuable global brand by BrandZ, the 14th best global brand by Interbrand, and the 118th largest company on the Fortune Global 500 list. It is inconceivable that Respondent would not have had actual notice of the IBM marks at the time of the registration of the disputed domain names (in 2020). The Panel therefore finds that the IBM mark is not one that a trader could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra). Moreover, Respondent has chosen not to respond to Complainant’s allegations. According to the UDRP decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of Respondent to respond to the Complaint further supports an inference of bad faith”. See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787. Thus, the Panel concludes that the disputed domain names were registered in bad faith. (b) Use in Bad Faith Respondent is using the websites resolved by the disputed domain names to provide PPC advertisement links such as “Personnel Hr Software” and “People Soft Payroll” that lead to payroll or human resources management as well as services websites. Thus, the Panel concludes that Respondent is currently using the confusingly similar disputed domain names with the intention to attract, for commercial gain, Internet users to Respondent’s websites. Given the reputation of the IBM marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain names have connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the websites to which the disputed domain names resolve. In other words, Respondent has, through the use of the confusingly similar disputed domain names, created a likelihood of confusion with the IBM marks. Moreover, as mentioned above, Respondent offered links to payroll or human resources management as well as services websites via the websites to which the disputed domain names resolve, presumably for commercial gain. The Panel therefore concludes that the disputed domain names were registered and are being used by Respondent in bad faith. Such use of the disputed domain names is also disruptive in relation to the interests of Complainant. In summary, Respondent, by choosing to register and use the disputed domain names, which are confusingly similar to the IBM marks, intended to ride on the goodwill of these trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary or rebuttal from Respondent, the choice of the disputed domain names and the conduct of Respondent as far as the websites to which the disputed domain names resolve are indicative of registration and use of the disputed domain names in bad faith. The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision For all 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 Yijun Tian
Sole Panelist
Date: April 26, 2021
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