The Complainant is International Business Machines Corporation, United States of America (“U.S.”), internally represented.
The Respondent is Shilin Li, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2021. On March 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 4, 2021, 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 April 6, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On April 7, 2021, the Complainant submitted a request that English be the language of the proceeding. 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 April 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2021. The Center appointed Francine Tan as the sole panelist in this matter on May 5, 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 The Complainant states that it is one of the leading innovators 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. The Complainant was incorporated on June 16, 1911 as an amalgamation of three previously existing companies and officially became International Business Machines on February 14, 1924. Since then, the Complainant has offered products under the IBM trade mark. The Complainant has devoted, and continues to devote, substantial resources toward maintaining and building its assets by spending more than USD 5 billion each year on advanced research, in addition to other expenditure on product development. The Complainant also spends over USD 1 billion annually on global marketing of its goods and services under the IBM trade mark, and has undertaken extensive efforts to protect its name and enforce its trade mark. In 2020, the 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. The Complainant’s IBM trademark was valued by BrandZ as worth over USD 83 billion in 2020, USD 86 billion in 2019 and USD 96 billion in 2018. The Complainant owns numerous registrations for the IBM and IBM (stylized) trade marks in many countries around the world, including in China. It owns, inter alia, the following trademark registrations in the U.S. and China: (i) U.S. Trade Mark Registration No. 3,002,164 for IBM (stylized), registered on September 27, 2005; The disputed domain name was registered on January 3, 2021 and resolves to a website providing various third-party links to gambling and pornographic websites. Prior to the commencement of this proceeding, the Complainant sent a cease-and-desist letter to the Respondent requesting for the disputed domain name to be disabled and transferred to the Complainant. The Complainant sent several follow-up emails but the Respondent never responded. 5. Parties’ Contentions A. Complainant 1. The disputed domain name is confusingly similar to the Complainant’s IBM trade mark in which it has rights. The addition of the letters “bb” after the letters “ibm” does not obviate confusion with the Complainant’s IBM trade mark. The term “bb” could stand for “BlackBerry” whose stock ticker is “BB”, or the technology term for broadband. The addition of the generic Top-Level Domain (“gTLD”) “.net” is without legal significance in determining the issue of similarity. 2. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not been authorized or licensed by the Complainant to use the IBM trade mark or to apply for any domain name incorporating such trade mark. There is no evidence that the Respondent’s name is “IBM” or “IBMBB”. There is no evidence that the Respondent has ever used or made preparations to use the disputed domain name or the IBM trade mark in connection with a bona fide offering of goods or services. The Respondent’s use of the disputed domain name for a website featuring links to various gambling and pornographic websites undermines any claim of right or legitimate interests in the disputed domain name. 3. The disputed domain name was registered and is being used in bad faith. The disputed domain name was registered in an attempt to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s well-known IBM mark as to the source, sponsorship, affiliation or endorsement. The Respondent had actual knowledge of the Complainant’s IBM trade mark at the time of registration or constructive knowledge of the aforesaid by virtue of the Complainant’s trademark registrations and the fact that the IBM trade mark is well known around the world. The Respondent is engaging in the practice of “pornosquatting” by using the disputed domain name which contains the Complainant’s well-known IBM mark, directing Internet users to pornographic websites, thereby capitalizing on the fame associated with the IBM mark to realize financial gain by click-through revenue. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issue: Language of the Proceeding Paragraph 11 of the Rules provides that: “(a) 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.” The language of the Registration Agreement in relation to the disputed domain name is Chinese. The Complainant requested that the language of the proceeding be English. The reasons are that: (i) portions of the website to which the disputed domain name resolves are in the English language; The Panel is guided by section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview 3.0”), as well as the following paragraph from Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004: “Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” Having considered the applicable factors and circumstances, the Panel determines that English be the language of the proceeding. The Panel agrees that there is nothing to contradict what appears to be the case, that the Respondent is familiar with and understands the English language. Moreover, the Panel notes that the Respondent has chosen not to participate in this proceeding, and that all of the Center’s communications with the Parties have been sent in English and Chinese. In the absence of any objection by the Respondent, the Panel does not find it procedurally efficient to have the Complainant translate the Complaint and evidence into Chinese. 6.2 Substantive Issues A. Identical or Confusingly Similar The Complainant has established it has rights in the IBM trade mark. The trade mark is reproduced in its entirety in the disputed domain name. The Panel agrees that the addition of the letters “bb” does not serve to avoid confusing similarity with the Complainant’s trade mark. Further, the gTLD “.net” is a technical requirement for domain name registrations and not relevant to the issue of the identity or confusing similarity between the disputed domain name and the Complainant’s trade mark. The Panel accordingly finds that the first element of paragraph 4(a) of the Policy has been satisfied. B. Rights or Legitimate Interests The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s registrations of the IBM trade mark, including those in China, long predate the registration date of the disputed domain name. The Complainant did not license or authorize the Respondent to use the IBM trade mark as a trade mark or in a domain name. Neither is there evidence that the Respondent is commonly known by the name “IBM” or “IBMBB”. The use of the disputed domain name which incorporates the Complainant’s famous IBM trade mark for a website providing links to gambling and pornographic content does not constitute a legitimate noncommercial offering of goods and services. The Complainant having established a prima facie case, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name. The Respondent failed to respond to or rebut the Complainant’s assertions in this proceeding. In the absence of any response from the Respondent and evidence to rebut the prima facie case, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied. C. Registered and Used in Bad Faith The Complainant’s IBM trade mark is well established, having been in use for a very long time and extensively across the world. Subject to evidence to the contrary, the Panel is persuaded that the Respondent could not by pure coincidence and without prior knowledge of the Complainant and its mark have selected the disputed domain name without the Complainant and/or its IBM mark in mind. The “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith” (section 3.1.4 the WIPO Overview 3.0). The Panel finds that the Respondent’s absence of rights or legitimate interests in the disputed domain name, the well-known nature of the Complainant’s trade mark, the Respondent’s failure to respond in this proceeding and to the Complainant’s cease-and-desist correspondence, as well as the nature of the Respondent’s website to which the disputed domain name resolves, can only lead to a conclusion that the disputed domain name was registered and is being used in bad faith. The Panel therefore finds that the third element of paragraph 4(a) 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 name Francine Tan
(ii) U.S. Trade Mark Registration No. 1,694,814 for IBM, registered on June 16, 1992;
(iii) U.S. Trade Mark Registration No. 1,243,930 for IBM, registered on June 28, 1983;
(iv) U.S. Trade Mark Registration No. 1,205,090 for IBM (stylized), registered on August 17, 1982;
(v) U.S. Trade Mark Registration No. 1,058,803 for IBM, registered on February 15, 1977;
(vi) U.S. Trade Mark Registration No. 0,640,606 for IBM, registered on January 29, 1957;
(vii) China Trade Mark Registration No. 221,321 for IBM (stylized), registered with effect from February 28, 1985;
(viii) China Trade Mark Registration No. 221,319 for IBM (stylized), registered with effect from February 28, 1985;
(ix) China Trade Mark Registration No. 770,063 for IBM (stylized), registered with effect from October 21, 1994; and
(x) China Trade Mark Registration No. 770,326 for IBM (stylized), registered with effect from October 21, 1994.
(ii) the disputed domain name consists of Latin characters, rather than Chinese characters;
(iii) the Respondent claims by its website to be based in the U.S.; and
(iv) the Complainant will be put through unnecessary costs and delays if Chinese were made the language of the proceeding.
Sole Panelist
Date: May 14, 2021
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