The Complainant is International Business Machines Corporation, United States of America (the “US”), internally represented.
The Respondent is 王光玉 (Guang Yu Wang), 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 5, 2021. On March 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2021, 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 April 13, 2021 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 in English on April 14, 2021. On April 13, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On April 14, 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 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 in English and Chinese of the Complaint, and the proceedings commenced on April 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2021. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on May 21, 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 is the owner of the globally well-known trademark, IBM. It has been operating since 1880 and claims itself as 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. The IBM trademark was valued by BrandZ to be worth over USD 83 billion in 2020. The Complainant owns a large, international portfolio of trademarks for IBM, including, for example, the US trademark registrations number 1205090, registered on August 17, 1982, and number 4181289, registered on July 31, 2012. The Complainant also has registered trademarks for IBM in China, where the Respondent resides, such as Chinese trademark registration number 221319, registered on February 28, 1985. The disputed domain name was created on October 25, 2020. The Complainant submits evidence that the disputed domain name linked to an online website that redirected to “http://www.yabovip1288.com/pc.html”, which presents visitors with numerous links to other online gambling websites and a downloadable gambling application. On the date of this decision, the disputed domain name still links to the same active website. 5. Parties’ Contentions A. Complainant The Complainant essentially contends that the disputed domain name is identical or confusingly similar to its trademarks for IBM, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith. The Complainant claims that its trademarks are extremely well-known and used intensively, and submits a prior UDRP decision, which has recognized that the Complainant’s trademarks for IBM are recognized well-known trademarks, i.e., International Business Machines Corporation v. Sadaqat Khan, WIPO Case No. D2018-2476. The Complainant particularly submits that there are no justifications for the use of its trademarks in the disputed domain name, and contends that the fact that the Respondent has been using the disputed domain name to promote online gambling service is proof that he has registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: 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 the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The language of the Registration Agreement is Chinese, and the Complaint is filed in English. On April 13, 2021, the Center notified the Parties that the language of the Registration Agreement is Chinese, and invited the Parties to comment on the language of the proceeding. The Complainant confirmed its request that the language of the proceeding be English on April 14, 2021. The Respondent did not make any comments on the language of the proceeding and did not submit any arguments on the merits. The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English; the fact that the disputed domain name consists of Latin scripts; the fact that all communications from the Center have been sent in English and Chinese to the Parties, and the Respondent did not comment on the language of the proceeding and did not submit arguments on the merits (while he had the right to do so in Chinese or English); the fact that the disputed domain name contains English text on its webpage; and the fact that Chinese as the language of the proceeding could lead to unwarranted delay and costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English. 6.2. Discussion and Findings on the Merits The Policy requires the Complainant to prove three elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Based on the evidence and arguments submitted, the Panel’s findings are as follows: A. Identical or Confusingly Similar The Panel finds that the Complainant has shown that it has valid rights in the mark IBM based on its extensive use and registration of the same as a well-known trademark globally. As to confusing similarity, the disputed domain name consists of the Complainant’s registered trademark IBM in its entirety, following the letters “hn”. The applicable generic Top-Level Domain (“gTLD”) “.com” in this case is viewed as a standard registration requirement, and may as such be disregarded by the Panel. See in this regard the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.11.1. Moreover, the WIPO Overview 3.0, section 1.7, states: “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). The Panel concludes that the disputed domain name contains the entirety of the Complainant’s registered trademark IBM, as its only distinctive feature. It is the Panel’s view that the addition of the letters “hn” before the Complainant’s registered trademark IBM does not avert the confusing similarity between the disputed domain name and the trademark IBM. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered trademark IBM. The Complainant has satisfied the requirements of the first element under the Policy. B. Rights or Legitimate Interests On the basis of the evidence and arguments submitted, the Panel holds that the Complainant has made out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, and is not making legitimate noncommercial use or fair use of the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply. Furthermore, the Panel notes that the nature of the disputed domain name, being confusingly similar to the Complainant’s trademarks, carries a risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1), and that the Respondent is not commonly known by the disputed domain name. On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy. C. Registered and Used in Bad Faith The Panel holds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s trademarks, by using such trademarks to mislead and divert consumers to the disputed domain name. Given the high distinctiveness and prior registration of the Complainant’s trademarks, the Panel holds that the registration of the disputed domain name, clearly targeting the Complainant’s trademarks, was obtained in bad faith. Furthermore, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owns the registered trademarks for IBM and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name. As to use of the disputed domain name in bad faith, the disputed domain name linked to an online website that redirected to “http://www.yabovip1288.com/pc.html”, which presents visitors with numerous links to other online gambling websites and a downloadable gambling application. That indicates its intention to use the Complainant’s trademarks and reputation to attract Internet users for the Respondent’s commercial gain. It further shows that the Respondent intends to mislead consumers that the Respondent is somehow connected, associated with, authorized or endorsed by the Complainant, which is not the case. The Panel has reviewed all elements of this case, and in particular: the confusing similarity of the disputed domain name to the Complainant’s trademarks; the high degree of distinctiveness and fame of the Complainant’s trademarks; the fact that the Respondent used the disputed domain name to promote gambling service for commercial gain; and the fact that although the Complainant sent a cease and desist letter and a follow-up letter to the Respondent on January 28, 2021 and February 4, 2021 respectively, the Respondent did not reply to the letters and continued to use the disputed domain name to provide gambling service. On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent is using the disputed domain name in bad faith. Finally, the Respondent failed to provide any response or evidence to establish her good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under the Policy. 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 Deanna Wong Wai Man
Sole Panelist
Date: June 3, 2021
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