The Complainant is International Business Machines Corporation, United States of America (“U.S.”), internally represented.
The Respondent is Tan Rong (谭荣), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2021. On August 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2021, the Registrar transmitted by email to the Center its verification response, disclosing the 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 22, 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 August 23, 2021.
On August 22, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On August 25, 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 August 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2021.
The Center appointed Francine Tan as the sole panelist in this matter on October 17, 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 BackgroundThe 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 known as 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. It states that it has, for instance, spent 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 IBM 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 trade mark 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. It owns, inter alia, the following trade mark registrations in the U.S.:
(i) Trade Mark Registration No. 4,181,289 for IBM (stylized), registered on July 31, 2012;
(ii) Trade Mark Registration No. 3,002,164 for IBM (stylized), registered on September 27, 2005;
(iii) Trade Mark Registration No. 1,696,454 for IBM (stylized), registered on June 23, 1992;
(iv) Trade Mark Registration No. 1,694,814 for IBM, registered on June 16, 1992;
(v) Trade Mark Registration No. 1,243,930 for IBM, registered on June 28, 1983;
(vi) Trade Mark Registration No. 1,205,090 for IBM (stylized), registered on August 17, 1982;
(vii) Trade Mark Registration No. 1,058,803 for IBM, registered on February 15, 1977; and
(viii) Trade Mark Registration No. 640,606 for IBM, registered on January 29, 1957.
The disputed domain name was registered on April 15, 2021 and at the time the Complaint was filed, resolved to a website providing various links to online 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 a follow-up email, but the Respondent never responded.
5. Parties’ Contentions A. ComplainantThe disputed domain name is identical or confusingly similar to the Complainant’s IBM trade mark which is well known around the world and in which it has rights. The disputed domain name consists of the Complainant’s IBM trade mark and the addition of the letters “huatong” which is the Chinese term for “microphone”. The additional term and does not obviate confusing similarity with the Complainant’s IBM trade mark.
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 “Huatongibm” or that the Respondent is making fair use of the disputed domain name. 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 has been actively using the disputed domain name to direct Internet user traffic to its website featuring links to various gambling and pornographic websites. The Respondent’s unauthorized use of the Complainant’s IBM trade mark is likely to cause consumers into erroneously believing that the Complainant is somehow affiliated with the Respondent or endorses its commercial activities when no such relationship exists.
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 would have been well aware of the Complainant’s IBM trade mark at the time the disputed domain name was registered as the Complainant’s IBM trade mark is well known throughout the world. The Respondent has been actively using the disputed domain name for illegitimate commercial gain by intentionally attempting to create a likelihood of confusion with the Complainant’s IBM trade mark. The Respondent is engaging in the practice of “pornosquatting” by using the disputed domain name, which contains the Complainant’s well-known IBM mark, to direct Internet users to pornographic websites, thereby capitalizing on the fame associated with the IBM mark to realize financial gain by click-through revenue.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 Preliminary Issue: Language of the ProceedingParagraph 11(a) of the Rules provides that “[u]nless 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 for the disputed domain name is Chinese. The Complainant requested that the language of the proceeding be English, as the following circumstances show that the Respondent comprehends the English language:
(i) The disputed domain name comprises English letters. The letters “ibm” are identical to the Complainant’s IBM trade mark and the term “huatong” is the English transliteration of the Chinese word for “microphone”.
(ii) The webpage to which the disputed domain name resolved to contained English words such as “casino”, “suncity group’, “Sexy Surve”, “the”, “Vol. 45” and “Copyright © 2010-2021”.
(iii) A translation of a warning in Chinese language appearing at the bottom of the said webpage states, inter alia, to the effect that “[the Respondent] is based in the U.S. and is protected by North American laws”.
On the other hand, the Complainant is based in the U.S. and has no knowledge of the Chinese language. Requiring the Complainant to translate the Complaint into Chinese would cause the Complainant to incur substantial additional costs and cause unwarranted delay in the proceeding.
The Respondent did not respond on issue of the language of the proceeding.
The Panel determines that it is appropriate for English to apply as the language of the proceeding. The Panel make its determination in the spirit of fairness and justice to the Parties, being mindful for the need to ensure that the proceeding takes place expeditiously and in a cost-effective manner. The Panel is adequately persuaded that the Respondent is likely to be conversant and/or familiar with 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 both English and Chinese. On a balance of the competing interests, the Panel does not find it procedurally efficient to have the Complainant translate the Complaint and evidence into Chinese. There is no evidence that the Respondent would be prejudiced by a determination that English would be adopted as the language of the proceeding.
6.2 Substantive Issues A. Identical or Confusingly SimilarThe Complainant has established it has rights in the IBM trade mark. The IBM trade mark is reproduced in its entirety in the disputed domain name and is recognizable therein. The Panel agrees that the addition of the term “huatong” does not serve to avoid confusing similarity with the Complainant’s trade mark. Further, the generic Top-Level Domain “.com” 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 InterestsThe 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 use and registrations of the IBM trade mark long predate the registration date of the disputed domain name. As was pointed out by the Complainant, the IBM trade mark has been recognized as well known by Panels in earlier UDRP cases (see e.g. International Business Machines v. Niculescu Aron Razvan Nicolae, WIPO Case No. DRO2010-0003; International Business Machines v. Linux Security Systems, srl, WIPO Case No. DRO2010-0004). 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 “Huatongibm”. 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 bona fide or legitimate noncommercial offering of goods and services.
The Complainant’s prima facie case has been established and unrebutted by the Respondent. Accordingly, 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 FaithIn view of the fame of the Complainant’s IBM trade mark across the world, it is not at all plausible that the Respondent, by pure coincidence and without prior knowledge of the Complainant and its IBM mark, selected the disputed domain name. The Panel finds that the combination of factors in this case can only lead to the conclusion that the Respondent registered and is using the disputed domain name in bad faith: (i) the Respondent’s absence of rights or legitimate interests in the disputed domain name; (ii) the well-known nature of the Complainant’s IBM trade mark; (iii) the Respondent’s failure to respond in this proceeding and to the Complainant’s cease-and-desist correspondence; and (iv) the nature of the Respondent’s website to which the disputed domain name resolves. In regard to the last factor, the Panel refers to the position that many previous UDRP panels have taken (see Vivendi v. Guseva Svetlana, WIPO Case No. D2018-2631):
“Numerous panels deciding cases under the Policy have held that pornographic content on a respondent’s website is in itself sufficient to support a finding of bad faith, irrespective of the respondent’s motivation (see, e.g., CHRISTIAN DIOR COUTURE v. Paul Farley,WIPO Case No. D2008-0008, and further cases cited there). In addition, the linking of the disputed domain name with a pornographic website might result in the tarnishing of the Complainant’s well-known trademark.”
The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied.
7. DecisionFor 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
Sole Panelist
Date: October 27, 2021