WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION International Business Machines Corporation v. Niculescu Aron Razvan Nicolae Case No. DRO2010-0003 1. The Parties
The Complainant is International Business Machines Corporation of New York, United States of America, represented internally.
The Respondent is Niculescu Aron Razvan Nicolae of Bucharest, Romania. 2. The Domain Name and Registrar
The disputed domain name is registered with RNC.ro. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2010. On May 21, 2010, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the disputed domain name. On May 27, 2010, RNC.ro transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 29, 2010.
The Center appointed Marilena Oprea as the sole panelist in this matter on July 6, 2010. 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. Language of the proceedings
As the Complaint had been submitted in English and the Registrar of the disputed domain name has informed the Center that the language of the relevant registration agreement is Romanian, on May 27, 2010 the Center forwarded a notice to the Complainant stating that the Complainant should either (a) provide evidence of an agreement between the parties that proceedings should be in English; (b) translate the Complaint into Romanian; or (c) submit a request for English to be the language of the proceedings.
The Complainant requested the language of proceedings to be English, providing in its response the following arguments: according to information found on the Internet based on Respondent's contact email address, the Respondent appears to be the Vice President of the European Union of Contractors and House Builders thus he should have good communication skills in English; and the fact that the Complainant is located in United States of America and therefore it will involve significant costs and delay in conducting the current proceedings in Romanian.
The Panel determines according to Rules, paragraph 11(a), that the language of these proceedings be English for the following reasons:
- there does not appear to be provision on the Registrar's website for a domain name applicant to choose between English or Romanian as the controlling language of the registration agreement at the moment of registration of the disputed domain name; accordingly by registering the domain name, such applicant accepts the use of both languages in the relationship with the domain name (see SC Tip Top Food Industry SRL v. S.C. WEB4COMM SRL/ web4COMM S.R.L. Romania, WIPO Case No. DRO2008-0013);
- even if the Complaint was not translated into Romanian, all the communications made by the Center were in both languages, Romanian and English. Thus, the Respondent was able to understand the procedures initiated against it;
- the Complainant opted for the English language to be used in these proceedings;
- the Panel has checked the information provided by the Complainant and indeed it appears that the Respondent is one of the Vice Presidents of the European Union of Developers and House Builders. If so, Respondent would be expected to be familiar with the English language; and
- although properly notified by the Center with regard to these proceedings, the Respondent did not submit any response on the Complainant's request regarding the language of these proceedings. 4. Factual Background
The Complainant is the holder of numerous IBM registrations, covering 170 countries around the world with protection for several decades and claiming a broad range of goods and services, including I/T related goods and services. The IBM trademark was ranked by Interbrand in 2009 as the second most valuable brand in the world.
The Complainant owns in Romania several trademark registrations for IBM, including the following:
- Trademark no. 4R002052 with a priority date of November 18, 1949 for the mark IBM in classes 7, 9, 14, 16, 20, 35; and
- Trademark no. 3R08334 with a priority date of March 13, 1975 for the mark IBM in classes 1, 9, 16.
Also, the Complainant is established in Romania at least since November 1995 as a subsidiary of the IBM World Trade Corporation.
The disputed domain name was registered on January 1, 1996 and is currently held by the Respondent. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case, as follows:
(i) The domain name is identical to its trademark IBM.
The Complainant states that the disputed domain name is formed of the usual “www.” prefix, the three letters “ibm” (not case sensitive), followed by the country code for Romania “.ro”.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
- The Complainant never granted the Respondent the right to use the IBM mark or to apply for any domain name incorporating the same;
- The Respondent has no relationship with the Complainant;
- The Respondent did not reply to the Complainant's two cease and desist Letters sent in March 2010;
- No active website corresponding to the disputed domain name has been created till the present procedure;
- The disputed domain name does not reflect the Respondent's name, nor any potential association of the same with a company that includes the term “IBM” in its name;
- There is no evidence of any Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with any bona fide offering of goods or services;
- The Respondent has not been commonly known by the domain name;
- The Respondent is not making a legitimate noncommercial or fair use of the domain name.
(iii) The domain name was registered and is being used in bad faith:
- The Complainant's trademark IBM is well-known in Romania;
- The Complainant's trademark was ranked the second most valuable brand in the word by Interbrand in 2009;
- The three letters “ibm” is not a trivial combination of letters;
- The Respondent's lack of reaction to the Complainant's cease and desist Letters is clear evidence that the Respondent has registered the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the policy, these rules and any rules and principles of law that it deems applicable.”
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent does not hold rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
There are two requirements that a complainant must establish under this paragraph, namely: that it has rights in a trademark, and that the disputed domain name is identical or confusingly similar to the mark.
The Complainant holds numerous registrations for the IBM trademarks, including in Romania.
The Panel finds that the domain name is identical to the Complainant's IBM trademark as it incorporates it entirely. The “.ro” country code top level domain has no legal significance in these proceedings under this element of the Policy.
Accordingly, the Panel concludes that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is identical to the trademark in which the Complainant has rights, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with the Respondent and has not granted the Respondent any right to register and use its trademark. Further, the Respondent has to demonstrate its rights or legitimate interests in the disputed domain name.
The Respondent choose not to participate in these proceedings therefore it has failed to rebut the Complainant's prima facie showing that it has no rights or legitimate interests in the disputed domain name. Also, the Respondent ignored the two Cease & Desist Letters sent by the Complainant, prior to the commencement of the administrative proceeding.
Lack of the Respondent's reaction does not automatically lead to a finding in the favor of the Complainant but the Panel may draw negative inferences from it (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
Nevertheless, the Panel further analyzed the examples of defenses provided under paragraph 4(c) of the Policy, but couldn't find (i) any demonstrable preparations to use the domain name in a bona fide manner before any notice of the dispute, (ii) evidence attesting the fact that the Respondent is commonly known by the domain name; or (iii) evidence that the Respondent is making a legitimate noncommercial use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
In fact, the website corresponding to the disputed domain name seems to be inactive since its registration, more than 14 years ago.
For these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Under this heading, the Complainant must prove both: registration and use in bad faith.
The Complainant's trademark is well-known around the world including in Romania and is registered for decades. Also, the IBM trademark is distinctive and therefore it is difficult to imagine someone randomly choosing the three letters composing the trademark to register as a domain name, especially in light of the lack of a Response in this case.
Furthermore, although it is more relevant for bad faith use, the fact that the disputed domain name seems to be abandoned since its registration does not provide any particular basis supporting a potential registration in good faith.
For the above, the Panel concludes that the Respondent registered the disputed domain name likely knowing of the Complainant's corresponding trademark.
Further, the Respondent provided no evidence of nor alleged any actual or contemplated good faith use.
According to the records on this case, the corresponding domain name is inactive and there is no evidence that it was ever active. The Panel finds this to be similar to cases under the UDRP of “inaction”/”passive holding” that may constitute bad faith use (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, CBS Broadcasting Inc. v. Edward Enterprises,WIPO Case No. D2000-0242).
For all these reasons, the Panel finds that the third element of the Policy is established, and that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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 name be transferred to the Complainant.
Marilena Oprea
Sole Panelist
Dated: July 19, 2010
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