WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Business Machines Corporation v. 徐帅伟 (xu shuaiwei)

Case No. D2021-0711

1. The Parties

The Complainant is International Business Machines Corporation, United States of America (“US”), internally represented.

The Respondent is 徐帅伟 (xu shuaiwei), China.

2. The Domain Name and Registrar

The disputed domain name <sendibm.com> (the “Domain Name”) is registered with DNSPod, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2021. On March 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 10, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 15, 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 March 15, 2021.

On March 15, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On March 16, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent transmitted an email communication in Chinese on March 18, 2021 requesting that Chinese be 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 March 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2021. The Respondent did not submit any formal response. Accordingly, the Center informed the Parties that it would proceed with panel appointment on April 12, 2021.

The Center appointed Karen Fong as the sole panelist in this matter on April 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 owns the world-famous trade mark, IBM. It can trace its roots back to 1880 and has described 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 trade mark was valued by BrandZ to be worth over USD 83 billion in 2020.

The Complainant has trade mark registrations for the IBM trade mark in 170 countries, including the US, such as US Trade Mark Registration No. 640,606 (registered January 29, 1957) and US Trade Mark Registration No. 4,181,289 (registered July 31, 2012) (the “Trade Mark”).

The Respondent who is based in China registered the Domain Name on December 21, 2020. The Domain Name resolves to a pay-per-click website (the “Website”). The Complainant sent a cease and desist letter to the Respondent through the Registrar on December 22, 2020 and followed it up with a reminder on January 5, 2021. The Respondent did not respond.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.

B. Language of the Proceeding

The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.

The Complainant submits that the language of the proceeding should be English for the following main reasons:

- the Domain Name is in English;
- the Website is a pay-per-click site with links to companies promoting their services in the English language;
- the above suggests that the Respondent understands English and therefore would not be in any way prejudiced if the proceeding is conducted in English;
- the Complainant is based in the US and does not understand Chinese;
- there is evidence that the Respondent has a history of registering other domain names with registrars providing English language registration agreements;
- the Complainant would be put to great expense to have to translate the Complaint and its annexes which would cause undue delay.

The Respondent requested that the language of the proceeding to be the language of the Registration Agreement, which is Chinese.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.

In this case, the Panel finds that the Respondent may be familiar with the English language while the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. Further, the Panel notes that the relevant communications from the Center to the Parties were transmitted in both Chinese and English, and the Respondent could have filed a Response in Chinese but has chosen not to do so. In all the circumstances, the Panel determines that English be the language of the proceeding.

C. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has registered rights to the Trade Mark.

The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.

In this case, the Domain Name comprises the entirety of the Trade Mark, IBM, together with the prefix “send”. The addition of this term does not prevent a finding of confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Name.

For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) in this case, “.com”, as it is viewed as a standard registration requirement.

The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

D. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

None of the above apply in these circumstances. The Complainant has not authorised, licensed or permitted the Respondent to either register or use the Domain Name or to use the Trade Mark. The Complainant is not aware of any evidence, which demonstrates that the Respondent is commonly known by a name corresponding to the Domain Name nor has it applied to register or owns any registrations of the Domain Name as a trade mark, trade name or company name. The Respondent’s unauthorized use of the Trade Mark in the Domain Name in relation to a pay-per-click website is not bona fide or legitimate noncommercial or fair use of the Domain Name.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has failed to respond and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

E. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.

The Panel is satisfied that the Respondent must have been aware of the Trade Mark when he registered the Domain Name given the Trade Mark is a world-famous trade mark. It is implausible that the Respondent was unaware of the Complainant when he registered the Domain Name.

In the WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”

The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of the WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.

The Panel also finds that the use of the Domain Name is in bad faith. The Website is a pay-per-click site, which have been set up for the commercial benefit to the Respondent. It is highly likely that Internet users when typing the Domain Name into their browser or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent.

The Domain Name is likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the incorporation of the Trade Mark in its entirety as the most prominent element of the Domain Name. The Respondent employs the fame of the Trade Mark to mislead Internet users into visiting the Website instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Website is authorised or somehow connected to the Complainant. The Panel therefore also concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of 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 Domain Name <sendibm.com> be transferred to the Complainant.

Karen Fong
Sole Panelist
Date: May 13, 2021