WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Business Machines Corporation v. Linux Security Systems srl

Case No. DRO2010-0004

1. The Parties

The Complainant is International Business Machines Corporation of New York, United States of America, represented internally.

The Respondent is Linux Security Systems srl of Bucharest, Romania.

2. The Domain Name and Registrar

The disputed domain name <ibm.com.ro> 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 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 30, 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 had informed the Center that the language of the relevant registration agreement was Romanian, on May 27, 2010 the Center forwarded a notice to the Complainant and the Respondent 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 Respondent was invited also to comment on the Complainant's submissions.

The Complainant requested the language of proceedings to be English, providing in its response several arguments such as: that the Respondent seems to be involved in the IT and software business where the main language is English; the involvement of the Respondent in a previous UDRP case, AT&T Corp. v. Linux Security Systems, WIPO Case No. DRO2002-0002; and the fact that the Complainant is located in United States of America and therefore 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 shall be English for the following reasons:

- there were no provisions 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 relation to 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; Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L.,WIPO Case No. DRO2006-0001);

- 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;

- according to the Respondent's main website “www.lss.ro” (as indicated in the Complaint), it is indeed involved in the field of IT and software, where English is the predominant language;

- the Complainant requested that the English language be used in these proceedings; and

- the Respondent did not submit any response on the Complainant's request regarding the language of these proceedings.

As to the involvement of the Respondent in the previous UDRP case mentioned by the Complainant, it is not very clear to the Panel from the information provided whether this is accurate, mainly because the respondent in that case was located in another city.

4. Factual Background

The Complainant is the holder of numerous IBM registrations, covering 170 countries around the globe 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 <ibm.com.ro> 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 <ibm.com.ro> 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 generic suffix “.com” and ending with 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;

- The disputed domain name does not reflect the Respondent's company 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 world by Interbrand in 2009;

- The Respondent appears to be offering software and such related services at it's main Internet location, therefore the Respondent must have known of the Complainant's IBM trademark;

- 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 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 domain name; and

(iii) the 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 domain name is identical or confusingly similar to the mark.

The Complainant has held numerous registrations for the IBM trademarks for many decades, including in Romania.

The Panel finds that the <ibm.com.ro> domain name, after disregarding the “.com” generic Top Level Domain and “.ro” country code Top Level Domain, is identical to the Complainant's IBM trademark as it incorporates it in its entirety.

Accordingly, the Panel finds 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. Therefore, the burden of proof on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name, either by demonstrating one of the three circumstances under paragraph 4(c) of the Policy or by providing other relevant acceptable grounds.

With its silence, the Respondent has failed to rebut the Complainant's prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Also, the Respondent ignored the two cease and desist letters sent by the Complainant, prior to the commencement of the administrative proceeding.

Analyzing the examples of defenses provided under paragraph 4(c) of the Policy, the Panel could not find (i) any demonstrable preparations to use the domain name in a bona fide manner before any notice of the dispute, (ii) evidence attesting to 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.

Furthermore, the website corresponding to the disputed domain name seems to be inactive since its registration.

Also, what the Complainant contends to be the Respondent's main webpage “www.lss.ro” indicates that the Respondent is active in the same field of activity as the Complainant.

The passive holding for more than 14 years of a domain name confusingly similar to a third party's well-known registered trademark without that third party's consent cannot constitute nor justify a right or a legitimate interest.

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 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, representing the abbreviation of its trade name. According to the company name and information available on its main webpage (Annex 8 of the Complaint) the Respondent is active in the same business area as the Complainant.

For the above reason, it is not difficult for the Panel in this present case to infer actual knowledge of the Complainant's trademark, trade name and business at the time the Respondent registered the disputed domain name.

Further, the Respondent provided no evidence of nor alleged any actual or contemplated good faith use.

According to the records in this case, the corresponding domain name is inactive. In any case, it was established even since the beginning of UDRP procedures that “inaction” / “passive holding” can in certain circumstances 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).

Therefore, although in this case there is no evidence that the Respondent used the disputed domain name to redirect Internet users on its website or that the Complainant's customers were actually diverted to the Respondent's website, or have contacted the Respondent seeking to find the Complainant, the Panel finds sufficient evidence on the present record to establish the bad faith use element, as the Respondent has registered a competitor's distinctive trademark as a domain name without having any right or legitimate interest and kept it inactive for more than 14 years.

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 <ibm.com.ro> be transferred to the Complainant.

Marilena Oprea
Sole Panelist

Dated: July 16, 2010