Complainant is International Business Machines Corporation, (“IBM”) of New York, United States of America (“US”), represented by Lisa Ulrich, United States of America.
Respondent is Gehard Lach of Manila, Luzon, Philippines.
The disputed domain name <softlayer.biz> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2014. On January 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2014. No formal Response was filed with the Center. However, several brief email communications were received from Respondent.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on March 11, 2014. 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.
Complainant has been engaged in the field of computer hardware and software and also in the field of infrastructure, hosting and consulting services.
The disputed domain name was registered November 14, 2013.
Complainant relies upon the following registered trademarks:
- US trademark SOFTLAYER dated November 24, 2009 in the name of SoftLayer Technologies, Inc, designating services in classes 35, 38 and 42;
- US trademark SOFTLAYER dated January 5, 2010 in the name of SoftLayer Technologies, Inc, designating services in classes 35, 38 and 42;
Complainant sent an email to Respondent claiming that Respondent’s registration and use of the disputed domain name infringes on Complainant’s rights and requesting Respondent to immediately cease all use of <softlayer.biz> and to cancel the disputed domain name.
Complainant produced several emails from Respondent addressed to Complainant stating that Respondent was willing to transfer the domain name at issue for various amounts and up to USD3,000.
No formal response was filed by Respondent.
(i) the disputed domain name is confusingly similar to Complainant’s registered trademark SOFTLAYER in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
The Respondent did not formally reply to Complainant’s contentions and is in default.
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In view of the Respondent’s failure to submit a response, the Panel decides this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draws such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (in the absence of a response, it is appropriate to accept as true all allegations of the Complaint); see also Vertical Solutions Management., Inc. v. webnet-marketing, inc., NAF Claim No. 0095095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true).
The Complainant relies upon SOFTLAYER trademarks registered in the United States of America in the name of Softlayer Technologies, Inc. Softlayer Technologies Inc is stated in the Complaint to be a wholly owned subsidiary of International Business Machines Corporation. Complainant submits that, in those circumstances, Complainant itself has rights in the trademarks for the purposes of paragraph 4(a)(i) of the Policy.
The Complainant cites Grupo Televisa S.A. v. Party Night Inc, WIPO Case No. D2003-0796 in support of that allegation. The panel in that case noted that the Policy does not require that the complainant be the owner of the trademark and would include for example a licensee of the trademark.
The panel in the Grupo Televisa S.A. case also referred to two other UDRP decisions involving the same complainant, namely Grupo Televisa S.A.et al v. Joel Gonzales, WIPO Case No. D2002-001 and Grupo Televisa S.A. v. Party Night Inc aka Peter Carrington, WIPO Case No. D2003-0228. In both cases, the panels concluded that the complainant corporation had rights in the trademarks registered by its wholly-owned subsidiaries.
However, it is by no means obvious to this Panel that having an ability to exercise general control over some other entity which enjoys rights in a trademark, is always going to be the same thing as having rights in the trademark itself. No doubt it will often be the case that parent companies will enjoy direct control over trademarks owned by their subsidiaries, but one can envisage circumstances where that might not be the case. See PartyGaming PLC v. Kriss Vance, WIPO Case No. D2006-0456.
In this particular case, in the absence of any challenge from Respondent, the Panel is prepared to infer that existing registered trademarks held by subsidiary corporations within Complainant’s group are probably held for the benefit of all companies within the group, including Complainant. See PartyGaming PLC v. Kriss Vance, WIPO Case No. D2006-0456.
The Panel concludes that, for the purpose of the present Complaint, International Business Machines Corporation has rights in the trademarks in question which are registered by its wholly owned subsidiary.
Complainant has therefore produced sufficient evidence to show that it has a right in the trademark for the purposes of paragraph 4(a)(i) of the Policy.
Paragraph 4(a)(i) of the Policy requires that the disputed domain name be identical or confusingly similar to a trademark in which Complainant has rights.
The Panel finds that Complainant has provided sufficient evidence showing that it has rights on the SOFTLAYER trademark registrations which predates Respondent’s registration of the disputed domain name. The Panel finds that Complainant’s registration of the SOFTLAYER trademarks in the United States of America sufficiently establishes its rights in the trademarks pursuant to Policy, paragraph 4(a)(i). See Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No.D2000-0503 (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a trademark under Policy, paragraph 4(a)(i)).
Complainant contends that the disputed domain name is identical to Complainant’s trademarks SOFTLAYER. The Panel finds that the disputed domain name <softlayer.biz> is identical to the trademarks SOFTLAYER, registered trademarks of a subsidiary of International Business Machines Corporation.
The Panel also finds that “.biz” is a generic Top-Level Domain (“gTLD”), and thus it does not constitute a prominent portion in the disputed domain name in determining confusing similarity between the disputed domain name and Complainant’s trademark. Therefore, the addition of the gTLD suffix “.biz” in the disputed domain name does not have any impact on the avoidance of confusing similarity. See Research in Motion Limited v. Input Inc., Domain Manager, WIPO Case No. D2011-2197.
The first condition required to be satisfied under paragraph 4(a)(i) above is therefore fulfilled.
According to paragraph 4(c) of the Policy, the following circumstances shall demonstrate that a respondent has rights or legitimate interests to a domain name:
i) Before any notice of the dispute, the respondent has used, or made demonstrable preparations to use the domain name at issue 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 he/she has acquired no trademark or service mark rights, or
iii) the respondent is making a legitimate noncommercial fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant states that Respondent is not a licensee of Complainant nor is he authorized to use Complainant’s trademarks in any way. The burden thus shifts to Respondent to provide evidence of a right or legitimate interest. No response having been filed, no evidence or argument has been put forward by Respondent to demonstrate any rights or legitimate interests he may have in the domain name.
The Panel finds that Respondent has no connection or affiliation with Complainant or its trademarks and has not received any license or consent, express or implied, to use the SOFTLAYER trademarks in the disputed domain name or in any other manner. The Panel further finds that on the available record, it has been established that Respondent has never been known by the disputed domain name.
Therefore, the Panel agrees that Respondent lacks rights or legitimate interests in the disputed domain name. See Harry Winston, Inc. and Harry Winston, S.A. v. h, WIPO Case No. D2008-1266 (finding that respondent had not established rights or legitimate interests pursuant to the Policy, paragraph 4(c)(ii) in the <harrywinstondiamond.com> domain name where there was no evidence that the respondent was commonly known by the domain name).
Under the circumstance that Respondent did not formally reply and that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, the Panel concludes that the second element of the Policy, paragraph 4(a) has been established. See De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005; and Accor v. Eren Atesmen, WIPO Case No. D2009-0701.
The condition required to be satisfied under paragraph 4(a)(ii) above is therefore fulfilled.
To succeed in this administrative proceeding, Complainant must show not only that the disputed domain name at issue is identical or confusingly similar to its registered trademark and that Respondent has no rights or legitimate interests to the disputed domain name, but also that Respondent registered and used the disputed domain name in bad faith.
According to paragraph 4(b)(ii) of the Policy, registration and use of a domain name in bad faith is demonstrated when in view of the evidence, the panel finds that the respondent has registered the domain name at issue in order to prevent the owner of a trademark from reflecting the trademark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct.
Complainant has submitted ample evidence and argument to support the conclusion that the registration of the disputed domain name was made in bad faith.
The Panel finds on a balance of probabilities that Respondent was aware or ought to have been aware of the existence of the trademark SOFTLAYER. It is hard to believe that the Respondent was unaware of Complainant’s SOFTLAYER trademark when the disputed domain name was registered. The disputed domain name was registered less than six months after Complainant announced that it would acquire Softlayer Technologies Inc. and Respondent offered the disputed domain name for sale to Complainant on November 30, 2013. This knowledge at the time of registration proves that the disputed domain name was registered in bad faith.
It was Respondent’s duty to establish that the registration of the disputed domain name does not infringe on any rights or any third party. A quick Internet search would have revealed the SOFTLAYER trademark to Respondent. Failure to do such a search is a contributory factor to bad faith.
Therefore, the Panel finds that Respondent has registered the disputed domain name in bad faith.
The Complaint states that on the website “www.softlayer.biz”, Respondent hosts an open offer for sale of the disputed domain name. The Panel accepts this statement to be accurate.
By creating a parking website that featured links to Complainant’s competitors, Respondent similarly used the disputed domain name in bad faith. The purpose of this parking website clearly was to attract Internet users to the site, for profit, based on the confusing similarity of Respondent’s domain name and/or website with Complainant’s trademark. Once on Respondent’s page, some users likely click on advertisers’ links, which presumably would confer a commercial benefit on Respondent. The fact that Respondent was willing to pay money to register or acquire this domain name, to continue to maintain it, and to host the website, all are evidence that Respondent expected to profit from the disputed domain name in this way.
The Panel therefore infers that Respondent profited from the goodwill associated with the SOFTLAYER trademark by collecting click-through fees and that Respondent used the disputed domain name in bad faith.
In the circumstances, Respondent must have known about Complainant’s products. The Panel is not aware and cannot conceive of Respondent conducting any legitimate business activity using the disputed domain name.
The above findings, together with the finding that Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith.
Accordingly, the Panel finds that Complainant has met its burden under paragraph 4(a)(iii) of the Policy to demonstrate that the disputed domain name has been registered and is being used in bad faith.
The third condition required to be satisfied under paragraph 4(a) of above is therefore fulfilled.
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, <softlayer.biz> be transferred to Complainant.
Nathalie Dreyfus
Sole Panelist
Date: April 4, 2014