WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Business Machines Corporation v. 李南南 (Nan Nan Li)

Case No. D2021-0387

1. The Parties

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

The Respondent is 李南南 (Nan Nan Li), China.

2. The Domain Name and Registrar

The disputed domain name <ibmip.com> is registered with West263 International Limited (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2021. On February 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2021, the Registrar transmitted by email to the Center its verification response disclosing 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 February 17, 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 February 18, 2021.

On February 17, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On February 18, 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 February 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2021.

The Center appointed Douglas Clark as the sole panelist in this matter on April 14, 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

Incorporated on June 16, 1911, the Complainant is a multinational manufacturer of computer and
computer-related goods and services throughout the world and produces a wide variety of products that process, communicate, store, and retrieve information. The Complainant is one of the largest companies in the world.

The Complainant officially began using the name “International Business Machines” on February 14, 1924 and has been offering products under the IBM trade mark ever since. Such products include office and research equipment such as punch machines, calculating machines, clocks and scales, but has since expanded to include computers and computer hardware, software and accessories. As a result of its extensive resources in providing goods and services and from investing its assets, the Complainant has developed a reputation as one of the top manufacturers of computer and computer-related goods and services around the world by leading publications. The IBM trade mark has been valued as worth over USD 83 billion in 2020, USD 86 billion in 2019 and USD 96 billion in 2018.

The Complainant owns and has owned registrations for the IBM trade mark in 131 countries for many decades for a broad range of goods and services. In particular, the Complainant owns the following IBM trade mark registrations in the United States:

The disputed domain name <ibmip.com> was registered on October 20, 2020. The disputed domain name resolves to a website containing links to pornography and online gambling services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The disputed domain name is confusingly similar to its trade mark. The addition of the terms “ip” and “.com” in the disputed domain name does not eliminate the overall notion that the designation is connected to the trade mark and the likelihood of confusion that the disputed domain name and the trade mark are associated;

(b) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant in any way and the Complainant has never granted any authorization or license to use the Complainant’s trade mark. The Respondent is not commonly known by the disputed domain name, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name; and

(c) The disputed domain name was registered and is being used in bad faith. The Respondent was aware of the Complainant’s trade mark at the time the Respondent registered the disputed domain name and has actively used the IBM trade mark to increase Internet user traffic and app downloads. The Respondent is using the disputed domain name to attract Internet users for commercial gain, creating a likelihood of confusion with the Complainant’s trade mark.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issue – Language of the Proceeding

According to paragraph 11(a) of the Rules, unless 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.

In this case, the language of the Registration Agreement for the disputed domain name is in Chinese. Based on the given evidence, there is no agreement between the Complainant and the Respondent regarding the language of the proceeding. The Complainant has filed its Complaint in English and has requested that English be the language for the proceeding under the following grounds:

(a) the Respondent is capable of reading and comprehending English material, given that the Respondent has certified that he has read and agreed to all the terms in the Registrar’s general terms and conditions, of which certain portions are only offered in English;

(b) a warning message displayed on the webpage of the disputed domain name states that the Respondent is based in the United States;

(c) the disputed domain name consists of English letters;

(d) in order to proceed in Chinese, the Complainant would have had to retain specialized translation services at a cost very likely to be higher than the overall cost of this proceeding; and

(e) the Respondent has a history of registering domain names in the English language.

In accordance with paragraph 11(a) of the Rules, the Panel hereby determines that the language of the proceeding shall be English after considering the following circumstances:

- the Center has notified the Respondent of the proceeding in both English and Chinese;

- an order for the translation of the Complaint and other supporting documents will result in significant expenses for the Complainant and a delay in the proceeding; and

- the Respondent had not objected to the complainant’s request to adopt English as the language of the proceeding in a previous UDRP decision.

Further, this Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.

6.2 Substantive Issues

The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its action:

(i) the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights to;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <ibmip.com> is confusingly similar to the Complainant’s trade mark. The disputed domain name incorporates the Complainant’s IBM trade mark in full with the word or acronym “ip” added to it. The word or acronym “ip” does not detract from a finding of confusing similarity. The generic Top-Level Domain (“gTLD”) “.com” is generally disregarded when considering the first element.

The Panel notes that the Complainant does not rely on any registered trade marks for IBM in China where the Respondent is located. The ownership of a trade mark is generally considered to be a threshold standing issue. The location of the trade mark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trade mark under the first element of the UDRP. These factors may however bear on a panel’s further substantive determination under the second and third elements. (See section 1.1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Panel finds that the Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain name.

Section 2.1 of the WIPO Overview 3.0 provides:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Complainant has asserted that the Respondent has no business with and is in no way affiliated with the Complainant. The Respondent is not authorized nor licensed to use the Complainant’s IBM trade mark or to apply for registration of the disputed domain name. There is no evidence that the Respondent has used or is planning to use the IBM trade mark or the disputed domain name for a bona fide offering of goods and services. In addition, the Respondent has not responded to any of the Complainant’s contentions. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, which has not been rebutted by the Respondent. Accordingly, the Respondent has no rights or legitimate interests in regard to the disputed domain name.

The Panel finds that the Complainant has therefore satisfied the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Based on the given evidence, the disputed domain name was registered and is being used in bad faith.

The disputed domain name was registered long after the Complainant has registered the IBM trade mark. The IBM trade mark is used by the Complainant to conduct its business and the Complainant has used the trade mark for its computer and computer-related goods and services for almost 100 years. The Panel is satisfied that the Respondent was aware of the Complainant and its IBM trade mark when he or she registered the disputed domain name. It appears to the Panel that the Respondent has registered the disputed domain name to attract Internet users to the website for commercial gain in accordance with paragraph 4(b)(iv) of the Policy.

The current advertisements for online gambling and pornography on the website that the disputed domain name resolves to establish the Respondent is making a commercial gain from the website by attracting users to generate click through revenue. Further, the pornographic materials on the website, tarnish the IBM trade mark. This has been found in previous UDRP cases to constitute evidence of registration and use of a domain name in bad faith. (See WIPO Overview 3.0, section 3.12)

It does appear that the Respondent also has a history of registering domain names in the English language. However, for the purposes of this decision it is not necessary to rely on these grounds as those set out in the foregoing paragraph are sufficient to find for the Complainant.

For the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.

The Complainant has therefore satisfied the third element under paragraph 4(a) 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 disputed domain name <ibmip.com> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: April 26, 2021