WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kyndryl Holdings Inc. v. 石磊 (Lei Shi)

Case No. D2021-4218

1. The Parties

The Complainant is Kyndryl Holdings Inc., United States of America (“United States”), represented by Demys Limited, United Kingdom.

The Respondent is 石磊 (Lei Shi), China.

2. The Domain Name and Registrar

The disputed domain name <wwwkyndryl.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 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 December 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 amended Complaint in English on December 20, 2021.

On December 17, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On December 20, 2021, the Complainant confirmed its 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 amended 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 December 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 16, 2022.

The Center appointed Matthew Kennedy as the sole panelist in this matter on January 24, 2022. 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 is an information technology (“IT”) service provider. It provides technology infrastructure systems such as cloud services, artificial intelligence, digital workplaces, hybrid IT environments and other emerging technology solutions. The Complainant was formed as a spin-off of the managed infrastructure services unit of the global technology services division of International Business Machines Corporation (“IBM”). On April 12, 2021 IBM issued a press release announcing that the name of the Complainant would be “Kyndryl”, derived from the English words “kinship” and “tendril”. This announcement was widely reported on the same day, including by Bloomberg, the Financial Post, IT World Canada, Nasdaq and Reuters. The disputed domain name <kyndryl.com> was registered on February 26, 2021, which the Complainant uses in connection with a website where it provides information about itself and its services. The Complainant holds Benelux trademark registration number 1453872 for KYNDRYL, registered on November 16, 2021 (based on an application filed on November 15, 2021), specifying goods in class 16. That trademark registration remains current.

The Respondent is an individual resident in China. According to evidence presented by the Complainant, multiple panels in prior proceedings under the Policy have found that the Respondent registered and was using other domain names in bad faith. See, for example, Sanofi v. Lei Shi, WIPO Case No. D2019-2476; Accenture Global Services Limited v. 石磊 (Lei Shi), WIPO Case No. D2020-1568; Accor v. 石磊 (Lei Shi), WIPO Case No. D2021-0958; Sodexo v. 石磊 (Lei Shi), WIPO Case No. D2021-1747; Accenture Global Services Limited v. Redacted For Privacy, Redacted For Privacy / Lei Shi (石磊), WIPO Case No. D2021-1911; Asurion, LLC v. 石磊 (Lei Shi), WIPO Case No. DCO2020-0057; 谷歌有限责任公司 (Google LLC) v 石磊 (Lei Shi), WIPO Case No. DCO2020-0030.

The disputed domain name was registered on April 13, 2021. It resolves to a landing page displaying Pay-Per-Click (“PPC”) links for, among other things, “User Authentication Software” and “Private Server”. According to Mail Exchange (“MX”) records submitted by the Complainant, the disputed domain name is configured for use with email.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s KYNDRYL trademark. The Complainant owns registered and unregistered rights in that mark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has found no evidence that the Respondent has been commonly known by the name “wwwkyndryl” or “Kyndryl”. The Respondent is not a licensee of the Complainant and has not received any permission, consent or acquiescence from the Complainant to use its name or marks in association with the registration of domain name, service or product. The disputed domain name is used for commercial purposes through its association with PPC advertising links.

The disputed domain name was registered and is being used in bad faith. Tthe disputed domain name was registered as a typographical variation of the Complainant’s name and marks. The PPC advertising links capitalize on the value of the Complainant’s name and marks. The disputed domain name was registered one day after IBM announced the Complainant’s name. Such timing, combined with the uniqueness of the Complainant’s name, are strongly indicative that bad faith motivations were more likely than not at the point of registration. The Respondent has engaged in a pattern of bad faith registrations and the disputed domain name is part of this pattern.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “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”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name is made up of the Complainant’s English-language name and mark and the website associated with the disputed domain name is exclusively in the English language which make it more likely than not that the Respondent is familiar with the English language, while the Complainant will be put to great expense and inconvenience to translate its submissions into a language other than English.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint was filed in English. Despite the Center having sent an email regarding the language of the proceeding and a notice of the Complaint in both Chinese and English, the Respondent did not comment on the issue of language or express any interest in participating otherwise in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas accepting it in English does not create unfairness to either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response filed in Chinese, but none was filed.

6.2. Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

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

(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

Based on the evidence presented, the Panel finds that the Complainant had registered rights in the KYNDRYL mark at the time of filing the Complaint.

The disputed domain name wholly incorporates the KYNDRYL mark, preceded by the letters “www”. The KYNDRYL trademark remains clearly recognizable within the disputed domain name. Moreover, the omission of a full stop between the “www” prefix and a domain name is a common typographical error. Accordingly, the addition of those letters without a full stop does not dispel confusing similarity between the disputed domain name and the trademark that follows. See BHP Billiton Innovation Pty Ltd v. Yorkshire Enterprises Limited and Whois Privacy Services Pty Ltd, WIPO Case No. D2009-1558; Compagnie Gervais Danone, Bonafont S.A de C.V v. PrivacyProtect.org, WIPO Case No. D2009-1659.

The only additional element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix (“.com”) which, as a mere technical requirement of domain name registration, may be disregarded in the comparison between the disputed domain name and the Complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

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

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

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

As regards the first and third circumstances set out above, the disputed domain name resolves to a landing page displaying PPC links. The Complainant submits that the Respondent is not a licensee of the Complainant and has not received any permission, consent or acquiescence from the Complainant to use its name or marks in association with the registration of any domain name, service or product. There appears to be no reason to register the disputed domain name <wwwkyndryl.com> other than to take advantage of Internet users who mistype the website address “www.kyndryl.com” (so-called “typosquatting”). That does not constitute a bona fide offering of goods or services for the purposes of the Policy. This use is either for the commercial gain of the Respondent, if he is paid to redirect traffic to the linked websites, or the operators of the linked websites, or both. This is not a legitimate noncommercial or fair use of the disputed domain name.

As regards the second circumstance set out above, the Respondent’s name is “石磊 (Lei Shi)”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because he did not respond to the Complainant’s contentions.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These circumstances are not exhaustive. The fourth circumstance is as follows:

(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

As regards registration, the disputed domain name was registered on April 13, 2021 prior to the Complainant’s registration of its KYNDRYL trademark. The Panel recalls that, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. See WIPO Overview 3.0, section 3.8.1. However, there is an exception to that general proposition in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the disputed domain name was to capitalize unfairly on the complainant’s nascent trademark rights. See WIPO Overview 3.0, section 3.8.2, and, for example, Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598; and General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845.

The Panel considers the circumstances of the present case to be exceptional. The disputed domain name wholly incorporates the Complainant’s KYNDRYL trademark, which is a coined word. The registration of the disputed domain name is a case of typosquatting of the Complainant’s website address “www.kyndryl.com“. There appears to be no plausible reason to register the disputed domain name other than to take advantage of Internet users who mistype that address in a browser. The disputed domain name was registered on the day following IBM’s widely reported announcement that the Complainant would be named “Kyndryl”. These facts give the Panel reason to find that the Respondent registered the disputed domain name in anticipation of the Complainant’s nascent trademark rights in that name. The Respondent provides no alternative explanation for his registration of the disputed domain name. Therefore, in this exceptional scenario, the Panel finds that the Respondent registered the disputed domain name in bad faith.

As regards use, the disputed domain name is used to attract Internet users who misspell the Complainant’s official website address and direct them to a landing page displaying PPC links, at least one of which appears to relate to the type of services that the Complainant provides. The disputed domain name operates by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites to which it resolves. This use is intentional and either for the Respondent’s own commercial gain, if he is paid to direct traffic to the linked websites, or for the commercial gain of the operators of those linked websites, or both. In each scenario, these facts satisfy the requirements of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 <wwwkyndryl.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: February 7, 2022