WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines Corporation v. Mostafa Zaghloul, sa
Case No. D2014-1736
1. The Parties
The Complainant is International Business Machines Corporation of Armonk, New York, United States of America, represented internally.
The Respondent is Mostafa Zaghloul, sa of Egypt.
2. The Domain Name and Registrar
The disputed domain name, <softlayer.info> (the “Domain Name”), is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2014. On October 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 4, 2014, 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 October 7, 2014, 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 on October 7, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2014.
On October 13, 2014, the Center received a couple of email communications from the Respondent in which the Respondent asked the questions: “Hi, What do you want to close this case?” and “What do you need from me now to close this case?”. On the same day, the Center acknowledged receipt of these email communications and invited the Complainant to comment if it wished to suspend the proceedings to explore possible settlement with the Respondent. On October 15, 2014, the Complainant indicated to the Center that it did not want to suspend the proceedings. On October 29, 2014, not having received any formal Response from the Respondent, the Center informed the parties that it would proceed with the panel appointment.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 3, 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.
In its response to the Registrar’s request for registrar verification (see above), the Registrar identified the registrant of the Domain Name as “sa”, which appeared in the .info registry’s Whois WhoIs as the registrant organization. By its amended Complaint the Complainant inserted a reference to “sa”. For the purposes of this decision the Panel treats the named “Mostafa Zaghloul” and the registrant organization, “sa”, as one and the same and all references hereafter to the “Respondent” are references to both of them.
4. Factual Background
The Complainant is a New York based corporation, better known by its acronym “IBM”.
In July 2013 the Complainant acquired Softlayer Technologies Inc. (“Softlayer”), a cloud computing infrastructure company based in Texas, United States of America. The acquisition received worldwide business media attention at the time.
Softlayer is a wholly-owned subsidiary of the Complainant and is the registered proprietor of several SOFTLAYER trade mark registrations in the United States of America and elsewhere, including by way of example United States registration No. 3,714,244 SOFTLAYER registered November 24, 2009 in classes 35, 38 and 42 for a wide variety of Internet related services.
The Respondent registered the Domain Name on July 4, 2014. It is connected to a “free” Pay-Per-Click parking page hosted by the Registrar and featuring a variety of sponsored listings, many of which are Internet related.
The Complainant wrote to the Respondent on July 21, 2014 drawing the Respondent’s attention to the Complainant’s rights in respect of the SOFTLAYER trade mark and seeking inter alia transfer of the Domain Name. The Respondent failed to respond so the Complainant sent a “chaser” on August 11, 2014. The Respondent responded on September 3, 2014 stating that he would transfer the Domain Name for USD 500. In the ensuing correspondence the Complainant expressed a willingness to reimburse the Respondent his reasonable out-of-pocket expenses up to USD 250, but the Respondent held firm to his demand for USD 500.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the SOFTLAYER trade mark registrations owned by the Complainant’s wholly-owned subsidiary company, Softlayer; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name was registered and is being used in bad faith.
The Respondent did not respond to the Complaint.
6. Discussion and Findings
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 has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The trade mark upon which the Complainant relies is SOFTLAYER, a trade mark which is registered in the United States of America and elsewhere. The Domain Name is identical to that trade mark if, as the Panel is permitted to do, the Panel ignores the “.info” generic top level identifier, but is SOFTLAYER a trade mark in which the Complainant has rights?
As indicated in section 4 above, the proprietor of the SOFTLAYER trade mark registrations is not the Complainant, but the Complainant’s wholly-owned subsidiary, Softlayer. Can a parent company be said to have trade mark rights in respect of a trade mark held by a subsidiary?
The issue is addressed in paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”):
“1.8 Can a trademark licensee or a related company to a trademark holder have rights in a trademark for the purpose of filing a UDRP case?
Consensus view: In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding. Panels have in certain cases been prepared to infer the existence of a license and/or authorization from the particular facts, but in general, relevant evidence is desirable. Although not a requirement, panels have on occasion found it helpful, where a complaint relies on a common source of trademark rights, for all relevant rights holders to be included as co-complainants.”
While the Complainant has produced no evidence of any express licence, the Panel is satisfied that the Complainant has parental control over Softlayer and indeed the Complainant has produced practical evidence of the existence of a mutual licensing arrangement. The Softlayer name on the Softlayer website is accompanied by the legend “an IBM Company”.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant asserts that neither it nor its Softlayer subsidiary has ever had any connection or association with the Respondent; nor has the Respondent been granted any permission to use the SOFTLAYER trade mark for the Domain Name or for any other purpose. The Complainant further asserts on the evidence available to it that none of the circumstances giving rise to rights or legitimate interests for this purpose as set out in paragraph 4(c) of the Policy is applicable.
The Panel is satisfied that the Complainant has set out a sufficient prima facie case calling for an answer from the Respondent.
On the evidence before it, the Panel cannot conceive of any reason why the Respondent could reasonably be said to possess rights or legitimate interests in respect of the Domain Name and, in the absence of any explanation from the Respondent, finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Complainant points to its worldwide fame and asserts that it is not surprising that news of its acquisition of Softlayer would have reached Egypt, where the Respondent resides.
The Complainant points to its exchange of correspondence with the Respondent (see section 4 above) and contends that the Respondent registered the Domain Name hoping and anticipating an approach from Softlayer or the Complainant, thereby providing the Respondent with an opportunity to sell the Domain Name to the Complainant at a profit (paragraph 4(b)(i) of the Policy).
The Complainant also contends that the Domain Name is connected to a Pay-Per-Click parking page, whereby the Respondent is generating click through revenue.
The Respondent has had opportunity to respond to the Complainant’s allegations both in earlier correspondence and in the course of these administrative proceedings. The responses from the Respondent, such as they have been (see Sections 3 and 4 above), have not attempted to address the substance of the Complainant’s contentions.
In the absence of any explanation from the Respondent the Panel finds that the Respondent registered the Domain Name with knowledge of the SOFTLAYER trade mark and with intent to exploit the value of that trade mark by way of the Domain Name. The Panel believes it likely that the Respondent’s primary aim was to sell the Domain Name to the Complainant at a profit.
It is unnecessary therefore for the Panel to address the allegation that “the Respondent is using the website as an ad farm to generate click through revenue”.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
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, <softlayer.info>, be transferred to the Complainant.
Date: November 5, 2014