WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines Corporation v. Hulmiho Ukolen, Poste restante / Whois protection, this company does not own this domain name s.r.o.
Case No. D2016-0667
1. The Parties
1.1 The Complainant is International Business Machines Corporation of Armonk, New York, United States of America, represented internally.
1.2 The Respondent is Hulmiho Ukolen, Poste restante of Helsinki, Finland / Whois protection, this company does not own this domain name s.r.o. of Prague, Czech Republic.
2. The Domain Name and Registrar
2.1 The disputed domain name <ibmwatsonhealth.com> (the "Domain Name") is registered with Hebei Guoji Maoyi (Shanghai) Ltd aka Hebei International Trading (Shanghai) Co., Ltd dba HebeiDomains.com (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 6, 2016. At that time the publically available WhoIs details for the Domain Name identified "Whois protection, this company does not own this domain name s.r.o.", a company that appeared to be based in the Czech Republic and which appears to provide privacy services, as the registrant of the Domain Name.
3.2 On April 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 7, 2016, the Registrar transmitted by email to the Center its verification response disclosing the underlying registrant and contact information for the Domain Name. In that verification response the Registrar stated that the language of the registration agreement that applied to the Domain Name was Finnish.
3.3 The Center sent an email communication to the Complainant on April 8, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day the Center also sent an email to the parties in both English and Finnish regarding the language of the proceedings. In that email the Center set out the options available to the Complainant so far as language was concerned, one of which was to make a request (supported by appropriate argument and materials) that the proceedings be conducted in English. The email also explained to the Respondent that he could file an objection (again supported by appropriate argument and materials) to any application that the proceedings take place in English.
3.4 The Complainant filed an amended Complaint on April 13, 2016 and submitted a request that the proceedings be in English. In response to a request for clarification sent by the Center, the Complainant filed a revised amended Complaint on April 18, 2016. The Respondent did not file any objection or submissions in respect of the issue of the language of the proceedings.
3.5 The Center verified that the Complaint as amended 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").
3.6 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 10, 2016.
3.7 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 23, 2016. 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
4.1 The Complainant is the very well known information technology company. It can trace its roots to the 1880s and in 2015 was the 24th largest firm in the United States. The company adopted the name "International Business Machines" in February 1924 and has since that date used the term "IBM" in respect of its products and services. It spends in excess of USD 1 billion dollars each year marketing its services under that name.
4.2 It is the owner of various trade marks that incorporate the term "IBM". These include:
(i) United States registered trade mark no. 1,058,803 for the word mark IBM in various classes registered on February 15, 1977;
(ii) International trade mark no 1,108,810 registered September 21, 2011 for the word mark IBM WATSON in classes 9, 35, 38 and 42 based upon an earlier Japanese application. That mark is currently in force in one form or another in 10 territories, including the United States and the European Union.
4.3 Although this is not explained in any particular detail in the Complaint, the Panel understands "Watson" to be the name of the Complainant's question answering computer system that is capable of answering questions posed in natural language.
4.4 On August 6, 2015 the Complainant issued a press release announcing its acquisition of Merge Healthcare Incorporate. The text of the press release contained the following statement:
"IBM (NYSE: IBM) today announced that Watson will gain the ability to "see" by bringing together Watson's advanced image analytics and cognitive capabilities with data and images obtained from Merge Healthcare Incorporated's (NASDAQ: MRGE) medical imaging management platform. IBM plans to acquire Merge a leading provider of medical image handling and processing, interoperability and clinical systems designed to advance healthcare quality and efficiency, in an effort to unlock the value of medical images to help physicians make better patient care decisions."
4.5 The Domain Name was registered on September 5, 2015. The registration details revealed for the Domain Name by the Registrar suggest that the Respondent is a person in Finland, but whether there is a real individual in Finland is for the reasons that will be explained later on in this decision, in doubt.
4.6 The Domain Name has been used for a webpage that displays pay-per-click searches and advertisements. The related links displayed on that page have included "Electronic Health Records", "IBM Big Data", "Watson" and "Health Care Analytics".
4.7 Cease and desist letters were sent by the Complainant by email on November 10, 2015 and December 2, 2015 using the contact details for the registrant recorded in the publically WhoIs details available for the Domain Name. The Complainant received no response to those emails. However, at some point the Respondent listed the Domain Name for sale for the price of USD 4,750.
5. Parties' Contentions
5.1 The Complaint (as amended) first addresses the Complainant's request that these proceedings proceed in English. It appears to question whether the Respondent is Finnish and the WhoIs details for the Domain Name would suggest, relying upon the decision of the panel in Accenture Global Services Limited v. Hulmiho Ukolen, Poste restante / Domain Admin, Whois protection, WIPO Case No. D2015-1519, which it claims was a case brought against the same respondent. It also claims that the Complainant is unable to communicate in Finnish and for it to have to do so in these proceedings would involve "substantial and disproportionately high costs".
5.2 It further contends that previous decisions suggest that the Respondent understands English and that in any event English is an appropriate language for the proceedings given that the web page operating from the Domain Name was in English and the Domain Name itself incorporates English words.
5.3 The Complainant then goes on to address the substantive issues in these proceedings. It describes its business and asserts that as a result of its activities its IBM trade mark is world famous. It contends that the Domain Name is identical and confusingly similar to its IBM trade mark rights.
5.4 It further alleges that the Respondent has no rights or legitimate interests in the Domain Name contending that it has not authorised the Respondent's registration of the Domain Name and that none of the examples of rights or legitimate interests set out in paragraph 4(c) of the Policy apply.
5.5 The Complainant also contends that the Respondent must have been aware of the Complainant's trade mark at the time that it was registered. It claims that the use the pay-per-click use of the Domain Name following registration and the fact that the Domain Name has been offered for sale demonstrates bad faith registration and use.
5.6 The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a formal Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel shall "draw such inferences therefrom as it considers appropriate".
6.4 The Panel will address each of these issues in turn, but before it does so it is necessary to address the Complainant's request that these proceedings should proceed in English.
A. The Language of these proceedings
6.5 The appropriate language of proceedings under the Policy and when and in what circumstances a panel can exercise its powers under paragraph 11 of the Rules to order that some other language shall apply, is an issue that is addressed in paragraph 4.3 of the of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). This states:
"Recognizing the practical need which may arise for a preliminary determination of the language of proceeding prior to their appointment, panels have found that, in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement. Such acceptance is subject to the panel's authority to determine the appropriate language of the proceeding on appointment. Likewise, in appropriate circumstances, a response in a language different from that of the complainant may be accepted.
In order to preserve the panel's discretion under paragraph 11 of the UDRP Rules to determine the appropriate language of proceedings in such cases, where a complainant files a complaint in a language other than that of the registration agreement, the WIPO Center will notify both parties (in all relevant languages wherever possible) of the potential language issue, inviting the complainant to either translate the complaint or, if not submitted already, to submit a supported request (e.g., by reference to prior party communication, website language, or respondent identity) that the complaint be accepted in language filed, and that such be the language of proceedings, and similarly providing the respondent with an opportunity to comment on or object to any such language request that may be made by the complainant. If the complainant elects not to translate but rather to submit a supported language request, such request and any comments that may be received from the respondent would normally be placed before the panel for determination of the language issue upon the panel's appointment. The panel, having made such determination, would have power to order any further procedural steps (up to and including ordering the translation of the complaint) it would deem necessary. In such cases, prior to appointment and determination by the panel, the WIPO Center would (wherever possible) send its communications to the parties in 'dual language' (i.e., in both the language of the registration agreement, and the language of the complaint)."
6.6 Although the Panel has a broad discretion under paragraph 11 of the Rules, the Panel is unpersuaded that the fact that the conduct of proceedings in a language different from the native language of the Complainant would involve "substantial and disproportionately high costs" will necessarily by itself be a good reason to order that the proceedings should be in a language other than the registration agreement.
6.7 However, in Accenture Global Services Limited v. Hulmiho Ukolen, Poste restante / Domain Admin, Whois protection, supra, also involving the Respondent, the panel held as follows:
"As stated above, on September 14, 2015, the Center notified the Parties in both English and Finnish that the language of the Registration Agreement for the disputed domain name was Finnish. The Complainant requested that the language of the proceeding should be English. The Respondent made no objection to this request. The Respondent Hulmiho Ukolen does not appear to be a Finnish name, and the Finnish Population Register contains no reference to any resident of Finland under either the first name or surname Hulmiho or Ukolen. Further, the websites to which the disputed domain name has resolved are in the English language. In the Panel's opinion, requiring the Complainant to submit its Complaint in Finnish in these circumstances would be unduly onerous. The Panel therefore exercises its discretion under paragraph 11 of the Rules and decides that the language of the proceeding in the present case should be English."
6.8 The Complainant has made the same allegations in this case regarding the name of the Respondent and this allegation has not been disputed by the Respondent. There would be no point in insisting on the language of the proceedings being Finnish if this is not the native language of the Respondent. Similarly, the Respondent in this case has not objected to the proceedings being conducted in English when he had ample opportunity to do so (including in Finnish, if "he" so chose) and the webpage displayed from the Domain Name has also been in English. There is also the additional factor that the Domain Name includes the ordinary English word "health" and the English name "Watson". For all these reasons, the Panel has decided that the language of the present proceedings should be English.
B. Identical or Confusingly Similar
6.9 The Domain Name in this case can only be sensibly read as the term "ibm" combined with the words "watson" and "health" and the ".com" Top-Level Domain. The Complainant owns registered trade marks in various jurisdictions for IBM and the additions in the Domain Name do not so detract from the IBM element so as to prevent a finding of confusing similarity under the Policy. There is also the fact that the Complaint also owns registered trade marks for IBM WATSON and there is an even greater similarity between that mark and the Domain Name. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
6.10 For the reasons that are explained in greater detail when considering the issue of bad faith registration and use later on in this decision, the Panel has formed the view that the Domain Name was registered and has subsequently been held by the Respondent with the intention of taking some form of unfair advantage of the reputation of the Complainant's business and trade marks. Such use does not provide a right or legitimate interest for the purposes of the Policy and in the opinion of the Panel provides evidence that the Respondent has no such right or legitimate interest exists.
6.11 The Panel therefore finds that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
6.12 The Panel accepts the Complainant's claim that the term IBM is so well known that the Respondent is likely to have known about that trade mark before he registered the Domain Name. This is confirmed by the fact that the words "Ibm" and "Watson" and "Health" that appear in the Domain Name can only be sensibly understood as a reference to the Complainant's "Watson" product and the application of that product to the health sector.
6.13 Further, the Panel has little hesitation in concluding that the Domain Name was registered and then used by the Respondent in a manner that sought to take some unfair advantage of the Complainant's rights. First, there is the pay-per-click use made of the Domain Name with the display of suggested links that seems to have been directed to the business of the Complainant or its competitors. This is bad faith use falling within the scope of paragraph 4(b)(iv) of the Policy. Second, there is the offer for sale of the Domain Name. Third, this is a case where it is difficult to conceive of any use of the Domain Name that would not involve bad faith use (as to which see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 as elaborated upon by the three person panel in Mr. Talus Taylor, Mrs. Anette Tison v. Vicent George Warning/Fayalobi Interaction Management, WIPO Case No. D2008-0455).
6.14 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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 <ibmwatsonhealth.com> be transferred to the Complainant.
Matthew S. Harris
Date: May 27, 2016