WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines Corporation v. Noorinet
Case No. D2016-2353
1. The Parties
The Complainant is International Business Machines Corporation of Armonk, New York, United States of America (“United States”), internally represented.
The Respondent is Noorinet of Gyeongju, Gyeongsangbukdo, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <ibmsoftware.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2016. On November 18, 2016, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 2016, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On November 21, 2016, the Center notified the Parties, in both English and Korean, that the Complaint was submitted in English, and that according to the Registrar, the language of the Registration Agreement is Korean. In the same notification, the Center instructed the Complainant to provide, by November 24, 2016:
“1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or
2) submit the Complaint translated into Korean; or
3) submit a request for English to be the language of the administrative proceedings.”
To the Respondent, the Center stated that “if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by November 26, 2016.” The Center also advised the Respondent:
“Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials … as to why the proceedings should not be conducted in English.
Please note that if we do not hear from you by [November 26, 2016], we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.”
On November 23, 2016, the Complainant requested that the proceeding be conducted in English, and submitted its reasons, to which the Respondent did not reply.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2016. In accordance with the Rules, paragraph 5, the due date for the Response was December 22, 2016. The Respondent did not submit any response before this deadline. Accordingly, the Center notified the Respondent’s default on December 23, 2016. On December 30, 2016, the Respondent requested from the Center a “re-scheduling” of the deadline for the Response. On January 3, 2017, the Center, in both Korean and English: acknowledged receipt of the Respondent’s message of December 30, 2016; reminded that the deadline for the Response was December 22, 2016; and stated that “if the Center receives Supplemental Filings from parties it will be forwarded to the Panel (upon appointment) and it will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision ….”
On January 4, 2017, the Respondent transmitted its Response, in Korean.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on January 20, 2017. 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.
On January 20, 2017, the Complainant sent an email to the Center inquiring, “Is there any way to add [another] domain [name] to the proceeding?” As no formal request was submitted by the Complainant following the Center’s reply, which referred to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraphs 4.8 and 4.10, the Panel proceeds to a decision based on the Complaint as filed.
4. Factual Background
The Complainant describes itself as “a leading innovator in the design and manufacture of a wide array of products that record, process, communicate, store and retrieve information, including computers and computer hardware, software and accessories.” For decades, the Complainant has offered its products and services under the mark, IBM. It has multiple registrations of the IBM mark in various countries, including the United States (on June 16, 1992, August 25, 1998, and September 27, 2005, among others) and the Republic of Korea (on December 22, 1999).
The Respondent registered the disputed domain name <ibmsoftware.com> on March 6, 2010. The disputed domain name resolves to a parking page with pay-per-click links.
5. Parties’ Contentions
The Complainant contends principally that: (i) the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights; (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.
In addition, the Complaint states, inter alia:
“[T]he IBM trademark is a world famous trademark.”
“Complainant’s name and the IBM trademark are famous and valuable assets.”
“The Respondent has not been licensed, contracted or otherwise permitted by the Complainant in any way to use the ‘IBM’ mark or to apply for any domain name incorporating the ‘IBM’ mark, nor has the Complainant acquiesced in any way to such use or application of the ‘IBM’ mark by the Respondent.”
“Respondent was well aware of Complainant’s trademark at the time Respondent registered the domain name www.ibmsoftware.com on 06 March 2010.”
“Complainant sent a cease and desist letter to Respondent … on 29 August 2016 asking Respondent to disable and transfer the domain name back to IBM. Respondent failed to reply. Complainant sent a second cease and desist letter to Respondent … on 27 September 2016. Again, Respondent failed to reply.”
“Respondent is using the domain name to attract visitors to its website and increase traffic with the IBM mark. Respondent intentionally uses the domain name to list pay-per-click advertisements using words such as ‘IBM Aix,’ ‘IBM Infosphere,’ ‘IBM Server,’ and ‘IBM Cloud.’”
The Respondent submitted its Response after the deadline. In essence, the Response asserts that: the Respondent registered and continuously renewed and maintained the disputed domain name for seven years; the Complainant has no trademark rights in “ibmsoftware”; the Respondent’s domain name is <ibmsoftware.com>, not <ibm.com>; and the Respondent has not profited from the website associated with its domain name.
6. Discussion and Findings
Language of the Proceeding
Under paragraph 11(a) of the Rules, the language of the Registration Agreement is the language of the administrative proceeding, unless otherwise agreed by the Parties or specified in the Registration Agreement. But the rule also provides that the determination of the language is “subject to the authority of the Panel …, having regard to the circumstances of the administrative proceeding.” Here, the language of the Registration Agreement is Korean. Nevertheless, the Complainant requests that the language of the proceeding be English. The Complainant argues that the Respondent has been a party to previous UDRP disputes in which panels decided that English was the language of the proceeding, and that the Complainant would be unfairly disadvantaged if this proceeding is in Korean. The Panel notes that the Respondent did not respond timely to the Center’s instructions regarding the language of the proceeding. Considering all relevant circumstances, the Panel determines that English is the language of the proceeding.
Delay in Commencement of Proceeding
As the Respondent notes, the Complaint was filed more than six years after the registration of the disputed domain name. This is not fatal for the Complainant. “[T]he doctrine or defense of laches as such does not generally apply under the UDRP, and delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP ….” WIPO Overview 2.0, paragraph 4.10.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) requires the Complainant to show that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights. The Complainant has rights in the mark, IBM. The three-letter mark is distinctive, widely-known, and readily identified with the Complainant’s products and services. The Panel determines that the disputed domain name <ibmsoftware.com> is identical or confusingly similar to the Complainant’s IBM mark. “IBM” begins the disputed domain name and has a predominant presence therein. The addition of a generic term to a mark within a domain name does not defeat confusing similarity. WIPO Overview 2.0, paragraph 1.9. Here, the generic term refers to a line of the Complainant’s products.
The first element is demonstrated.
B. Rights or Legitimate Interests
The Complainant states that it has not authorized the Respondent to use the Complainant’s protected trademark. The Complainant has met its initial burden of making a prima facie showing. The burden shifts to the Respondent to demonstrate any such rights or legitimate interests. The Respondent has not met its burden. The Panel is unable to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name, as described in paragraph 4(c) of the Policy, or otherwise.
The second element is satisfied.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii), the Complainant must show that the disputed domain name “has been registered and is being used in bad faith.” Paragraph 4(b) provides a non-exhaustive list of circumstances that are “evidence of the registration and use of a domain name in bad faith.”
It is difficult for the Panel to imagine that the Respondent registered the disputed domain name <ibmsoftware.com> without knowledge of the Complainant computer company. Moreover, the disputed domain name here resolves to a site that contains links for, among others, “IBM Server”, “IBM Big Data”, “IBM Datapower”, and “Cloud Server”. Resort to these links lead to other links, some of which display the IBM mark at the top. The Panel concludes that the Respondent “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site … by creating a likelihood of confusion with the [C]omplainant’s mark,” as set forth in paragraph 4(b)(iv) of the Policy.
The third element is also demonstrated.
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 <ibmsoftware.com> be transferred to the Complainant.
Date: February 3, 2017