WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines Corporation v. Whois Privacy Protection Service by onamae.com / Jimothy Harold
Case No. D2018-1116
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 Whois Privacy Protection Service by onamae.com of Tokyo, Japan / Jimothy Harold of Bac Can, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <techibmcloudstn.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2018. On May 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 2018, 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 May 25, 2018 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 May 29, 2018.
On May 25, 2018, the Center transmitted an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on May 28, 2018. 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 Japanese of the Complaint, and the proceedings commenced on May 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2018.
The Center appointed Douglas Clark as the sole panelist in this matter on June 29, 2018. 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 has been operating a range of businesses for decades, mainly in relation to information technology-related goods and services. The Complainant is the proprietor of the “IBM” trademark in 170 countries, including international trademark registration no. 1079460, registered on December 21, 2010, designating Viet Nam and Japanese trademark registration no. 1226278-29, registered on July 27, 2006.
The Respondent is an individual apparently located in Viet Nam.
The disputed domain name initially resolved to a webpage that shows multiple blogposts regarding information technology-related articles. Currently, the disputed domain name is not accessible.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant contends that the disputed domain name <techibmcloudstn.com> incorporates the trademark IBM together with the generic terms “tech and “clouds” and the letters “tn” and is therefore confusingly similar to the Complainant’s trademark IBM.
No rights or legitimate interests
The Complainant submits it has no business or other relationships with the Respondent. The Respondent has not been granted either a license or other authorization to use the mark IBM nor to use it as part of for the disputed domain name. Further, there is no evidence that the Respondent has bona fide actual or contemplated use of the disputed domain name. Therefore, the Respondent has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
The Complainant submits that the Respondent should be well aware of its marks given that the disputed domain name was registered only recently. The Complainant submits that the extensive range of registered trademarks it owns, and its worldwide reputation means that the disputed domain name was registered in bad faith and has been used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceedings
The Language of the Registration Agreement is Japanese.
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 Complainant requests that the language of proceedings be English on the grounds that:
(1) the various blog entries on the webpage of the disputed domain name are entirely in English.
(2) the Respondent is at least familiar with English since the web host company is a firm of the United States of America.
(3) the Respondent owns 24 other domain names that constitute Latin characters and English words.
(4) the Respondent is more likely to understand English than Japanese since an address of Vietnam is listed on WhoIs, and Viet Nam was ranked 34th among countries with the top English language skills in the EF English Proficiency Index (EF EPI).
(5) the Respondent's name is disclosed as Jimothy Harold by registrar, which contains Latin characters and English words and is a common western name.
The Respondent did not make any submission as to the language of proceedings.
It is clear on the Respondent is able to communicate in English the contents of the webpage on the disputed domain name were entirely in English. It does not appear that the Respondent has any actual connection to Japan.
For the above reasons, the Panel determines the language of proceedings to be English.
6.2 Substantive Issues
The Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service 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 use in bad faith.
A. Identical or Confusingly Similar
The disputed domain name <techibmcloudstn.com>, is made up of “Tech” “IBM” “Clouds” and “TN”. The word “tech” is short for “technology”, “clouds” can be taken as a reference to cloud storage. “TN” does not have an apparent meaning. In determining confusing similarity the generic Top-level Domain Name (“gTLD”) “.com” is typically disregarded. As the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Accordingly, the Panel finds the disputed domain name is confusingly similar to the trademark IBM.
The first element of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name <techibmcloudstn.com> has been registered and used in bad faith.
The Respondent should have known of the Complainant’s trademark when it registered the disputed domain name as the Complainant had registered the IBM mark in various jurisdictions, including Viet Nam.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Having examined all the circumstances of this case, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. Hence, the third element of paragraph 4(a) of the Policy is established.
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 <techibmcloudstn.com> be transferred to the Complainant.
Date: July 19, 2018