WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Business Machines Corporation (IBM) v. Lingji Xiang

Case No. D2021-3944

1. The Parties

The Complainant is International Business Machines Corporation (“IBM”), United States of America (“United States”), represented internally.

The Respondent is Lingji Xiang, China.

2. The Domain Name and Registrar

The disputed domain name <51-ibm.com> is registered with Flappy Domain, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2021. On November 25, 2021, 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 confirming that the Respondent is listed as the registrant and providing the contact details.

On December 17, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on December 20, 2021. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese, and the proceedings commenced on December 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2022.

The Center appointed Douglas Clark as the sole panelist in this matter on February 7, 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

Incorporated on June 16, 1911, the Complainant is a multinational manufacturer of computer and computer-related goods and services throughout the world and produces a wide variety of products that process, communicate, store, and retrieve information. The Complainant is also one of the largest companies in the world.

The Complainant officially began using the name “International Business Machines” on February 14, 1924, and has been offering products under the IBM trade mark ever since. Such products include office and research equipment such as punch machines, calculating machines, clocks and scales, but has since expanded to include computers and computer hardware, software and accessories. The IBM trade mark has been valued as worth over USD 83 billion in 2020, USD 86 billion in 2019 and USD 96 billion in 2018. The Complainant also spends over USD 1 billion annually marketing its goods and services using the IBM trade mark and has undertaken to protect its name and enforce the trade mark.

The Complainant owns and has owned registrations for the IBM trade mark in 131 countries for several decades. In particular, the Complainant owns the following IBM trade mark registrations in the United States and China:

The disputed domain name <51-ibm.com> was registered on May 17, 2021. At the date of the Complaint, the disputed domain name resolved to a website containing pornography and online gambling services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The disputed domain name is confusingly similar to its trade mark IBM. The addition of the terms “51”, “-”, and “.com” in the disputed domain name does not eliminate the overall notion that the designation is connected to the trade mark and the likelihood of confusion that the disputed domain name and the trade mark are associated;

(b) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant in any way and the Complainant has never granted any authorization or license to use the Complainant’s trade mark. The Respondent is not commonly known by the disputed domain name, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name; and

(c) The disputed domain name was registered and is being used in bad faith. The Respondent was aware of the Complainant’s trade mark at the time the Respondent registered the disputed domain name and has actively used the IBM trade mark to increase Internet user traffic. The Respondent is using the disputed domain name to attract Internet users for illegitimate commercial gain (including hosting pornography and gambling services), creating a likelihood of confusion with the Complainant’s trade mark.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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 Chinese.

The Complainant requests that the language of the proceedings be English on the grounds that (i) the Complainant is an American Company and does not understand Chinese, and (ii) English is the primary language for international relations and it is one of the working languages of the Center (iii) a disclaimer on the website under the disputed domain name states the website is based in the United States clearly suggesting the Respondent can read and understand English.

The Respondent did not respond to this request.

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 Center made a preliminary determination to:

1) accept the Complaint as filed in English;
2) accept a Response in either Chinese or English;
3) appoint a Panel familiar with both languages mentioned above, if available.

The final determination of the language of the proceedings lies with this Panel.

The Respondent did not respond to the Center’s preliminary determination.

This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceedings “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.

The fact that the Respondent claims to be based in United States prima facie suggests it can understand English. This has not been rebutted by the Respondent. Further, as set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. This factor leads the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <51-ibm.com> is confusingly similar to the Complainant’s trade mark. The disputed domain name incorporates the Complainant’s IBM trade mark in full with the number “51” added to it. “51” is merely descriptive and does not prevent a finding of confusing similarity. The generic Top-Level Domain (“gTLD”) “.com” is generally disregarded when considering the first element.

The Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain name.

Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Complainant has asserted that the Respondent has no business with and is in no way affiliated with the Complainant. The Respondent is not authorized nor licensed to use the Complainant’s IBM trade mark or to apply for registration of the disputed domain name. There is no evidence that “IBM” or “51-IBM” is the name of the Respondent’s corporate entity. Furthermore, there is no evidence that the Respondent has used or is planning to use the IBM trade mark or the disputed domain name for a bona fide offering of goods and services. In addition, the Respondent has not responded to any of the Complainant’s contentions. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, which has not been rebutted by the Respondent.

Accordingly, the Respondent has no rights or legitimate interests in regard to the disputed domain name.

The Complainant has therefore satisfied the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Based on the given evidence, the disputed domain name was registered and is being used in bad faith.

The disputed domain name was registered long after the Complainant has registered the IBM trade mark. The IBM trade mark is used by the Complainant to conduct its business and the Complainant has used the trade mark for its computer and computer-related goods and services for almost 100 years. The Panel is satisfied that the Respondent was aware of the Complainant and its IBM trade mark when it registered the disputed domain name. It appears to the Panel that the Respondent has registered the disputed domain name to attract Internet users to the website for commercial gain in accordance with paragraph 4(b)(iv) of the Policy.

The pornography and online gambling services and links to other websites that host pornographic material and/or provide online gambling services on the website that the disputed domain name resolves to establish the Respondent is making a commercial gain from the website by attracting users to generate click through revenue. Nothing on the Respondent’s website or anything else suggest that “IBM” and “51-IBM” relate to pornography or online gambling. Further, the pornographic materials on the website tarnish the IBM trademark. This has been found in previous UDRP cases to constitute evidence of registration and use of a domain name in bad faith. (See section 3.12 of WIPO Overview 3.0)

For the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.

The Complainant has therefore satisfied the third element under 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 <51-ibm.com> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: February 21, 2022