URS FINAL DETERMINATION

 

IBM Corporation v. ren ke xun et al.

Claim Number: FA1603001666243

 

DOMAIN NAME

<ibmall.xyz>

 

PARTIES

Complainant: IBM Corporation of Armonk, New York, United States of America.

 

Respondent: ren ke xun of zi boshi, BJ, International, CN.

 

ren ke xun of zi boshi, China.

 

域名申诉 of shandongsheng, China.

 

REGISTRIES and REGISTRARS

Registries: XYZ.COM LLC

Registrars: Chengdu West Dimension Digital Technology Co., Ltd.

 

EXAMINER

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.

 

Jonathan Agmon, as Examiner.

 

PROCEDURAL HISTORY

Complainant submitted: March 17, 2016

Commencement: March 18, 2016     

Response Date: March 18, 2016

 

Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

 

LANGUAGE OF THE PROCEEDINGS

 

Rule 11(a) of the Rules provide 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.” Two of the Registration Agreement of the disputed domain names are in the Chinese language. The Complainant submitted the Complaint in English. The Respondent submitted the Response in Chinese. Some of the documents in this case are in English and some in Chinese and it is clear that the disputed domain name uses English characters and that the website under the disputed domain name was operated in English. Taking regard of the circumstances of this case, including, but not limited to the language of the Registration Agreement and the proceedings, the language of this decision will be English.

 

 

RELIEF SOUGHT

Complainant requests that the domain name be suspended for the life of the registration.

 

STANDARD OF REVIEW

Clear and convincing evidence.

 

FINDINGS and DISCUSSION

 

Complainant, IBM Corporation of Armonk, New York, United States of America is a multinational technology and consulting corporation.

 

Complainant is the owner of the mark – IBM, worldwide for many years, including U.S. Reg. No. 1,205,090 – IBM, with the registration date of December 13, 2006;

Chinese Reg. No. 5,744,987, with the registration date of August 17, 1982; Chinese Reg. No 5,744,981, with the registration date of December 14, 2009, and many more;

 

According to the Complainant, it's IBM trademark has achieved well-known status in China.

 

Complainant asserts the following regarding the Respondent:

1. The registered domain name(s) is/are identical or confusingly similar to a word or mark [URS/.usRS 1.2.6.1]: for which the Complainant holds a valid national or regional registration and that is in current use.

2. Registrant has no legitimate right or interest to the domain name [URS 1.2.6.2] 3. The domain name(s) was/were registered and are being used in bad faith [URS 1.2.6.3] such as: The domain name(s) was/were registered or are being used in bad faith [.usRS 1.2.6.3] such as:

 

URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.

 

[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

 

The Respondent asserts that the disputed domain name <ibmall.xyz> relates to the letters “ib” and “mall”, and he is not clear why the Complainant objects to this combination. The Respondent asserts that he did not benefit from the alleged violations of Complainant's rights and that the combination of the words does not harm Complainant or its brand.

 

The Respondent further asserts that in previous communications with the Complainant, the Complainant first notified him that if he first transfer the disputed domain name to Complainant, Complainant will accept his price, and it is just so happens that the disputed domain name is not active. The Respondent asserts that in his communication with Complainant he also explained the meaning of the disputed domain name to be the word combination “IB” and “MALL”.

 

The Respondent asserts that when he made his offer to sell the disputed domain name he was not aware of Complainant’s rights.

 

The Respondent asserts that indeed, there are differences in culture and languages, however, the Respondent asserts that the reasons above were explained to Complainant and Complainant took the wrong approach.

 

The Respondent asserts that he prefers to communicate in Chinese.

 

Determined: Identical and/or Confusingly Similar - Finding for Complainant 

 

Complainant is the owner of the mark – IBM, worldwide for many years, including U.S. Reg. No. 1,205,090 – IBM, with the registration date of December 13, 2006;

Chinese Reg. No. 5,744,987, with the registration date of August 17, 1982; Chinese Reg. No 5,744,981, with the registration date of December 14, 2009, and many more;

 

The domain name includes the Complainant's IBM mark in its entirety, together with the term "all" and the gTLD ".xyz".

 

Therefore, the Panel finds that the <ibmall.xyz> domain name is confusingly similar to the IBM mark pursuant to URS Procedure 1.2.6.1.

 

Determined: : Registrant has no legitimate right or interest to the domain name - Finding for Complainant

 

The Complainant submitted evidence showing that the disputed domain name used to direct to a website displaying commercial links. The Respondent did not submit any evidence proving he is known as IB MALL. The Complainant has not given any permission to the Respondent to use the IBM trademark.

 

Currently, the disputed domain name resolves to an inactive webpage.

 

The Panel was not persuaded by the arguments made by the Respondent and finds that the Respondent failed to show that it has rights or legitimate interest in the disputed domain name.

 

Therefore, the Panel finds that the Complaint meets URS requirement of 1.2.6.2.

 

Determined: The domain name(s) was/were registered and is being used in bad faith - Finding for Complainant 

 

 a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site 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 Registrant’s web site or location or of a product or service on that web site or location.

 

The Complainant has satisfied URS 1.2.6.3 (b) since the Respondent must have known of the Complainant's well-known mark when registering the domain name and when using the website under the domain name as parking website with commercial links.

 

Since Complainant's trademark was registered long before the disputed domain name was registered and the fact the disputed name currently resolves to an inactive website, and the Respondent's offer to sell the disputed domain name to the Complainant, the conclusion is that the disputed domain name was registered and is being used in bad faith to attract for commercial gain and that Complainant has complied with URS 1.2.6.3 (b).

 

FINDING OF ABUSE  or MATERIAL FALSEHOOD

 

The Examiner finds that the Complaint was neither abusive nor contained material falsehoods. 

 

DETERMINATION

After reviewing the parties’ submissions, the Examiner determines that

the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.

 

 

 

Jonathan Agmon, Examiner

Dated:  March 23, 2016

 

 

 

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