Kyndryl, Inc. v DIgitaline Electronics

WIPO Case No. D2025-0592

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Kyndryl, Inc. v. DIgitaline Electronics

Case No. D2025-0592

1. The Parties

The Complainant is Kyndryl, Inc., United States of America (“United States”), represented by Demys Limited,

United Kingdom.

The Respondent is DIgitaline Electronics, India.

2. The Domain Name and Registrar

The disputed domain name <kyndrylsolutions.shop> is registered with Hostinger Operations, UAB (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2025. On February 14, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2025, 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 (Domain Admin, Privacy Protect LLC (PrivacyProtect.org)) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 18, 2025, 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 February 21, 2025.

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 of the Complaint, and the proceedings commenced on February 26, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2025.

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The Center appointed Dietrich Beier as the sole panelist in this matter on March 24, 2025. 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 was IBM's former Global Technology Services infrastructure services business comprising more than a quarter of IBM's employees as well as over 4,000 clients. 75 percent of Fortune 100 companies are the Complainant’s clients. The Complainant generated revenues of USD

17 billion in the fiscal year 2023. Currently, the Complainant is one of the largest IT service providers

in the world. The Complainant employs more than 90,000 people and operates in over 60 countries.

The Complainant operates an official website with the domain name <kyndryl.com>.

The Complainant is the proprietor of several trademark registrations for KYNDRYL, among them the
International Registration 1628208, registered on June 14, 2021 extended for, inter alia, the United States,

India and the European Union, in several classes, inter alia, 9, 35, 37, 38 being in effect.

The disputed domain name was registered on December 30, 2024.

The disputed domain name resolves to a web shop offering inter alia laptops, servers, monitors, cameras,
drones and other computer hardware and accessories from various third-party brands.
Respondent´s website features a favicon which is identical to the Complainant’s logotype used on
Complainant´s website.

The Respondent did not reply to a cease-and-desist letter sent by the Complainant before the Complaint had been filed.

5. Parties’ Contentions
A. Complainant

The Complainant contends that its trademark KYNDRYL is highly distinctive and that it owns a large portfolio of registered trademarks for it.

The disputed domain name fully incorporates the Complainant’s KYNDRYL marks, differing only by the addition of the dictionary word “solutions” whereas the word “solutions” does not distinguish the disputed domain name from Complainant’s marks.

Further, the Respondent is not commonly known by the disputed domain name nor was authorized by the
Complainant to make use of its mark.

The disputed domain name is configured with Mail eXchanger (“MX”) records. Since the disputed domain name directly impersonates the Complainant or at least carries a high risk of implied affiliation, any email originating from the disputed domain name would be highly confusing or misleading to the Complainant’s employees, business partners, agencies or clients.

The intent to confuse Internet users is evident from the Respondent's use of the Complainant’s logotype as the favicon on the website associated with the disputed domain name.

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B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing test for

confusing similarity involves a reasoned but relatively straightforward comparison between the
Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on

Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain

name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The addition of the descriptive and not distinctive term “solutions” does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel notes that the Complainant did not grant any permission or consent to the Respondent to use its trademarks. Furthermore, there is no indication that the Respondent is commonly known by the name “Kyndryl” or “kyndrylsolutions”. The use of the Complainant’s trademark in the disputed domain name for offering for sale products from third parties operating in the same industry as the

Complainant does not amount to a bona fide offering of goods or services.

The Panel finds the second element of the Policy has been established.

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C. Registered and Used in Bad Faith

Due to the history of the Complainant being split from the world-famous IBM company (which was the
subject matter of a number of press releases and media coverage), its size and worldwide activities, the
Panel considers that the Respondent must have been well aware of the Complainant and its trademarks
when registering the disputed domain name (see also the panel’s conclusion in Kyndryl, Inc. v. Leandro
Ramos, WIPO Case No. D2022-4838).

The Complainant has not authorised the Respondent to make use of its mark. The Panel does not see any conceivable legitimate use that could be made by the Respondent of this disputed domain name without the Complainant’s authorization.

The circumstances of this case, in particular the use of the favicon on the website associated with the disputed domain name and the use of the Complainant’s trademark in the disputed domain name itself further indicate, in the Panel’s view, that the Respondent registered and uses the disputed domain name

primarily with the intention of attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or of a product or service on such website. The Panel therefore considers the disputed domain name to have been registered and used in bad faith in accordance with paragraph 4(a)(iii) 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 <kyndrylsolutions.shop> be transferred to the Complainant.

/Dietrich Beier/
Dietrich Beier
Sole Panelist
Date: April 1, 2025.