The Complainant is International Business Machines Corporation, United States of America, internally represented.
The Respondent is Translation Failed Translation Failed, Malaysia.
The disputed domain name <99ibm.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2020. On January 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2020, 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 January 10, 2020 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 January 13, 2020.
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 January 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2020.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on February 27, 2020. 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.
The Complainant was established in 1911 and has been doing business under its current name since 1924. Focused worldwide in the technology sector, the Complainant’s trademark has a strong reputation and is widely known throughout the world as IBM.
The Complainant devote over USD 1 billion annually in marketing its goods and services globally. The IBM mark has been ranked among the most valuable brands in the world by Interbrand, BrandZ, and Forbes.
Previous UDRP panels’ decisions have acknowledged IBM as a well-known trademark. As such, International Business Machines Corporation v. Sadaqat Khan, WIPO Case No. D2018-2476 where the panelist concluded: “The panel is of the opinion that the Complainant’s trademark has a strong reputation and is widely known throughout the world”.
The Complainant holds numerous IBM trademark registrations, including the following registered by the United States of America Patent and Trademark Office:
|
TRADEMARK |
REGISTRATION NUMBER |
REGISTRATION DATE |
|
IBM |
4181289 |
July 31, 2012 |
|
IBM |
3002164 |
September 27, 2005 |
|
IBM |
1696454 |
June 23, 1992 |
|
IBM |
640606 |
January 29, 1957 |
The disputed domain name was registered on July 13, 2019 in the name of a domain privacy service and later on used to offer gambling and pornographic content.
The Complainant sent a cease-and-desist letter to the Registrant of the domain name thorough the Registrar on December 13, 2020. The Registrar answered stating that it does not have the authority to decide who should legally own a domain name and suggesting to look into the UDRP Policy.
Currently the disputed domain name does not resolve to any active website.
The letters contained in the disputed domain name are exactly the same as the IBM trademark. The only difference is the addition of the number “99”. This minor variation does not obviate the confusing similarity between the disputed domain name and the IBM trademark. Accordingly the Complainant contends that within the meaning of paragraph 4 of the Policy, the disputed domain name is identical or confusingly similar to Complainant's registered trademark.
With regard to the second element, the Complainant asserts that the Respondent has not been licensed, contracted, or otherwise permitted by Complainant in any way to use the IBM trademark, or to apply for any domain name incorporating such trademark, nor has Complainant acquiesced in any way to such use or application of the IBM trademark by Respondent. Additionally, there is no evidence that “ibm” or “99ibm” is the name of Respondent’s corporate entity. Furthermore, there is no evidence that Respondent is using or plans to use the IBM trademark or the disputed domain name incorporating the IBM trademark for a bona fide offering of goods or services.
On the other hand, the Complainant is of the opinion that the Respondent was well aware of Complainant’s trademark at the time he registered the disputed domain name <99ibm.com> on July 13, 2019. Such an opinion is based on IBM trademark well-known recognition around the world.
The Respondent has been actively using the disputed domain name containing the IBM trademark for illegitimate commercial gains. Respondent has been intentionally attempting to create a likelihood of confusion by using the disputed domain name containing the IBM trademark to attract visitors to his pornographic and online gambling websites, and thus generating revenue through such unauthorized use of the IBM trademark.
Respondent’s misuse of the disputed domain name containing the IBM trademark is clear evidence of bad faith, because generating more traffic will result in more money for Respondent.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(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 was registered and is being used in bad faith.
There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration.
The Complainant has shown consistent trademark rights in the IBM mark. The reproduction of the IBM mark in the disputed domain name <99ibm.com> is apparent. Accordingly, the test is satisfied for the purposes of the Policy. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Therefore, the first requirement is met under paragraph 4(a)(i) of the Policy.
The Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name. Indeed, the Complainant has shown evidence that the Respondent has not been licensed in any way to use the IBM trademark. Further, there is no evidence that “ibm” or “99ibm” is the name of Respondent’s corporate entity. And further, the Complaint has provided evidence of the use of the disputed domain name in connection to pornosquatting, that is to say a practice to divert customers to a pornographic website for commercial purpose.
While Respondent’s absence of rights or legitimate interests is clear from the Complaint, the Respondent’s lack of answer does not provide the Panel with any information that could support rights or legitimate interests in the disputed domain name. See at the WIPO Overview 3.0 section 2.1: “[W]here 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”.
In any case, the Panel can conceive of no legitimate use that the Respondent can make of the disputed domain name. By contrast, the Panel finds that due to the strength of the IBM mark, the Respondent is trading off Complainant’s reputation.
The Complainant has therefore demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain name to the satisfaction of the Policy, paragraph 4(a)(ii).
For the purposes of the Policy, a Complainant must establish that the domain name was registered and used in bad faith by the Respondent.
Previous UDRP decisions have recognized the fame and well-known merit of Complainant’s trademarks. See International Business Machines Corporation v. Alice Chow, WIPO Case No. D2016-2509. Besides, the spelling of the disputed domain name support a finding that the Respondent registered the disputed domain name with the Complainant’s trade mark in mind. Under these circumstances is more likely than not that the Respondent knew about the Complainant and its trademarks at the time of registration of the disputed domain name.
The Panel also accepts Complainant’s allegations that the Respondent’s website is using click-through features to direct users to other pornography and online gambling websites. Moreover, the Panel finds that such use supports a finding of bad faith use of the disputed domain name.
Accordingly, the Complainant has succeeded on the third element of the Policy.
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 <99ibm.com> be transferred to the Complainant.
Manuel Moreno-Torres
Sole Panelist
Date: March 12, 2020