WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Business Machines Corporation v. liji lib

Case No. D2020-1684

1. The Parties

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

Respondent is liji lib, United States.

2. The Domain Name and Registrar

The disputed domain name <ibmupdate.com> is registered with Name105, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2020. On June 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 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 Complainant on June 29, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 8, 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 Respondent of the Complaint, and the proceedings commenced on July 24, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was August 13, 2020. Respondent did not submit any response. Accordingly, the Center notified the parties of Respondent’s default on August 14, 2020.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on September 4, 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.

4. Factual Background

Complainant is a global company engaged in the design and manufacture of computers, computer hardware, accessories and software. Headquartered in the United States, Complainant has been operating as International Business Machines since 1924.

Complainant is the proprietor of a substantial number of registrations for the IBM Mark (the “IBM Mark”) in jurisdictions around the world, including the following:

- United States trademark registration No. 4181289 for IBM (device mark), registered on July 31, 2012 for goods and services in classes 9, 16, 18, 20, 21, 22, 24, 25, 28, 35, and 41;

- United States trademark registration No. 1696454 for IBM (device mark), registered on June 23, 1992 for services in class 36, claiming a date of first use in March,1981;

- United States trademark registration No. 640606 for IBM (word mark), registered on January 27, 1957 for goods in class 9.

The disputed domain name was registered by Respondent on September 6, 2015. It resolves to a website featuring pay-per-click links.

The record contains a copy of a cease-and-desist letter sent by Complainant to Respondent regarding the disputed domain name on April 1, 2020.

5. Parties’ Contentions

A. Complainant

Under the first element, Complainant states that it owns trademark registrations for the IBM Mark in 170 jurisdictions. The IBM Mark is a world-famous trademark that traces its roots to the 1880s and was in 2019 ranked among the most valuable brands in the world with a value of over USD 96 billion. Complainant was formed in 1911, became known as International Business Machines in 1924 and has used the IBM trademark since that time beginning with punch machines. In the 1950s and 1960s, Complainant began selling computers and typewriters under the IBM Mark. Complainant’s IBM Mark has been recognized as distinctive and famous by previous UDRP panels, and Complainant has invested substantial amounts in marketing the IBM Mark and in enforcing it. The disputed domain name is identical or confusingly similar to Complainant’s Mark, as the letters “ibm” are identical and the word “update” is a minor variation that does not obviate the confusing similarity with the IBM Mark.

Under the second element, Complainant states that Respondent has not been permitted by Complainant to use the IBM Mark or to register a domain name incorporating the IBM Mark, nor has Complainant consented to such use or application of the IBM Mark by Respondent. There is no evidence that “ibmupdate” is the name of Respondent’s corporate entity, nor is there any evidence of fair use or that Respondent is planning to use the IBM Mark in relation to a bona fide offering of goods or services. Respondent is using the IBM Mark in its website for illegitimate commercial gains.

Under the third element, Complainant states that, and the time the disputed domain name was registered, Respondent was well aware of Complainant’s Mark, which is registered around the world and is one of the world’s most valuable brands. Complainant has sent a cease-and-desist letter to Respondent regarding the disputed domain name. Respondent has been using the disputed domain name to create a likelihood of confusion with Complainant by pointing the disputed domain name to a pay-per-click parking site containing references to Complainant’s IBM Mark. Such use is intended to generate revenues for Respondent and to confuse Internet users regarding the relationship between Respondent and Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the IBM Mark through registrations in several jurisdictions, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRO Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.

In comparing Complainant’s IBM Mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with the IBM Mark. The disputed domain name contains the IBM Mark in its entirety. The addition of the term “update” does not prevent a finding of confusing similarity with the IBM Mark, which is clearly recognizable within the disputed domain name.

Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”

Furthermore, it is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to a domain name does not prevent the domain name from being confusingly similar to the complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The circumstances stated in the Complaint and evidence in support set forth in the Annexes to the Complaint indicate that, at the time that Respondent registered the disputed domain name, Respondent had no rights or legitimate interests in it. The nature of the disputed domain name, which contain Complainant’s long-established and famous IBM Mark together with the term “update” cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1.

The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names or is using the IBM Mark with the permission of Complainant.

There is no evidence of legitimate noncommercial or fair use of the disputed domain name, as <ibmupdate.com> resolves to a website featuring pay-per-click links including those referencing Complainant.

The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

Pursuant to WIPO Overview 3.0., section 2.1, and cases cited thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain name. Considering the confusing similarity between Complainant’s Mark and the disputed domain name and the fact that the disputed domain name resolves to a website offering pay-per-click links and includes references to Complainant’s IBM Mark, there can be no finding of rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or

(ii) that Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel finds bad faith registration under the Policy. Complainant’s rights in the IBM Mark predate by decades the registration of the disputed domain name. The Panel agrees with previous UDRP panels that the IBM Mark may be considered a famous mark and finds that it is implausible that Respondent was unaware of the IBM Mark. The disputed domain name contains Complainant’s Mark in its entirety, with the addition of the term “update,” which does not prevent a finding of confusing similarity. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith.

Having established that the disputed domain name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain name. The Panel finds that Respondent has demonstrated bad faith use in establishing and operating a website at “www.ibmupdate.com” that features pay-per-click links including those containing references to Complainant’s IBM Mark and its products.

Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use.

The Panel therefore finds that Complainant has established 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 <ibmupdate.com> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: September 18, 2020