WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Business Machines Corporation v. 侯增梅 (Hou Zengmei)

Case No. D2021-3938

1. The Parties

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

The Respondent is 侯增梅 (Hou Zengmei), China.

2. The Domain Name and Registrar

The disputed domain name <ibmicloud.com> is registered with Eranet International Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2021. On November 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2021, 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 November 26, 2021, 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 amendment to the Complaint on November 29, 2021.

The Center verified that the Complaint together with the amendment to 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, and the proceedings commenced on December 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2021.

The Center appointed Philippe Gilliéron as the sole panelist in this matter on January 6, 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

The Complainant is a leading innovator in the design and manufacture of a wide array of products that record, process, communicate, store, and retrieve information, including computers and computer hardware, software, and accessories. In 2021, the Complainant was ranked the 15th most valuable global brand by BrandZ, the 18th best global brand by Interbrand, the 42nd largest company on the Fortune U.S. 500 list, and the 121st largest company on the Fortune Global 500 list.

The Complainant owns numerous trademarks consisting of “IBM” on a worldwide basis. Such notably is the case in the United States, where the Complainant notably holds the following IBM trademarks:

- United States trademark registration no. 4,181,289, registered on July 31, 2012, in International Classes 9, 16, 18, 20, 21, 22, 24, 25, 28, 35, and 41;
- United States trademark registration no. 3,002,164, registered on September 27, 2005, in International Class 9;
- United States trademark registration no. 1,696,454, registered on June 23, 1992, in International Class 36;
- United States trademark registration no. 1,694,814, registered on June 16, 1992, in International Class 36;
- United States trademark registration no. 1,243,930, registered on June 28, 1983, in International Class 42;
- United States trademark registration no. 1,205,090, registered on August 17, 1982, in International Classes 1, 7, 9, 16, 37, and 41;
- United States trademark registration no. 1,058,803, registered on February 15, 1977, in International Classes 1, 9, 16, 37, 41, and 42; and
- United States trademark registration no. 0,640,606, registered on January 29, 1957, in International Class 9.

Additionally, the Complainant owns the following IBM trademarks in China, where the Respondent is located:

- China trademark registration no. 1914464, registered on August 7, 2002, in International Class 9;
- China trademark registration no. 221321, registered on February 27, 1985, in International Class 9;
- China trademark registration no. 221319, registered on February 27, 1985, in International Class 16;
- China trademark registration no. 5744856, registered on April 7, 2012, in International Class 16;
- China trademark registration no. 770063, registered on October 21, 1994, in International Class 35;
- China trademark registration no. 770326, registered on October 21, 1994, in International Class 37;
- China trademark registration no. 1412819, registered on June 21, 2000, in International Class 38;
- China trademark registration no. 770699, registered on October 28, 1994, in International Class 41; and
- China trademark registration no. 771396, registered on November 7, 1994, in International Class 42.

On April 18, 2021, the Respondent registered the disputed domain name <ibmicloud.com>. The website attached to the disputed domain name hosts pornographic content and displays links leading to further pornographic or gambling websites.

On August 17, 2021, the Complainant sent a cease and desist letter to the Respondent, asking it to disable and transfer the disputed domain name back to the Complainant. The Complainant sent a follow-up letter to the Respondent on August 31, 2021, to no avail. The Respondent went on using the website attached to the disputed domain name to display the above mentioned content.

5. Parties’ Contentions

A. Complainant

The Complainant first contends that its IBM trademark is a well-known one. The disputed domain name is confusingly similar to the Complainant’s trademarks as it entirely incorporates the Complainant’s IBM trademark and that the addition of descriptive terms such as “icloud” does not dispel the confusing similarity between the trademark and the disputed domain name.

The Complainant then asserts that the Respondent has no rights or legitimate interests in the disputed domain name. It has never been authorized or licensed by the Complainant to use its trademarks and is not known under that name. To the contrary, the Respondent has been actively using the IBM trademark in the disputed domain name to promote its website for illegitimate commercial gains, namely to increase Internet user traffic for its pornographic and online gambling websites, by taking advantage of the recognition of the Complainant’s trademark. Such a usage cannot be considered a bona fide offering of goods or services.

Finally, the Complainant alleges that the disputed domain name was registered and is being used in bad faith. Taking into account the worldwide reputation enjoyed by the Complainant’s trademark, the Respondent was well aware of it at the time it registered the disputed domain name. The use made by the Respondent of the disputed domain name amounts to “pornosquatting”, i.e. the practice where confusion with a well-known trademark is used to divert customers to a pornographic website for commercial purpose, which amounts to a use in bad faith.

In summary, the Complainant affirms that the Respondent has in bad faith tried to obtain financial gain by registering and using a well-known, non-generic domain name in which it has no rights or legitimate interests to generate revenue through increased Internet user traffic and to promote its pornography and online gambling businesses. In addition, by using the disputed domain name in connection with pornographic content/websites, the Respondent has created a likelihood of trademark dilution through the tarnishment of the IBM mark.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

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

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

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights.

The Complainant is the holder of numerous trademarks throughout the world consisting of “IBM”.

UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).

This is all the more true when the inserted trademark is the dominant part of the disputed domain name, and that the added elements would not prevent a finding of confusing similarity (see Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0”).

Such happens to be the case here. The addition of a term such as “icloud” does not prevent a finding of confusing similarity (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363).

As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

As the prior UDRP panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that a respondent has no rights or legitimate interests in a domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent UDRP panels developed a consensus view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 WIPO Overview 3.0).

In the present case the Complainant is the owner of numerous IBM trademarks. The Complainant has no business or other relationships with the Respondent.

The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.

On its side, the Respondent has not answered the Complaint, or the cease and desist letters that were sent to it on August 17 and 31, 2021.

Considering the absence of a Response and the fact that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name, all the more than, as ruled by prior UDRP panels, the well-known character of the Complainant’s trademark makes it difficult to conceive any plausible legitimate use of the disputed domain name (International Business Machines Corporation v. Sadaqat Khan, WIPO Case No. D2018-2476; International Business Machines Corporation v. Niculescu Aron Razvan Nicolae, WIPO Case No. DRO2010-0003; International Business Machines Corporation v. Linux Security Systems srl, WIPO Case No. DRO2010-0004).

Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.

C. Registered and Used in Bad Faith

For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

Bad faith requires the Respondent to be aware of the Complainants’ trademarks. In the present case, the Complainant is the owner of numerous IBM trademarks. There is no doubt in the Panel’s opinion that these marks enjoy a wide reputation and can be considered as a well-known trademark as ruled by prior UDRP panels (International Business Machines Corporation v. Sadaqat Khan, WIPO Case No. D2018-2476; International Business Machines Corporation v. Niculescu Aron Razvan Nicolae, WIPO Case No. DRO2010-0003; International Business Machines Corporation v. Linux Security Systems srl, WIPO Case No. DRO2010-0004).

Considering the worldwide reputation of these marks, it is inconceivable that the Respondent would have chosen and registered the disputed domain name without having been aware of the Complainant’s trademarks. The Respondent, having neglected to participate in these proceedings, did not bring any evidence to support any good faith reason for such a choice; such evidence is not apparent from the record, and the Respondent has to bear the consequences of its default in that regard.

Given the Respondent’s use of the disputed domain name to host pornographic content and links leading to further pornographic and gambling websites, there is no doubt in the Panel’s opinion that the Respondent deliberately tries to benefit from the Complainant’s trademark to attract Internet users to the Respondent’s websites for commercial gain, using a pornosquatting pattern, i.e. the practice where confusion with a well-known trademark is used to divert customers to a pornographic website for commercial purpose (Prada S.A. v. Roberto Baggio, WIPO Case No. D2009-1187).

It is to be remembered that prior UDRP panels have considered that a presumption of bad faith may be created solely through the registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark (section 3.1.4 of WIPO Overview 3.0; see also: International Business Machines Corporation v. Jian Liu, WIPO Case No. D2021-0248).

Consequently, the Panel finds that the disputed domain name has been registered and is being used in bad faith under the 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 <ibmicloud.com> be transferred to the Complainant.

Philippe Gilliéron
Sole Panelist
Date: January 20, 2022