WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines Corporation v. Bernardo Pillaca
Case No. D2016-2409
1. The Parties
The Complainant is International Business Machines Corporation ("IBM") of Armonk, New York, United States of America, represented by Devon DiSiena, United States of America (the "United States").
The Respondent is Bernardo Pillaca of Lima, Peru.
2. The Domain Name and Registrar
The disputed domain name <ibmperu.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 28, 2016. On November 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2016, 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 30, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on December 2, 2016.
The Center verified that the Complaint together with the amended Complaint (hereinafter referred both together as 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 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 4, 2017.
The Center appointed Daniel Peña as the sole panelist in this matter on January 18, 2017. 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 owns and has owned trademark registrations for IBM in 170 countries all around the world for several decades, and for broad range of goods and services, including, although not limited to, information technology related goods and services. More particularly, the Complainant owns the following trademarks in the United States:
- United States trademark registration no. 4,181,289 in International Classes 6, 8, 9, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 28, 30, 35 and 41.
- United States trademark registration no. 3,002,164 in International Class 9.
- United States trademark registration no. 2,183,815 in International Classes 1 and 16.
- United States trademark registration no. 1,696,454 in International Class 36.
- United States trademark registration no. 1,694,814 in International Class 36.
- United States trademark registration no. 1,243,930 in International Class 42.
- United States trademark registration no. 1,205,090 in International Classes 1, 7, 9, 16, 37, and 41.
- United States trademark registration no. 1,058,803 in International Classes 1, 9, 16, 37, 41 and 42.
- United States trademark registration no. 640, 606 in International Class 9.
The Complainant is and has been since 1880's 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 2015, the Complainant was ranked the twenty-fourth largest firm in the United States by Fortune.
The Complainant was also ranked the fourth most valuable global brand by BrandZ and the 5th best global brand by Interbrand.
The IBM trademark, was valued by BrandZ as worth over USD 86 billion in 2015 and over USD 93 billion in 2015.
In 2016, the Complainant was ranked the thirty-first largest firm in the United States by "Fortune". The Complainant was also ranked the tenth most valuable global brand by "BrandZ".
The Complainant was incorporated on June 16, 1911 as an amalgamation of three previously existing companies.
The Complainant officially became International Business Machines on February 14, 1924. The Complainant has been offering products under the trademark IBM ever since.
The disputed domain name was registered on March 3, 2016 and according to the evidence provided by the Complainant it resolves to a website for the provision of services related to the telecommunications and information technology sector including for example call centers on the cloud and voice over Internet Protocol.
5. Parties' Contentions
The Complainant contends that the IBM trademark is a world famous trademark.
The Complainant spends over USD 1 billion dollars marketing its goods and services globally, using the IBM trademark, and has undertaken extensive efforts to protect its name and enforce the IBM trademark. The Complainant exerts careful control over use of the IBM trademark and imposes strict quality control measures over goods and services offered in connection with the trademark.
In the Complainant's view, the domain name <ibmperu.com> is identical or confusingly similar to the Complainant's registered trademarks.
The Complainant relies on the extensive range of registered trademarks for IBM to which reference has already been made.
The disputed domain name consists of the letters "ibm" (not case sensitive) followed by the word "peru" and the generic suffix ".com". The letters "ibm" contained in the disputed domain name are exactly the same as the IBM trademark.
The Complainant maintains a location in Peru.
The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered ans is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has clearly shown that it has rights in the IBM trademarks registered in several countries around the world. The disputed domain name incorporates the whole of the trademark IBM to which there was added the term "peru" which is the name of a country in South America where the Complainant has a local presence as part of its worldwide extended commercial activities. In the Panel's view, the inclusion of the expression "peru" does not alter or diminish in any way the confusing similarity between the Complainant's IBM trademarks and the disputed domain name. Therefore, the risk of false association is reinforced and Internet users may wrongly believe that the disputed domain name is related to any of the Complainant's activity located or linked to Peru.
The Panel finds that the Complainant has rights in the IBM trademarks and that the disputed domain name is confusingly similar to this trademark.
Therefore, the Panel considers that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several manners in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the disputed domain name. In this case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that (1) the Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the IBM trademark preceded the registration of the disputed domain name for years; (2) the Complainant has not licensed or otherwise authorized the Respondent to use its IBM trademarks or to incorporate them into a domain name; (3) that, given the extensive use of the Complainant's marks and the fact that it is uniquely linked to the Complainant, the Respondent must have been aware of this when it registered the disputed domain name; and (4) that the current use of the disputed domain name does not relate to a bona fide offering of goods or services or any legitimate noncommercial or fair purpose; (5) the Respondent registered the disputed domain name <ibmperu.com> with a privacy shield service presumably to hide his identity and prevent the Complainant from contacting him; and (6) the Respondent never answered the Complainant's letter despite several reminders.
The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (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;
(ii) the respondent has registered the 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 the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's web site or location or of a product or service on its website or location.
The Complainant has demonstrated that its IBM trademarks are well-known and that the disputed domain name incorporates in full its IBM trademarks and that the Respondent was aware of the Complainant's IBM trademark at the time the Respondent registered the disputed domain name. It is clear to this Panel that the Respondent is using the trademark IBM to attract Internet users to his website "www.ibmperu.com" for commercial gain, promoting its telecommunication services. Thus, the Respondent is trying to benefit from the goodwill associated with IBM and confusion created by the presence of the expressions "ibm" and "peru" within the disputed domain name. In accordance with paragraph 4(b)(iv) of the Policy, the Respondent intentionally attempts to attract for commercial gain Internet users to the websites, by creating a likelihood of confusion with the Complainant's IBM trademarks as to the source, sponsorship, affiliation or endorsement of its website.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraphs 4(a)(iii) and 4(b) 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 <ibmperu.com> be transferred to the Complainant.
Date: January 29, 2017