WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines Corporation v. Timothy Hayden-Clark, Accountable Sourcing
Case No. D2017-1283
1. The Parties
The Complainant is International Business Machines Corporation of Armonk, New York, United States of America (“United States”), internally represented.
The Respondent is Timothy Hayden-Clark, Accountable Sourcing of Bolton, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <ibmnegotiators.com> (the “Domain Name”) is registered with 1&1 Internet SE (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2017. On July 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 6, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 July 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2017.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on August 3, 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 following facts are undisputed.
The Complainant is a leading innovator that designs and manufactures a wide array of products that record, process, communicate, store and retrieve information, including computers and computer hardware, software and accessories. Having roots in the 1880s, the Complainant was established in 1924, following an amalgamation of three previously existing companies.
The Complainant is the owner of a number of registrations for the trademark IBM in various jurisdictions, including but not limited to various United States trademarks (both word marks and figurative marks) for goods in inter alia classes 1 and 9 and services in classes 36 and 42, and European Union Trade Mark (word mark) registration number 001495076, applied for on February 7, 2000, and registered on April 9, 2001 for goods and services in classes 9, 16, 38, 41 and 42 (hereinafter referred to as the “Trademark”). The Complainant refers to the case International Business Machines Corporation v. Linux Security Systems srl, WIPO Case No. DRO2010-0004, in which the panel concluded that the Trademark is well-known around the world, representing the abbreviation of its trade name.
In 2016, the IBM brand was ranked the 6th best global brand by Interbrand and the 7th most valuable brand by Forbes.
The Domain Name was registered by the Respondent on October 23, 2016. The Domain Name redirects to a website at the domain name <accountablesourcing.com> (the “Website”). The company Accountable Sourcing appears to offer “strategic sourcing services”.
5. Parties’ Contentions
Insofar as relevant, the Complainant contends the following.
The Domain Name reproduces the Trademark. The word “negotiators” is descriptive of what IBM does in many of its business activities. Therefore, the Domain Name is identical or confusingly similar to the Trademark.
The Respondent has not been licensed, contracted or otherwise permitted by the Complainant in any way to use the Trademark or to apply for any domain name incorporating the Trademark, nor has the Complainant acquiesced in any way to such use or application of the Trademark by the Respondent.
The Domain Name redirects to the Website. The Respondent would have been well aware of the Trademark at the time the Respondent registered the Domain Name given the notoriety of the IBM brand. The Respondent intentionally attempted to create a likelihood of confusion for commercial gain by using the Domain Name to attract visitors to the Website and increase traffic with the Trademark. Such use of the Domain Name is clear evidence of bad faith. It also creates a likelihood of confusion as to the source, sponsorship, or endorsement of the Complainant.
The Complainant has submitted a cease-and-desist letter that was sent to the address listed on the Website. The Complainant sent a second cease-and-desist request by email. The Respondent replied to this email, denied any knowledge of the initial letter and asked to resend it. After resending the cease-and-desist letter, the Complainant did not receive any further response from the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark and, if so, the domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has shown that it has rights in the Trademark.
The Panel finds that the addition of the term “negotiators” does not suffice to distinguish the Domain Name from the Complainant’s Trademark since “IBM” is the dominant part of the Domain Name. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“[T]he fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”)
Thus, the Panel finds that the Domain Name is confusingly similar to the Complainant’s Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant's contentions. For that reason, the Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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.
There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “IBM” is the Respondent’s name or that the Respondent is commonly known as “IBM”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Complainant’s Trademark, or to apply for or use any domain name incorporating the Trademark.
Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods or services. On the Website, the Respondent claims to specialize in dealing with IBM (amongst other large companies). There is no evidence that such a business relation exists. The Respondent did not otherwise demonstrate any use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services. It is also clear that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name.
Finally, given the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions, “non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090).
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
In light of the evidence filed by the Complainant and the absence of a reply, the Panel finds that the Complainant’s Trademark and activities are well-known throughout the world.
In the Panel’s view there is no other plausible explanation why the Respondent registered the Domain Name, other than the Respondent being aware of the Complainant and the Trademark.
Although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the Decision are sufficient for the Panel to find that the use of the Domain Name by the Respondent is in bad faith. In particular, the registration of the Domain Name, incorporating the Complainant’s Trademark, without authorization from the Complainant, and the reference to the Complainant, consisting of the claim that the Respondent “deals with” (amongst other companies) the Complainant on the Website, amounts to an attempt to illegitimately benefit from a likelihood of confusion between the Domain Name and the Complainant’s Trademark.
In addition, in the Panel’s view it contributes to a finding of bad faith that the Respondent did not follow up on its promise to get back to a cease-and-desist request that was sent via email by the Complainant.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <ibmnegotiators.com> be transferred to the Complainant.
Willem J. H. Leppink
Date: August 17, 2017