WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines v. Milen Radumilo
Case No. D2018-0328
1. The Parties
1.1 The Complainant is International Business Machines of Armonk, New York, United States of America (“United States”), represented by Ravindra Persaud, United States (the “Complainant”).
1.2 The Respondent is Milen Radumilo of Bucharest, Romania (the “Respondent”).
2. The Domain Names and Registrar
2.1 The Disputed Domain Names <01-ibm.com>, <03-ibm.com>, <304-ibm.com> (the “Disputed Domain Names”) are registered with eNom, Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2018. On February 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 14, 2018, 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.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2018.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on April 4, 2018. 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
4.1 The Complainant in this administrative proceeding is International Business Machines Corporation, a company incorporated in the United States since June 16, 1911. The Complainant is said to have been officially known as International Business Machines (“IBM”) since 1924 and has sold so many products including office and research equipment, under the IBM trademark since then. The Complainant introduced its first large vacuum tube computer under the name IBM 710 in 1952 and since then has continuously used the trademark IBM in association with computers and computer hardware, software and accessories. The Complainant is said to have owned several trademark registrations in 170 countries all around the world for several decades, and for a broad range of goods and services not limited to information technology related goods and services. In particular, the Complainant has attached to this proceeding copies of the trademark registration certificates marked as annex 4, indicating IBM registrations of trademarks in the United States (Registration No. 4181289, registered on July 31, 2012) and in Romania (Registration No. 4R008334, registered on December 12, 2003) where the Respondent is based. It is further contended that the Complainant was in 2017 ranked the 9th most valuable brand by “BrandZ” and the 10th best global brand by “Interbrand”, the 32nd largest company on the “Fortune 500” list and the 81st largest company on the “Fortune Global 500” list. The Complainant’s IBM trademark was valued by “BrandZ” at well over USD 102 billion in 2017. It is further said that the Complainant spends nearly USD 6 billion each year on advanced research in addition to expenditure on product development.
4.2 According to the WhoIs information attached to this proceeding the Disputed Domain Names were registered with the Registrar on November 30, 2016 and December 1, 2016 and resolve to pay-per-click (“PPC”) pages. As the language of the registration agreement as confirmed by the Registrar is English, and the Complaint which has been submitted in this language, the language of the proceedings shall be equally conducted in English.
5. Parties’ Contentions
5.1 It is contended on behalf of the Complainant that the three Disputed Domain Names are identical or confusingly similar to the Complainant’s registered IBM trademarks. In that firstly, the first Disputed Domain Name <01-ibm.com> is said to consist of, the numbers “01”, followed by a hyphen, the letters “ibm” (not case sensitive), and the generic Top-Level Domain (“gTLD”) “.com”. Secondly, the second Disputed Domain Name <03-ibm.com> consists of, the numbers “03”, followed by a hyphen, the letters “ibm” (not case sensitive), and the gTLD “.com”. Thirdly, the third Disputed Domain Name <304-ibm> consists of the numbers “304” followed by a hyphen, the letters “ibm” (not case sensitive), and the gTLD “.com”. The letters “ibm” contained in the Disputed Domain Names, it is said, are exactly the same as the IBM trademark, therefore, it is asserted that the Disputed Domain Names namely <01-ibm.com>, <03-ibm.com> and
<304-ibm.com> are identical or confusingly similar to the Complainant’s registered trademarks.
5.2 The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names in that the Respondent has not been licensed, contracted or otherwise permitted to use the IBM trademark or to apply for any domain name incorporating the IBM trademark nor has the Complainant acquiesced in any way to such use or application of the IBM trademark. Furthermore, it is argued that there is no evidence that “IBM” is the name of the Respondent’s corporate entity, and neither is there evidence of fair use. Also, it is said that there is no evidence suggesting that the Respondent is using or planning to use the Disputed Domain Names incorporating the Complainant’s IBM trademark for a bona fide offering of goods or services. On the contrary, it is asserted that the Respondent has been using the Complainant’s IBM trademark in the Disputed Domain Names to promote its websites for commercial gain which such act is likely to compel consumers to erroneously believe that the Complainant is affiliated with the Respondent or is endorsing its commercial activities when actually, no such relationship exists.
5.3 On the question of bad faith registration and use, the Complainant advances the following arguments. Firstly, the Complainant asserts that the Respondent was well aware of the existence of the Complainant’s trademarks before the registration of the Disputed Domain Names. The Complainant reiterates the observation that the Complainant’s trademarks are well-known all over the world and asserts that registration of the Disputed Domain Names, is in itself proof of bad faith at the time of registration. Secondly, the Complainant refers to a cease and desist letter which the Complainant dispatched to the Respondent on January 16, 2018, requesting that the Respondent disable and transfer the Disputed Domain Names back to the Complainant, which the Respondent failed to reply to as further evidence of bad faith use. Thirdly, the Complainant asserts that the Respondent has been intentionally attempting to create a likelihood of confusion by using the Disputed Domain Names containing the IBM trademark to generate revenue from Pay-Per-Click advertisement links by using words such as “ibm”, “ibm server”, “ibm careers” “ibm cloud”, “ibm bluemix”, “ibm tivoli” and “ibm tsm”.
5.4 The Respondent did not reply to the Complainant’s contentions. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy to succeed in this administrative proceeding the Complainant must prove that: (i) the Disputed Domain Names are identical or confusingly similar to the trademark or service mark of the Complainant; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith.
6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in any UDRP administrative proceeding.
A. Identical or Confusingly Similar
6.3 This Panel accepts that the Complainant is the registered owner of several trademark registrations of the IBM trademark as confirmed by copies of the trademark registration certificates annexed to this proceeding. The Panel therefore finds without any hesitation that the Disputed Domain Names <01-ibm.com>, <03-ibm.com> and<304-ibm.com> are confusingly similar to the Complainant’s well-known IBM trademark. The Disputed Domain Names contain the letters “ibm” which are exactly the same with the Complainant’s abbreviated trademark IBM. Thus, the Panel finds that the mere addition of the numbers “01”, “03” and “304” followed by a hyphen and the gTLD “.com” does absolutely nothing to prevent a finding of confusing similarity. See in support sections 1.7 and 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”). See also in support of this finding previous UDRP decisions namely, International Business Machines Corporation v. Niculescu Aron Razva Nicolae, WIPO Case No. DRO 2010–0003 and International Business Machines Corporation v. Linux Security Systems srl, WIPO Case No. DRO 2010-0004.
6.4 The Panel therefore finds that the Complainant has established that the Disputed Domain Names are confusingly similar to the Complainant’s IBM trademark.
B. Rights or Legitimate Interests
6.5 As submitted by the Complainant, the Panel equally finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names within the ambit of Paragraph 4(c) of the Policy. Clearly, the Respondent has failed to adduce any evidence that suggests that the Complainant has authorized, permitted or licensed the Respondent to utilize the Disputed Domain Names or apply for the registration of the Disputed Domain Names incorporating the Complainant’s IBM trademark; nor is there any evidence that the Respondent has ever been known or associated with the Complainant. The Panel also finds and holds that the Respondent has failed to produce any evidence of an indication that the Respondent is making a bona fide offering of goods and services or a legitimate noncommercial or fair use of the Disputed Domain Names without the intention to derive commercial benefit by misleadingly diverting Internet visitors to websites associated with the Disputed Domain Names. See in this regard Oki Data Americas Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
6.6 Accordingly, the Panel is satisfied that the Complainant has established that the Respondent does not possess any rights or legitimate interests in the Disputed Domain Names as stipulated in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.7 On the particular question of bad faith registration and use, the Panel finds without any hesitation that the Respondent registered the Disputed Domain Names in bad faith and continued with bad faith use. This finding is anchored on the Complainant’s unchallenged assertions and the evidence placed before the Panel as follows. Firstly, the Respondent registered all three Disputed Domain Names almost on the same date, being November 30, 2016 and December 1, 2016, certainly, the Respondent must have known about the prior existence of the Complainant’s registered rights in the IBM trademark as at this date. The Panel therefore finds that it was purely for commercial gain that the Respondent decided to register not just one, but three Disputed Domain Names, all incorporating the Complainant’s IBM trademark. Secondly, the Complainant has adduced credible evidence through the annexed website screen shots to demonstrate that the Respondent registered the Disputed Domain Names with the intention of generating Pay-Per-Click revenue by exploiting the confusion in the minds of Internet visitors who may confuse the websites associated with the Disputed Domain Names with those owned by the Complainant. Thirdly, the Respondent was sent a cease and desist letter dated January 16, 2018, yet the Respondent failed to respond. Fourthly, as stated at paragraph 5.4 above, the Panel has drawn adverse inferences from the failure of the Respondent to reply to the contentions of the Complainant in this matter.
6.8 The Panel is therefore satisfied that the Respondent registered the Disputed Domain Names in bad faith and has continued to engage in bad faith use.
7.1 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 Names, namely, <01-ibm.com>,<03-ibm.com>, and <304-ibm.com> be transferred to the Complainant.
Date: April 18, 2018