WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines Corporation v. Muhammad Ikram, Sahi Group of Companies
Case No. D2018-1074
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 Muhammad Ikram, Sahi Group of Companies of Isa Town, Manama, Bahrain.
2. The Domain Name and Registrar
The disputed domain name <ibmads.com> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 14, 2018. On May 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 15, 2018, 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 May 22, 2018, 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 amended Complaint on May 25, 2018.
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 the Respondent of the Complaint, and the proceedings commenced on May 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 18, 2018.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on June 27, 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
The Complainant, tracing its roots to the 1880s, is and has been 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 2017, the Complainant was ranked the 9th most valuable global brand by BrandZ, the 10th best global brand by Interbrand, the 32nd largest company on the Fortune U.S. 500 list, and the 81st largest company on the Fortune Global 500 list.
The strength and renown of the Complainant's IBM trademark has already been recognized by previous UDRP panels.
The Complainant has proven to be the owner of the IBM trademark, which enjoys protection through numerous registrations worldwide.
The Complainant is, inter alia, the owner of:
United States trademark IBM (device) registration no. 4,181,289, registered on July 31, 2012 in International Classes 6, 8, 9, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 28, 30, 35 and 41.
United States trademark IBM (device) registration no. 3,002,164, registered on September 27, 2005 in International Class 9.
United States trademark IBM (device) registration no. 2,183,815, registered on August 25, 1998 in International Classes 1 and 16.
United States trademark IBM (device) registration no. 1,696,454, registered on June 23, 1992 in International Class 36.
United States trademark IBM (device) registration no. 1,205,090, registered on August 17, 1982 in International Classes 1, 7, 9, 16, 37, and 41.
United States trademark IBM registration no. 640,606, registered on January 29, 1957 in International Class 9.
The disputed domain name <ibmads.com> was registered on April 29, 2018. At the time of filing, the disputed domain name appears to have resolved to a website offering Internet advertising services. The website at the disputed domain name featured the Complainant's trademark in its masthead above a stylized banner reading "ANONYMOUS ADS Create an ad, deposit money. No registration needed!" The disputed domain name also featured pay-per-click advertising to various online dating websites. Currently, the disputed domain name resolves to a website stating "This Account has been suspended".
The Complainant's trademark registrations predate the registration of the disputed domain name.
5. Parties' Contentions
The Complainant claims that the disputed domain name is confusingly similar to the Complainant's registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:
(i) The disputed 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 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 established rights in the IBM trademark.
The disputed domain name consists of the IBM trademark with the addition of the term "ads" (which probably stands for advertisements). The addition of the dictionary term "ads" in the disputed domain name does not prevent a finding of confusing similarity between the Complainant's IBM trademark and the disputed domain name.
In fact the addition of the term "ads" is insufficient to diminish the confusing similarity with the Complainant's trademark as the Complainant's trademark is the dominant element and is clearly recognizable in the disputed domain name.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the IBM trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant's trademarks. The Respondent does not appear to be commonly known by the disputed domain name or by a similar name. The Respondent does not appear to engage in any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. Indeed, whereas the disputed domain name is currently suspended, it appears that the Respondent – for a certain period of time – has been using the IBM trademark and logo in the disputed domain name to promote its website for commercial gains giving a misleading impression of association with the Complainant, where in fact there is none. Finally, the Respondent has not replied to the Complainant's contentions made out in this proceeding, claiming any rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant's contentions that the disputed domain name was registered and has been used in bad faith.
The IBM trademark has been registered and used for many years all over the world, it enjoys a widespread reputation and high degree of recognition as a result of its fame and renown and thus the IBM mark is not one that traders could legitimately adopt other than for the purpose of creating the impression of an association with the Complainant.
The Respondent's knowledge of the IBM mark is particularly obvious, given that the IBM logo was displayed on the website at the disputed domain name for a certain period of time.
The Panel finds that the Responden has intentionally attempted to attract Internet users to the disputed domain name by creating a likelihood of confusion with the Complainant's mark as to the source or affiliation of the Respondent's website, amounting to bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Further inference of bad faith registration and use of the disputed domain name is given by the fact that in response to the Complainant's cease-and-desist letter, the Respondent agreed to remove the IBM eight-bar logo from the website but demanded compensation for transferring the disputed domain name. Indeed, owing to the fact that the Respondent has not denied the assertions of bad faith made by the Complainant in the pre-action communications and in this proceeding, it is reasonable to assume that if the Respondent had legitimate purposes for registering and using the disputed domain names he would have responded to them.
Accordingly, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied paragraph 4(a)(iii) 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 <ibmads.com> be transferred to the Complainant.
Date: July 5, 2018