WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines Corporation v. Domains By Proxy, LCC / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2018-2657
1. The Parties
The Complainant is International Business Machines Corporation of New York, United States of America (“United States”) internally represented.
The Respondent is Domains By Proxy, LCC of Scottsdale, Arizona, United States / Carolina Rodrigues, Fundacion Comercio Electronico of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <ibmconnection.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2018. On November 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 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 November 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 November 26, 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 November 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2018.
The Center appointed Adam Samuel as the sole panelist in this matter on December 28, 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 is a well-known supplier of computers and related products. It owns a number of United States trademarks, including number 640606, registered on January 29, 1957. It markets its products through a variety of domain names including <ibm.com>, registered on March 19, 1986. The disputed domain name was registered on August 20, 2018. The disputed domain name resolves to a website displaying third-party pay-per-click links.
5. Parties’ Contentions
The Complainant’s trademarks and brand are extremely well-known throughout the world. The letters “ibm” contained in the disputed domain name are exactly the same as the Complainant’s IBM trademark. The term “connection” in the disputed domain name can indicate that the name is affiliated with the Complainant.
The Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s IBM trademark. There is no evidence that “IBM” is the name of the Respondent’s corporate entity. Nor is there is any evidence of fair use or plans by the Respondent to use the IBM trademark or the disputed domain name for a bona fide offering of goods or services. Instead, the Respondent has been actively using the Complainant’s trademark to promote its website for illegitimate commercial gains. The Respondent was well aware of the Complainant’s trademarks when it registered the disputed domain name. The Respondent did not reply to a cease and desist letter to the Respondent asking the Respondent to disable and transfer the the disputed domain name to the Complainant. The Respondent has been intentionally attempting to create a likelihood of confusion as to the relationship between the Complainant and the Respondent by using the disputed domain name to generate revenue through pay-per-click advertisement links by using terms such as “IBM Lenovo Thinkpad”, “IBM 365” and “Ibm Laptop”.
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 listed 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 disputed domain name consists of the Complainant’s world-renowned trademark IBM, the dictionary word “connection” and the generic Top-Level Domain (“gTLD”) “.com”. The addition of either dictonary words or a gTLD to a trademark which does not change its overall meaning does not prevent the disputed domain name from being confusingly similar to a trademark which is the disputed domain name’s only other content: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraphs 1.8 and 1.11.1. For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent is not called “IBM” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademark. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant’s claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name currently resolves to a website containing links to various websites offering products that compete with the Complainant, notably laptop computers. The Respondent clearly knew of the Complainant’s trademark when registering the disputed domain name, such is the renown of that trademark. This is reinforced by the webpages to which the disputed domain name resolves.
In this Panel’s view, one is left with three possible motives for the Respondent’s decision to register and use the disputed domain name as the she Respondent has done: to disrupt the Complainant’s relationship with their customers or potential customers, attempt to attract Internet users for potential gain, or persuade the Complainant to buy the disputed domain name from the him Respondent for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith. The Respondent’s motivation may have been more than one of these and perhaps all three.
For these reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith for the purposes of the Policy. The Panel does not need to reach a decision on any of the other allegations made by the Complainant.
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 <ibmconnection.com> be transferred to the Complainant.
Date: January 7, 2019