WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines Corporation v. fsracsva, Hu Da Zhong
Case No. D2019-2891
1. The Parties
The Complainant is International Business Machines Corporation, United States of America, represented internally.
The Respondent is fsracsva, Hu Da Zhong, China.
2. The Domain Name and Registrar
The disputed domain name <ibm128.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2019. On November 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2019, 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 28, 2019 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 December 2, 2019.
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 December 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2019.
The Center appointed George R. F. Souter as the sole panelist in this matter on January 6, 2020. 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 longstanding leading provider of computers and information technology goods and services, under its trademark IBM. It is the proprietor of trademark registrations of its IBM trademark in over 130 countries, including United States of America Registration No. 4181289, registered on July 31, 2012 and Chinese Registration No. 1914464, registered on August 7, 2002. Numerous panels in UDRP proceedings have recognized the Complainant’s IBM trademark to be well known.
The disputed domain name was registered on October 7, 2019, and is currently being used in connection with a pornographic and gambling website.
5. Parties’ Contentions
The Complainant alleges that the disputed domain is confusingly similar to its IBM trademark, containing its IBM trademark in its entirety, with the mere addition of the number 128.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that the Respondent has never received permission from the Complainant to use its IBM trademark in any connection, and, to the best of its knowledge, the Respondent is not generally known by the disputed domain name.
The Complainant alleges that the disputed domain name was registered in bad faith, and the Respondent is using the disputed domain name in bad faith in connection with a website offering pornographic and betting services.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(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
It is well-established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) indicator is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel finds the “.com” indicator to be irrelevant in the circumstances of the present case.
The Panel has no difficulty in following the recognition by panels in previous UDRP cases of the Complainant’s IBM trademark as a well-known trademark.
It has been well-established in prior decisions under the UDRP that a disputed domain name which wholly contains a complainant’s well-known trademark together with the mere addition of descriptive or non distinctive elements is insufficient to avoid a finding of confusing similarity between a trademark and a disputed domain name. In the circumstances of the present case, the disputed domain name incorporates the Complainant’s IBM trademark in its entirety and the Panel considers that the element “128” added to the Complainant’s IBM trademark does not prevent a finding of confusing similarity between the Complainant’s IBM trademark and the disputed domain name. The Panel, accordingly, finds that the disputed domain name is confusingly similar to the Complainant’s IBM trademark, and that the Complainant has satisfied the test of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstances of the present case, in which the Panel can find no reasonable alternative to the conclusion that the reason for the appropriation of such a well-known mark as the Complainant’s IBM mark was to enable the Respondent to unfairly benefit from the reputation of the IBM mark, to the possible detriment of the Complainant, are such, in the Panel’s opinion, as to justify a finding of registration in bad faith, and the Panel so finds.
In the circumstances of the present case there is the aggravating factor that the services offered by the website operated under the disputed domain name are such as might vicariously damage the corporate image of the Complainant. In these circumstances, the Panel has no hesitation in finding that the disputed domain name is being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 <ibm128.com> be transferred to the Complainant.
George R. F. Souter
Date: January 20, 2020