WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines Corporation (IBM) v. James Miller
Case No. D2020-0274
1. The Parties
The Complainant is International Business Machines Corporation (IBM), United States of America (“United States”), represented by Lisa Ulrich, United States.
The Respondent is James Miller, United States.
2. The Domain Names and Registrar
The disputed domain names:
are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2020. On February 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 7, 2020, 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 February 28, 2020 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 March 3, 2020.
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 March 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2020.
The Center appointed Evan D. Brown as the sole panelist in this matter on April 12, 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 an American multinational technology company who has provided a broad range of information technology related goods and services around the world for several decades. Ginni Rometty currently serves as the Complainant’s chief executive officer. Mark Rometty is Ms. Rometty’s spouse. The Complainant owns trademark registrations for the mark GINNI ROMETTY, such as European Union trademark registration No. 017939000, registered on December 25, 2018 and trademark registrations for ROMETTY, such as European Union trademark registration No. 017939001, registered on December 25, 2018.
The Respondent registered the disputed domain names, mostly in batches on several particular days, starting in 2012 and continuing through 2018. The disputed domain names are not the only ones pertaining to the Complainant that the Registrant has registered. For example, the Respondent purchased the domain name <ibmsucks.us> on February 14, 2011. It also registered an additional 59 domain names, all of which incorporated one of the following of the Complainant’s marks: GINNI ROMETTY, ROMETTY, and IBM. (These additional 59 domain names are not part of the current case – the Respondent has relinquished ownership of them as of the time of the filing of the Complaint.)
In the time since the Respondent acquired the disputed domain names, 21 of the disputed domain names have either redirected or still redirect to pornographic material hosted on the RedTube website. The Respondent has attempted to generate revenue from the other two disputed domain names by offering them for sale via Afternic.com.
Additionally, the Respondent sent a formal letter to the Complainant in 2016, containing an offer to sell the disputed domain names (with the exception of <markrometty.biz>, <ginnirometty.xyz>, and <virginiarometty.bio>, of which the latter two were acquired by the Respondent after the offer). The letter also offered for sale additional domain names containing Ms. and Mr. Rometty’s names that are not the subject of this case, while mentioning that many of the domain names in question were leading to “sites with inappropriate adult content and/or… sites with embarrassing/negative personal brand content.”
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
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 names are 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 names; and (iii) the disputed domain names have been registered and are being used in bad faith. All three of these elements are discussed below.
A. Identity of the Respondent
Each of the disputed domain names is registered by an individual named “James Miller”. The Complainant points out that there is some inconsistency in the contact information for the Respondent across the disputed domain names. But the Panel is satisfied that notwithstanding the inconsistent contact information, there is one Respondent, who goes by James Miller, for purposes of the disputed domain names and this case. In support of this notion, the Complainant notes that: the disputed domain names all (i) list an individual named “James Miller” from the state of Connecticut as the registrant, (ii) incorporate the Complainant’s registered marks in their entirety within the disputed domain names, (iii) redirect or have redirected either to the pornographic website RedTube or Afternic “For Sale” pages, (iv) are registered with the same regsitrar, (v) have been registered in batches on the same days, and (vi) use a highly similar naming convention throughout.
B. Identical or Confusingly Similar
This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and, second, whether the disputed domain names are identical or confusingly similar to that mark.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of the registered marks GINNI ROMETTY and ROMETTY as noted above.
The Complainant also claims common law trademark rights in GINNI ROMETTI, VIRGINIA ROMETTY, and ROMETTY that predate the registration of all the disputed domain names. The Panel finds persuasive the Complainant's arguments under the case of Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068, concerning (i) the extent to which the business community identifies Ms. Rometty (and the name "Rometty") with the Complainant; (ii) the extent to which the media and the public see Ms. Rometty as a driving force behind the company; (iii) the extent of personal ownership of the company by Ms. Rometty; (iv) the degree of personal control that Ms. Rometty exercises over the enterprise; (v) the extent to which Ms. Rometty is identified with any major achievements of the enterprise; and, (vi) how Ms. Rometty has demonstrable interests in protecting her name for commercial interests.
This element under the Policy functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 1.7. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. Id. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.
The Panel finds that the disputed domain names are confusingly similar to trademarks in which the Complainant has rights. The Complainant owns registrations for the marks GINNI ROMETTY and ROMETTY. Each of the disputed domain names incorporates one of these registered marks in its entirety. This is sufficient here to establish confusing similarity.
C. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.
The Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain names. On this point, the Complainant asserts, among other things, that:
- The Respondent has not been licensed, contracted or otherwise permitted by the Complainant in any way to use the “Ginni Rometty” and “Rometty” trademarks or to apply for any domain name incorporating the “Ginni Rometty” and “Rometty” trademarks, nor has the Complainant acquiesced in any way to such use or application of the “Ginni Rometty” and “Rometty” trademarks by the Respondent.
- There is no evidence that “Virginia Rometty,” “Ginni Rometty,” or “Mark Rometty” is the birthname of the Respondent, nor is there any evidence of legitimate noncommercial or fair use.
- There is no evidence that the Respondent is using or plans to use the “Ginni Rometty” and “Rometty” trademarks or the disputed domain names incorporating the “Ginni Rometty” and “Rometty” trademarks for a bona fide offering of goods or services.
- On the contrary, the Respondent has been actively using the “Ginni Rometty” and “Rometty” trademarks in the disputed domain names to promote its websites for illegitimate commercial gains. The Respondent has been intentionally attempting to create a likelihood of confusion by using the disputed domain names containing the “Ginni Rometty” and “Rometty” trademarks to generate revenue through selling the disputed domain names at inflated prices to either the Complainant or third parties after acquiring them. Such unauthorized uses of the Complainant’s trademarks are likely to cause consumers into erroneously believing that the Complainant is somehow affiliated with the Respondent or endorsing its commercial activities, while in fact no such relationship exists.
Overall, the above strikes the Panel as an attempt by the Respondent to extort money out of the Complainants.
These facts establish the Complainant’s prima facie showing. The Respondent has not provided any basis on which that showing may be overcome. The Complainant has established this second element under the Policy.
D. Registered and Used in Bad Faith
The Respondent’s conduct demonstrates bad faith registration. The record shows that for whatever reason, the Respondent has taken issue with the Complainant – it registered the domain name <ibmsucks.us> more than a year before Ms. Rometty became CEO. Soon after Ms. Rometty took the helm as CEO, the Respondent expanded his anti-IBM domain name purchasing efforts to add the disputed domain names and others, clearly targeting Ms. Rometty and her husband. The purchase of the disputed domain names and scores of additional domain names containing IBM and the names of Ms. Rometty and her husband show a clear and calculated effort to target the Complainant and its marks in a way that is considered abusive under the Policy.
Bad faith use is shown from the Respondent’s efforts to try to sell the disputed domain names, either via Afternic.com or directly to the Complainant. These efforts at selling the disputed domain names to the Complainant accompanied sinister assertions about how certain of the disputed domain names were being used in connection with “sites with inappropriate adult content and/or… sites with embarrassing/negative personal brand content.”
This use of the disputed domain names to redirect to pornographic material shows bad faith use. See Victoria Beckham v. Viktor Pavlenko, WIPO Case No. D2015-0840 (“A user who seeks to access the web site(s) to which the disputed domain name resolves would expect to be taken to a web site at which Complainant’s goods are offered for sale. Instead, the user is taken to various web sites at which adult and/or pornographic services are offered. This is a perfect example of registration and use in bad faith as described in paragraph 4(b)(iv) of the Policy”).
The Panel finds that the Respondent registered and is using the disputed domain names in bad faith. Accordingly, the Panel finds in favor of the Complainant on this factor.
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:
<ginnirometty.bio>, <ginnirometty.biz>, <ginnirometty.ceo>, <ginnirometty.co>, <ginnirometty.info>, <ginnirometty.me>, <ginnirometty.org>, <ginniromettysucks.com>, <ginnirometty.wtf>, <ginnirometty.xyz>, <markrometty.biz>, <markrometty.com>, <markrometty.info>, <markrometty.me>, <markrometty.net>, <markrometty.org>, <markromettysucks.com>, <markrometty.xyz>, <virginiarometty.bio>, <virginiarometty.info>, <virginiarometty.me>, <virginiarometty.org>, and <virginiarometty.xyz>
be transferred to the Complainant.
Evan D. Brown
Date: April 27, 2020