WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Business Machines Corporation v. Anonymize, Inc. / IC Def.

Case No. D2020-1720

1. The Parties

Complainant is International Business Machines Corporation, United States of America (“United States or U.S.”), internally represented.

Respondent is Anonymize, Inc., United States / IC Def, United States.

2. The Domain Name and Registrar

The disputed domain name <ibmconsulting.com> (the “Domain Name”) is registered with Epik, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2020. On July 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 2 and 7, 2020, the Registrar transmitted by email to the Center its verification responses confirming that Respondent is listed as the registrant and providing the contact details.

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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 7, 2020. That same day, Respondent submitted a late-filed informal submission by email identifying itself as “IC Def”.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on August 13, 3030. 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

Complainant designs and manufactures a wide array of products that, generally speaking, record, process, communicate, store and retrieve information, including computers and computer hardware, software and accessories. Complainant officially became International Business Machines (“IBM”) on February 14, 1924 and it has been offering products under the IBM Mark ever since (e.g., the IBM Type 012 Electric Duplicating Key Punch (1925), the IBM Type 016 Motor-Driven Electric Duplicating Key Punch (1929), the IBM Type 31 Alphabetical Duplicating Punch (1931), the IBM 710 large vacuum tube computer (1952), and the IBM Selectric typewriter (1961)).

For several decades, Complainant has owned trademark registrations for the IBM Mark in 170 countries around the world for a broad range of goods and services. Some examples are: U.S. Trademark Registration Nos. 640,606; and 1,243,930 (registered January 29, 1957 and June 28, 1983, respectively).

In 2019, Complainant was ranked the 13th most valuable global brand by BrandZ, the 12th best global brand by Interbrand, the 38th largest company on the Fortune U.S. 500 list, and the 114th largest company on the Fortune Global 500 list. The IBM Mark was valued by BrandZ as worth over USD 86MM in 2019.

The Domain Name was registered on September 7, 2019. It now resolves to a site identified as “Epik” that is offering for sale the Domain Name for USD 850.

Complainant first sent a cease and desist letter to the Registrar at the email address listed in the WhoIs information on April 8, 2020 asking them, among other things, to disable and transfer the Domain Name to IBM. On April 14, 2020, Respondent replied via the registrar stating, among other things: “You can go to udrp.” Complainant answered on April 28, 2020 stating that it was willing to buy the Domain Name for USD 50. On May 4, 2020, Respondent again replied via the Registrar stating, among other things, that they would sell the Domain Name for no amount lower than USD 850. On May 6, 2020, Complainant made a final offer off USD 100 for the Domain Name and on May 11, 2020 Respondent replied again through the Registrar that: “We are not interested in selling this domain to IBM at any price.” On May 26, 2020, Complainant sent a final cease and desist letter identifying its worldwide trademark registrations for the IBM Mark in conjunction with business consulting services as well as links to its websites on which it promotes to clients various consulting services. Respondent replied on May 29, 2020 stating, among other things: “We see lots of trademarks involving ibm [sic], but none containing anything similar to consulting…Hope to see you in UDRP soon.”

5. Parties’ Contentions

A. Complainant

The Domain Name is identical or confusingly similar to the IBM Mark registered worldwide by Complainant.

It consists of the usual letters “ibm” (not case sensitive), followed by the word “consulting” (not case sensitive), and the generic suffix “.com.” The letters “ibm” are exactly the same as the IBM Mark. Adding the word “consulting” does not obviate the confusing similarity between the Domain Name and the IBM Mark. Furthermore, Complainant provides various consulting services for its clients and business partners, including technological, advertising, and organizational consultancy. Complainant’s services are comprised of over 100,000 experts and consultants redesigning processes, apps, and cloud infrastructures. Accordingly, using the word “consulting” in combination with the IBM Mark within the Domain Name can indicate that the Domain Name is connected or affiliated with Complainant and/or endorsed or authorized by Complainant to sell Complainant’s goods and services.

Respondent has not been licensed, contracted or otherwise permitted by Complainant to use the IBM Mark or to apply for any domain name incorporating the IBM Mark, nor has Complainant acquiesced in any way to such use or application of the IBM Mark by Respondent. Additionally, there is no evidence that “IBM” is the name of Respondent’s corporate entity, nor is there any evidence of fair use. Furthermore, there is no evidence that Respondent is using or plans to use the IBM Mark or the Domain Name for a bona fide offering of goods or services. Respondent has been actively using the IBM Mark to generate profit by selling the Domain Name. Such unauthorized use of the IBM Mark is likely to trick consumers into erroneously believing that Complainant is somehow affiliated with Respondent or endorsing its activities, while in fact, no such relationship exists.

Respondent was well aware of the IBM Mark when registering the Domain Name. Complainant’s trademarks are well-known around the world. Complainant also relies on the extensive range of trademark registrations for IBM (including those used in association with consulting services). Furthermore, in Respondent’s reply to the initial cease and desist letter, Respondent evidences its knowledge of Complainant’s rights in the IBM Mark, referring to Complainant as the “trademark owner” of the IBM mark: “We gave domains to trademark owners for free in the past (at least one such case) when requested. We could do it now, but there is a point of it…”. Furthermore, Respondent’s initial reply contains an explicit threat regarding the future of the Domain Name: “You can go to udrp. … And in such a case we could either raise the price significantly, or decide not to sell it to you… and may even develop it into a site.” Respondent made clear threats to either (i) raise the price of the Domain Name to an exorbitant amount, (ii) sell the Domain Name to a third-party and/or competitor, or (iii) point the Domain Name to potentially trademark abusive content, all of which are evidence of Respondent’s bad-faith intent in registering the Domain Name.

In accordance with Respondent’s threat of April 14, 2020 to raise the price of the Domain Name “significantly,” Respondent’s second response to Complainant on May 4, 2020 was an offer to sell the Domain Name for USD 850. The Domain Name currently leads visitors to a webpage offering it for this same price. As evident from Respondent’s correspondence with Complainant, their offered price is based on domain brokers’ alleged valuation of the Domain Name, as opposed to any legitimate registration costs incurred by Respondent. In other words, Respondent’s proposed USD 850 resale price shows their intention to sell the Domain Name for valuable consideration in excess of their out-of-pocket costs directly related to it. This inference is specially supported by the fact that similar domain names, such as <ibmconsulting.net>, <ibmconsulting.org>, <ibmconsulting.us>, and <ibmconsultant.com> are valuated at less than USD 15 per year on Secure Server’s domain registration website. Such conduct constitutes bad faith under paragraph 4(b)(i) of the Policy.

B. Respondent

Respondent submitted a late, informal response to the Complaint which, as discussed below, the Panel has not considered.

6. Discussion and Findings

A. Late Filed Response

Under the Rules, the admissibility of evidence (including whether a late-filed response will be considered), is solely within the discretion of the Panel. See Paragraph 10(a) and (d) of the Rules; see also WIPO Notification of Complaint and Commencement of Administrative Proceeding at paragraph 7 “Default” (“‘The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by the Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate.’”). Paragraph 14(a) of the Rules provides: “In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules …, the Panel shall proceed to a decision on the complaint.”

Thus, the issue here is whether Respondent has shown exceptional circumstances for filing its informal response more than a week after it was due and without requesting any extensions of time. Respondent explains his lateness as follows: “(1) Epik was handling our response, but this time they didn’t (not blaming them); (2) [The Center’s] messages were landing at our spam folder, so they were not easy to locate; and (3) the deadline was not written inside email, and instead it was buried in one of pdf’s.” These assertions do not constitute exceptional circumstances.

From the time that Respondent registered the Domain Name with Epik, Inc. it was apprised of the fact that the Policy “is incorporated herein and made a part of this Agreement” and it agreed to abide by the Policy, which included submitting to this kind of mandatory administrative proceeding should a dispute, like the one here, arises. Information relating to Respondent’s rights and obligations in a domain name dispute including what a complainant needs to prove and how a respondent might demonstrate his rights to and legitimate interests in a disputed domain name were clearly set forth in the agreement with Epik, Inc. Furthermore, on July 2, 2020, the Registrar confirmed to the Center “that [it] ha[d] received the Complaint sent by the Complainant and informed [its] client of the situation on July 2nd, 2020.” Thus, Respondent was on notice of this administrative proceeding and his rights and responsibilities on or around July 2, 2020. The Center issued to Respondent a Notification of Complaint and Commencement of Administrative Proceeding on July 9, 2020, clearly setting forth the deadline for filing a Response with the ramifications for not filing a timely response.

Whether a Response filed late is admissible has been raised a number of times in previous UDRP decisions. See, e.g., 1099 Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033. Many panels have disregarded late-filed responses making clear that it is important to apply the Rules as written, absent a good reason, otherwise parties will feel free to disregard deadlines and Respondents will regularly submit late responses. The Panel agrees with those precepts. The Registrar clearly confirmed shortly after the Complaint was filed that it had apprised its client about the proceeding. Indeed, this proceeding was likely not a surprise to Respondent insofar as he repeatedly invited the proceeding during his communications with Respondent (April 14, 2020 – “You can go to udrp. . . . We are not scared of udrps.” May 29, 2020 – “Hope to see you in UDRP soon.”). And it appears that this may not have been the first time Respondent was involved in a UDRP proceeding (and, thus it knew of the relevant deadlines) because in explaining the late response Respondent claims that “Epik was handling our response, but this time they didn't.” (emphasis added).

The Center provided Respondent with clear and full notice and information about this proceeding including repeated notification about the deadline for filing a Response and the procedures for responding. The Rules are clear that a Respondent shall file its Response within the stated period and under the Rules, paragraph 14(a) the Panel shall proceed to a decision unless there are exceptional circumstances supporting an extension of time. Respondent did not request an extension of time nor did it demonstrate exceptional circumstances to support an extension. Thus, the Panel must proceed to a decision on the basis of the Complaint alone. The Panel notes, however, that even if the Panel would have taken into consideration the late-filed informal Response, the outcome of the decision would remain unchanged.

B. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the IBM Mark by virtue of the aforementioned United States trademark registrations and Complainant’s long-standing use of the Mark.

The Domain Name incorporates in its entirety Complainant’s IBM Mark. Where a domain name incorporates complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Berlitz Investment Corporation v. Marcus Santamaria, WIPO Case No. D2006‑1082.

Furthermore, adding the term “consulting” does not alter the assessment of confusing similarity. See International Business Machines Corporation v. Adam Stevenson, Global Domain Services, WIPO Case No. D2016-1695 (holding that the domain name, <ibmresearchgroup.com>, was confusingly similar to the IBM Mark and the addition of the descriptive phrase “researchgroup” in the domain name did not dispel the confusing similarity between the mark and the domain name). Similarly adding the ccTLD “.com” does not change the finding of confusing similarity because the TLD is generally disregarded in such an assessment.

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

C. Rights or Legitimate Interests

On the evidence of record, it is uncontested that Respondent has no rights or legitimate interests in the Domain Name.

Complainant maintains: (1) it has not licensed, contracted or otherwise permitted Respondent to use the IBM Mark or to apply for any domain name incorporating the IBM Mark; (2) it has not acquiesced in any way to Respondent’s use of the IBM Mark in the Domain Name; (3) there is no evidence that “IBM” is the name of Respondent’s corporate entity; and (4) there is no evidence of fair use or that Respondent is using or plans to use the IBM Mark or the Domain Name for a bona fide offering of goods or services. In this regard, Complainant argues Respondent has been actively using the IBM Mark to generate profit by selling the Domain Name. Complainant contends that such unauthorized use of the IBM Mark is likely to trick consumers into erroneously believing that Complainant is somehow affiliated with Respondent or endorsing its activities, while in fact, no such relationship exists.

Where, as here, Complainant has raised a prime facie case of Respondent’s lack of any rights or legitimate interests in the Domain Name, and Respondent has failed to rebut that presumption, the Panel is satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

It is undisputed Complainant has a worldwide reputation and has been doing business worldwide under the IBM Mark since the 1920’s, which is well before Respondent registered the Domain Name on September 7, 2019, and many years after Complainant’s trademark registrations issued (see for example, U.S. Trademark Registration Nos. 640,606 and 1,243,930 (registered January 29, 1957 and June 28, 1983, respectively). In addition to using the well-known IBM Mark in its entirety in the Domain Name without having any legitimate rights or interests in it, Respondent added a term to it that describes one of the services that IBM promotes and sells under the IBM Mark – consulting. That Respondent knew of IBM and its rights in the IBM Mark, Complainant points out that In Respondent’s reply on April 14, 2020 to Complainant’s initial cease and desist letter, Respondent refers to Complainant as the “trademark owner” of the IBM mark: “We gave domains to trademark owners for free in the past (at least one such case) when requested. We could do it now, but there is a point of it…” On this evidence, the Panel finds it is more likely than not Respondent was aware of the IBM Mark when it registered the Domain Name.

Respondent’s bad faith use of the Domain Name is evident from correspondence between the parties before this proceeding commenced. In Respondent’s response dated April 14, 2020 to Complainant’s initial cease and desist letter, Respondent sets forth what it considers “similar domains sold on the aftermarket” combining a three-letter acronym with the term “consulting” (e.g., <gtmconsultinng.com>) selling for around USD 2,000. Respondent refers to Estibot’s estimate of the value of the Domain Name being USD 4,000 and Godaddy’s estimate being USD 1,700. After Complainant offered to purchase the Domain Name for USD 50, Respondent responded: “Price lowered to $850. (second drop) Can’t go much lower, and this price is the lowest at this time, already discounted by more than 50 percent. And this price is valid for only purchasing at Epik marketplace. Elswhere price would be 999.” In fact, the Domain Name currently resolves to a webpage offering to sell it for USD 850.

Complainant argues it is evident from the correspondence that Respondent’s offered price is based on domain brokers’ alleged valuation of the Domain Name, as opposed to any legitimate registration costs incurred by Respondent. Complainant further posits that Respondent’s proposed USD 850 resale price shows the intent to sell the Domain Name for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to it. In this regard, Complainant maintains that similar domain names, such as <ibmconsulting.net>, <ibmconsulting.org>, <ibmconsulting.us>, and <ibmconsultant.com> are valued at less than USD 15 per year on SecureServer’s domain registration website. Based on the evidence of record, the Panel concludes that one intention Respondent had in acquiring the Domain Name was for the purpose of selling it to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name. An alternative plan, as expressed in the correspondence, was to sell the infringing Domain Name to third parties. This too is a commercial benefit for Respondent in violation of the Policy (e.g., April 14, 2020 - “There can be thousands of companies around the world who can buy this domain and put it into legitimate use without infringing with your trademark. So trying to sell this domain to such people would also be a legitimate, unless they have trademark on the exact word.” May 4, 2020 – “We believe a company named IBM Consulting somewhere in the world would be willing to pay at least 4 figures, as this keyword was registered in 6 extensions already.”).

Moreover, in combining the IBM Mark with the descriptive term “consultant”, which refers to a segment of Complainant’s business, Respondent’s remark in the correspondence that Respondent may not sell the Domain Name and instead develop it into a site, foreshadows additional bad faith use of Complainant’s IBM Mark. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4. They have also found that a respondent’s attempt to cause confusion, its lack of rights or legitimate interests in the disputed domain name, and the absence of any conceivable good faith use, are all circumstances which support a finding that a respondent registered the domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark.

For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <ibmconsulting.com> be transferred to Complainant.

Harrie R. Samaras
Sole Panelist
Date: August 27, 2020