WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines Corporation v. S Jon Grant
Case No. D2020-3098
1. The Parties
The Complainant is International Business Machines Corporation, United States of America (“United States”), internally represented.
The Respondent is S Jon Grant, United States.
2. The Domain Name and Registrar
The disputed domain name <myibm.xyz> (the “Disputed Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2020. On November 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 19, 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 November 30, 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 amendment to the Complaint on December 3, 2020.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on December 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2020.
The Center appointed Lynda M. Braun as the sole panelist in this matter on January 8, 2021. 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 Bacakground
The Complainant is a multinational information and technology company established in the United States. The Complainant was founded in 1911 and currently is one of the largest global producers and sellers of computer software and hardware, and associated services. The Complainant provides its goods and services in over 170 countries worldwide.
The Complainant is the owner of numerous trademark registrations that it uses in connection with its information technology goods and services across various jurisdictions throughout the world, including in the United States, where the Respondent purportedly resides. Specifically, the Complainant’s trademark portfolio in the United States includes, inter alia, the following:
IBM, United States Registration No. 4,181,289, registered on July 31, 2012 in International Classes 9, 16, 18, 20, 21, 22, 24, 25, 28, 35 and 41; IBM, United States Registration No. 3,002,164, registered on September 27, 2005 in International Class 9; IBM, United States Registration No. 1,696,454, registered on June 23, 1992 in International Class 36; IBM, United States Registration No. 1,694,814, registered on June 16, 1992 in International Class 36; IBM, United States Registration No. 1,243,930, registered on June 28, 1983 in International Class 42; IBM, United States Registration No. 1,205,090, registered on August 17, 1982 in International Classes 1, 7, 9, 16, 37, and 41; IBM, United States Registration No. 1,058,803, registered on February 15, 1977 in International Classes 1, 9, 16, 37, 41 and 42; and IBM, United States Registration No. 640,606, registered on January 29, 1957 in International Class 9.
The above-referenced trademarks will hereinafter collectively be referred to as the “IBM Mark”.
In 2020, the Complainant was ranked the 14th most valuable global brand by BrandZ, the 14th best global brand by Interbrand, the 38th largest company on the Fortune United States 500 list, and the 118th largest company on the Fortune Global 500 list. Thus, the Complainant is well known worldwide as a prominent company and the recognition of its IBM Mark has spanned multiple decades. The Complainant has acquired valuable goodwill in the IBM Mark, which has been, and continues to be, in full force and effect.
On June 15, 2020, the Complainant sent a cease and desist letter to the Respondent at the email address in the WhoIs listing, demanding that the Respondent disable and transfer the Disputed Domain Name to the Complainant. The Complainant did not receive a response from the Respondent.
The Disputed Domain Name was registered on June 11, 2020. The Disputed Domain Name resolves to a parking page that contains pay-per-click third-party sponsored hyperlinks, purportedly providing the Respondent a profit from click-through fees.
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s trademark.
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- the Disputed Domain Name was registered and is being used in bad faith as it resolves to a parking page that contains pay-per-click third-party sponsored hyperlinks, purportedly providing the Respondent a profit from click-through fees.
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:
(i) The Disputed Domain Name is identical or confusingly similar to trademarks or service marks 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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the IBM Mark.
It is uncontroverted that the Complainant has established rights in the IBM Mark based on its many years of use as well as its registered trademarks for the IBM Mark in the United States and many jurisdictions worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the IBM Mark.
The Disputed Domain Name consists of the IBM Mark in its entirety preceded by the dictionary term “my”, and followed by the generic Top-Level Domain (“gTLD”) “.xyz”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. For example, numerous UDRP decisions have reiterated that the addition of a dictionary word to a trademark is insufficient to prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
Finally, the addition of a gTLD such as “.xyz” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See, e.g., Groupon, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Vashti Scalise, WIPO Case No. D2016-2087; Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s IBM Mark.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its IBM Mark. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name to create a pay-per-click landing page, the Panel finds that the Respondent was not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the Respondent used the IBM Mark for commercial gain. Moreover, the Panel finds that domain names in the form <my+trademark> carry a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, based on the circumstances here, the Panel concludes that the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to attract Internet users to the Respondent’s landing page by creating a likelihood of confusion with the Complainant’s IBM Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name’s resolving page. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its IBM Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi/Madonna.com, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”).
Second, the Respondent attracts users for commercial gain by displaying third party pay-per-click sponsored links on the landing page to which the Disputed Domain Name resolves. The use of a confusingly similar domain name to display third party hyperlinks and collect click-through fees is evidence of bad faith under Policy paragraph 4(b)(iv). As such, the Respondent is not only trading on consumer interest in the Complainant in order to generate Internet traffic and to commercially benefit from the sponsored links that appear on the landing page, but the Respondent also purportedly derives commercial advantage in the form of referral fees. In the Panel’s view, this constitutes bad faith. See Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Lewis Black v. Burke Advertising, LLC, WIPO Case No. D2006-1128. Further, when the links on pay-per-click pages are based on the trademark value of a domain name, the trend in UDRP decisions is to recognize that such practice constitutes bad faith. See Champagne Lanson v. Development Services., WIPO Case No. D2006-0006 (pay-per-click landing page not legitimate where ads are keyed to the trademark value of the domain name).
Finally, the Panel finds that the Respondent likely had actual knowledge of the Complainant’s IBM Mark when registering the Disputed Domain Name, demonstrating bad faith. The Respondent registered the Disputed Domain Name decades after the Complainant first used and obtained its numerous trademark registrations for the IBM Mark. Thus, it is highly likely that the Respondent had the Complainant in mind when registering and using the Disputed Domain Name.
Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met 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 <myibm.xyz> be transferred to the Complainant.
Lynda M. Braun
Date: January 22, 2021