WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines Corporation v. Yang Yang, 657668
Case No. D2020-3158
1. The Parties
The Complainant is International Business Machines Corporation, United States of America (“United States”), internally represented.
The Respondent is Yang Yang, 657668, Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <ibm1911.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 24, 2020. On November 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 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 December 1, 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 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2021.
The Center appointed Jonathan Agmon as the sole panelist in this matter on February 4, 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 Background
The Complainant, International Business Machines Corporation, commonly known as “IBM”, was incorporated on June 16, 1911 and is a world-famous manufacturer of a wide array of products, including computers and computer hardware, software and accessories. The Complainant officially became International Business Machines on February 14, 1924. The Complainant has been offering products under the trademark IBM ever since. 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 U.S. 500 list, and the 118th largest company on the Fortune Global 500 list.
The Complainant’s name and the IBM trademark are no doubt well-known globally. The Complainant devotes substantial resources toward maintaining and building its products and reputation in the IBM trademark. The Complainant spends over USD 1B annually marketing its goods and services globally, using the IBM trademark, and has undertaken extensive efforts to protect its name and enforce the IBM trademark.
The Complainant owns numerous trademark registrations for IBM in the United States, including but not limited to the following:
- Registration No. 4,181,289 registered on July 31, 2012;
- Registration No. 3,002,164 registered on September 27, 2005;
- Registration No. 1,696,454 registered on June 23, 1992;
- Registration No. 1,694,814 registered on June 16, 1992;
- Registration No. 1,243,930 registered on June 28, 1983;
- Registration No. 1,205,090 registered on August 17, 1982;
- Registration No. 1,058,803 registered on February 15, 1977; and
- Registration No. 640,606 registered on January 29, 1997.
The disputed domain name <ibm1911.com> was registered on September 6, 2020, and resolved to an active website with links to pornographic and online gambling websites.
5. Parties’ Contentions
The Complainant’s contentions include the following:
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s registered IBM mark as the disputed domain name wholly incorporates the IBM mark and the numbers “1911” along with a generic Top-Level Domain (“gTLD”) “.com”, that are insufficient to avoid confusing similarity.
The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name as it has not licensed or permitted the Respondent to use any of its trademarks or register the disputed domain name.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith for illegitimate commercial gain by creating a likelihood of confusion with the Complainant’s IBM mark and thereby disrupting the business of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain name wholly integrates the Complainant’s IBM mark in its entirety, in addition to the numbers “1911”. 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. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. In the present case, the addition of the numbers “1911”, which signifies the year the Complainant was incorporated, does not obviate confusing similarity since the disputed domain name contains the Complainant’s mark in whole. The Complainant’s mark in the beginning of the disputed domain name is clearly in the recognizable aspect of the disputed domain name.
Further, it is well established that the addition of the gTLD “.com”, as a standard registration requirement, is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (see WIPO Overview 3.0, section 2.1).
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Complainant has provided evidence that it owns trademark registrations long before the disputed domain name was registered and that it is not affiliated with nor has it licensed or otherwise permitted the Respondent to use the Complainant’s trademark (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).
There is also no evidence on record showing that the Respondent is commonly known by the disputed domain name (see WIPO Overview 3.0, section 2.3). Moreover, the disputed domain name resolves to a pay-per-click website offering pornography and online gambling services, which does not constitute a legitimate or bona fide use (see WIPO Overview 3.0, section 2.9).
Further, the Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The complainant must also show that the respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence showing that the disputed domain name redirects to an active website providing links for pornography and online gambling. It is well-established that the use of a domain name for posting of pornographic content and/or related services constitute evidence of bad faith registration and use of a domain name (see Coral Trademarks, Ltd. v. Eastern Net, Inc., WIPO Case No. D2000-1295 (“The posting of pornographic contents on a web site under a domain name that corresponds to a third party’s mark is a bad faith use of a domain name”); America Online, Inc. v. Viper, WIPO Case No. D2000-1198 (“The use of AOL as part of a domain name offering pornographic products and services certainly ‘tarnishes’ Complainant’s existing marks, which is also evidence of bad faith”); Valor Econômico S.A. v. Daniel Allende, WIPO Case No. No. D2001-0523 (“Complainant has proved that Respondent linked the <valoreconomico.net> web page to adult content or pornographic sites. This is a typical bad faith use of the domain name.”); ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215 (“The use of ABB as part of a domain name offering pornographic material certainly tarnishes the Complainant’s existing marks, which is also evidence of bad faith.”); Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022 (“Preliminary, it is commonly understood, under WIPO case law, that whatever the motivation of Respondent, the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”) Similarly, the Panel finds that the use of the disputed domain name in the present case constitutes evidence of bad faith registration and use of the disputed domain name.
Further, the disputed domain name is confusingly similar to the Complainant’s IBM mark which the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainant. Previous UDRP panels ruled that in such circumstances “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP. The Complainant also submitted that the numbers “1911” in the disputed domain name is the year in which it was incorporated, which indicates that the Respondent had knowledge of and was aware of the Complainant at the time of registration. This is another indication of bad faith behavior on the part of the Respondent as it indicates that the Respondent specifically targeted the Complainant.
In addition, the Respondent did not submit a Response in this proceeding. This may be a further indication of the Respondent’s bad faith, which was considered by the Panel.
Based on the evidence presented to the Panel, including the registration of the disputed domain name after the registration of the Complainant’s trademark, the confusing similarity between the disputed domain name and the Complainant’s trademark, the Respondent’s use of the disputed domain name, and the failure of the Respondent to submit a response, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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 <ibm1911.com> be transferred to the Complainant.
Date: February 18, 2021