WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Business Machines Corporation v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2021-0035

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <ibmbenefits.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 January 6, 2021. On January 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 8, 2021, 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 January 8, 2021 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 January 8, 2021.

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 January 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2021.

The Center appointed Tobias Malte Müller as the sole panelist in this matter on February 15, 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 is a multinational company based in the United States, incorporated in 1911 and doing business under its current name since 1924, which operates globally in the technology sector under the trademark IBM. Ever since, the Complainant has been manufacturing products in various areas of technology, from office and research equipment (such as punch machines, calculating machines, clocks scales, and typewriters) to computers and computers related goods and services, which are commercialized worldwide under the trademark IBM.

The Complainant is the registered owner of a large international trademark portfolio for the term IBM and particularly invokes the following verbal trademarks IBM:

- United States trademark registration no. 640,606 registered in January 29, 1957 for goods in International Class 9 (with first use in commerce in August 5, 1955);

- United States trademark registration no. 1,243,930 registered in June 28, 1983 for services in International Class 42 (with first use in commerce in February 2, 1982);

- United States trademark registration no. 1,694,814 registered in June 16, 1992 for services in International Class 36 (with first use in commerce in February 1, 1989).

The disputed domain name was registered on November 4, 2020.

It results from the evidence included in the Complaint that the disputed domain name redirects to a website featuring pay-per-click advertisement links such as “Employee Benefit Plans”, “Employee Health Insurance”, and “Health Insurance Benefits” leading – as the Complainant undisputedly contends – to websites offering health insurance plans.

On November 5, 2020, the Complainant sent a cease and desist letter to the Respondent at the email address listed in the WhoIs information asking Respondent to disable and transfer the disputed domain name to IBM. Despite a reminder sent on November 20, 2020, no reply to those letter has been received by the Complainant.

5. Parties’ Contentions

A. Complainant

Firstly, the Complainant points out that the disputed domain name is identical or confusingly to the registered trademarks in which the Complainant has rights. In fact, the domain name contains the trademark IBM identically followed by the generic or descriptive word “benefits”.

Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Respondent not been licensed, contracted, or otherwise permitted by the Complainant in any way to use the IBM trademark or to apply for any domain name incorporating the IBM trademark, nor has the Complainant acquiesced in any way to such use or application of the IBM trademark by the 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 the Respondent is using or plans to use the IBM trademark or the domain name incorporating the IBM trademark for a bona fide offering of goods or services.

Thirdly, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. The Complainant submits that the Respondent, at the time of registration of the disputed domain name, was well aware of the existence of the Complainant’s trademarks since these marks are well-known. Furthermore, the Complainant is of the opinion that Respondent has been actively using the disputed domain name for illegitimate commercial gains. Respondent has been using the disputed domain name to attract visitors to her websites and increase traffic with the IBM trademark. In doing so, Respondent has intentionally created a likelihood of confusion by using the disputed domain name to generate revenue. In addition, the Complainant points out that generating more traffic with the disputed domain name will result in more pay-per-click revenues for Respondent. In fact, Complainant’s employee benefits page displays “IBM Benefits” in large letters at the top of the website. Respondent will therefore receive increased traffic, and thus higher profits, based on the use of the phrase “IBM Benefits” in the disputed domain name. Furthermore, since the disputed domain name incorporates the Complainant’s IBM trademark entirely along with the dictionary term “benefit”, no plausible good-faith reason or logic is conceivable for the Respondent to have registered the disputed domain name. Finally, email servers have been activated for the disputed domain name and the Complainant contends that this amounts to bad faith registration and use, since it is hard to imagine a legitimate way in which such emails would be used.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:

(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.

The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Complainant has provided evidence that it is the registered owner of various trademark registrations consisting of the verbal element IBM, amongst others United States trademark registrations no. 640,606 (registered in January 29, 1957 for goods in International Class 9), no. 1,243,930 (registered in June 28, 1983 for services in International Class 42) and no. 1,694,814 (registered in June 16, 1992 for services in International Class 36). These trademarks significantly predate the creation date of the disputed domain name, which is November 4, 2020.

UDRP panels have found that a domain name is confusingly similar to a complainant’s trademark where it incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt, WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademark IBM is fully included in the disputed domain name.

It is the view of this Panel that the combination of the trademark IBM with the dictionary term “benefits” does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks. The Panel therefore shares the view expressed in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, according to which “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”.

Hence, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks pursuant to the Policy, paragraph 4(a)(i). Accordingly, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name:

According to the Complaint, which has remained unchallenged, the Complainant has not authorized the Respondent’s use of the trademarks IBM, e.g., by registering the disputed domain name comprising said trademark entirely.

Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.

In addition, it results from the Complainant’s undisputed allegations that the disputed domain name resolves to a website featuring pay-per-click advertisement links such as “Employee Benefit Plans”, “Employee Health Insurance”, and “Health Insurance Benefits”, leading to websites offering health insurance plans. In the Panel’s view such commercial use cannot – from the outset – be considered a legitimate, noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy.

Finally, such use cannot be qualified a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy since it rather has a high propensity to mislead and divert consumers. Indeed, this Panel joins the Complainant’s view following which the Respondent’s website creates the impression of a relationship between the Complainant and the Respondent. However, it results from the Complainant’s undisputed allegations that the Respondent is not a licensee or an authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademarks.

Previous UDRP panels have found that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of a disputed domain name’s registration and use in bad faith.

One of those circumstances are those specified in paragraph 4(b)(iv), i.e., where the domain name is used to intentionally attempt to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

In the Panel’s view, the Respondent has intentionally registered the disputed domain name which contains the Complainant’s trademark IBM plus a dictionary term which is applicable to the Complainant’s activity. By the time the disputed domain name was registered, it is unlikely that the Respondent did not have knowledge of the Complainant and its mark IBM, which is identically included in the disputed domain name and which is recognized as enjoying a strong reputation (c.f. International Business Machines Corporation v. Le Van Hai, WIPO Case No. D2019-3000; International Business Machines Corporation v. Sadaqat Khan, WIPO Case No. D2018-2476; International Business Machines v. Niculescu Aron Razvan Nicolae, WIPO Case No. DRO2010-0003; International Business Machines Corporation v. Linux Security Systems srl, WIPO Case No. DRO2010-0004; International Business Machines Corporation v. Dana Mitchell, IBM Computer Supply, WIPO Case No. D2019-0522). The Complainant also provided evidence that the Respondent is using the disputed domain name to lead to a website featuring pay-per-click advertisement links such as “Employee Benefit Plans”, “Employee Health Insurance”, and “Health Insurance Benefits”, leading to websites offering health insurance plans. These facts confirm that the disputed domain name is used to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Finally, the further circumstances surrounding the disputed domain name’s registration and use affirm the findings that the Respondent has registered and is using the disputed domain name in bad faith:

(i) the Respondent originally masked its identity behind a privacy shield;

(ii) the Respondent did not answer to the cease and desist letter and the reminder sent by the Complainant before the present proceedings have been initiated;

(iii) the Respondent did not provide any formal response with conceivable explanation of its behavior within these proceedings so that no legitimate use of the disputed domain names by the Respondent is actually conceivable for the Panel; and

(iv) it results from the Complainant’s undisputed allegations that email servers have been activated for the disputed domain name. In the Panel’s view, the configuring of email servers on the disputed domain name gives rise to a significant risk of phishing or of other improper activities on the part of the Respondent, since it is hard to imagine a legitimate way in which such emails could be used (cf. International Business Machines Corporation v. Quikr Jobs, WIPO Case No. D2020-2510; Accor v. Pierre Masson, WIPO Case No. D2018-1645).

In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

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 disputed domain name <ibmbenefits.com> be transferred to the Complainant.

Tobias Malte Müller
Sole Panelist
Date: March 1, 2021