WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines Corporation v. Domain Administrator, See PrivacyGuardian.org / Tan Fei Tan
Case No. D2021-0085
1. The Parties
The Complainant is International Business Machines Corporation, United States of America (“United States”), internally represented.
The Respondent is Domain Administrator, See PrivacyGuardian.org, Unites States / Tan Fei Tan, China.
2. The Domain Name and Registrar
The disputed domain name <ibmoffice.com> (“the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2021. On January 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 12, 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 20, 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 20, 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 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2021.
The Center appointed Nicholas Weston as the sole panelist in this matter on March 9, 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 United States based multi-national company with businesses providing information technology, software, hardware and ancillary services with revenue of USD 77.1 billion in 2019. The Complainant adopted the name “International Business Machines” in 1924 and holds registrations for the trademark IBM and variations of it in numerous countries, including, for example, United States registration No. 640,606 in international class 9, registered on January 29, 1957.
The Complainant owns numerous domain names that comprise of, or contain, the trademark IBM, including the domain name <ibm.com>, which was registered on March 18, 19861 .
The Respondent registered the Disputed Domain Name on December 8, 2020. The Disputed Domain Name resolves to a webpage that includes links to websites offering a variety of products and services including online gambling and pornography.
5. Parties’ Contentions
The Complainant cites its United States trademark registrations including No. 640,606 registered in 1957 and numerous other registrations around the world, for the mark IBM as prima facie evidence of ownership.
The Complainant submits that the mark IBM is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the IBM trademark and that the similarity is not removed by the addition of the word “office”, or the addition of the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the “Respondent has been intentionally attempting to create a likelihood of confusion by using the domain name containing the IBM trademark to increase Internet user traffic for its pornographic and online gambling websites”, and contends that such respondent has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the prior use and fame of the Complainant’s trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark IBM in numerous countries including, pursuant to United States trademark registration No. 640,606. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the IBM trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark IBM; (b) followed by the descriptive word “office”; (c) followed by the gTLD “.com”.
It is well established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “ibmoffice”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word, in this case, the word “office” (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).
The Panel finds that the addition of the term “office” after the Complainant’s registered trademark does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademark (see Facebook Inc. v. Peter Kuku, WIPO Case No. D2020-0517 (“The disputed domain name wholly incorporates Complainant’s well-known FB Mark along with the dictionary terms ‘grants’ and ‘office’. Prior UDRP panels have consistently held that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a complainant’s mark does not prevent a finding of confusing similarity between a domain name and that mark.”); Virgin Enterprises Limited v. Whois Privacy Protection Service, Inc. (customer number RCVHXQYR) / Paul Greg, WIPO Case No. D2017-1877 (“the addition of the descriptive term “office” […] does not prevent a finding of confusing similarity under the first element.”).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
The Complainant contends, prima facie, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a webpage dominated by links advertising “numerous links to other pornographic and online gambling websites”, thereby illegitimately passing off the owner’s goodwill and reputation for its own benefit. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
In the absence of a response, this Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting Internet users, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its pay-per-click (“PPC”) webpage.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, the trademark IBM is such a well-known mark for computing and related services that it would be inconceivable that the Respondent might have registered the Disputed Domain Name without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Physik Instrumente GmbH. & Co. v. Stefan Kerner and Jeremy Kerner and Magic Moments Design Limited, WIPO Case No. D2000-1001 (“The ‘IBM’ and ‘VW’ letter trademarks are used by two of the world’s largest industrial corporations and without doubt are ‘well known’ within the meaning of Article 6bis of the Paris Convention”); International Business Machines Corporation v. Sledge, Inc. / Frank Sledge, WIPO Case No. D2014-0581 (“its IBM mark, … is one of the most well-known and internationally famous brands in the world”); International Business Machines Corporation v. Hulmiho Ukolen / Domain Admin, WIPO Case No. D2015-0320 (“the trademark IBM is a well-known trademark”)).
Further, a gap of several years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name at least 63 years after the Complainant established registered trademark rights in the IBM mark.
The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
On the issue of use, the evidence is that the Disputed Domain Name resolves to a PPC parking page unconnected with any bona fide supply of goods or services by the Respondent. The Panel surmises that the business model in this case, was for the Respondent to passively collect click-through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s IBM office services. Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra; Accenture Global Services Limited v. Tulip Trading Company, WIPO Case No. D2015-1520; National Grid Electricity Transmission Plc and NGrid Intellectual Property Limited v. Tulip Trading Company, WIPO Case No. D2016-0036; WIPO Overview 3.0, section 3.5.
This Panel accepts, as the basis of a further finding of bad faith, the Complainant’s uncontested evidence of links to pornography in association with the Disputed Domain Name, that “such conduct qualifies as “pornosquatting”. (citing Prada S.A. v. Roberto Baggio, WIPO Case No. D2009-1187 (“The facts of this case constitute a classic example of ‘porno-squatting' in which confusion with a well-known trade mark is used to divert customers to a pornographic website for commercial purposes”).
The Panel has also considered whether it should draw an adverse inference from the Respondent’s use of a privacy shield. In the circumstances where the Respondent has registered a Disputed Domain Name involving the Complainant’s well-known trademark, it seems reasonable to infer that the main purpose the Respondent has used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same registrant (see Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598 (“it is difficult to see why a PPC advertiser needs to protect its identity except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting”); Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.
In the absence of a reponse with evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark IBM and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a PPC parking webpage for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 <ibmoffice.com> be transferred to the Complainant.
Date: March 23, 2021
1 According to WhoIs DomainTools, accessed on March 19, 2021 at “https://whois.domaintools.com/ibm.com”