WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines Corporation v. Gui Cong Ren
Case No. D2021-0086
1. The Parties
The Complainant is International Business Machines Corporation, United States of America (“United States”), represented internally.
The Respondent is Gui Cong Ren, China.
2. The Domain Name and Registrar
The disputed domain name <ibmdigitalanalytics.com> is registered with Domains of Origin, 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 14, 2021, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on February 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2021.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on March 3, 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’s trademark IBM is an abbreviation for International Business Machines Corporation, being the name that the Complainant adopted in 1924. The Company designs and manufactures devices for data processing such as computers and software. The Complainant has recently been ranked, among numerous other metrics, as the 38th largest company on the Fortune U.S. 500 list, the 118th largest company on the Fortune Global 500 list, and the 13th most valuable global brand by BrandZ.
The Complainant owns or has owned numerous trademarks world-wide, of which the following, representing trademarks registered in the United States and China, being the stated domiciles of the Complainant and the Respondent respectively, are representative for the purposes of the present proceeding:
IBM, stylised, United States Patent and Trademark Office (USPTO), registered July 31, 2012, registration number 4181289, in classes 6, 8, 9, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 28, 30, 35, and 41;
IBM, USPTO, registered February 15, 1977, registration number 1058803, in classes 1, 2, 3, 4, 7, 9, 10, 16, 28, 37, 41, and 42;
IBM, stylised, People’s Republic of China trademark, registration renewed July 21, 2010, registration number 1412819, in class 38.
No background information is available about the Respondent except for the contact details provided in order to register the disputed domain name on November 7, 2020. The disputed domain name has resolved to landing pages for game-playing or gambling websites.
The Complainant has twice sent cease and desist communications to the Respondent, without receipt of any reply.
5. Parties’ Contentions
The Complainant states that it is the owner of the registered trademarks listed in section 4 above.
The Complainant says the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark. The string “ibm” in the disputed domain name is identical to the Complainant’s trademark. The additional term “digitalanalytics” should not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark, but adds to the confusing similarity because the Complainant operates in the field of digital analytical services. The Complainant submits that any divergence between upper or lower case in the disputed domain name and the Complainant’s trademark, and the presence of the generic Top-Level Domain (“gTLD”) “com”, are of no significance in the determination of confusing similarity.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not permitted the Respondent to use the Complainant’s trademark in any way or to register any domain name incorporating the trademark. There is no evidence that the Respondent is known by the disputed domain name or similar or that there has been any fair use of it.
The Complainant says the disputed domain name is not in use or in preparation for use for any bona fide offering of goods or services because it has resolved to a website offering various links to websites concerned with gambling or pornography.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. At the time of registration of the disputed domain name, the Respondent should have been aware of the Complainant’s trademark because it is well known world-wide.
The Complainant says the Respondent has been using the disputed domain name for commercial gain by intentional confusion with the Complainant’s trademark. The Respondent’s intention is that Internet users will be attracted to the disputed domain name because it displays the Complainant’s trademark. They will thereby be taken to the Respondent’s website which displays links to gambling or pornographic websites that either are owned by the Respondent, or remit pay-per-click revenue at least partially to the Respondent.
The Complainant says it sent cease and desist letters to the Respondent at its stated contact details on December 8, 2020, and December 24, 2020. The Respondent’s failure to reply is further evidence of bad faith.
The Complainant has cited previous decisions under the Policy that it considers to be helpful to the Panel.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel has perused the supporting evidence produced by the Complainant in respect of the claimed trademark registrations. The Chinese documents were not in the language of the proceedings (paragraph 2(d) of the Rules) and could not be admitted, with the exception that an English translation provided of the renewal document in respect of trademark number 1412819 was accepted solely for present purposes. Paragraph 4(a)(i) of the Rules requires only, however, that the Complainant shall have rights in “a trademark”.
The disputed domain name features the entirety of the Complainant’s well-known trademark IBM and is to that extent similar. The additional words incorporated into the disputed domain name, making it clearly readable in total as “IBM digital analytics”, are found not to detract from the similarity of the disputed domain name to the Complainant’s trademark.
The Panel finds confusing similarity proven within the meaning of paragraph 4(a)(i) of the Policy and accordingly finds for the Complainant under this paragraph.
B. Rights or Legitimate Interests
The Complainant has asserted prima facie that it has not permitted the Respondent to use the Complainant’s trademark in any way and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy provides that the Respondent may contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and may establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Respondent has not responded formally and has not asserted rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. Furthermore, the Complainant states that according to its investigations, the disputed domain name, displaying the Complainant’s trademark, has resolved to a website offering links to other websites portraying gambling or pornography, and therefore is not in use and is not evidently in preparation for use for any bona fide offering of goods or services. There is no evidence that the Respondent is known by any name similar to the disputed domain name or that any other fair use has been made of the disputed domain name.
The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line 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”.
The Complainant has produced screen capture evidence of the website to which the disputed domain name resolved on January 6, 2021. The screen capture showed a website mainly in Chinese with some English characters and numerals, but it may be discerned from the general nature of the website that its contents consisted mainly of clickable links to other websites. Screen captures taken on the same date showed three representative websites reached by way of links from the website of the disputed domain name. These, which also were essentially in Chinese with backgrounds in an artificial or cartoon pictorial style, appeared to be the landing pages for game-playing or gambling websites, one of which contained the word “casino” in English.
On the totality of the evidence, it may reasonably be concluded that the disputed domain name has resolved to a website that advertised and hosted clickable links to gambling websites, and according to the Complainant also to pornographic websites, having nothing to do with the Complainant. It may also reasonably be concluded that the Respondent has not invested in the disputed domain name and the maintenance of the website to which it resolves without the expectation of commercial benefit, either through the possibility of the Respondent’s participation in the other websites to which it offers referrals, or through the common business model known as pay-per-click, in which other website owners pay commission for referrals, part of which commission accrues to the referring website owner. The Respondent has not offered any alternative enlightenment as to its intentions.
The Panel finds on the balance of probabilities that the disputed domain name has been in use in order to attract Internet users to the Respondent’s website for commercial gain by the means of intending to create confusion with the Complainant’s trademark, constituting use in bad faith in the terms of paragraph 4(b)(iv) of the Policy. The Panel also finds it to be more probable than not that the disputed domain name was registered by the Respondent for the bad faith purpose for which it has been used.
The Respondent failed to reply to the Complainant’s cease and desist communications dated December 8, 2020, and December 24, 2020. In the circumstances of the Complaint, the Respondent’s failure to reply, having been notified clearly of the Complainant’s rights, compounds bad faith because it amounts to “continued use ... in bad faith” (Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).
Registration and use of the disputed domain name in bad faith by the Respondent are found therefore in the terms 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 <ibmdigitalanalytics.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: March 9, 2021