WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Business Machines Corporation v. 秀斌方

Case No. D2021-0263

1. The Parties

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

The Respondent is 秀斌方, China.

2. The Domain Name and Registrar

The disputed domain name <ibm369.com> (“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 28, 2021. On January 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 28, 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 February 2, 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 February 2, 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 February 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2021.

The Center appointed Kar Liang Soh as the sole panelist in this matter on March 30, 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 leading manufacturer of computers and computer hardware, software and accessories, and has been promoting these products under trademarks incorporating the letters “IBM” (the “IBM Trademark”) since February 14, 1924. The Complainant traces its origins to the 1880s and has been ranked the 14th most valuable global brand valued at over USD 83 billion) by BrandZ and Interbrand as recently as 2020. In 2020, the Complainant was also recognised as the 38th largest company on the Fortune US 500 list and the 118th largest company on the Fortune Global 500 list.

The Complainant owns trademark registrations for the IBM Trademark in 131 countries all around the world, including the following:

The IBM Trademark has previously been held by past UDRP panels to be a well-known mark (International Business Machines Corporation v. Niculescu Aron Razvan Nicolae, WIPO Case No. DRO02010-0003; International Business Machines Corporation v. Linux Security Systems srl, WIPO Case No. DRO02010-0004; Physik Instrumente GmbH. & Co. v. Stefan Kerner and Jeremy Kerner and Magic Moments Design Limited, WIPO Case No. D2000-0101).

The Complainant is also the registrant of the domain name <ibm.com> under which the Complainant operates a website promoting its products under the IBM Trademark.

The Disputed Domain Name was registered on November 2, 2020. On or about January 28, 2021, the Disputed Domain Name resolved to a website, which contained explicit pornographic content and promoted both online gambling and sexual services. Very little information is known about the Respondent beyond the information on the WhoIs record of the Disputed Domain Name and the Registrar verification pursuant to this proceeding. The Respondent appears to be based in China. The Center’s Written Notice of the Commencement of Administrative Proceeding sent by courier to the Respondent’s purported address in China and the privacy shield service in the US were unsuccessful.

The Disputed Domain Name registration is subject to a privacy shield service. The Complainant sent a cease and desist letter to the Registrar intended for the Respondent. The Registrar replied stating its lack of authority over the matter and suggesting the Complainant seek recourse under the Policy. The Respondent did not reply to the cease and desist letter.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(i) The Disputed Domain Name is identical or confusingly similar to the IBM Trademark in which the Complainant has rights. The Disputed Domain Name is identical to the IBM Trademark and the Complainant’s domain name <ibm.com> except for the addition of the non-distinctive number “369”. The IBM Trademark is recognizable within the Disputed Domain Name and the addition of the number “369” does not obviate the confusing similarity between the Disputed Domain Name and the IBM Trademark;

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent has not been licensed, contracted or otherwise permitted by the Complainant to incorporate the IBM Trademark in the Disputed Domain Name or to use the IBM Trademark. There is no evidence that the IBM Trademark or the Disputed Domain Name is the Respondent’s name. There is no evidence that the Respondent is using or plans to use the Disputed Domain Name for a bona fide offering of goods or services. On the contrary, the Disputed Domain Name is being used to promote the Respondent’s website for illegitimate commercial gain and to increase Internet traffic for its pornographic and online gambling services; and

(iii) The Disputed Domain Name was registered and is being used in bad faith. The Respondent was well aware of the IBM Trademark at the time of registering the Disputed Domain Name. The IBM Trademark is well-known. The Respondent has no relationship to the Complainant or the IBM Trademark. The Respondent is intentionally attempting to create a likelihood of confusion by using the Disputed Domain Name to attract visitors to his pornographic and online gambling services. It also creates a likelihood of confusion as to the relationship between the Complainant and the Respondent, as well as the source, sponsorship or endorsement of the Respondent’s website, goods or services. The Respondent’s use of the Disputed Domain Name amounts to “pornosquatting”.

B. Respondent

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

6. Discussion and Findings

To succeed in the proceeding, paragraph 4(a) of the Policy requires the Complainant to establish the following:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark 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

In view of the various trademark registrations for the IBM Trademark presented to the Panel, the Panel is satisfied that the Complainant has rights in the IBM Trademark. Many of the trademark registrations, and correspondingly the rights of the Complainant in the IBM Trademark, pre-date the registration of the Disputed Domain Name by decades. It is indisputable that the Disputed Domain Name incorporates the IBM Trademark in its entirety and the addition of the numeric suffix “369” does not prevent the IBM Trademark from being easily recognisable in the Disputed Domain Name. In the circumstances, the Panel holds that the Disputed Domain Name is confusingly similar to the IBM Trademark and the first limb of paragraph 4(a) of the Policy is established.

B. Rights or Legitimate Interests

The Complainant has disclaimed any relationship with the Respondent. The Complainant has asserted categorically that the Respondent is not authorized to use the IBM Trademark or register the Disputed Domain Name. There is a patent lack of evidence before the Panel that could suggest any rights or legitimate interests in the Disputed Domain Name being held by the Respondent. The Panel accepts that the Complainant has made out a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The burden of production falls upon the Respondent to show otherwise, for example, that he is using the Disputed Domain Name for a bona fide or legitimate noncommercial purpose. However, in the absence of a Response to throw further light on the matter, the Panel cannot see how the Respondent’s promotion of online gambling and sexual services, and the display of pornographic content on the website resolved from the Disputed Domain Name, may amount to bona fide or legitimate noncommercial use. Therefore, the prima facie case is unrebutted and the Panel concludes that the second limb of paragraph 4(a) of the Policy is established.

C. Registered and Used in Bad Faith

The Panel is of the view that there is sufficient evidence in the proceeding to support the Complainant’s contention that the IBM Trademark is well-known. It is exceedingly inconceivable that the Respondent could not have been aware of the IBM Trademark at the time of registering the Disputed Domain Name. There is no reasonable explanation discernible from the evidence that the Respondent could have registered the Disputed Domain Name other than for the purpose described in paragraph 4(b)(iv) of the Policy, which states:

“by using the domain name, you have intentionally attempted 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.”

The content of the website resolved from the Disputed Domain Name is clearly for the purpose of commercial gain. It is unimaginable that the online gambling and sexual services aggressively promoted on the website could have any other objective than commercial gain as an end. By incorporating the well-known IBM Trademark in the Disputed Domain Name, the Respondent has successfully devised an instrument for creating at least a likelihood of initial interest confusion as to the source, sponsorship, affiliation or endorsement of the website resolved from the Disputed Domain Name.

Quite apart from the non-exhaustive examples of bad faith registration and use highlighted in paragraph 4(b) of the Policy, the Panel notes that past UDRP panels have often held that a the diversion of Internet users to a pornographic website by a disputed domain name (i.e., “pornosquatting”) is in and of itself bad faith (e.g., Vivendi v Giuseva Swetland, WIPO Case No. D2018-2631; CHRISTIAN DIOR COUTURE v. Paul Farley, WIPO Case No. D2008-0008; The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743; V&V Supremo Foods, Inc. v. pxlchk1@gmail.com, WIPO Case No. D2006-1373). The Panel’s finding of bad faith registration and use on the basis of paragraph 4(b)(iv) of the Policy is corroborated by the wisdom of these past UDRP panels.

It is not helpful that the Respondent chose to hide its identity behind a privacy shield service, lending further weight to the analysis that the Respondent’s registration and use of the Disputed Domain Name is in bad faith. The Panel is not alone in this observation, which has been echoed by many past UDRP panels in respect of respondents operating under the cover of privacy shield services (e.g., Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533; Schering Corporation v. Name Redacted, WIPO Case No. D2012-0729).

As such, the Panel holds that the Disputed Domain Name was registered and is being used in bad faith. The requirement of the third limb of paragraph 4(a) of the Policy is thus met.

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, <ibm369.com>, be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Date: April 20, 2021