WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines Corporation v. Chen Hui, Gname
Case No. D2021-0334
1. The Parties
The Complainant is International Business Machines Corporation, United States of America (“United States”), internally represented.
The Respondent is Chen Hui, Gname, Singapore.
2. The Domain Name and Registrar
The disputed domain name <520ibm.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2021. On February 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 3, 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 4 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 4, 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 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2021.
The Center appointed Jonathan Agmon as the sole panelist in this matter on March 8, 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 devotes substantial resources toward maintaining and building its products and reputation in the IBM trademark. The Complainant spends over USD 1 billion 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 in the United States, including but not limited to the following:
- Registration No. 4181289 for IBM registered on July 31, 2012;
- Registration No. 3,002,164 for IBM registered on September 27, 2005;
- Registration No. 1696454 for IBM registered on June 23, 1992;
- Registration No. 1694814 for IBM registered on June 16, 1992;
- Registration No. 1243930 for IBM registered on June 28, 1983;
- Registration No. 120090 for IBM registered on August 17, 1982;
- Registration No. 1058803 for IBM registered on February 15, 1977; and
- Registration No. 640606 for IBM registered on January 29, 1997.
The disputed domain name was registered on November 26, 2020, and resolves 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 “520” 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 integrates the Complainant’s IBM mark in its entirety, in addition to the numbers “520”. 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 “520”, which could stand for the old IBM eServer i5 Model 520 or IBM Power 520, does not obviate confusing similarity since the disputed domain name contains the Complainant’s mark in whole. The Complainant’s mark at the end of the disputed domain name is clearly recognizable within 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 which incorporates a complainant’s trademark for posting of pornographic content and/or related services constitutes 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. 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 “520” in the disputed domain name could stand for the old IBM eServer i5 Model 520 or IBM Power 520, 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 Complainant also submitted evidence that it had issued two cease and desist letters to the Respondent prior to the commencement of the proceedings to which the Responded never responded. The Panel draws a further adverse inference from the conduct of the Respondent.
The Respondent also 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 finds 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 <520ibm.com> be transferred to the Complainant.
Date: March 22, 2021