WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Business Machines Corporation v. chen hui, gname

Case No. D2021-0638

1. The Parties

The Complainant is International Business Machines Corporation, United States of America, represented internally.

The Respondent is chen hui, gname, Singapore.

2. The Domain Name and Registrar

The disputed domain name <ibmapc.com> is registered with CNOBIN Information Technology Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2021. On March 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 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 March 26, 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 March 26, 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 April 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2021.

The Center appointed C. K. Kwong as the sole panelist in this matter on May 7, 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 the owner of trademarks consisting of or embodying the three letters “IBM” whether in plain or stylized form. The registrations for these trademarks include the following trademark registrations in the United States of America:-

The disputed domain name <ibmapc.com> was registered on December 9, 2020 by the Respondent. According to the Amended Complaint and relevant evidence, the disputed domain name resolved to a website which relates to online gambling and links to other online gambling websites (Annexes 10 and 11 to the Amended Complaint).

The uncontradicted evidence produced by the Complainant shows that the registration of its IBM word mark took place long before the registration of the disputed domain name <ibmapc.com> on December 9, 2020.

Other than the particulars shown in the printout of the database searches conducted by the Complainant against the WhoIs database (as provided in Annex 1 to the Amended Complaint) and the website to which the disputed domain name resolves (as provided in Annexes 10 and 11 to the Amended Complaint) and the WhoIs database search results updated to April 1, 2021 provided by the Center, there is no evidence in the case file concerning the background of the Respondent and its business.

5. Parties’ Contentions

A. Complainant

The Complainant has made the following contentions:-

The Complainant is a leading innovator in the design and manufacture of a wide range of products that record, process, communicate, store and retrieve information, including computers and computer hardware, software and accessories.

The IBM trademark is a world-famous trademark, tracing its roots to the 1880s. Since it officially became International Business Machines on February 14, 1924, the Complainant has been offering products under the trademark IBM ever since.

The Complainant introduced its first large vacuum tube computer under the name IBM 710 in 1952, and since then has continuously used the trademark IBM in association with computers and computer hardware, software and accessories.

As a result of the high quality of goods and services which the Complainant has provided to its customers for over 100 years and its reputation as one of the premier manufacturers of computer and computer related goods and services throughout the word, the Complainant’s name and the IBM trademark have become famous and valuable assets. The Complainant has continued to devote substantial resources toward maintaining and building these assets.

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.

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 US 500 list, and the 118th largest company on the Fortune Global 500 list. The IBM trademark was valued by BrandZ to worth over USD 83 billion in 2020.

The disputed domain name consists of the letters “ibm” followed by the letters “apc” and the generic suffix “.com”. The letters “ibm” contained in the disputed domain name are exactly the same as the IBM trademark. The only difference is the addition of the letters “apc”. This minor variation does not obviate the confusing similarity between the disputed domain name and the IBM trademark. The disputed domain name is identical or confusingly similar to Complainant’s registered trademark.

The Respondent has 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 such trademark. There is no evidence that “ibm” or “ibmapc” is the name of the Respondent’s corporate entity, nor is there any evidence of fair use.

The Respondent has intentionally attempted to create a likelihood of confusion by using the disputed domain name containing the IBM trademark to increase Internet user traffic for its online gambling websites.

Such unauthorized use of the IBM trademark by the Respondent is likely to mislead consumers into believing that the Complainant is somehow affiliated with the Respondent or endorses its commercial activities, when it is not.

The Respondent was well aware of the Complainant’s trademark at the time of registration of the disputed domain name on December 8, 2020 as the Complainant’s IBM trademark is well known around the world and extensively registered worldwide.

The Complainant sent a cease and desist letter to the Respondent on January 15, 2021 asking the Respondent to disable and transfer the disputed domain name to the Complainant. A follow up letter was sent to the Respondent on February 3, 2021. The Respondent did not reply to them but continued to use the disputed domain name for its website with gambling contents.

The website to which the disputed domain name resolves extensively use click through features to direct users to other online gambling websites, to generate more traffic to its gambling websites and to make more money. All the above in combination are conclusive proof that the disputed domain name was registered and being used in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Notice of Proceedings

Having considered the records in the case file, the Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a Response is not due to any apparent omission or inadequate communication by the Center. It is further noted that receipt for delivery of the Notification of Complaint and Commencement of Administrative Proceedings under Waybill No. 7264976795 was signed on April 5, 2021.

B. The Three Elements

In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall 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 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.

The said three elements are considered below.

1. Identical or Confusingly Similar

On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in the trademark IBM by reason of its trademark registrations as recited in Section 4 above.

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.

This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name, see Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.

The distinctive feature of the disputed domain name in this case is the first three letters “ibm”, being the Complainant’s trademark IBM in its entirety. It is followed by the addition of the three letters “apc” which is then further followed by the generic Top-Level Domain (“gTLD”) “.com”.

It is well-established practice to disregard the gTLD “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Société des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416. It is well recognized that for general consumers, the first syllables are generally more important. In this case, the first syllables of the disputed domain name are “ibm” being the three letters comprising the Complainant’s unique IBM trademark.

While the letters “apc” by themselves do not constitute a pronounceable word, the expression comprising the letters “pc” is commonly recognized as the abbreviation for “personal computer”, being one of the important line of goods designed, manufactured and/or marketed by the Complainant while the letter “a” merely serves the function of an indefinite article before a singular noun.

The Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark IBM.

Accordingly, the first element of paragraph 4(a) of the Policy is established.

2. Rights or Legitimate Interests

The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.

In the present case, there is prima facie evidence of the Complainant’s asserted registration and use of the registered trade mark IBM well before the Respondent’s registration of the disputed domain name <ibmapc.com> on December 5, 2020. Further, the Panel notes that the names of the registrant and the registrant organization do not correspond in any way with the disputed domain name. From the evidence available to the Panel, the Respondent does not appear to be commonly known as <ibmapc.com>. There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent.

There is no legitimate explanation on the record as to why it was necessary for the Respondent to adopt the word “ibmapc” in its domain name.

The Complainant has also confirmed that it has not licensed the Respondent to use its trademark IBM in any way.

The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is established.

3. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides for four situations under which a conclusive presumption of registration and use in bad faith on the part of the respondent will be invoked, namely:

(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location or of a product or service of the respondent’s website or location.

However, it also specifically provides that the circumstances under which bad faith can be proved are without limitation. Put differently, the presumptions under paragraph 4(b) of the Policy are not exhaustive evidence of the way in which registration and use of a domain name in bad faith may be proved.

Given the Complainant’s uncontradicted claim of registration of its trade mark IBM and long extensive use of that mark well before the registration of the disputed domain name in 2020, the Respondent will need to come forward with a strong case in order to defend itself. Unfortunately, the Respondent has not come forward with any defence.

Prior UDRP panels have held that failure to respond to a cease and desist letter can be evidence of bad faith. Any such bad faith is compounded when the domain name owner, upon receipt of notice that the domain name is identical to a registered trademark, refuses to respond and continues with the activity complained of. Such conduct is not consistent with what one would reasonably expect from a good faith registrant and accused of cybersquatting.

By using whether directly or indirectly, authorizing or permitting the use of the disputed domain name by the operators of the site in the manner and circumstances described in this sub-section and those under subsections 1 and 2 above, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to go to the said website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or products on the website. The Panel accordingly finds that paragraph 4(b)(iv) of the Policy has also been invoked.

From the materials presently presented to the Panel, it is also not possible to foresee any plausible genuine use of the disputed domain name by the Respondent or the operator of the website in question.

The Panel finds that the domain name has been registered and is being used in bad faith under 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 <ibmapc.com> be transferred to the Complainant.

C. K. Kwong
Sole Panelist
Date: May 21, 2021