AWIPO Arbitration and Mediation Center
DMINISTRATIVE PANEL DECISION
International Business Machines Corporation v. PremiumDomains ForSale, Tropic Management Systems Ltd.
Case No. D2021-0939
1. The Parties
The Complainant is International Business Machines Corporation, United States of America (“United States”), represented internally.
The Respondent is PremiumDomains ForSale, Tropic Management Systems Ltd., Cayman Islands, United Kingdom.
2. The Domain Names and Registrar
The disputed domain names <ibmbluedirect.com> and <ibm-ready.com> (together, the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2021. On March 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 29, 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 April 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 5, 2021.
The Center appointed Warwick Smith as the sole panelist in this matter on May 18, 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 and has been for many years a leading innovator in the design and manufacture of a wide array of products that record, process, communicate, store and retrieve information, including computers and computer hardware, software and accessories. It was incorporated in 1911, and officially became “International Business Machines” in February 1924. It has been offering its products under the trade mark IBM continuously since then. The mark IBM has been used by the Complainant in association with computers, computer hardware, software and accessories, since 1952.
The Complainant’s IBM Selectric typewriter, introduced in 1961, was a significant innovation in the business sector at the time, and the United States Postal Service issued a 2011 postage stamp featuring the typewriter as part of its “Pioneer of American Design” series of stamps. The Complainant says that, because of the high quality of the goods and services it 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, its name and its IBM trade marks are famous and valuable assets. The Complainant referred to a number of WIPO UDRP panel decisions where the renown of the Complainant’s IBM mark was accepted.
The Complainant spends substantial sums marketing its goods and services globally, using the IBM trade mark, and it has registered its IBM mark in 170 countries around the world, in respect of a broad range of goods and services. In addition, the Complainant has held United States registrations for its IBM mark for a number of years in respect of a broad range of goods and services (including in particular information technology-related goods and services). It is not necessary to refer to all of these registrations for the purposes of this decision, but by way of example the United States registrations include the following marks which claim a first use in commerce going back to the 1950s or earlier:
IBM word mark No. 640,606 registered on January 29, 1957 in respect of magnetic recording tape and certain related goods, and
IBM word mark No. 1,058,803 registered on February 15, 1977 in respect of various goods and services in classes 1, 2, 3, 4, 7, 9, 10, 16, 28, 37, 41 and 42.
In 2018, the Complainant’s IBM trade mark was valued by BrandZ at USD 96 billion. The corresponding BrandZ valuation figures for 2019 and 2020 were USD 86 billion and USD83 billion respectively. In 2020, BrandZ ranked IBM the 14th most valuable global brand, and Interbrand ranked IBM as No. 14 in its list of “Best Global Brands”. The IBM brand has received similar high rankings in Fortune 500 brand lists.
Since the 1980s, the Complainant has been informally known as “Big Blue”. While the origin of this name is not entirely clear, “Big Blue” has been said to refer to the blue tint of its early computer displays, or to the deeper blue color of its corporate logo.
The Domain Names were both registered on December 8, 2020. The Complainant says that it did not license or authorize the Respondent to use its IBM mark, or to register any domain name incorporating that mark, and there is no evidence that “IBM” is the name of any corporate entity associated with the Respondent.
The Respondent has used the Domain Names for pay-per-click advertising. A screenshot of the website at <ibmbluedirect.com>, taken by the Complainant on March 4, 2021, contained the links: “IBM Jobs 2019”, “New IBM Products”, “IBM Thinkpad on Sale”, “Cheap IBM Laptop”, “Custom Computer Systems”, “Top 10 Laptops”, and “Cloud Hosting Providers”. A screenshot of the website at <ibm-ready.com>, taken by the Complainant on the same day, displayed a link “Building Information Modeling”, plus a further 6 links, each comprising the mark IBM and the name of what appears to be one of the Complainant’s products.
The Complainant says that since the Domain Names were registered, the WhoIs records for the Domain Names have both been associated with a particular IP address which has been used in the dissemination of botnet command-and-control servers (according to the Complainant, a “botnet” is a network of compromised computers infected by a program that communicates with its command-and-control infrastructure, in order to attack websites, send unsolicited emails, etc. Carefully coordinated botnets are said to be used often to gather sensitive information from the infected hosts, such as financial data).
Email servers have been activated for both Domain Names.
Cease and desist letters sent by the Complainant to the Respondent on December 10 and 29, 2020, and on March 5, 2021, met with no response.
5. Parties’ Contentions
A. Complainant
The Complainant says that the Domain Names are confusingly similar to the IBM mark in which it has rights. The IBM mark is incorporated in full in both of the Domain Names, and in each case the mark is followed by generic words (“blue direct”, and “ready”). Where a complainant’s mark is incorporated in full in a disputed domain name, and is accompanied only by descriptive or generic words, a finding of confusing similarity is appropriate.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the Domain Names. On the contrary, the Respondent has been actively using the IBM mark in the Domain Names to promote its website for illegitimate commercial gains. The Respondent has used the mark without authority, to trick consumers into erroneously believing that the Complainant is somehow affiliated with the Respondent, or is endorsing its commercial activities, when no such relationship exists.
The Complainant says that the IBM mark is famous, and the Respondent must have been well aware of it when the Domain Names were registered. The Respondent’s subsequent use of the Domain Names confirms the Respondent’s bad faith. It has intentionally created a likelihood of confusion by using the Domain Names to generate revenue through pay-per-click advertising, using links which incorporate the Complainant’s IBM marks.
The association of the Domain Names with botnet command-and-control servers is a further indicator of the Respondent’s bad faith. The fact that the Domain Names are associated with an IP address that issues malware, coupled with the deceitful use of the Complainant’s mark in the Domain Names, suggests that the Respondent’s intent has been to use the Domain Names to deceive the public into thinking that the Domain Names belong to the Complainant, and in so doing infect them with malware.
Finally, the Complainant says that email servers have been activated for both Domain Names. The activation of email servers at the Domain Names gives rise to a significant risk of phishing or other improper activities by the Respondent. It is hard to imagine a legitimate way in which the emails could be used.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a Complainant is required to establish each of the following:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has made out this first element of the Policy. It is the registered proprietor of the trade mark and service mark IBM in numerous jurisdictions around the world, and that mark is incorporated in full within the Domain Names. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states at section 1.8:
“Where the relevant trade mark 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. The nature of such additional term(s) may however bear on assessment of the second and third elements.”
In this case, the Domain Name <ibmbluedirect.com> does no more than add the descriptive words “blue” and “direct” to the Complainant’s mark, and the mark is clearly recognizable within the Domain Name. The use of the word “blue” in this Domain Name only adds to the impression of similarity with the Complainant’s IBM mark, as there has been a long association of the color blue with the Complainant, and the Complainant has been informally known as “Big Blue”.
The Complainant’s IBM mark is also recognizable in the Domain Name <ibm-ready.com>. The hyphen separates the “ibm” portion from the rest of the Domain Name, and tends to highlight the use of the Complainant’s mark. The word “ready” does nothing to obviate the confusing similarity which arises from the use of the Complainant’s mark.
The “.com” suffix is not normally taken into account in the comparison between a complainant’s mark and the disputed domain name.
For those reasons, the Panel concludes that the Domain Names are both confusingly similar to the IBM mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy set out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a domain name for the purposes of paragraph 4(a)(ii) of the Policy. The circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual business or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly direct consumers or to tarnish the trade mark or service mark at issue.
WIPO Overview 3.0, section 2.1 states the following on the burden of proof under paragraph 4(a)(ii) of the Policy:
“While the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In this case, there is nothing to suggest that the Respondent (or any entity associated with it) has been commonly known by either of the Domain Names, and the Complainant has not licensed or authorized it to use the Domain Names. Thus there appears to be no possible claim to a right or legitimate interest under paragraph 4 (c)(ii) of the Policy. Nor is there any evidence of the Respondent having used (or made demonstrable preparations to use) the Domain Names, or any name corresponding to either of them, in connection with any bona fide offering of goods or services.
There is nothing to suggest that the Respondent is or might be a genuine retailer of the Complainant’s products – the links on the websites at the Domain Names appear to be typical pay-per-click (“PPC”) links to third party websites, and some of them (for example “Custom Computer Systems” and “Building Information Modeling”) appear to have no specific reference to the Complainant or its products.
The consensus view of WIPO UDRP panels is that using a disputed domain name to host parking and landing pages or to display PPC links does not itself confer rights or legitimate interests arising from the “bona fide offering of goods or services”, or from a “legitimate noncommercial or fair use of the domain name”.1 The position may be different where the disputed domain name consists of a dictionary word or words, but that is not the case here. “ibm” is not a dictionary word; it is the Complainant’s trade mark, and it is clear that the Respondent has been trading off the Complainant’s reputation in that mark by using the Domain Names to attempt to attract to the websites at the Domain Names Internet users looking for websites associated with the Complainant. The PPC links make it clear that has been done for commercial gain.
The Respondent’s use of the Domain Names has clearly not been a use in connection with any bona fide offering of goods or services, under paragraph 4(c)(i) of the Policy. Nor has it been a “legitimate noncommercial use”, or a “fair” use, under paragraph 4(c)(iii).
For those reasons, the Panel is satisfied that the Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy, sufficient to move the onus of showing that some rights or legitimate interests exist to the Respondent. In the absence of a Response, that onus has not been discharged, and the Complainant’s prima facie proof remains unrebutted.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of either of the Domain Names.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, the following circumstances, without limitation, are deemed (if found by the Panel to be present) to be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that the holder has registered or has 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) The holder has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) The holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 holder’s website or location or of a product or service on the holder’s website or location.
The Complainant has also proved this third element of the Policy.
The circumstances fall squarely within paragraph 4(b)(iv) of the Policy. The Domain Names were clearly intended to create the impression that any websites at the Domain Names would be either websites of the Complainant, or would at least be websites sponsored or endorsed by, or affiliated with, the Complainant. That is a false impression, and the widespread fame of the Complainant and its IBM mark is such that the Respondent must have appreciated that its use of the Domain Names would be likely to cause confusion. The PPC links on the websites at the Domain Names make it clear that the Respondent’s intention was to benefit commercially from the false impression it created.
That is enough to determine the Complaint in the Complainant’s favor. There is no need to consider the Complainant’s alternative submissions relating to the alleged “botnet”, and the risk that emails associated with the Domain Names might be used for phishing or other improper purposes.
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 Domain Names, <ibmbluedirect.com> and <ibm-ready.com>, be transferred to the Complainant.
Warwick Smith
Sole Panelist
Date: May 28, 2021