WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines Corporation v. wangdan
Case No. D2021-1183
1. The Parties
Complainant is International Business Machines Corporation, United States of America, represented internally.
Respondent is wangdan, China.
2. The Domain Name and Registrar
The disputed domain name <029ibm.com> (the “Domain Name”) is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2021. On April 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 20, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 21, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 21, 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 Respondent of the Complaint, and the proceedings commenced on May 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 1, 2021.
The Center appointed Marina Perraki as the sole panelist in this matter on June 16, 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
Complainant is a company active since the 1880s and has been a leading innovator in the design and manufacture of a number of products that record, process, communicate, store and retrieve information, including computers and computer hardware, software, and accessories. Complainant was incorporated on June 16, 1911 as an amalgamation of three previously existing companies. Complainant officially became International Business Machines on February 14, 1924 and has been offering products under the trademark IBM ever since. In 2020, 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 IBM trademark was valued by BrandZ as worth over USD 83 billion in 2020, USD 86 billion in 2019, and USD 96 billion in 2018. Complainant spent more than USD 6 billion on advanced research in 2020 and more than USD 5 billion in 2019. Moreover, Complainant spends over USD 1 billion annually marketing its goods and services globally, using the IBM trademarκ. Complainant was the manufacturer of the IBM 029 Key Punch. This was a key punch machine that was released in 1964, and continues to have a following amongst the consuming public today.
Complainant owns numerous trademark registrations for IBM in various countries around the world, including United States Trademark registration No. 4,181,289, IBM (figurative), registered on July 31, 2012, for goods and services in International Classes 9, 16, 18, 20, 21, 22, 24, 25, 28, 35 and 41.
The Domain Name was registered on February 17, 2021 and leads to a website with links to websites with pornographic and online gambling content (“the Website”), including “www.x05671.com”, “www.k3957.com” and “www.46165511.com”.
Complainant sent cease-and-desist letters to Respondent to which Respondent did not reply.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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
Complainant has demonstrated rights through registration and use on the IBM mark.
The Panel finds that the Domain Name is confusingly similar to the IBM trademark of Complainant.
The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The numbers “029”, added to Complainant’s trademark in the Domain Name, do not prevent a finding of confusing similarity, as the IBM mark remains clearly recognizable (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is confusingly similar to the IBM trademark of Complainant.
Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to Respondent of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
There is no evidence that Respondent has been commonly known by the Domain Name.
Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services. On the contrary, as Complainant demonstrated, the Domain Name resolved to a website which contained sponsored listings to websites with pornographic and online gambling content.
The use of a domain name to host a page containing sponsored listings to websites with pornographic and online gambling content does not represent a bona fide offering where such links capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users, such as in the case at issue.
In addition, the Domain Name consists of Complainant’s mark and the numbers “029”, which were used by Complainant for one of its products, and thus carries a risk of implied affiliation (WIPO Overview, section 2.5.1).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and uses the Domain Name in bad faith. Complainant’s mark IBM is well known as repeatedly recognised (International Business Machines Corporation v. Sadaqat Khan, WIPO Case No. D2018-2476, International Business Machines Corporation v. Linux Security Systems srl, WIPO Case No. DRO2010-0004, Physik Instrumente GmbH. & Co. v. Stefan Kerner and Jeremy Kerner and Magic Moments Design Limited, WIPO Case No. D2000-1001). Because the IBM mark had been used and registered at the time of the Domain Name registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754).
Respondent should have known about Complainant’s rights, due to the fact that Complainant’s mark had goodwill and reputation when the Domain Name was registered. Furthermore, such knowledge is readily obtainable through a simple browser search (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).
Moreover, Respondent could have searched different trademark registry databases and would have found Complainant’s prior registrations in respect of IBM (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
Furthermore, the Domain Name incorporates in its entirety Complainant’s mark plus the additional numbers “029” that correspond to the name that Complainant used for one of its products (the IBM 029 Key Punch). Use of the numbers “029” in the Domain Name therefore increases the likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Name.
As regards bad faith use, Complainant demonstrated that the Domain Name leads to a website displaying pornographic and online gambling sites. Accordingly, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark. It has been recognized that use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith (McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Volkswagen Aktiengesellschaft v. Robert Brodi, WIPO Case No. D2015-0299; SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497; WIPO Overview 3.0, section 3.5).
The Domain Name use furthermore tarnishes Complainant’s reputation by suggesting a connection between Complainant and pornographic and online gambling services. This is an indication of bad faith use (WIPO Overview 3.0, section 3.12; Christian Dior Couture v. Identity Protection Service / Tom Birkett, WIPO Case No. D2014-1053).
Lastly, Respondent did not reply to the cease and desist letters sent by Complainant. Respondent’s failure to respond to Complainant’s cease and desist letters constitutes further indication of bad faith (Samsung Electronics Co., Ltd. v. EAO Digital Solutions, WIPO Case No. D2012-0693).
Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
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 <029ibm.com> be transferred to Complainant.
Date: June 30, 2021