WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines Corporation v. Kun Peng
Case No. D2021-1438
1. The Parties
The Complainant is International Business Machines Corporation, United States of America (“United States”), internally represented.
The Respondent is Kun Peng, China.
2. The Domain Name and Registrar
The disputed domain name <ibm-sp.com> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2021. On May 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 11, 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 May 12, 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 May 12, 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 May 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2021.
The Center appointed Kar Liang Soh as the sole panelist in this matter on July 9, 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 United States based multinational company that designs and manufactures a wide array of products that record, process, communicate, store and retrieve information, including computers and computer hardware, software and accessories. The Complainant traces its roots to the 1880s and has been offering products under the trademark IBM since 1924. By 2020, the Complainant held the following rankings:
- 14th most valuable global brand by BrandZ
- 14th best global brand by Interbrand
- 38th largest company on the Fortune US 500 list
- 118th largest company on the Fortune Global 500 list
The Complainant has registered the IBM trademark in 131 countries, including China. These include:
July 31, 2012
June 23, 1992
January 29, 1957
April 7, 2012
August 7, 2002
February 27, 1985
The IBM trademark has been the subject of numerous UDRP cases dating as far back as 2007. Various past UDRP panels have held the IBM trademark to be well known (e.g., International Business Machines Corporation v. Sadaqat Khan, WIPO Case No. D2018-2476; 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).
The Complainant is also the registrant of numerous domain names comprising the IBM trademark, including <ibm.com> under which the Complainant operates a website promoting its products under the IBM trademark.
The Disputed Domain Name was registered on February 1, 2021. On or before May 4,, 2021, the Disputed Domain Name resolved to a webpage which prominently featured:
- A header banner entitled 亚美SIX 研究所 (ie, Asian-American SIX research center”)
- Several banners promoting online gambling sites
- A web-page header incorporating a sexually-suggestive Chinese description午夜性刺激免费看视频 (ie, midnight sexually exciting free viewing channel)
- Links with sexually-suggestive Chinese descriptions like亚洲情色 (ie, Asian erotica), and 全裸 (ie, fully naked)
- Post titles incorporating sexually-suggestive Japanese descriptions like 下品なデカチチ女 (ie, vulgar big woman), and 巨乳女 (big breasted woman)
The IBM trademark and the letters “ibm-sp” were noticeably absent on the webpage.
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 an individual based in China.
The Complainant sent a cease-and-desist demand on February 3, 2021 and a follow-up communication on April 12, 2021 to the Respondent’s email address indicated on the Whois records. The Respondent did not reply to either communication.
The Center’s Notification of Complaint and Commencement of Administrative Proceeding sent by email to the Registrar intended for the Respondent on May 20, 2021 was unsuccessful. The Center’s Written Notice of the Commencement of Administrative Proceeding was communicated to the Respondent by courier the Respondent’s purported address in China, but communication proved to be unsuccessful.
5. Parties’ Contentions
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 letters “ibm” in the Disputed Domain Name are exactly the same as the IBM trademark. The only difference is the addition of a dash “-“ and the letters “sp” which could stand for IBM’s Scalable Power supercomputer or one of several technical terms, such as “service pack”, “service provider” and “signal processing”. Supplementing or modifying a trademark with generic or descriptive words does not make the Disputed Domain Name any less identical or confusingly similar for purposes of satisfying paragraph 4(a)(i) of the Policy;
(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 use the IBM trademark or apply for any domain name incorporating it. There is no evidence that “IBM” or “IBMSP” is the name of the Respondent, of fair use, or of plans or use of 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; 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 did not reply to the Complainant’s cease and desist letter. The Respondent is using the Disputed Domain Name for illegitimate commercial gains by intentionally attempting to create a likelihood of confusion by using the Disputed Domain Name to attract visitors to his websites. The Respondent’s use of the Disputed Domain Name amounts to “pornosquatting”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed in this proceeding, the Complainant must establish the three limbs of paragraph 4a) of the Policy on the facts:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
(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
The Panel is satisfied that the Complainant owns rights in the IBM trademark based on the details of trademark registrations tendered in the evidence. The Disputed Domain Name obviously incorporates the IBM trademark in its entirety. Despite the addition of the suffix “-sp” to the IBM trademark in the Disputed Domain Name, the IBM trademark remains highly recognizable. The Panel agrees with the Complainant that the suffix “-sp”, regardless of the myriad possibilities of what “sp” could abbreviate, fails to prevent the Disputed Domain Name from being confusingly similar to the IBM trademark for the purposes of the first limb of paragraph 4(a). The Panel holds that the first limb of paragraph 4(a) of the Policy is established.
B. Rights or Legitimate Interests
There is no evidence before the Panel to suggest that the Respondent is known by the Disputed Domain Name. The Complainant has confirmed that the Respondent has not been licensed, contracted, or otherwise permitted by the Complainant to use the IBM trademark or apply for the Disputed Domain Name. The Panel sees no evidence before it that could suggest that the Respondent is known by the Disputed Domain Name or that there is any plans or use of the Disputed Domain Name which can remotely be regarded as legitimate, noncommercial, bona fide or fair use. Rather the Disputed Domain Name was being used to direct Internet users to a website promoting online gambling and potentially pornographic content. The Panel concludes that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has not raised any challenge or at least responded to the prima facie case. The second limb of paragraph 4(a) of the Policy is accordingly established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out non-exhaustive circumstances of bad faith registration and use of a domain name. Paragraph 4(b)(iv) of the Policy is particularly relevant, and states:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Based on the evidence submitted, the Panel agrees with past panels which have held that the IBM trademark is well known. As such, the Respondent could not have been unaware of the Complainant’s century old trademark rights in the IBM trademark when registering the Disputed Domain Name. The obvious inference is that the Respondent must have registered the Disputed Domain Name for the purpose of directing traffic to the Respondent’s website with a patent intent for commercial gain by creating a likelihood of confusion with the IBM trademark as to source, sponsorship, affiliation, or endorsement within the meaning of paragraph 4(b)(iv). The various services promoted by numerous banners on the website must have been for commercial gain. On these circumstances alone, the Complainant has established a case of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The circumstances are further aggravated by the Respondent’s association of sexually suggestive descriptions and links peppering the Respondent’s website with the well-known IBM trademark by the adoption of the Disputed Domain Name. Past panels have formed a consensus that pornographic content on a respondent’s website is sufficient to support a finding of bad faith due to the high risk of tarnishment of a complainant’s well-known trademark, irrespective of the respondent’s motivation (eg, VIVENDI v. Guseva Svetlana, WIPO Case No. D2018-2631). The Panel observes that the webpage resolved from the Disputed Domain Name does not appear to in itself contain any pornographic images as far as the evidence shows.
In the current state of the World Wide Web where content can be embedded, redirected, dynamically constructed and user-customized on the fly, it is artificial to draw a line between actual display of images and the provision of hyperlinks to such images. Even those with the most rudimentary knowledge of web-design would know that what an Internet user sees as a webpage is essentially an HTML stream interpreted and displayed by the user’s browser. An image intended for display on the webpage can be stored anywhere accessible via the Internet. The HTML stream simply includes a reference to the location of the image to instruct the browser to fetch and display the image automatically on screen. Such a reference bears great similarity to a hyperlink which references the location of some content (e.g., an image, another webpage), except that the browser is instructed to fetch referenced content by manual activation of the hyperlink (e.g., clicking). Whether manual or automatic, the effect is that an Internet user has ready and on-demand access to the referenced content.
By reason of the above, the Panel holds that the Disputed Domain Name was registered and is being used in bad faith, thereby establishing the third limb of paragraph 4(a) 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, <ibm-sp.com> be transferred to the Complainant.
Kar Liang Soh
Date: August 4, 2021