WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines Corporation v. Leslie Rubin
Case No. D2021-3766
1. The Parties
The Complainant is International Business Machines Corporation, United States of America (“United States”), internally represented.
The Respondent is Leslie Rubin, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <microsoftoracleibm.com> (the “Domain Name”) is registered with Register.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2021. On November 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 15, 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 November 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2021. The Center received an informal communication from the Respondent dated December 2, 2021. The Center sent an email regarding Possible Settlement to the Parties on December 3, 2021. The Center received a number of informal communications from the Respondent between December 5 and 9, 2021. The Complainant requested the suspension of the proceeding in order to explore settlement options with the Respondent on December 7, 2021. The Center issued a Notification of Suspension on December 7, 2021, and the administrative proceeding was suspended until January 6, 2022.
In one of the Respondent’s email communications on December 8, 2021, the Respondent informed the Center that the Registrar had “deleted” the Domain Name and that it was now registered to another owner. Further email communications were received from the Respondent on December 13, 2021, reiterating that the Respondent was no longer the owner of the Domain Name. The Center requested registration status from the Registrar and notified the Registrar on December 15, 2021, concerning the Respondent’s attempted cyberflight. The Registrar confirmed on December 15, 2021, that the Domain Name remained locked pending resolution of the UDRP proceeding and that the Respondent Leslie Rubin remained the registrant of record.
The Respondent sent a couple of email communications between December 28, 2021 and January 2, 2022. The Parties did not reach a settlement during the suspension period, and the Center notified the Parties of the commencement of panel appointment process on January 7, 2022.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 12, 2022. 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.
Further email communications were received from the Respondent after the panel appointment and have been brought to the Panel’s attention.
4. Factual Background
The Complainant is a publicly traded corporation headquartered in Armonk, New York, United States. Incorporated in 1911 under the laws of the State of New York, the Complainant has been producing information processing equipment for more than a century, and it is world-renowned as an innovator in computer hardware and software. In 2021, the Complainant was the 42nd largest company on the Fortune U.S. 500 list, and the 121st largest company on the Fortune Global 500 list. The Complainant has been marketing its goods and services under the IBM mark, formed from its initials, since 1924. In 2020, the Complainant was ranked the 14th most valuable global brand by BrandZ and the 14th best global brand by Interbrand.
The Complainant holds numerous relevant trademark registrations in 131 countries. These include United States Trademark Registration Number 640606 (registered January 29, 1957) for IBM as a standard character mark.
The Registrar reports that the Domain Name was registered on April 26, 2021, listing no organization, and recording a postal address in the State of New York, United States.
The Panel notes that the Respondent appears to be the same person found in other UDRP proceedings to have registered and used domain names exploiting the trademarks of others in bad faith. See, e.g., Société des Produits Nestlé S.A. v. Rubin, Leslie, WIPO Case No. D2018-1183 (<starbucksnestle.com> and <starbucks-nestle.com>); Abraxis BioScience, LLC v. Les Rubin, WIPO Case No. D2008-0066 (<abraxisbioscience.com>); Dart Industries Inc. v. Leslie Rubin, WIPO Case No. D2006-0146 (<tupperwarebrands.com> and <tupperwarebrandscorporation.com>).
The Complainant attaches a screenshot of the website to which the Domain Name resolved on November 10, 2021. This was a landing page hosted by the Registrar, headed with the Domain Name and the Registrar’s name, followed with third-party, pay-per-click (“PPC”) advertising links, mostly for computer hardware and software products. Some of these compete with the Complainant’s products, such as “Data and Data Analytics” and “Remote Workforce Software”. At the time of this Decision, the Domain Name does not resolve to an active website.
The Panel notes that the Domain Name string is also comprised of two other trademarks, MICROSOFT and ORACLE. Like the Complainant’s trademark IBM, these are also well-known and long-established marks belonging to companies other than the Respondent. See, for example, Microsoft Corporation v. Russell Warner, WIPO Case No. D2012-0105 (“Complainant's MICROSOFT name and brand has become one of the biggest and most recognized brands in the world”); Oracle International Corporation v. Jin Dong Li, Li Jin Dong, WIPO Case No. D2019-0813 (“As a result of the long usage and promotion of the ORACLE mark, it has become famous and widely recognized around the world by both computing industry professionals and members of the general public”).
The Complainant discovered the Domain Name and sent cease-and-desist letters to the Respondent in April and May 2021. The Respondent did not reply.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to its registered IBM trademark, which the Domain Name incorporates in its entirety. The Complainant states that the Respondent has no permission to use the Complainant’s mark and contends that the Respondent has no evident rights or legitimate interests in the Domain Name, which it has used only for a parking page with PPC advertising links.
The Complainant argues that its IBM marks are “well-known around the world” and appear prominently in search engine results. Therefore, the Respondent “either knew or should have known of the Complainant’s IBM mark when registering the disputed domain name or has exercised the kind of willful blindness that numerous panels have held support a finding of bad faith”. By parking the Domain Name for PPC advertising, some of it competing with the Complainant’s offerings, the Respondent uses the Domain Name to misdirect Internet users for commercial gain, an instance of bad faith as described in the Policy, paragraph 4(b)(iv).
The Respondent did not respond to the Complainant’s substantive arguments. In emails to the Center, the Respondent first claimed that “WE WANT TO DELETE, CANCEL THE DOMAIN” but said that the Respondent could not do so because the Domain Name was locked, and “WE [CAN’T TRANSFER MICROSOFTORACLEIBM.COM TO IBM, UNTIL THIS DOMAIN IS UNLOCKED” (December 2, 2021). “WE [DON’T] WANT ANY WIPO PANELS, MEETINGS, DECISIONS, ETC.” (December 6, 2021). On December 6, 2021, the Respondent also urged the Center to “BRING CHARGES IMMEDIATELY” against the Registrar for “ILLEGALLY STEALING OUR ACCOUNT” and suggested the Registrar should be investigated by “THE FBI”. The next day, the Respondent replied favorably to the Complainant’s suggestion of a suspension to explore settlement.
On December 8, 2021, however, the Respondent forwarded email correspondence with the Registrar showing that the Respondent had “deleted” the Domain Name. On December 9 and 13, 2021, the Respondent informed the Center that the Domain Name was now owned by another entity, New Ventures Services Corporation of Drums, Pennsylvania, United States.
In the Respondent’s email to the Center on December 13, 2021, the Respondent also threatened the Center with “A CEASE AND DESIST COURT ACTION, AND HARASSMENT CHARGES AGAINST WIPO, UNLESS WIPO IMMEDIATELY STOPS THREATENING MR RUBIN AND ASSOCIATES […].”
On January 2, 2022, the Respondent sent an email to the Center requesting “IMMEDIATE TERMINATION” of this proceeding on the ground that the Respondent “NO LONGER OWNS” the Domain Name and “GIVES UP ANY CLAIMS AND RIGHTS” to it.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.
Under paragraph 15(a) of the Rules, “[a] 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”.
A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails a “straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant holds trademark registrations for IBM as a word mark, and the Domain Name incorporates this mark in its entirety. The addition of other third-party trademarks to the Domain Name string does not avoid a finding of confusing similarity with the Complainant’s trademark (or, indeed, with those other marks). As usual, the generic Top-Level Domain (“gTLD”) “.com” in the Domain Name string is disregarded as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the 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.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
The Complainant has established relevant trademark rights, confusing similarity, and the use of the Domain Name only for a PPC landing page. This suffices for a prima facie case. The Respondent has not come forward with any evidence of rights or legitimate interests, and none are evident from a perusal of the record and the site associated with the Domain Name.
The Panel concludes, therefore, that the Complainant has established the second element of the Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iv) 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.”
The Respondent could hardly fail to be aware of the Complainant’s well-known IBM mark when it acquired the Domain Name. As a previous panel concluded in a proceeding involving the IBM trademark:
“The panel is of the opinion that the Complainant’s trademark has a strong reputation and is widely known throughout the world […] This makes it difficult to conceive any plausible legitimate use of the Disputed Domain Name.” International Business Machines Corporation v. Sadaqat Khan, WIPO Case No. D2018-2476.
In this case, the fact that the Respondent constructed the Domain Name with two other well-known trademarks from the information technology industry, Microsoft and Oracle, lends further support to the inference that the Respondent sought to exploit celebrated technology brands when it registered the Domain Name.
The use of the Domain Name for a parking page with PPC advertising fits the example in the Policy, paragraph 4(b)(iv), describing bad-faith misdirection for commercial gain, whether or not the Respondent shares in the profits. See WIPO Overview 3.0, section 3.5. Whether the Respondent held the Domain Name to share in PPC profits or with the hope of selling the Domain Name for a profit, there is no “plausible legitimate use” of this Domain Name, and the Respondent has not suggested one. Indeed, in the course of this proceeding the Respondent has communicated only an intention to “delete” the Domain Name, abandon all rights to it, and “settle” with the Complainant – while attempting cyberflight by transferring ownership to a third party. This course of conduct supports an inference of bad faith in the registration and use of the Domain Name. In addition, the fact that it appears that the Respondent has engaged in similar conduct in the past with respect to other domain names comprised of well-established trademarks suggests a pattern of cybersquatting which would affirm the Panel’s finding of bad faith.
The Panel concludes that the Complainant has established the third element of the Complaint, bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <microsoftoracleibm.com>, be transferred to the Complainant.
W. Scott Blackmer
Date: January 20, 2022