Complainant is International Business Machines Corporation of Somers, New York, United States of America (“United States”), internally represented.
Respondent is Eminent Domain Licensing Enterprises of Springfield, Massachusetts, United States represented by Law Offices Simon P. Kresch, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with DSTR Acquisition VII, LLC d/b/a D. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2012. On April 4, 2012, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a D a request for registrar verification in connection with the disputed domain name. On April 4, 2012, DSTR Acquisition VII, LLC d/b/a D transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a request for confirmation from the Center, Complainant filed an amendment to the Complaint on April 10, 2012.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2012. At the request of Respondent, and in consultation with Complainant, on May 2, 2012 the due date for Response was extended to May 31, 2012. The Response was filed with the Center on May 31, 2012.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on June 5, 2012. 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 one of the best known companies in the world, and for over one hundred years has sold a broad range of devices that record, process, communicate, store and retrieve information, including computer hardware and software. The mark IBM is world famous for these goods and services. In 2011 Complainant was valued at over USD 69 billion.
Complainant registered its domain name, on March 19, 1986, which is used to promote Complainant’s goods and services.
On February 22, 2012, Complainant sent a cease and desist email to Respondent, and on February 28, 2012 sent one by regular mail. Both were returned as undeliverable.
Respondent registered the disputed domain name on August 24, 1998. The disputed domain name reverted to a webpage containing links for laptops, computers, etc and advertised “great computer deals”, many of which were competitors to Complainant.
Much of Respondent’s Response to the Complaint is worth summarizing or quoting here to fully understand its response and allegations. Respondent says that it was originally interested in creating a marketing technology to market holiday hams by securing the toll-free phone number 1-800-HAM-SHOP. It “noticed” that 1-800-IBM-SHOP could also revert to the same phone number. With that in mind, Respondent secured the domain name , and then decided that it would remove the 1-800 part and also secured the disputed domain name , “in hopes that maybe – someday – some reseller of IBM equipment might want to utilize this phone number (and domain name) in marketing IBM products.” Respondent states, though, that it “never had any intention to pass itself off as Complainant – or even a licensed reseller of the Complainant. Respondent was simply trying to establish a marketing technology that might be useful to a marketer of holiday hams, or alternatively, to a reseller of IBM products. Respondent further states that it did nothing to market holiday hams or IBM products, and that it also did not approach sellers of these products.
Respondent states that it did not know that its domain name reverted to a webpage containing links to Complainant’s competitor’s websites until it received the Complaint. It speculated that “in the absence of instructions from the owner of a domain name, registrars will often direct domain names to a ‘landing page’. This is apparently what was done here.” 5. Parties’ Contentions A. Complainant
Complainant alleges that its mark is a famous mark that is internationally recognized. Complainant contends that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s mark IBM in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is insertion of the generic term “shop”. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith. B. Respondent
Respondent acknowledges Complainant is a famous company and that the IBM mark is famous. It alleges, however, “IBM is so famous that it is not exclusive to the Complainant and its products,” and that “just about all non-Apple computers are known generically as ‘IBM’.”
Respondent’s other allegations are summarized or quoted above. Briefly, Respondent alleges that it never intended to pass itself off as Complainant or a reseller of Complainant, and that it did not know the disputed domain name reverted to a “parking page” containing links to Complainant’s competitors, and that it only intended to create a marketing technology that might someday be useful to a reseller of Complainant’s products. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant owns trademark registrations in 170 countries and has used the IBM mark to sell IT-related goods and services for one hundred years. It is the second best known brand in the world. This Panel finds that it is indisputable that the IBM mark is famous. Indeed, Respondent admits that “IBM is a famous name.”
The disputed domain name consists of Complainant’s mark IBM in its entirety, and the only difference between Complainant’s mark and the disputed domain name is insertion of the generic word “shop”. It has long been held that the addition of a generic word is irrelevant to the determination of whether the domain name is identical or confusingly similar to a complainant’s mark. The Panel thus finds that the disputed domain name is identical and confusingly similar to Complainant’s IBM mark.
Accordingly, the Panel finds that Complainant has rights in the mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Complainant alleges that Respondent has no rights in the IBM mark. Respondent admits that it is not a licensed reseller of Complainant’s products.
The Panel finds that the evidence is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name (see also discussion below), and thus Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor, or
(iv) Internet users to your website 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.”
As set forth above, the IBM mark is famous. Respondent admits that it was aware of IBM, its mark, and its goods and services when it registered the disputed domain name. Additionally, Respondent admits that it has no intentions of using the disputed domain name as a reseller of Complainant’s products. This Panel therefore infers that Respondent registered the disputed domain name in bad faith.
Respondent admits that it “was simply trying to establish a marketing technology that might be useful to a marketer of holiday hams, or alternatively, to a reseller of IBM products.” Clearly, Respondent registered this disputed domain name with the intent of selling it to someone who might have a legitimate interest in using it, which implicates paragraph 4(b)(i) of the Policy. Previous UDRP panels have made similar findings even without an active attempt to sell or contact the trademark holders. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Decision No. D2000-0003.
Furthermore, it is well established that use of a disputed domain name as a parking page is not making a legitimate noncommercial, nor a fair use of the disputed domain name. See Dun & Bradstreet Corporation v. Private Whois Service, WIPO Case No. D2010-1805. It appears that Respondent’s website offers the same goods and services offered by Complainant and contains links to Complainant’s competitors. Respondent has registered and used the disputed domain name in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy.
Consequently, this Panel finds based on the record of this administrative proceeding that it is more likely than not that Respondent registered and has used the disputed domain name in bad faith and that Complainant meets the third criterion of paragraph 4(a) 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, be transferred to the Complainant.
Sandra A. Sellers
Sole Panelist
Dated: June 18, 2012
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