Complainant is International Business Machines Corporation of Armonk, New York, United States of America, represented internally.
Respondent is Sledge, Inc. / Frank Sledge of Windermere, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2014. On April 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 11, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 30, 2014.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 6, 2014. 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 owns trademark registrations for its IBM mark in 170 countries around the world for a broad range of goods and services including information technology related goods and services. The trademark IBM is well known and famous around the world, and especially in the United States where IBM was founded.
Tracing its roots to the 1880s, Complainant has been 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. Incorporated in June 1911 as a combination of three previously existing companies, Complainant officially became International Business Machines on February 14, 1924. Complainant has been offering products under the trademark IBM ever since. In the early days, these products included office and research equipment such as punch machines, calculating machines, clocks and scales. In 1961, IBM introduced the IBM Selectric typewriter. This was a significant innovation in the business sector, and the United States Postal Service issued a 2011 postage stamp featuring the IBM typewriter, commemorating the industrial designer as part of its Pioneer of American Design series of stamps.
Complainant has submitted evidence that in 2013, it was ranked the 20th largest firm in the United States by Fortune magazine and the 4th best global brand by Interbrand. In 2014, Complainant was ranked the 16th most admired company by Fortune. The IBM trademark was valued at over USD 78.8 billion by Interbrand in 2013. Complainant spends USD 1.29 billion marketing its goods and services globally using the IBM trademark, and has undertaken extensive efforts to protect its name and enforce the IBM mark. Complainant exerts careful control over use of its IBM mark and imposes strict quality control measures over goods and services offered in connection with the mark. Complainant further protects its brand and the IBM mark by diligently pursuing infringers of the IBM mark.
The Domain Name was registered on June 6, 2013. 5. Parties’ Contentions A. Complainant
(1) Identical or confusingly similar: Complainant contends the Domain Name is identical or confusingly similar to its IBM trademark. Complainant relies on the extensive range of registered IBM marks that have been submitted with its evidence. The Domain Name consists of the letters “ibmblu” followed by the generic top-level suffix “.com”. Complainant urges that the characteristic part of the Domain Name is defined by the three letters “ibm” identical to Complainant’s trademarks, accompanied by the nondescript term “blu.”
(2) Rights or legitimate interests: Complainant states that Respondent has not been licensed, contracted or otherwise permitted by Complainant to use the IBM trademark or to apply for any domain name incorporating the IBM mark, nor has Complainant acquiesced in any way to the use of the IBM mark by Respondent. Complainant explains that when it learned Respondent had registered the Domain Name, Complainant wrote to Respondent on October 1, 2013. Since 2001, Respondent was a “Business Partner” through Complainant’s PartnerWorld Agreement. Complainant’s letter stated “in accordance with the PartnerWorld Agreement, as an IBM Business Partner, your company is not authorized to use the registered domain name: IBMBLU.com.” Section 7 of the IBM PartnerWorld Agreement states “You agree not to register or use any mark that is confusingly similar to any of our Trademarks.” Complainant then further wrote “Be advised that unless the domain registration is withdrawn within ten business days of this communication, your membership with IBM PartnerWorld could be terminated.” On January 24, 2014, when Respondent did not withdraw the Domain Name, Complainant wrote again to Respondent and terminated Respondent’s membership in PartnerWorld and stated “you will no longer be authorized to refer to yourself as a member of IBM PartnerWorld or as an IBM Business Partner…or use any IBM Trademarks…”
Complainant states that Respondent does not belong to a company or association whose name includes the term IBM. Therefore, Complainant can affirm in good faith that there is no evidence of Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with any bona fide offering of goods or services; Respondent has not been commonly known by the Domain Name; and Respondent is not making a legitimate noncommercial or fair use of it.
(3) Registered and used in bad faith: Complainant alleges that Respondent was aware of Complainant’s IBM trademark at the time Respondent registered the Domain Name on June 6, 2013. Complainant’s trademark is well-known around the world. Complainant relies on the extensive range of registered trademarks for IBM and the fact that this trademark is ranked as the world’s fourth most valuable brand. Respondent was aware of the IBM trademark not only because of Complainant’s world-wide reputation, but also because Respondent has been an IBM Business Partner since 2001. When Complainant approached Respondent, as an IBM Business Partner, to withdraw the Domain Name, Respondent refused and Respondent’s IBM Business Partner status was accordingly terminated.
Complainant asserts that Respondent has refused all reasonable attempts to settle this matter. Complainant wrote to Respondent on January 6, 2014 in an attempt to settle, offering USD 250 for transfer of the Domain Name to Complainant. Respondent responded to the offer with an all-caps “NO !” on the same day. Respondent offered no other reasons for the refusal to transfer of the Domain Name to Complainant.
Complainant states that Respondent is not making use of the webpage linked to the Domain Name, but instead has parked it. When navigating to “www.,” one receives a standard 403: forbidden message that states that the web server is trying to access a file that does not exist or that has been configured improperly.
In sum, Respondent was aware of the IBM trademark at the time of registration of the Domain Name not only by virtue of the world-renown of the IBM mark but also because Respondent was an IBM Business Partner since 2001. Despite threatened and eventual loss of IBM Business Partner privileges, Respondent refused to transfer the Domain Name to Complainant. Further despite attempts to settle the transfer of the Domain Name through an offer of USD 250 for reasonable costs and expenses associated with its purchase, Respondent refused transfer to Complainant. Finally, Respondent shows no use of the Domain Name exhibiting only 403 messages on its homepage. Respondent is holding the Domain Name hostage. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has submitted evidence to show that it owns numerous and longstanding trademark registrations in the United States for its IBM mark, which is one of the most well-known and internationally famous brands in the world. The UDRP panel in International Business Machines Corporation v. Linux Security Systems srl, WIPO Case No. D2010-0004, concluded that “Complainant’s [IBM’s] trademark is well-known around the world, representing the abbreviation of its trade name.”
The Panel observes that the difference between Complainant’s trademark, IBM, and the Domain Name is in the addition of the letters “blu”. The complete string, “ibmblu”, does not form an intelligible word on its own, but instead would be commonly pronounced phonetically in English as the Complainant’s mark, IBM, plus the word “blue”. The Panel determines that the distinctive part of the Domain Name is the three-letter acronym, “ibm”, which is identical to Complainant’s mark. The addition of the letters “blu”, which brings to mind the color blue, is insufficient to distinguish the Domain Name from Complainant’s mark.
In addition, it is generally accepted that the addition of the top-level suffix in the domain name (e.g., “.com”) is to be disregarded under the confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2.
Accordingly, the Panel concludes that the Domain Name is confusingly similar to Complainant’s IBM trademark. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, Complainant has established a prima facie case. Respondent and his company are not commonly known by the Domain Name. Instead, the WhoIs record lists an individual, Frank Sledge, and the company name, Sledge, Inc. Complainant did not license or otherwise authorize Respondent to use the IBM mark in connection with goods or services or to apply for any domain name incorporating the IBM mark. Rather, Respondent as an IBM Business Partner, was aware of Complainant and its IBM mark when it registered the Domain Name and had specifically agreed, through section 7 of the PartnerWorld Agreement, “not to register or use any mark that is confusingly similar to any of our Trademarks.” In addition, Respondent is not making any legitimate noncommercial or fair use of the Domain Name. The evidence submitted shows that the Domain Name has not been used in a manner that would give rise to any right or legitimate interests in it. Finally, Respondent failed to submit a response in which it might have provided any justification for registering the Domain Name, which is confusingly similar to Complainant’s mark.
Under these circumstances, the Panel finds that Respondent does not have any rights or legitimate interests in respect of the Domain Name. Accordingly, the Panel finds that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. Complainant claims that Respondent has registered and is using the Domain Name in bad faith because Respondent was aware of the IBM trademark at the time of registration of the Domain Name and is holding the Domain Name hostage.
The Panel finds that Respondent, as an IBM Business Partner, was indeed aware of Complainant and its IBM trademark, and specifically targeted the mark when registering the Domain Name. There is no other plausible reason for why Respondent chose to register the string, “ibmblu”, which, if not taken to be a reference to Complainant and its mark, is an unintelligible term that does not match Respondent’s name as listed in the WhoIs record.
Regarding bad faith use, Complainant alleges that an attempt to locate the webpage linked to the Domain Name brings up a standard error message (that the web server is trying to access a file that does not exist or that has been configured improperly), and that despite attempts to settle the transfer of the Domain Name through an offer of USD 250 for reasonable costs and expenses, Respondent gave the one word reply, “NO !”.
On June 30, 2014, the Panel consulted the webpage linked to the Domain Name in order to verify information about how the Domain Name has been used. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5 (a panel may undertake limited factual research into matters of public record, including visiting the website linked to the disputed domain name in order to obtain more information about the respondent and use of the domain name). The Domain Name resolved to a page that provided as follows:
“COMING IN 2014 A WEBSITE FOR INCAPACITATED BLACK MEN
I Incapacitated
B Black
M Men
B
L
U
e
s
STOP
INTERNATIONAL BUSINESS MACHINES
FROM STEALING OUR DOMAIN NAME
THEY DO NOT OWN THIS ACRONYM
THEY ONLY PICK ON INCAPACITATED BLACK MEN.”
Paragraph 4(b) (Evidence of Registration and Use in Bad Faith) of the Policy sets out a non-exclusive list of examples of bad faith registration and use. The Panel determines that, in view of the circumstances of this case, in which Respondent was a former IBM Business Partner who targeted Complainant when it registered the Domain Name in June 2013, the use of the Domain Name to reference a webpage with content as quoted above supports Complainant’s allegation that Respondent is holding the Domain Name hostage. As such, the Domain Name was registered and is being used in bad faith.
Accordingly, the Panel finds that Complainant has satisfied the third element 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 Domain Name be transferred to Complainant.
Christopher S. Gibson
Sole Panelist
Date: June 30, 2014
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