Complainant is International Business Machines Corporation of Armonk, New York, United States of America ("United States"), represented internally.
Respondent is Hka c/o Dynadot Privacy of San Mateo, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 18, 2014. On August 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 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 August 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 17, 2014.
The Center appointed Mark Partridge as the sole panelist in this matter on October 2, 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.
Due to exceptional circumstances, the Panel extended the decision due date to October 29, 2014. 4. Factual Background
Complainant is an internationally recognizable computer hardware and software company. The mark IBM is famous in the United States and around the world in light of years of marketing, sales and unsolicited publicity.
Complainant has several United States registrations for IBM, including IBM, (Reg. No. 640,606), registered January 29, 1957, and claiming a date of first use in commerce of August 5, 1955.
Further, Complainant registered its domain name on March 19, 1986, and has used that domain name to promote Complainant's goods and services.
Respondent registered the disputed domain name on April 16, 2014. 5. Parties' Contentions A. Complainant
Complainant asserts rights in the IBM mark, and alleges that the disputed domain name is identical or confusingly similar to Complainant's trademark. Complainant further asserts that Respondent has no rights or legitimate interest in the disputed domain name because Respondent has not been licensed or permitted to use the IBM mark and there is no evidence that Respondent is known by IBM, intends to make a bona fide offering of goods and services, or has made a fair use of the IBM mark. Finally, Complainant alleges that Respondent registered and is using the domain name in bad faith because (i) Respondent was aware of Complainant's well-known trademark, (ii) Respondent registered the disputed domain name in spite of a notification from the Trademark Clearinghouse asserting Complainant's rights, and (iii) Respondent never responded to Complainant's cease-and-desist letter. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant is required to prove each of the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and
(ii) 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 by Respondent in bad faith.
Further, paragraph 14 of the Rules states that:
"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."
This Panel finds that Respondent has been afforded a fair opportunity to present its case, so the Panel will proceed to a decision on the Complaint.
Respondent's default does not automatically result in a decision in favor of Complainant. Complainant is still required to prove each of the three elements required under paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
Complainant has rights in the IBM mark, as demonstrated by its numerous registrations and extensive history of use. Notably, Complainant has used the IBM mark on the Internet dating to 1986, and has United States trademarks registrations dating back to 1957. A trademark registration constitutes prima facie evidence of the validity of the mark. See, e.g., National Construction Rentals, Inc. v. T, Inc.,WIPO Case No. D2009-0147.
Where a domain name includes an identical match to a complainant's mark, a complainant has satisfied the burden of proving that the domain name is identical or confusingly similar under paragraph 4(a)(i) of the Policy. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. Polygenix Group Co.,WIPO Case No. D2000-0163.
As established by prior panels, a Top-Level-Domain ("TLD") may be disregarded in determining whether a trademark is identical or confusingly similar to a domain name. See Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd,WIPO Case No. D2006-0762; Gerling Beteiligungs-GmbH (GBG) v. World Space Corp,WIPO Case No. D2006-0223. This logic has been consistently applied by panels where the disputed domain name incorporates a new gTLD. See, e.g., The Royal Bank of Scotland Group plc, National Westminster Bank plc, and Coutts & Co. v. Domain Manager / / Giovanni Laporta,WIPO Case No. D2014-0825; Slide Mountain Acquisition Company LLC v. Simon Nissim, lipstick boutique,WIPO Case No. D2014-0393; Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206. Importantly, panels have held that the addition of a generic term in a disputed domain name will not normally suffice to avoid a finding of confusing similarity. See, e.g., The Gates Corporation v. WhoisGuard, Embelle Litumbe,WIPO Case No. D2013-0231; Compagnie Gervais Danone v. Daniel Wang,WIPO Case No. D2009-1361.
The disputed domain name incorporates Complainant's IBM mark in its entirety. In the Panel's view, the inclusion of the TLD ".buzz" does not diminish the confusing similarity. In fact, the phrase "buzz" appears to be an apt addition suggesting a site in which the Complaint provides information and "buzz" about its business.
Accordingly, the Panel finds that the disputed domain name is identical to Complainant's IBM trademark and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under the second element of paragraph 4(a) of the Policy, a complainant is required to present a prima facie case that the respondent lacks rights of legitimate interests in the domain name. After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
Paragraph 4(c) of the Policy instructs that rights and legitimate interests can be demonstrated by Respondent if:
"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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."
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name, noting that Respondent has not been licensed or permitted to use the IBM mark. Further, Complainant argues that no evidence supports the conclusion that Respondent is known by "IBM" or intends to make a bona fide offering of goods and services through the disputed domain name. Finally, Respondent has not made a fair use of the IBM mark through the disputed domain name.
Respondent has not replied to Complainant's assertions or offered any evidence to contradict those claims.
Based on the record, this Panel finds that Complainant has satisfied its burden of presenting a prima facie case that Respondent lacks rights of legitimate interests in the disputed domain name. The disputed domain name has not been used in a manner that gives rise to rights or legitimate interests. Further, based on the WhoIs record, Respondent is not identified by the name "IBM". Respondent provides no justification in defense of its registration of the disputed domain name, which is identical to Complainant's mark.
The Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists circumstances that shall be evidence of registration and use of a domain name in bad faith, including, among other reasons,
"(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."
Complainant argues that Respondent's bad faith registration and use of the disputed domain name is evidenced by Respondent's awareness of Complainant's well-known IBM trademark and Respondent's failure to negotiate with Complainant over the transfer of the disputed domain name. Further, Complainant notes that Respondent was notified of Complainant's rights in the IBM mark via the Trademark Clearinghouse, and Respondent registered the disputed domain name in spite of that notification.
This Panel finds the notification from the Trademark Clearinghouse to be instructive. In conjunction with the new gTLD expansion, the Trademark Clearinghouse was established in order to protect the rights of trademark holders and avoid consumer confusion. Trademark holders who registered their marks with the Trademark Clearinghouse received the benefit of a service, which for a limited time after launch warns both domain name registrants and trademark holders of possible infringements. In particular, the potential registrant is alerted at the time of registration that it is attempting to register a domain name that matches a trademark term registered with the Trademark Clearinghouse. Registrants who register a domain name in spite of this warning are on notice of the potential infringement claim.
In this case, Respondent's registration after notification from the Trademark Clearinghouse is indicative of Respondent's registration in bad faith. This Panel does not suggest that every registrant who registers a domain name after receiving a Trademark Clearinghouse notice is registering that domain name in bad faith. A respondent may have rights or interests in that domain name or may make fair use of the domain name. Nor does this Panel suggest that notification from the Trademark Clearinghouse to a registrant is alone sufficient to transfer the burden to a respondent to prove a lack of bad faith. Instead, this Panel notes that notifications from the Trademark Clearinghouse, while not conclusive on the issue, can be considered indicia of bad faith registration because the registrant has been put on notice of the trademark holder's rights.
Here, the notification in conjunction with the fame of Complainant's IBM mark and Respondent's failure to respond appears to be sufficient to show Respondent's bad faith registration.
Presently, the disputed domain name is used merely as a parking page. Moreover, prior panels have held that passive holding of a domain name, which incorporates a well-known mark, is insufficient to overcome a finding of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. As one panel explained, "[i]f . . . another's trademark is used without authorisation for the purpose of attracting visitors, then some visitors may be confused into thinking, at least initially, that the website they have reached is in some way endorsed by the Complainant, when it is not." Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273.
This Panel finds that Respondent has registered and used the disputed domain name in bad faith. The IBM mark is internationally recognized and Respondent was notified of Complainant's rights in the IBM mark by a Trademark Clearinghouse notice. Respondent's subsequent use of the site as a parking page does nothing to legitimize this registration. In combination, this Panel finds that the evidence supports a conclusion of bad faith registration and use by Respondent. Respondent has offered no defense to contradict this finding.
Consequently, this Panel finds that Complainant has sufficiently shown Respondent's bad faith registration and use of the disputed domain name, and has satisfied paragraph 4(a)(iii) 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.
Mark Partridge
Sole Panelist
Date: October 29, 2014
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