The Complainant is International Business Machines Corporation (IBM) of Armonk, New York, United States of America (“United States”), internally represented.
The Respondent is Greg Kimble of Aurora, Colorado, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2016. On March 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 2016, 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 March 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2016.
The Center appointed Dennis A. Foster as the sole panelist in this matter on April 20, 2016. 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 large and extremely well-known United States company that deals in computer and related office products. The Complainant has registered its IBM trademark with appropriate trademark authorities around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Registration No. 640,606; registered January 29,1957).
The disputed domain name, , is owned by the Respondent, and was registered on October 24, 2015. The disputed domain name is used to host a website that displays links to websites related to the IBM trademark. 5. Parties’ Contentions A. Complainant
The Complainant is a manufacturer of various products, including computers and other office hardware, and has been incorporated for business since 1911. It has been rated by a widely-read business magazine as the 24th largest company in the United States, and has been recognized by other reputable publications as either the fourth or fifth best brand in the world.
The Complainant has operated globally under the IBM trademark for several decades, and owns trademark registrations for that mark with responsible authorities throughout the world, including with the USPTO. The Complainant’s mark is famous on a worldwide basis.
The disputed domain name, , is identical or confusingly similar to the Complainant’s IBM mark. The mark is fully contained in the disputed domain name, and the addition of the generic word “online”, along with an obligatory generic Top-Level Domain (“gTLD”), fails to create relevant distinction.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has been granted no license, contract or permission to use the IBM trademark. Moreover, there is no evidence that the Respondent, or any company that he owns, is commonly know as the disputed domain name. Finally, there is no evidence of any preparation by the Respondent to use the disputed domain name in connection with a bona fide offering of goods or services or in a legitimate noncommercial or fair use manner.
The disputed domain name was registered and is being used in bad faith. Due to its worldwide fame, the Complainant’s mark was known to the Respondent at the time the disputed domain name was registered. Also, the Complainant sent the Respondent a cease-and-desist communication to which he failed to respond. Furthermore, the Respondent is using the disputed domain name with the intent to derive commercial gain through the collection of “pay-per-click” fees in connection with links to IBM-related sites that are found on the website attached to the disputed domain name. Such links and fees depend upon confusion as to the source, sponsorship or endorsement of that website with respect to the Complainant’s IBM mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with Policy paragraphs 4(a)(i) – (iii), the Panel may find for the Complainant in this proceeding and order a transfer of the disputed domain name, , if the Complainant establishes that:
-- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
-- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
-- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
As the Complainant has presented the Panel with copies of its multiple USPTO registrations for the IBM trademark, the Panel concludes that the Complainant has the requisite rights in that mark. See The Schneider Group, Inc. v. Jack Mann,WIPO Case No. D2010-0448 (“The Panel finds that Complainant has established rights in the PROTEK mark under Policy paragraph 4(a)(i) through its registration with the USPTO.”); and Intagent LLC v. Dominor LLC,WIPO Case No. D2008-1878 (“Complainant has demonstrated rights in the service mark INTAGENT based on use in commerce and as evidenced by registration at the USPTO.”).
The disputed domain name, , contains in full the Complainant’s IBM trademark. The disputed domain name also includes the common term “online” as well as the gTLD “.com.” The “online” term would suggest to a reasonable Internet user that the disputed domain name is directly connected with the Complainant and furnishes an Internet connection to the products and/or services marketed by the Complainant under its mark. Moreover, the addition of said gTLD is standard for domain names and thus of no import in distinguishing the disputed domain name from the mark in question. Therefore, the Panel concludes that the disputed domain name, though not identical to the IBM mark, is confusingly similar to it. See Labrador II, Inc. v. Viva La Pets Inc.,WIPO Case No. D2016-0010 (“The disputed domain name is confusingly similar to the PET DEPOT mark as it incorporates the PET DEPOT mark in its entirety.”); and F. Hoffmann-La Roche AG v. Anthony L. Carreno,WIPO Case No. D2015-0951 (finding to be confusing similar to the VALIUM trademark).
As a result, the Panel finds that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
The Respondent has declined to file a Response, so the Panel may accept as true all of the Complainant’s contentions that are reasonable and not contradicted by other evidence in the record. See Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942 (where no response was filed, leading the panel to conclude, “... asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant.”); and RX America, LLC. v. Matthew Smith,WIPO Case No. D2005-0540 (“A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true...”).
The Complainant asserts that the disputed domain name is attached to a website that merely offers links to other websites that relate directly to the Complainant’s products and/or services. The Panel accepts this assertion and finds that such activity fails to constitute “a bona fide offering of goods or services”, as that phrase is understood pursuant to Policy paragraph 4(c)(i) because the products or services referenced are those created and offered by the Complainant and there is no evidence in the record that the Respondent is either a licensee of the Complainant or an authorized reseller of its products or services. Also, the Panel concludes that said activity is not a legitimate noncommercial or fair use of the disputed domain name for the purposes of Policy paragraph 4(c)(iii), because, as reasonably contended by the Complainant, the Respondent undoubtedly receives “pay-per-click” fees for its efforts in this regard. Finally, the Panel is inclined to agree with the Complainant’s contention that there is no evidence to suggest that the Respondent, Greg Kimble, or any company that he might own, is commonly known as , causing the Panel to conclude that Policy paragraph 4(c)(ii) is also inapplicable to the circumstances of this case.
Having determined that Policy paragraph 4(c) does not apply, and accepting the Complainant’s contention that the Respondent has been granted no permission or license to use the Complainant’s IBM mark, the Panel believes that the Complainant has put forth and sustained an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
As a result, the Panel finds that the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
The Panel is compelled to take notice that the Complainant’s IBM trademark is one of the most famous marks in the world. Certainly, the Respondent was and is well aware of that mark. Moreover, the Panel notes that one of the primary functions of domain names is to allow “online” access to information concerning products and/or services of companies that are most likely to be identified by their trademarks or service marks. Therefore, the registration of a domain name, such as , by a party unrelated — via affiliation, license or otherwise — to the famous mark contained in that name is a glaring example of bad faith cybersquatting. See Gray Television Group, Inc. v. Manila Industries, Inc.,WIPO Case No. D2007-0504 (“There is substantial authority that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use.”); and AT&T Corp. v. LaPorte Holdings, Inc.,WIPO Case No. D2004-1088 (“Bad faith can be presumed based on the fame of Complainant’s marks, such that the Respondent was aware or should have been aware of Complainant’s well-known marks and claims of rights thereto.”). Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
As a result, the Panel finds that the 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 disputed domain name be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Date: May 4, 2016
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