Complainant is International Business Machines Corporation of Armonk, New York, United States of America (“United States”), represented internally.
Respondent is Adam Stevenson, Global Domain Services of Manhattan, New York, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2016. On August 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 2016, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 19, 2016.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on September 27, 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
Complainant, International Business Machines Corporation, was incorporated in 1924, and since that time has been offering products under the trademark IBM, including information technology-related goods and services. Complainant currently owns trademark registrations for its IBM mark in 170 countries, including the United States. See, for example, United States Registration Numbers 4,181,289 (registered on July 31, 2012); 3,002,164 (registered on September 27, 2005); 2,183,815 (registered on August 25, 1998); and 1,696,454 (registered on June 23, 1992). Complainant spends over USD 1 billion marketing its goods and services globally using the IBM trademark and has undertaken extensive efforts to protect and enforce its mark. It also spends over USD 5 billion each year on advanced research, in addition to its expenditures on product development.
The disputed domain name, , was registered on December 31, 2015. According to Complainant, the disputed domain name resolves to a site containing pay-per-click (“PPC”) advertisement links to IBM sites by using words such as “IBM Aix,” “IBM Institute,” “IBM Research,” “IBM University,” and “IBM Careers”. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s registered marks. It notes that the letters “ibm” in the disputed domain name are exactly the same as the IBM trademark.
Complainant indicates that Respondent has not been licensed, contracted or otherwise permitted by Complainant to use the IBM mark or to apply for any domain name incorporating such mark, nor has Complainant acquiesced in any way to such use or application of the IBM mark by Respondent. Moreover, Complainant asserts, there is no evidence that Respondent is using or plans to use the IBM mark, or the domain name incorporating the IBM mark, for a bona fide offering of goods or services and there is no evidence that IBM is the name of Respondent’s corporate entity or that his company name includes the term “IBM”.
With respect to the issue of “bad faith” registration and use, Complainant maintains that Respondent was well aware of Complainant’s IBM mark at the time it registered the disputed domain name. Complainant also points out that it sent a “cease and desist” letter to Respondent on March 21, 2016, requesting Respondent to disable and transfer the disputed domain name to Complainant but that no response was received. A second “cease and desist” letter was sent on April 7, 2016, and, again Respondent failed to respond.
Finally, Complainant asserts that Respondent is using the domain name in issue for commercial gain insofar as, noted above, the disputed domain name resolves to PPC links to IBM sites. According to Complainant, “Respondent’s such use of the domain name is another clear evidence of bad faith because generating more traffic will result in more money for Respondent. It also creates a likelihood of confusion as to the source, sponsorship, or endorsement of IBM’s websites”. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that Complainant’s ownership of registrations for the IBM mark and its longstanding use of such mark establish its rights in the IBM mark.
The Panel finds that the disputed domain name, , is confusingly similar to Complainant’s IBM trademark. As Complainant notes, the disputed domain name incorporates in full the initials “ibm,” which corresponds exactly to the letters comprising the IBM mark. The addition of the descriptive phrase “researchgroup” in the disputed domain name does not dispel the confusing similarity between the mark and the domain name. B. Rights or Legitimate Interests
The Panel finds that Complainant has established an unrebutted prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. The evidence does not establish the existence of any of the circumstances set forth in paragraph 4(c) of the Policy or of any other factors that would support a finding of rights or legitimate interests. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met. C. Registered and Used in Bad Faith
The Panel determines that the evidence establishes that the disputed domain name was registered and is being used in bad faith. As noted above, the evidence indicates that the disputed domain name resolves to a site featuring PPC links to IBM sites and that the disputed domain name incorporates in full the IBM mark. The Panel further notes that Complainant uses its mark in connection with research activities and that the disputed domain name includes the phrase “researchgroup”.
As a result, the Panel finds that, by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its site or other online locations by creating a likelihood of confusion with Complainant’s IBM mark as to the source, sponsorship, affiliation, or endorsement of such site or of a product or service on the site or location, within the meaning of paragraph 4(b)(iv) of the Policy.
The longstanding use of the IBM mark by Complainant is further evidence of the requisite bad faith insofar as such fact strongly suggests that Respondent was aware of Complainant’s mark as of the time it registered the disputed domain name. Respondent’s failure to respond to Complainant’s “cease and desist” letters is further evidence of bad faith. 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 Complainant.
Jeffrey M. Samuels
Sole Panelist
Date: October 1, 2016
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