The Complainant is International Business Machines Corporation of Armonk, New York, United States of America (“United States”), internally represented.
The Respondent is Alice Chow of Nanjing, Jiangsu, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2016. On December 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 13, 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 December 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on January 23, 2017. 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 United States company, incorporated in 1911 as an amalgamation of three previously existing companies, that has historically been an 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. In 2016 the Complainant was ranked as the 31st largest firm in the United States by Fortune and its IBM brand was ranked as the 10th most valuable global brand by BrandZ, valued at USD 86.206 billion.
The Complainant is the owner of a number of trademark registrations consisting of the acronym “IBM” (the “IBM Mark”), in countries around the globe and in particular in the United States since 1955 and in China, the location of the Respondent, since 2009.
The Domain Name was registered on March 31, 2016. The Domain Name resolves to an Internet site (“Respondent’s Website”) the content of which is in a mixture of Japanese and English and appears to offer for sale examination questions and answers for various professional certification programs offered by the Complainant, such as the IBM Certified Developer, and IBM Certified System Examiner exams. The Respondent’s Website appears to offer for sale similar questions and answers for certification programs offered by other information technology companies, such as Cisco and Microsoft. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s IBM Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the IBM Mark, having registered the IBM Mark in the United States, China and internationally.
The Domain Name consists of the IBM Mark in its entirety with the addition of the word “specialist”. The Domain Name is confusingly similar to the Complainant’s IBM Mark as the Domain Name incorporates the IBM Mark in its entirety.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is using the Domain Name to sell answers to tests offered by the Complainant which is not a bona fide offering of goods and services or a legitimate noncommercial or fair use of the Domain Name. This constitutes prima facie evidence of no rights or legitimate interests.
The Domain Name was registered and is being used in bad faith. The Domain Name resolves to a website that disrupts the business of the Complainant and causes confusion as to whether the Complainant endorses the Respondent’s services. The Respondent is, for commercial gain, clearly interfering with the integrity of the Complainant’s Professional Certified Examinations and thus creating a likelihood of confusion with the Complainant. It is the clear and obvious intention of the Respondent to attract consumers to its website under the misimpression that it is connected to the Complainant and to profit from this confusion. The Respondent’s conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the IBM Mark, having registrations for the IBM Mark as a trademark in the United States and various countries around the world, including China.
The Domain Name consists of the IBM Mark, with the addition of the word “specialist”. The addition of the word “specialist” does not prevent a finding of confusing similarity. Moreover, an individual viewing the Domain Name may be confused into thinking that the Domain Name refers to a specialist certified or related to the Complainant who can assist with the Complainant’s products. The Panel finds that the Domain Name is confusingly similar to the Complainant’s IBM Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.”
The Respondent is not affiliated with the Complainant in any way. She has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the IBM Mark or a mark similar to the IBM Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use.
The Respondent has used the Domain Name to operate a website to sell answers to tests for various certification exams offered by the Complainant and other IT companies. Such an activity is not condoned by the Complainant and, if illegitimate, does not amount to a bona fide offering of goods or services or fair use of the Domain Name.
If it is legitimate for the Respondent to sell the questions and answers to the Complainant’s certification exams (and the Panel does not need to reach a conclusion on this issue), such use does not automatically grant her rights or legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. While the Respondent is not a reseller or distributor of the Complainant’s genuine goods, but rather offering services relating to the Complainant, the principles set referred to below are still relevant in determining whether her use of the Domain Name could still be a bona fide use.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 2.3 summarizes the consensus views of UDRP panels in response to the question about whether a reseller/distributor of trademarked goods or services has rights or legitimate interests in a domain name which contains such a trademark in the following manner:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the sites accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
In this case, the Respondent’s Website does not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that she is not authorized by the Complainant to provide her services. Furthermore, the Respondent’s Website offers questions and answers to various certification exams offered by different IT companies, not just those offered by the Complainant. Finally, the Domain Name itself does not accurately describe the services offered by the Respondent. The Respondent does not offer services as an “IBM specialist”, she offers questions and answers to test scores. Even in the event that the Respondent’s sale of the Complainant’s certification examination test questions and answers were legitimate, her use of the Respondent’s Website does not grant her rights or legitimate interests in the Domain Name.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of her rights or legitimate interests, including submissions as to why her conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, 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 the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b))
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the IBM Mark at the time the Domain Name was registered. The Domain Name resolves to a website that displays the IBM Mark and offers answers to tests offered by the Complainant.
The Respondent’s conduct in registering the Domain Name when she was aware of the Complainant’s rights and lacked rights and legitimate interests of her own amounts to registration in bad faith.
The Respondent registered the Domain Name for the purposes of operating a website specifically to sell answers to certification examination questions offered by IBM and various other IT companies, such as Microsoft and Cisco. The Respondent is using the Domain Name that is confusingly similar to the IBM Mark to sell services, be they legitimate or otherwise, that are not accurately described by the Domain Name, including services related to the Complainant’s competitors. Consequently, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to her website by creating a likelihood of confusion with the Complainant and the Complainant’s IBM Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under 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 Domain Name, , be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: January 31, 2017
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