The Complainant is International Business Machines Corporation of Armonk, New York, United States of America ("United States" or "US"), represented internally.
The Respondent is Birgul POLAT, PETASOFT Yazilim ve Web Cozumleri of Gaziantep, Turkey, self represented. 2. The Domain Name and Registrar
The disputed domain name is registered with NetEarth One Inc. d/b/a NetEarth (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 10, 2017. On April 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 April 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2017. The Response was filed with the Center on May 10, 2017. The Respondent also sent another email communication on May 10, 2017.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on May 18, 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 a US technology company established with IBM trade name on February 14, 1924 and operates throughout the world.
The Complainant owns multiple national, international and/or regional trademark registrations IBM including the followings:
- IBM word mark No. 1058803 registered before United States Patent and Trademark Office in 1977 covering the classes 1, 2, 3, 4, 7, 9, 10, 16, 28, 37, 41 and 42;
- IBM word mark No. 130376 registered in 1979 for the classes 7, 9, 14 and 16 in Turkey where the Respondent is domiciled;
- IBM word mark No. 186720 registered in 1998 for the classes 35, 36, 37, 38, 41 and 42 in Turkey where the Respondent is domiciled.
The Complainant's IBM trademark has been recognized as a well-known trademark in previous UDRP decisions.
The Complainant's IBM trademark has been recognized as a well-known trademark according to Turkish Patent and Trademark Office.
The disputed domain name was registered on August 1, 2016 in the name of the Respondent which is a company registered in the city of Gaziantep, Turkey.
The Panel visited the disputed domain name on May 28, 2017, and observed that the disputed domain name does resolve to an active website. 5. Parties' Contentions A. Complainant
The Complainant requests the transfer of the disputed domain name.
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant's recognized and reputed IBM trademark, since it includes the trademark IBM and the word "teknoloji" which means "technology" in Turkish language. The Complainant states that IBM is a technology company and argues that the presence of the word "teknoloji" would increase the likelihood of confusion.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name since:
- the Respondent is not affiliated and/or related with the Complainant in any manner;
- the Respondent is not and has never been known by the name "IBM";
- no license or authorization has been granted to the Respondent to make any use or apply for the disputed domain name;
- the Respondent is not making a legitimate noncommercial or fair use.
Moreover, the Complainant asserts that the disputed domain name has been registered and used in bad faith since:
- the Complainant's trademark has a strong reputation and is widely known through the world for a very long time;
- the Complainant sent two cease-and-desist letters to which the Respondent failed to submit any reply;
- the Respondent is using the website for commercial gain and intentionally attempts to create a likelihood of confusion by using the disputed domain name to attract visitors to its website and increase traffic with the IBM trademark. B. Respondent
Though the Respondent did not formally reply to the Complainant's contentions, it sent several email communications on May 10, 2017 stating that:
- the term "ibm" is coined from the first letters of the names "ilker", "birgül" and "mahmut" which is composed from the first names of the company's shareholder and their company is a technology firm active in advertisement and web design services;
- the term, the Respondent is using, is not "IBM" but "İBM" which is different (even if it is written as low key, i.e., "ıbm" instead of "ibm");
- the disputed domain name does not refer to the Complainant's trademark as the term "technology" is not a monopoly of "International Business Machine";
- If the intention of the Respondent was to copy IBM, then they would prefer to use "UIM" which is the abbreviation of the Turkish translation of "International Business Machine" (i.e., Uluslararası İş Makinasi);
- the Complainant has bought the domain names in 1986 and in 2012. Therefore, the addition of the term "technology" is rather recent compared to the 100 years as contended by the Complainant;
- the Respondent does not claim any right for IBM trademark and they do not plan to sell any products under IBM trademark;
- IBM brand is not appearing in the trademark surveys made in Turkey and it is not included in the
well-known brands and it is not known as much as Apple, HTC, Samsung, HP or Lenovo;
- the Complainant was producing PC and laptops 20 years ago and they were selling servers to official institutions and big companies until five years ago and the trademark IBM is not used in the market anymore;
- the Respondent does not use the term IBM in a defamatory or exalting manner. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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 in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As indicated above, "IBM" is the distinctive part of the Complainant's trade name since 1924 and the Complainant holds multiple registrations for IBM all around the world.
The disputed domain name integrates the Complainant's IBM trademark as a dominant element and the word "teknoloji" is descriptive with respect to the main activity of the Complainant which is defined as "technology company" in all kind of company rankings.
As regards the generic Top-Level Domain ("gTLD") ".com", it is typically disregarded under the confusing similarity test.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and it is then for the Respondent to rebut this case.
The Panel accepts the Complainant's submissions that the Respondent does not appear to be known by the disputed domain name, has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, is not making a legitimate noncommercial or fair use of the disputed domain name, and has no consent from the Complainant to use its trademark.
The Respondent contends that the term "İBM" stands for the first letters of the company's shareholders and it is different from IBM and that their intention is not to copy the Complainant. Moreover, the Respondent argues that the use of the term technology by the Complainant is recent compared to the history of the Complainant company and that anyway the Respondent does not claim any right over the IBM indication and the Respondent does not use the term IBM in a defamatory or exalting manner.
In the Panel's view, the Respondent's explanations and arguments do not give rise to any right or legitimate interest for the disputed domain name . Accordingly, the Panel finds that the Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to rebut it. Accordingly, the Complaint succeeds in relation to the second element of the Policy. C. Registered and Used in Bad Faith
The Panel accepts the Complainant's contention that the trademark IBM is a well-known trademark. Moreover, the trademark IBM is accepted by the Turkish Patent and Trademark Office as a well-known mark in Turkey.
The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation,WIPO Case No. D2000-1568).
On the other hand, according to the website "www." of the Respondent, the main field of activity of the Respondent is software development, computer programming, developing mobile application and offering SEO services. The Respondent indicates in its website that it also offers trademark application services for their clients which means that the Respondent is aware of the importance of the trademark protection and can easily assess that the trademark IBM is protected for software engineering and computer programing in Turkey. In view of all the above, the Panel finds that the Respondent had actual notice of the Complainant's trademark rights at the time of registration of the disputed domain name.
For the above mentioned reasons, the Panel finds that the Respondent's explanations as to the legitimate choice of the disputed domain name are far from being satisfactory.
Considering that the disputed domain name and the Complainant's mark are found to be confusingly similar to each other, it seems very likely that the disputed domain name is used to divert Internet users seeking the Complainant's website to the Respondent's website.
The Panel finds that the Respondent is using the disputed domain name to intentionally attempt to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trademark.
Therefore, in view of cumulative circumstances, the Panel finds that this requirement is satisfied, according to 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.
Emre Kerim Yardimci
Sole Panelist
Date: June 6, 2017
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