Complainant is International Business Machines Corporation of Armonk, New York, United States of America (“United States”), internally represented.
Respondent is Erik Popovic of West Monroe, Louisiana, United States. 2. The Domain Names and Registrar
The Disputed Domain Names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2017. On December 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On December 14, 2017, 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 December 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2018.
The Center received seven email communications from Respondent between January 7, 2018 and January 11, 2018. On January 9, 2018, the Center notified the Parties of the commencement of the panel appointment process.
The Center appointed Richard W. Page as the sole panelist in this matter on January 24, 2018. 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.
At the request of Respondent, the Panel extended the deadline for the filing of the Response until February 22, 2018. Respondent failed to file any Response. 4. Factual Background
Complainant has been the owner of trademark registrations including the name “IBM” (collectively the “IBM Mark”) in 170 countries around the world for several decades, covering a broad range of goods and services, including without limitation, information technology related goods and services. More particularly, Complainant owns the following registrations in the United States, as supported by the annexes to the Complaint:
United States trademark registration no. 4,181,289 in International Classes 6, 8, 9, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 28, 30, 35 and 41, registered on July 31, 2012;
United States trademark registration no. 3,002,164 in International Class 9, registered on September 27, 2005;
United States trademark registration no. 2,183,815 in International Classes 16, registered on August 25, 1998;
United States trademark registration no. 1,694,814 in International Class 36, registered on June 16, 1992;
United States trademark registration no. 1,243,930 in International Class 42, registered on June 28, 1983;
United States trademark registration no. 1,205,090 in International Classes 1, 7, 9, 16, 37, and 41, registered on August 17, 1982;
United States trademark registration no. 1,058,803 in International Classes 1, 9, 16, 37, 41 and 42, registered on February 15, 1977; and
United States trademark registration no. 640,606 in International Class 9, registered on January 29, 1957.
Complainant also owns a trademark registration for “IBM Watson” (hereinafter the “IBM Watson Mark”) in many countries around the world for a broad range of goods and services, including without limitation technology related goods and services. More particularly, the Complainant owns the following registration in the United States, as supported by the annexes to the Complaint:
United States trademark registration no. 5,082,512 in International Classes 9, 35, and 42, registered on November 15, 2016.
Respondent registered the Disputed Domain Names on March 23, 2016. Currently, the Disputed Domain Name does not resolve to an active website. The Disputed Domain Name resolves to a parked website displaying links to third party websites. 5. Parties’ Contentions A. Complainant
Complainant contends that the IBM Mark is world famous. Complainant traces its roots to the 1880s and has been a leading 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.
Complainant further contends that, in 2017, it was ranked the 9th most valuable global brand by BrandZ, the 10th best global brand by Interbrand, the 32nd largest company on the Fortune U.S. 500 list, and the 81st largest company on the Fortune Global 500 list. In 2016, Complainant further contends that it was ranked the 6th best global brand by Interbrand, the 10th most valuable global brand by BrandZ, the 31st largest company on the Fortune U.S. 500 list, and the 82nd largest company on the Fortune Global 500 list. Complainant further contends that the IBM Mark was valued by BrandZ as worth over USD 102 billion in 2017 and over USD 86 billion in 2016.
Complainant argues that the Disputed Domain Names are identical or confusingly similar to the IBM Mark and the IBM Watson Mark under paragraph 4(a)(i) of the Policy because:
Complainant was incorporated on June 16, 1911 as an amalgamation of three previously existing companies. Complainant officially became International Business Machines on February 14, 1924. Complainant has been offering products under the IBM Mark ever since. In the early days, these products included office and research equipment such as punch machines, calculating machines, clocks and scales. IBM introduced its first large vacuum tube computer under the name IBM 710 in 1952, and since then, has continuously used the IBM Mark in association with computers and computer hardware, software and accessories.
In 1961, IBM introduced the IBM Selectric typewriter. This was a significant innovation in the business sector, and the United States Postal Service issued a 2011 postage stamp featuring the IBM typewriter, commemorating the industrial designer as part of its Pioneer of American Design series of stamps.
As a result of the high quality of goods and services IBM has provided to its customers for over 100 years, and its reputation as one of the premier manufacturers of computer and computer related goods and services throughout the world, Complainant’s name and the IBM Mark are famous and valuable assets. In a July 9, 2010, in the decision International Business Machines v. Niculescu Aron Razvan Nicolae,WIPO Case No. DRO2010-0003, the panel concluded that Complainant’s “trademark is well-known around the world including in Romania and is registered for decades. Also, the IBM trademark is distinctive and therefore it is difficult to imagine someone randomly choosing three letters composing the trademark to register as a domain name, especially in light of the lack of Response in this case.” The panel concluded in International Business Machines Corporation v. Linux Security Systems srl,WIPO Case No. DRO2010-0004, that “Complainant’s [IBM’s] trademark is well-known around the world, representing the abbreviation of its trade name.”
Complainant has devoted, and continues to devote, substantial resources toward maintaining and building these assets. For example, Complainant spends nearly USD 6 billion each year on advanced research, in addition to its expenditures on product development. The net result of these investments is manifest – Complainant’s IBM Mark is synonymous with innovation and high quality in the field of information technology.
Moreover, Complainant spends over USD 1 billion dollars marketing its goods and services globally, using the IBM Mark, and has undertaken extensive efforts to protect its name and enforce the IBM Mark. Complainant exerts careful control over use of the IBM Mark and imposes strict quality control measures over goods and services offered in connection with the trademark. Complainant further protects its brand and the IBM Mark by diligently pursuing infringers of the IBM Mark.
Within the meaning of paragraph 4 of the Policy, the Disputed Domain Names are identical or confusingly similar to Complainant's IBM Mark. IBM relies on the extensive range of registered trademarks for IBM to which references have already been made. The first Disputed Domain Name consists of the usual “www.” prefix, the letters “ibm” (not case sensitive) followed by the word “development” and the generic suffix “.com”. The second Disputed Domain Name consists of the usual “www.” prefix, the letters “ibm” (not case sensitive) followed by a dash and the word “watson,” and the generic suffix “.org”. The letters “ibm” contained in the Disputed Domain Names are exactly the same as the IBM Mark. Furthermore, the second Disputed Domain Name contains the words “ibm” and “watson,” which are identical to the IBM Watson Mark. Therefore, the Disputed Domain Names and and are identical or confusingly similar to Complainant’s IBM Mark and the IBM Watson Mark.
Complainant argues that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names under paragraph 4(a)(ii) of the Policy because:
Respondent has not been licensed, contracted or otherwise permitted by Complainant in any way to use the IBM Mark or the IBM Watson Mark or to apply for any domain name incorporating the IBM Mark or the IBM Watson Mark, nor has Complainant acquiesced in any way to such use or application of the IBM Mark or IBM Watson Mark by Respondent. Additionally, there is no evidence that “IBM” or “IBM Watson” is the name of Respondent’s corporate entity, nor is there any evidence of fair use. Furthermore, there is no evidence that Respondent is using or plans to use the IBM Mark or the IBM Watson Mark or the Disputed Domain Names incorporating the IBM Mark or the IBM Watson Mark for a bona fide offering of goods or services. In fact, Respondent falsely claimed to be an IBM Business Partner, while no such relationship can be found after Complainant conducted an internal investigation. Nevertheless, Respondent has been actively using the IBM Mark and the IBM Watson Mark in the Disputed Domain Names to promote its websites for commercial gain, which is likely to cause consumers to erroneously believe that Complainant is somehow affiliated with Respondent or endorsing its commercial activities, while in fact no such relationship exists. Therefore, Complainant can affirm with good faith that
- There is no evidence of any Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with any bona fide offering of goods or services;
- Respondent has not been commonly known by the Disputed Domain Names;
- Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names.
Complainant further argues that the use and registration of the Disputed Domain Names are in bad faith under paragraph 4(a)(iii) of the Policy because:
Respondent was well aware of Complainant’s trademarks at the time Respondent registered the Disputed Domain Names on March 23, 2016. Complainant’s trademarks are well-known around the world. Complainant relies on the extensive range of registered trademarks for “IBM” and “IBM Watson” to which references have already been made and the fact that the IBM mark was ranked the world’s 6th best global brand in the world. This is proof of bad faith at the time of registration.
Moreover, Complainant sent a cease and desist letter to Respondent at the email address listed in the WhoIs information on September 13, 2016 asking Respondent to disable and transfer the Disputed Domain Names back to IBM. Respondent falsely claimed to be an IBM business partner and renewed the two Disputed Domain Names for an additional year upon expiration respectively, despite receiving multiple notices from IBM explaining that no such business relationship could be found and Respondent’s misuses of IBM trademarks in the Disputed Domain Names and on its websites to make false affiliations with IBM constitute trademark infringements. Respondent’s misuse of the Disputed Domain Names is clear evidence of bad faith because it creates a likelihood of confusion as to the relationship between Complainant and Respondent, as well as the source, sponsorship, or endorsement of IBM’s websites and/or goods and services.
Furthermore, Respondent has been actively using the Disputed Domain Names containing the IBM Mark and the IBM Watson Mark for commercial gain. Respondent intentionally attempted to create a likelihood of confusion for commercial gain by using the Disputed Domain Names to attract visitors to its websites and to increase traffic to his websites. In fact, Respondent asked Complainant to compensate him for transferring the Disputed Domain Names claiming that removing or deleting the Disputed Domain Names and/or website contents will result in Respondent losing its Internet search rankings and profits they have gained through his misuse of IBM Mark and the IBM Watson Mark in the Disputed Domain Names. Respondent’s attempts to seek compensation from Complainant to transfer the Disputed Domain Names, and the fact that Respondent has been actively using the Disputed Domain Names to attract visitors to his websites for commercial gain is further clear evidence of Respondent’s bad faith.
Respondent’s subsequent changes to the website (for example, removing most of the infringing contents including the IBM trademarks from the sites) after receiving the Complainant’s cease and desist letters will not negate his bad faith. In fact, the Disputed Domain Name recently displayed click-through paid advertisements including references to IBM by using words such as “Cheap IBM Laptop,” “IBM Thinkpad on Sale,” and “IBM Jobs 2017.” This is further proof of Respondent’s continuous bad faith. The Disputed Domain Name currently displays a click-through paid advertisement that references Watson using a “Watson” link. Moreover, although currently resolves to an inactive page, it has been acknowledged that inactivity by Respondent may amount to the Disputed Domain Names being used in bad faith. “[P]aragraph 4(b) recognizes that inaction (e.g., passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith.” Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. There, the panel found that the passive holding of a domain name amounted to bad faith where, among other factors, Complainant had a strong and widely known trademark, Respondent failed to provide evidence of actual or contemplated good faith use, and it was “not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.” As previously articulated, Complainant is widely known around the world, and the IBM Mark has a particularly strong presence in the United States. Furthermore, Respondent has failed to provide evidence of good faith use and in fact falsely claimed to be an IBM business partner with a clear bad faith intention to be a passing off to confuse consumers and attract illegitimate commercial gain. Lastly, there is no plausible use of the Disputed Domain Names that would not constitute an infringement of Complainant’s rights in the IBM Mark. B. Respondent
Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Names registered by Respondent are identical or confusingly similar to the IBM Mark and/or the IBM Watson Mark in which Complainant has rights; and,
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and,
iii) that the Disputed Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Complainant contends that it has numerous registrations of the IBM Mark and the IBM Watson Mark.
Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
Respondent has not contested the allegations of Complainant regarding Complainant’s IBM Mark and IBM Watson Mark.
Therefore, the Panel concludes that Complainant has enforceable trademark rights for purposes of this proceeding.
Complainant further contends that the Disputed Domain Names are identical with and confusingly similar to the IBM Mark and the IBM Watson Mark pursuant paragraph 4(a)(i) of the Policy.
Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. Complainant argues that the entirety of the IBM Mark or the IBM Watson Mark is incorporated into the Disputed Domain Names. See, Hoffmann-LaRoche AG v. P Martin,WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah,WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.,WIPO Case No. D2008-0792.
The Panel finds that the Disputed Domain Names incorporate the entirety of the phrase “IBM” which is the dominant element of the IBM Mark and the IBM Watson Mark. Therefore, the Disputed Domain Names are confusingly similar to those IBM Mark and the IBM Watson Mark pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Names pursuant to the Policy paragraph 4(a)(ii).
Section 2.1 of the WIPO Overview 3.0 states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Names. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Names:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Names, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the IBM Mark or the IBM Watson Mark.
As set forth above, Complainant has alleged that Respondent has made no use or preparations of the Disputed Domain Names in connection with a bona fide offering of goods or services; has not been commonly known by the Disputed Domain Names; and is not making a noncommercial or fair use of the Disputed Domain Names.
Respondent has failed to contest these allegations.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith in violation of paragraph 4(a)(iii) of the Policy.
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Names:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Names registrations to Complainant who is the owner of the IBM Mark and the IBM Watson Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Names; or
(ii) you [Respondent] have registered the Disputed Domain Names in order to prevent Complainant from reflecting the IBM Mark and the IBM Watson Mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Names, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the IBM Mark and the IBM Watson Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.
Complainant alleges that Respondent has been actively using the Disputed Domain Names containing the IBM Mark and the IBM Watson Mark for commercial gain. Respondent intentionally attempted to create a likelihood of confusion for commercial gain by using the Disputed Domain Names to attract visitors to its websites and to increase traffic to his websites. In fact, Respondent asked Complainant to compensate him for transferring the Disputed Domain Names claiming that removing or deleting the Disputed Domain Names and/or website contents will result in Respondent losing its Internet search rankings and profits they have gained through his misuse of IBM Mark and the IBM Watson Mark in the Disputed Domain Names. Respondent’s attempts to seek compensation from Complainant to transfer the Disputed Domain Names, and the fact that Respondent has been actively using the Disputed Domain Names to attract visitors to his websites for commercial gain is further clear evidence of Respondent’s bad faith.
Respondent has failed to contest these allegations.
The Panel finds that Complainant has met the requirements of paragraph 4(b)(iv) of the Policy, thus establishing Respondent’s bad faith pursuant to paragraph 4(a)(ii) 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 Names and be transferred to the Complainant.
Richard W. Page
Sole Panelist
Date: February 26, 2018
Full & Egal Universal Law Academy