The Complainant is International Business Machines Corporation of Armonk, New York, United States of America (“United States”), internally represented.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / Domain Admin, DomainNameN - This Domain is For Sale of Westminster, Maryland, United States, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2018. On September 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 18, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 20, 2018.
The Center verified that the Complaint together with the amended 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 September 25, 2018. On September 25, 2018, the Center received an informal email from the Respondent. On September 26, 2018, the proceedings were suspended for purposes of settlement discussions between the Parties. The proceedings were reinstituted on October 26, 2018, with the due date for Response extended until November 14, 2018. The Respondent did not submit any formal response. On November 15, 2018, the Center notified the Parties that it would commence the panel appointment process.
The Center appointed Steven L. Snyder as the sole panelist in this matter on November 26, 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. 4. Factual Background
In 1911, the Computing-Tabulating-Recording Company was incorporated. Three years later the company changed its name to the International Business Machines Corporation. Over the decades, the company became known worldwide as IBM, a leading computer manufacturer. By the 1960s, IBM reportedly was producing 70 percent of the world’s computers.
IBM has shifted much of its resources in recent decades to providing computer services and software. While it has abandoned much of the computer manufacturing space it once occupied, the IBM mark continues to be associated with computers and computer-related services.
A search of the United States Patent and Trademark Office (“USPTO”) database reveals dozens of marks registered to the Complainant. One of the earlier marks was obtained in 1949, when the Complainant filed an application to register the IBM mark in several international classes, including International Class 020 for calculating machines. SeeUSPTO Reg. No. 0550421. Though that registration has expired, the company’s trademark portfolio has continued to increase. One of the more recent additions is a registration in the United States for “IBM RESILIENCY SERVICES”. SeeUSPTO Reg. No. 5281583. This registration was obtained on September 5, 2017, and covers a variety of computer services in International Classes 035 and 042.
On December 10, 2017, the Respondent registered the disputed domain name, with GoD, LLC. In the WHOIS record, the Respondent is listed as being Domains by Proxy, LLC, an entity that shields the name of the actual registrant. This service is used by some registrants who wish to avoid unwanted commercial solicitations and by some registrants who wish to avoid unwanted legal solicitors. The disputed domain name is being used to display pay-per-click links relating to computers and electronics.
Further evidence of the Respondent’s desire to avoid solicitations and/or solicitors is shown by its “actual” name. According to God, the Respondent’s name is “Domain Admin” and the organization with which the Respondent is associated is “DomainNameN - This Domain is For Sale.” 5. Parties’ Contentions A. Complainant
The Complainant’s Complaint is replete with citations to relevant UDRP decisions and accompanied by a bevy of Annexes in support of its argument that it has successfully proved all three requisite elements and is entitled to an order granting it ownership of the disputed domain name. The gist of this well-crafted pleading is this straightforward argument:
- IBM is one of the world’s most famous and valuable marks thanks to the Complainant’s long usage of the mark and an annual USD 1 billion marketing effort;
- The Complainant has protected the IBM mark, as evinced by trademark and service mark registrations in 170 different jurisdictions;
- For many decades the IBM mark has been associated with computers;
- Internet users are likely to be confused into thinking the disputed domain name, , is associated with the Complainant;
- The Respondent had no right to use the IBM mark in any fashion, much less one that causes confusion to the disadvantage of the Complainant;
- The Respondent is based in the United States, it is undoubtedly familiar with the IBM mark, and it must be deemed to have acted in bad faith; and
- The disputed domain name should be transferred to the Complainant. B. Respondent
The Respondent did not submit substantive reply to the Complainant’s contentions. 6. Discussion and Findings
To prevail in this proceeding, the Complainant must introduce sufficient evidence to establish the following three elements:
(i) The disputed domain name in issue is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; and
(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.
See Yellow Corporation v. MIC,WIPO Case No. D2003-0748. This burden of proof exists even if a Response is not submitted. A. Identical or Confusingly Similar
Under the first element of the Policy, the Complainant must demonstrate that it has rights in the IBM mark and that the disputed domain name is confusingly similar to its mark. See BlackRock Index Services v. Syed Hussain, IBN7 Media Group,WIPO Case No. D2017-1523.
IBM is one of the most famous marks in the world and has long been associated with the Complainant and its computer products and services. The Complainant has taken pains to register and protect the famous IBM mark and has used this intellectual property in a wide and extensive variety of marketing efforts. The Complainant has rights in the IBM mark.
The only difference between the disputed domain name and the Complainant’s trademark is the word “computer”, which is a word commonly associated with IBM. The addition of “computer” to the IBM mark does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 1.8.
The Complainant has established the first element under the Policy. B. Rights or Legitimate Interests
There is no evidence in the record that the Respondent has any rights or legitimate interests in the disputed domain name. There likely is no evidence outside the record either, which may explain why the Respondent failed to participate in this proceeding.
The evidence before the Panel demonstrates that the Respondent registered the disputed domain name which incorporates, and is confusingly similar to, a famous trademark and service mark of the Complainant. The only reasonable conclusion to be drawn is that the Respondent sought to benefit from the confusion which the Respondent deliberately engendered.
Under these circumstances, the Respondent has no rights in the disputed domain name: “[I]f the domain name in question was chosen because of the similarity to a name in which a complainant has an interest and in order to capitalise or otherwise take advantage of that similarity, then such registration and use does not provide the registrant with a right or legitimate interest in the domain name.” Compagnie Gervais Danone v. Domain Management, Syed Hussain,WIPO Case No. D2008-1239.
The Complainant has established the second element under the Policy. C. Registered and Used in Bad Faith
It is evident that the disputed domain name, , was registered and used in bad faith.
To create the disputed domain name, the Respondent chose one of the most famous marks in the world, IBM, and combined it with a word that is descriptive of products and services long offered under the mark.
It is inconceivable that the Respondent accidentally arrived at the disputed domain name. The Respondent is based in Maryland, a state where IBM has offices, where it sells products and services, and where it heavily advertises. The Respondent must be aware of the famous IBM mark. The only plausible explanation is that the Respondent deliberately chose the disputed domain name precisely in order to create confusion and to profit off that confusion. This constitutes bad faith. See Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo,WIPO Case No. D2001-0020.
The Complainant has established the third element under the Policy. 7. Decision
For the foregoing reasons, and 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.
Steven L. Snyder
Sole Panelist
Date: December 13, 2018
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