Complainant is International Business Machines Corporation of Armonk, New York, United States of America (“United States”), represented internally.
Respondent is Victor Conti, br-ibm of Torrance, California, United States. 2. The Domain Name and Registrar
The disputed 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 October 30, 2018. On October 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 2018, 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 November 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 28, 2018.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on December 7, 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
Complainant is one of the premier providers of computer and computer-related goods and services throughout the world. Complainant owns valid and subsisting registrations for the IBM trademark in numerous jurisdictions around the world, including in the United States (see e.g., United States registration no. 1696454 for IBM, registered June 23, 1992). The IBM trademarks have been used by Complainant since as early as 1925 in connection with a wide array of products that record, process, communicate, store and retrieve information, including computers and computer hardware, software and accessories.
Respondent registered the disputed domain name on June 12, 2018. Currently, the disputed domain name does not resolve to any active website content. 5. Parties’ Contentions A. Complainant
Complainant asserts that the IBM trademark is a world famous trademark, citing to numerous rankings by BrandZ, Interbrand, and Fortune that estimated the value of the IBM trademark at over $96B in 2018. Complainant also asserts use of the IBM trademark since as early as 1924, and cites ownership of numerous United States registrations that date back to 1955 and common law evidence that dates back to 1925. Complainant further asserts that the disputed domain name is identical or confusingly similar to its registered trademarks because “the letters ‘ibm’ contained in the domain name are exactly the same as the IBM trademark.”
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has not been licensed, contracted or otherwise permitted by Complainant in any way to use the IBM trademark in the disputed domain name. Complainant also points to the lack of any evidence that Respondent is commonly known by the disputed domain name, and the lack of any evidence of fair use of the disputed domain name. Conversely, Complainant asserts that Respondent impersonated an IBM employee in an attempt to defraud millions of dollars from Complainant’s client through the use of an email address “[. . .]@” as well as other email addresses.
Complainant asserts that Respondent was well aware of the well-known IBM trademark at the time the disputed domain name was registered. Complainant further asserts that Respondent created fraudulent email addresses and personas using the disputed domain name to impersonate IBM employees in correspondence with Complainant’s clients in an attempt to defraud millions of dollars. Complainant also asserts that ostensible passive holding of the disputed domain name amounts to bad faith due to the strength and worldwide renown of the IBM trademark. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence of ownership of the IBM trademark, which has been registered internationally and in the United States where domain name registration data purports that Respondent is located. With Complainant’s rights in the IBM trademark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the gTLD “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s IBM mark because it incorporates this mark in its entirety as the dominant element of the disputed domain name. The addition of the geographical abbreviation “br” and a hyphen before the dominant IBM element does not distinguish the disputed domain name from Complainant’s mark. See, e.g., Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner / Matthew Alvarez,WIPO Case No. D2016-1004; Fibria Celulose S.A. v. Hughes le Grand,WIPO Case No. D2016-1126 (concluding that “[t]he prefix “br” only adds to the confusing similarity as it refers to Complainant’s headquarters’ location”). Here, Respondent clearly intended the geographic abbreviation “br” for Brazil to add to the confusing similarity and create a false air of legitimacy in Respondent’s attempts to impersonate an employee of Complainant with the title of “Financial Sales Executive – Southeast Distribution.”
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the IBM mark and in showing that the disputed domain name is identical or confusingly similar to this mark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the Policy.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its IBM trademark and that Respondent does not have any rights or legitimate interests in the disputed domain name. Respondent has not made any bona fide or fair use of the disputed domain name in connection with any product or service. And it is evident that Respondent is not known by the disputed domain name. Rather, Respondent has used the disputed domain name in an attempt to defraud millions of dollars from Complainant’s clients by impersonating Complainants employees. Respondent created fraudulent personas and email addresses incorporating the domain name and attempted to leverage these email addresses to urgently obtain an overnight check or electronic wire transfer from a client of Complainant. “Can you please let us know when we can expect payment,” and “[w]e really need to get this cleared up before the end of the month due to the amount of the payment,” Respondent wrote to Complainant’s customer. Illegal use such as this can never constitute a legitimate interest in a disputed domain name. See WIPO Overview 3.0, sections 2.13.1 and 2.13.2 (“Panels have categorically held that the use of a domain name for illegal activity (e.g. phishing … impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent…. [P]anels have found that circumstantial evidence can support a complainant’s otherwise credible claim of illegal respondent activity….”).
Given that Complainant has established with sufficient evidence its prima facie case, and given Respondent’s failure to file a response, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
In the instant proceeding, Complainant provided ample evidence to show the IBM trademark is well known globally and in the United States, where Respondent is located. Use and registration of the IBM trademark established in the record long predates the registration of the disputed domain name by Respondent. Therefore, Respondent was likely aware of the IBM trademark when it registered the disputed domain name, or knew or should have known that the disputed domain name was identical or confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3, 2, 1; see also TTT Moneycorp Limited v. Privacy Gods/Privacy Gods Limited,WIPO Case No. D2016-1973.
Respondent’s use of the IBM trademark in connection with its scheme to impersonate Complainant’s employees and defraud Complainant’s clients appears to have been done in an intentional effort to trade on the goodwill associated with these marks in furtherance of the fraudulent scheme, for commercial gain, in violation of paragraph 4(b)(iv) of the Policy. See, e.g., Barclays Bank PLC v. PrivacyP / Sylvia Paras,WIPO Case No. D2011-2011; see also Hammerson PLC v. Paolo Sossa / Domains by Proxy Inc.,WIPO Case No. D2010-0533.
Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith and Complainant succeeds under the third element of paragraph 4(b) 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 name be transferred to Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: December 18, 2018
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