The Complainant is International Business Machines Corporation of Armonk, New York, United States of America (“United States”), represented internally.
The Respondent is Sadaqat Khan of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with 1&1 Internet SE (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 November 6, 2018, 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 November 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2018.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on December 10, 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
The Complainant, International Business Machines Corporation, is a multinational information and technology company established in the United States. The Complainant was founded in 1911 and currently is one of the largest global producers and sellers of computer software, middleware and hardware, and associated services. The Complainant is a Fortune 100 company and provides its products and services in 177 countries worldwide.
The Complainant is the holder of a multitude of trade and service mark registrations across various jurisdictions throughout the world, including the United Kingdom, where the Respondent is located, for the mark IBM, which it uses in connection with its information technology products and services. The Complainant’s trademark portfolio includes, inter alia, the following trade and service mark registrations:
- IBM, word mark registered with the United States Patent and Trademark Office (“USPTO”) under No. 1058803 on February 15, 1977 in classes 1, 9, 16, 37, 41 and 42;
- IBM, word mark registered with the USPTO under No. 1694814 on June 16, 1992 in class 36;
- combined mark registered with USPTO under No. 1205090 on May 25, 1982 in classes 1, 7, 9, 16, 37 and 41;
- , combined mark registered with USPTO under No. 4181289 on July 31, 2012 in classes 9, 16, 18, 20, 21, 22, 24, 25, 28, 35 and 41.
The Disputed Domain Name was registered by the Respondent on June 26, 2018. The Disputed Domain Name does not resolve to an active webpage.
On June 18, 2018, the Respondent contacted a client of the Complainant using an email address connected to the Disputed Domain Name . The Respondent pretended to be an employee of the Complainant responsible for finance and sales and requested that the client pay fraudulent invoices for the total amount of USD 4.1 million. On June 26, 2018, the Respondent sent two additional emails to the client of the Complainant providing instructions for the payment of the invoices using an email address connected to the Disputed Domain Name. In its communications, the Respondent also included additional email addresses in copy connected to the domain name . 5. Parties’ Contentions A. Complainant
The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent knew of the existence of the Complainant’s trademark rights. The Complainant further claims that the Respondent has registered the Disputed Domain Name in an attempt to fraudulently redirect payments from the Complainant’s clients to the Respondent for illegitimate commercial gains. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The Disputed Domain Name is identical or confusingly similar to a 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.
The Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are IBM trademarks in which it has rights. The trademarks have been registered and used in various countries in connection to the Complainant’s information technology products and services.
The Disputed Domain Name is made up of the non-distinctive text “br” followed by a hyphen and the letters “ilbm”, which incorporates the Complainant’s IBM trademark with the addition of the letter “l” between the “i” and the “b”.
The Panel determines that the Complainant’s famous IBM trademark is not directly recognizable within the Disputed Domain Name to the less attentive Internet user, as an abstract side-by-side comparison of the Disputed Domain Name taken as a whole and the textual components of the Complainant’s IBM trademark reveals a low degree of similarity between both signs. Additionally, a more holistic aural or phonetic comparison of the IBM trademark with the Disputed Domain Name does not support a clear finding of confusing similarity.
However, the Panel notes that in specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusingly similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). As the first element of the Policy serves to ascertain whether there is sufficient nexus to assess the principles captured in the second and third elements, a panel can take note in these specific instances of the overall facts and circumstances of the case to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name (Seesection 1.15 of the WIPO Overview 3.0).
In the present case, the Complainant has established that the Respondent has actively used the Disputed Domain Name and variations thereof in an active attempt to deceive clients of the Complainant into believing that the Respondent is affiliated with the Complainant, in order to obtain the payment of fraudulent invoices. The Respondent has therefore actively used an email address connected to the Disputed Domain Name to specifically target the Complainant’s IBM trademark in an attempt to create confusion with that trademark.
The Panel is of the opinion that, while the Complainant’s mark is not directly recognizable as such within the Disputed Domain Name, the Respondent’s fraudulent use of an email address connected to the Disputed Domain Name together with the incorporation of the Complainant’s IBM trademark in the Disputed Domain Name supports the Panel’s finding of confusingly similarity (see Bayerische Motoren Werke AG (“BMW”) v. Registration Private, Domains By Proxy, LLC / Armands Piebalgs,WIPO Case No. D2017-0156; VF Corporation v. Vogt Debra,WIPO Case No. D2016-2650).
Moreover, the mere addition of the non-distinctive text “br”, which could for instance refer to the country code of Brazil, and a hyphen to a complainant’s trademark does not avoid confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi,WIPO Case No. D2012-1395; Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783; Lime Wire LLC v. David Da Silva / C,WIPO Case No. D2007-1168).
Additionally, it is well established that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.
In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant's IBM trademark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (See Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. While the Disputed Domain Name currently does not resolve to an active webpage, the Respondent has actively used an email address connected to the Disputed Domain Name with an intent to mislead consumers for its own illegitimate commercial gain. Evidently, such a use cannot be considered a legitimate noncommercial or fair use of the Disputed Domain Name.
UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on the Respondent (see section 2.13 of the WIPO Overview 3.0).
The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant (namely, of fraud by the Respondent) has not been rebutted.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 the website or location or of a product or service on the website or location.
In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Complainant provides a copy of several emails sent from an address connected to the Disputed Domain Name. The subject line, content and signature of the emails contain the Complainant’s IBM trademark with the correct spelling. The Respondent specifically impersonated an employee of the Complainant in these emails. Considering the distinctive character and the strong reputation of the Complainant’s IBM trademark, the Respondent must have had knowledge of the Complainant’s rights at the time of registering the Disputed Domain Name. The Panel therefore finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith. (See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007).
In the present case, the Panel is of the opinion that the Complainant’s trademark has a strong reputation and is widely known throughout the world, including the United Kingdom where the Respondent is residing. This makes it difficult to conceive any plausible legitimate use of the Disputed Domain Name by the Respondent. Further, the Respondent has used an email address connected to the Disputed Domain Name to mislead clients of the Complainant into paying fraudulent invoices. The use of an email address associated with the Disputed Domain Name to send deceptive emails to solicit payment of fraudulent invoices by the Complainant’s actual or prospective customers further constitutes bad faith (see section 3.4 of the WIPO Overview 3.0).
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element 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 the Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: December 24, 2018
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