The Complainant is International Business Machines Corporation of Armonk, New York, United States of America (“United States”), internally-represented.
The Respondents are Linney Leensey of Bangalore, India and Brizees Martins of Bangalore, India. 2. The Domain Names and Registrar
The disputed domain names and are registered with D, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2019. On February 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 12, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants 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 Respondents of the Complaint, and the proceedings commenced on February 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2019. The Respondents did not submit any responses. Accordingly, the Center notified the Respondent’s default on March 7, 2019.
The Center appointed Knud Wallberg as the sole panelist in this matter on March 18, 2019. 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 provides its products and services in 177 countries worldwide.
The Complainant is the holder of a large number of trade and service mark registrations across various jurisdictions throughout the world, including in India, where the Respondents are 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, Indian trademark registration no. 903,730 registered on February 15, 2000 for goods in Class 9.
The disputed domain name was registered on December 1, 2018. The disputed domain name was registered on January 13, 2019. Both disputed domain names used to resolve to active websites where the Complainant’s trademark IBM was used to offer financial services. The disputed domain names have also been used to send fraudulent emails by impersonating one of the Complainant’s employees. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain names are confusingly similar to the Complainant’s IBM trademarks since they incorporate the Complainant’s trademark in its entirety with the addition of the generic terms “global finance” and “global financing” respectively.
The Complainant further submits that the Respondents have no rights or legitimate interests in the disputed domain names. The Complainant has not authorized the Respondents to use its trademarks neither in the disputed domain names nor on the corresponding websites. The Respondents’ actions are therefore not bona fide offering of goods or services under the Policy. Also, the Respondents are not making legitimate noncommercial or fair use of the disputed domain names.
Finally, the Complainant submits that the disputed domain names were registered and are being used in bad faith. The Complainant registered and has used its mark extensively throughout the world including in India prior to the Respondents’ registration of the disputed domain names. Further, the Respondents intentionally attempt or attempted to attract Internet searchers to their websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website. This is underlined by the fact that the Complainant’s eight-bar logo was reproduced on the Respondents’ websites when they were active. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Procedural Issue: Consolidation of Proceedings
The Complainant has requested the Complaint be accepted as one consolidated Complaint, despite the fact that the registrants of the disputed domain names are not identical, for the following reasons: both disputed domain names resolve or have resolved to nearly identical websites that purport to be affiliated with the Complainant; they are registered with the same registrar; they both incorporate the Complainant’s
well-known mark in its entirety; the exact same address and phone number is listed in the WhoIs registration records, and the email addresses in the WhoIs registration records use the exact same naming structure of listing the registrant’s name followed by “07@.”
The Center noted the following in an email to the Complainant dated February 14, 2019: “Further to the acknowledgement of receipt of your Complaint, the Center notes (applying the principles and preliminary provider assessment stipulated in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281 and WIPO Overview 3.0, section 4.11.2) that there appears to be at least prima facie grounds sufficient to warrant accepting the Complaint for the Panel’s final determination of the consolidation request on appointment.”
Based on the evidence and the arguments that the Complainant has put forward, the Panel agrees with the Center’s preliminary assessment, and thus accepts the consolidation of the Complaint. B. Substantive Issues
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. C. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark because they contain the Complainant’s registered trademark IBM in its entirety with the addition of the descriptive terms “global finance” and “global financing”, respectively. The addition of descriptive terms as suffixes to the trademark to form the disputed domain names do not, to this Panel, dispel a finding of confusing similarity. In addition, it has also long been held by UDRP panels that the generic Top-Level Domain (“gTLD”) suffix does not preclude a finding of confusing similarity where it otherwise exists, as it does in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain names. D. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondents to use its trademark.
Further, given the circumstances of this case, the Panel believes the Complainant has established a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names. The Respondents have not rebutted this, and the way the Respondents have been using the disputed domain names (see below in Section E) does not support a finding of rights or legitimate interests.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled. E. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain names in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the holders have registered or has acquired the domain names 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 the holder’s documented out-of-pocket costs directly related to the domain names; or
(ii) the holders have registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holders have registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, the holders have intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holders´ websites or location or of a product or service on the holders´ websites or locations.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain names are registered and are being used in bad faith.
Given the circumstances of the case, in particular the extent of use of the Complainant’s IBM mark, the reputation and the distinctive nature of the mark, the nature of the disputed domain names incorporating the mark, and the use to which the disputed domain names have been put, it is inconceivable to the Panel in the current circumstances that the Respondents registered the disputed domain names without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondents could not have been unaware of the fact that the disputed domain names they chose could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain names were registered in bad faith.
The disputed domain names have been used for websites on which the Respondents used the Complainant’s trademark IBM to offer financial services that are similar to the financial services that the Complainant offer. This clearly gave Internet users the impression that the websites were authorized or endorsed by the Complainant, which is not the case. The disputed domain names have also been used to send fraudulent emails by impersonating one of the Complainant’s employees.
The Panel therefore finds that the Respondent by its registration and use of the disputed domain names intentionally creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name with the purpose of attracting Internet users to the websites for commercial gain. Moreover, the Panel finds that this use of the disputed domain names is likely to disrupt the Complainant’s business. The fact that the disputed domain names do not currently seem to resolve to active websites does not alter this finding.
Noting that the disputed domain names incorporate a well-known trademark, that no response has been filed, that there appears to be no conceivable good faith use that could be made by the Respondents of the disputed domain names and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Knud Wallberg
Sole Panelist
Date: April 1, 2019
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