Complainant is International Business Machines Corporation of Armonk, New York, United States of America (“United States”) (hereinafter referred to as “Complainant”), internally represented.
Respondent is Dana Mitchell, IBM Computer Supply, of Woodland Hills, California, United States (hereinafter referred to as “Respondent”). 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 March 7, 2019. On March 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2019, 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 Complainant on March 11, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 11, 2019.
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 Respondent of the Complaint, and the proceedings commenced on March 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 2, 2019.
The Center appointed M. Scott Donahey as the sole panelist in this matter on April 8, 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
Complainant is the owner of the IBM trademark, a trademark that is well known in countries around the globe. Complainant is involved in the design and manufacture of products that record, process, communicate, store, and retrieve information, including computers and computer hardware, software, and accessories. Complainant was incorporated on June 16, 1911, and officially became International Business Machines in February 1924. Complainant began offering products under the trademark IBM shortly thereafter. Amended Complaint, Annex 7. The IBM mark has been continuously used in association with computers and computer hardware, software, and accessories since 1952. Prior domain name case panels have found that the IBM mark is well-known around the world, and publication have recognized the IBM trademark’s fame and value. Amended Complaint, Annex 6.
Complainant has spent nearly USD 6 billion each year in research and development. Amended Complaint, Annexes 8.1 and 8.2. Complainant is the holder of numerous United States trademarks in conjunction with products and services, dating back to at least as early as July 21, 2012 (e.g. United States Reg. No. 4,181,289). Amended Complaint, Annex 5.1.
Respondent registered the disputed domain name on October 17, 2018. Respondent has been using the disputed domain name to resolve to a web site at which new, used, refurbished desktop and laptop computers, computer hard drives, and LCD servers are offered for sale. Complaint, Annex 10. Complainant sent Respondent a cease and desist letter on January 25, 2019, and again on February 7, 2019. Amended Complaint, Annex 9. Complainant did not receive a response to either letter. 5. Parties’ Contentions A. Complainant
Complainant asserts that the disputed domain name is confusingly similar to its IBM trademarks and service marks, that Respondent has not been licensed, contracted or otherwise authorized to use the IBM trademark and has no rights or legitimate interests in respect of the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to 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 and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the 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; and
(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.” A. Identical or Confusingly Similar
The disputed domain name consists of Complainant’s well-known IBM mark followed by the English words “computer” and “supply,” which words are effectively descriptive of Complainant’s primary business. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s famous mark. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
Respondent registered and is using the disputed domain name to resolve to a web site at which computers and related products are offered for sale, effectively seeking to profit from users who are confused into thinking that they are dealing with Complainant, the owner of the famous registered IBM trademark and service mark, which has been used and associated with computer products and services for decades. The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith. 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.
M. Scott Donahey
Sole Panelist
Date: April 9, 2019
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