The Complainant is International Business Machines Corporation, United States of America (“United States”), represented by Lisa Ulrich, United States.
The Respondent is Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 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 June 4, 2019. On June 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 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 the Complainant on June 7, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the first amended Complaint on June 10, 2019. The Complainant filed the second amended Complaint on June 18, 2019.
The Center verified that the Complaint together with two amended Complaints 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 June 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2019.
The Center appointed Adam Taylor as the sole panelist in this matter on July 12, 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 has offered computer-related products under the mark IBM since 1924.
In 2018, it was ranked as the 11th most valuable global brand by BrandZ.
The Complainant owns many registered trade marks for IBM including United States trade mark no. 640,606, registered on January 29, 1957, in international class 9.
The disputed domain name was registered on March 4, 2019.
At some point thereafter, the disputed domain name was used to redirect Internet users to a website which invited users to download an up to date version of Adobe Flash Player.
The Respondent did not respond to legal letters sent by the Complainant on February 19, 2019, and May 6, 2019. 5. Parties’ Contentions A. Complainant
A summary of the Complainant’s contentions is as follows.
The Complainant’s trade mark IBM is world-famous.
The disputed domain name is identical or confusingly similar to the Complainant’s registered trade marks. The combination of the Complainant’s trade mark and the word “com” indicates that the disputed domain name is connected with the Complainant.
The Respondent lacks rights or legitimate interests in respect of the disputed domain name.
The Complainant has not licensed the Respondent to use the Complainant’s trade mark or to apply for or use a domain name including the trade mark.
There is no evidence that the Respondent’s name is “IBM”, or of fair use, or of actual or planned use, of the disputed domain name for a bona fide offering of goods or services.
The disputed domain name was registered and is being used in bad faith.
The Respondent was well aware of the Complainant’s famous trade marks at the time of registration of the disputed domain name.
The Respondent’s active use of the disputed domain name containing the Complainant’s trade mark to redirect Internet users to a website showing elements consistent with malware or virus distribution is evidence of use in bad faith. This use also creates a likelihood of confusion as to the relationship between the Complainant and the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established rights in the mark IBM by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0 ”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the term “com” is insufficient to avert a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering.
Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
In the Panel’s view, it is obvious that the Respondent registered the disputed domain name with the Complainant’s distinctive and well-known IBM trade mark in mind.
The Respondent has not come forward to deny the Complainant’s assertions of bad faith, including that the Respondent has used the disputed domain name to redirect Internet users to a website showing elements consistent with malware or virus distribution.
In any case, it is difficult to conceive of any genuine reason why the Respondent would wish to register the disputed domain name and the Respondent has offered no explanation.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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.
Adam Taylor
Sole Panelist
Date: July 25, 2019
Full & Egal Universal Law Academy