The Complainant is International Business Machines Corporation, United States of America, internally represented, United States of America.
The Respondent is big bk, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2019. On July 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 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 July 17, 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 an amended Complaint on July 17, 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 the Respondent of the Complaint, and the proceedings commenced on July 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2019.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 14, 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 was founded in 1911 and is the owner of the IBM trademark, used since 1924 in connection with a varied array of products that record, process, communicate, store and retrieve information, including computers and computer hardware, software and accessories. It is the owner, amongst several others, of the following trademark registrations (Annexes 5.1 - 5.9 to the Complaint):
- United States Trademark Registration No. 640,606 for the word mark IBM, registered on January 29, 1957, and successively renewed; and
- United States Trademark Registration No. 4,181,289 for the word & device mark IBM, registered on July 31, 2012, covering products in class 6, 8, 9, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 28, 30, 35 and 41;
The disputed domain name was registered on June 6, 2019. Currently it is used in connection with a website offering financial services depicting the Complainant’s trademark prominently (described as IBM’s eight-bar logo). 5. Parties’ Contentions A. Complainant
The Complainant asserts to have started using its IBM trademark as early as February 14, 1924, when it officially became International Business Machine, an amalgamation of three previously existing companies.
As a result of the large investments and high quality products and services provided to its customers for over 100 years, the Complainant asserts to have acquired significant reputation as one of the premier manufacturers of computer and computer related goods and services throughout the world, having acquired the status of a well-known trademark as recognized in previous UDRP decisions (such as International Business Machines Corporation v. Niculescu Aron Razvan Nicolae,WIPO Case No. DRO2010-0003 and International Business Machines Corporation v. Linux Security Systems srl,WIPO Case No. DRO2010-0004).
The Complainant further indicates that its IBM trademark was ranked in 2018: the 11th most valuable global brand by BrandZ (worth USD 96 billion); the 12th Best Global by Interbrand; whereas the Complainant itself was ranked the 34th largest company on the Fortune US 500 list and the 92nd largest company in the world on the Fortune 500 list.
According to the Complainant, the disputed domain name is identical or confusingly similar to the Complainant’s IBM trademark as it incorporates the aforesaid trademark in its entirety.
As to the absence of rights or legitimate interests, the Complainant argues that:
i. the Respondent has not been licensed, contracted or otherwise permitted by the Complainant in any way to use the IBM trademark or to apply for any domain name incorporating the IBM trademark, nor has the Complainant acquiesced in any way to such use or application of the IBM mark by the Respondent;
ii. there is no evidence that IBM is the name of the Respondent’s corporate entity or that the Respondent is commonly known by the disputed domain name; and
iii. the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services but rather is using it to offer fraudulent financial services.
In what it relates to the bad faith registration and use of the disputed domain name, the Complainant asserts that the Respondent’s knowledge of the Complainant’s trademark is evident, not only in view of the Complainant’s trademark being well-known around the world, but especially given the reproduction of the IBM’s eight-bar logo on the website that resolves from the disputed domain name. In addition to that, the disputed domain name, according to the Complainant, is being used to offer fraudulent financial services and is thus using the Complainant’s trademark to defraud private individuals for illegitimate commercial gains, a clear evidence of bad faith, as similarly found in International Business Machines Corporation v. Linney Leensey and Brizees Martins,WIPO Case No. D2019-0310. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established its rights in the IBM trademark, which is entirely incorporated in the disputed domain name and thus recognizable within the disputed domain name, what fulfills the standing test required by the Policy, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition(“WIPO Overview 3.0”), Section 1.7.
In addition to that, considering the overall facts and circumstances of this case, the addition of the terms “globa” and “financing” is not sufficient to prevent a finding of confusing similarity.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The first element of the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In that sense, the Complainant indeed states that it has not licensed, contracted or otherwise permitted the Respondent to use the IBM trademark or to apply for any domain name incorporating the IBM trademark in any way, nor has the Complainant acquiesced in any way to such use or application of the IBM mark by the Respondent.
Also, the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate the absence of rights or legitimate interests.
The Respondent has been using the disputed domain name in connection with a webpage that offers financial services which depicts prominently the IBM eight-bar logo. This webpage does not disclose any relationship with the Complainant or lack thereof but rather indicates as address of the Respondent as “Durga Trading Building, Sitaram Mill Compound, N. M Joshi Marg, Parel East, Mumbai India”.
A simple search conducted by the Panel disclosed1 that the same address was used in connection with the domain name object of a previous UDRP case brought by the Complainant earlier this year (International Business Machines Corporation v. Linney Leensey and Brizees Martins,WIPO Case No. D2019-0310), and which had also been used to send fraudulent emails impersonating one of the Complainant’s employees.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a 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 this case, both the registration and use of the disputed domain name in bad faith can be found in view of the reproduction of the Complainant’s well-known IBM eight-bar logo on the disputed domain name which appears to be linked to a fraudulent scheme (as seen above).
The Respondent’s use of the disputed domain name not only clearly indicates full knowledge of the Complainant’s trademark but also an attempt of misleadingly diverting Internet consumers for its own commercial gain, possibly in connection with fraudulent financial activities.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: August 21, 2019
1 . Access on August 20, 2019.
“Website and content stolen from:
Ref: UDRP ”
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