The Complainant is International Business Machines Corporation, United States of America (“United States” or “US”), internally represented, United States.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2019. On July 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 2019, 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 July 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2019.
The Center appointed Taras Kyslyy as the sole panelist in this matter on August 29, 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 incorporated under the laws of the United States and is a manufacturer and provider of computer and computer-related goods and services throughout the world. The Complainant uses IBM trademark for decades and owns a number of respective trademark registrations, including the US trademark registration No.640606 registered on January 29, 1957.
The disputed domain name was registered on October 5, 2001. The Complainant has provided the evidence that the disputed domain name used to redirect to a web page suggesting download of presumably malware. The panel notes that the disputed domain name dynamically redirects to different web pages including “Google customer reward program” suggesting participation in draws for premium smartphones; Bild magazine article; and a parking site with pay-per-click links. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name captures the Complainant’s trademark in its entirety. Addition of letter “n” and generic Top-Level Domain (the “gTLD”) does not preclude from confusing similarity with the Complainant’s well-known trademark.
The Respondent has no rights or legitimate interests in the disputed domain name. 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 trademark by the Respondent. Additionally, there is no evidence that “IBM” is the name of the Respondent’s corporate entity, nor is there any evidence of fair use. Furthermore, there is no evidence that the Respondent is using or plans to use the IBM trademark or the disputed domain name incorporating the IBM trademark for a bona fide offering of goods or services. The Respondent has been actively using the IBM trademark in the disputed domain name to redirect Internet users to a website that shows elements consistent with malware or virus distribution. Unauthorized use of the IBM trademark in the disputed domain name is likely to cause consumers into erroneously believing that the Complainant is somehow affiliated with or endorsing the Respondent, while in fact no such relationship exists. There is no evidence of any of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with any bona fide offering of goods or services. The Respondent has not been commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The Respondent was aware of the Complainant’s well-known trademark at the time the Respondent registered the disputed domain name. The Respondent ignored cease and desist letter sent by the Complainant. The Respondent has been actively using the disputed domain name to redirect Internet users to a web site that shows elements consistent with malware or virus distribution. Such use also creates a likelihood of confusion as to the relationship between the Complainant and the Respondent, as well as the source, sponsorship, or endorsement of the Respondent website and/or goods or services. 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 rights in its IBM trademark.
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing.
According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
According to section 1.11.1 of the WIPO Overview 3.0 the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
The Panel finds that in the present case the disputed domain name incorporates the entirety of the Complainant’s trademark, which is recognizable notwithstanding the addition of “n” letter, while gTLD “.com” is disregarded for the similarity test.
Considering the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.
The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875).
The Panel also finds that the nature of the various services provided on the web pages at the disputed domain name, in particular, alleged malware distribution not contested by the Respondent, redirection to a web page claiming to be Google reward program while not related to Google Inc., pay-per-click parking web page capitalizing on the reputation and goodwill of the Complainant’s trademark cannot constitute a bona fide offering of goods or services or legitimate noncommercial or fair use.
Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
One of the previous UDRP panels found in 2000 that IBM trademark was “well-known within the meaning of Article 6bis of the Paris convention” (see, Physik Instrumente GmbH. & Co. v. Stefan Kerner andJeremy Kerner and Magic Moments Design Limited,WIPO Case No. D2000-1001), which is prior to registration date of the disputed domain name. The Panel finds that at the time of the registration of the disputed domain name the Respondent knew, or at least should have known about the existence of the Complainant’s prior registered and known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113).
According to section 3.1.4 of the WIPO Overview 3.0, the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in the United States and internationally. Thus, the Panel finds that the disputed domain name that is confusingly similar to the Complainant’s trademark was registered in bad faith.
According to section 3.1 of the WIPO Overview 3.0, given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy bad faith registration and use. In this regard, the Panel finds that the nature of the various services provided at the web pages at the disputed domain name, in particular, alleged malware distribution not contested by the Respondent, redirection to a web page claiming to be Google reward program while not related to Google Inc., pay-per-click parking web page capitalizing on the reputation and goodwill of the Complainant’s trademark confirm bad faith use of the disputed domain name.
Moreover, the Respondent failed to respond to the Complainant’s cease and desist letter, and did not provide any good reason to justify this, which confirms the bad faith (see, e.g., Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022).
Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) 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.
Taras Kyslyy
Sole Panelist
Date: September 11, 2019
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