The Complainant is International Business Machines Corporation, United States of America (“U.S.”), represented internally.
The Respondent is Super Privacy Service LTD c/o Dynadot, U.S. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) <10ibm.com> is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2019. On November 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 November 12, 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 November 15, 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 November 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2019.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on December 19, 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 provides products including computers and computer hardware, software, and accessories, and owns the following U.S. trademark registrations (hereinafter referred to as the “IBM Mark”):
Reg. No. 4181289 in International Classes 6, 8, 9, 16, 18, 20, 21, 22, 24, 25, 28, 35, and 41, registered on July 31, 2012;
Reg. No. 3002164 in International Class 9, registered on September 27, 2005;
Reg. No. 1696454 in International Class 36, registered on June 23, 1992;
Reg. No. 1694814 in International Class 36, registered on June 16, 1992;
Reg. No. 1243930 in International Class 42, registered on June 28, 1983;
Reg. No. 1205090 in International Classes 1, 2, 7, 9, 10, 16, 37, 41, and 42, registered on August 17, 1982;
Reg. No. 1058803 in International Classes 1, 2, 3, 4, 7, 9, 16, 28, 37, 41, and 42, registered on February 15, 1977; and
Reg. No. 640606 in International Class 9, registered on January 29, 1957.
The Disputed Domain Name was registered by the Respondent on October 12, 2019, and previously resolved to a website presenting links to other pornographic and online gambling websites. It currently resolves to a website in Chinese offering what appears to be clothing items. 5. Parties’ Contentions A. Complainant
The Complainant requests that the Disputed Domain Name be transferred to the Complainant based on the following grounds:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant owns numerous IBM trademark registrations worldwide, including the U.S. The Disputed Domain Name incorporates IBM Mark in its entirety, with combination of the number “10” and the generic Top-Level Domain (“gTLD”) “.com”. The addition of the number “10” cannot distinguish the Disputed Domain Name from the Complainant’s IBM Mark.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant asserts that it has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to apply for or use any domain name incorporating the IBM Mark. There is no evidence that the Respondent is using or plans to use the IBM Mark or the domain name incorporating the IBM Mark for a bona fide offering of goods or services. On the contrary, the Disputed Domain Name increases Internet user traffic for the Respondent’s pornographic and online gambling websites for illegitimate commercial gains. In addition, there is also no evidence which suggests that the Respondent is commonly known by the Disputed Domain Name or the name “IBM”. Therefore, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
(1) Registration in bad faith
The Complainant’s trademarks are registered and well known around the world. The Respondent was aware of the Complainant and its rights in the IBM Mark at the time of the registration of the Disputed Domain Name (i.e., October 12, 2019). The Respondent registered the Disputed Domain Name in order to exploit the Complainant’s longstanding marketing efforts related to its IBM trademarks.
(2) Use in bad faith
The Respondent is using the Disputed Domain Name to direct Internet users to a website for commercial gain by creating a likelihood of confusion with the Complainant’s IBM Mark. The Disputed Domain Name contains numerous links to other websites that host pornographic material and/or provide online gambling services. The website’s extensive use of click-through features to direct users to other pornographic and online gambling websites proves that the Disputed Domain Name is being used in bad faith.
Given the above, the Disputed Domain Name has been registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable Provider, in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”
It is well-established that in considering whether a disputed domain name is identical or confusingly similar to a registered trademark, the gTLD (for example, “.com” and “.net”) may be disregarded (GA Modefine SA v. Yonghui Huang,WIPO Case No. D2008-0355; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409; Florida Department of Management Services v. Anthony Gorss (or AGCS),WIPO Case No. D2009-1194). Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that “a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. Examples of such typos include: [...] (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), [...] or (vi) the addition or interspersion of other terms or numbers.”
The Complainant is the registered owner of the IBM Mark. Use and registration of the IBM Mark by the Complainant also precedes the Respondent’s registration of the Disputed Domain Name by decades. The Complainant has established that it has rights in the IBM Mark.
The Disputed Domain Name incorporates the IBM Mark in its entirety, with combination of the number “10”, and the gTLD “.com”. The addition of the number “10” and the gTLD “.com” cannot distinguish the Disputed Domain Name from the Complainant’s IBM Mark. The distinctive part of the Disputed Domain Name is “ibm”, which reproduces the Complainant’s IBM Mark entirely.
The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant’s IBM Mark. The condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable Provider, in compliance with the Rules of Procedure, that [...] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”
Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to the respondent of the dispute, 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 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 [disputed] domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
A complainant may show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Complainant has established that it is the owner of the IBM Mark and confirmed that it has no connection or affiliation with the Respondent. It appears that the Disputed Domain Name is unrelated to the Respondent’s name and there is no evidence in the record that the Disputed Domain Name has any connection with the Respondent’s name or the Respondent is otherwise commonly known by the Disputed Domain Name.
The evidence provided by the Complainant demonstrates that the Disputed Domain Name resolved to a webpage displaying commercial links related to pornography and/or online gambling services. Such use demonstrates that the Respondent has used the Disputed Domain Name to derive a commercial benefit. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. The Respondent did not submit any evidence or allegation to show that it has rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy in respect of the Disputed Domain Name. Therefore, the Respondent has not claimed that it has rights or legitimate interests in the Disputed Domain Name.
The Panel concludes that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable Provider, in compliance with the Rules of Procedure, that [...] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: [...] (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Section 3.1.4 of the WIPO Overview 3.0 states that “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”
The Complainant and its IBM Mark are widely-known all over the world. No allegation or evidence suggests that the Respondent selected the IBM Mark as used in the Disputed Domain Name for any reason other than the reputation of the Complainant’s trademarks. Thus, the Panel finds that the Respondent was aware of the Complainant’s IBM Mark at the time of the registration of the Disputed Domain Name and that the Disputed Domain Name has been registered in bad faith.
Pornosquatting is a practice where confusion with a well-known trademark is used to divert customers to a pornographic website for a commercial purpose (Prada S.A. v. Roberto Baggio,WIPO Case No. D2009-1187). Pornographic content is sufficient to find a bad faith (Vivendi v. Guseva Svetlana,WIPO Case No. D2018-2631; Christian Dior Couture v. Paul Farley,WIPO Case No. D2008-0008). According to the evidence filed by the Complainant, the Disputed Domain Name directed Internet users to a webpage with various pay-per-clicks links which resolved to pornographic and/or online gambling websites. It is clear that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to pornographic and/or online gambling websites by creating a likelihood of confusion with the Complainant’s IBM Mark. Given the above, the Panel finds that the Disputed Domain Name is being used in bad faith.
As the Disputed Domain Name has been registered and is being used in bad faith, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been fulfilled. 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 <10ibm.com> be transferred to the Complainant.
Peter J. Dernbach
Sole Panelist
Date: January 2, 2020
Full & Egal Universal Law Academy