The Complainant is International Business Machines, United States of America (“United States”), internally represented.
The Respondent is John Doe / Anonymize, Inc., United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 13, 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 November 20, 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 amendment to the Complaint on November 20, 2019. The Center verified that the Complaint together with the amendment to 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 November 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2019. The Center appointed Lynda M. Braun as the sole panelist in this matter on December 26, 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 is a multinational information and technology company established in the United States. The Complainant was founded in 1911 and currently is one of the largest global producers and sellers of computer software, middleware and hardware, and associated services. The Complainant provides its goods and services in over 130 countries worldwide. The Complainant is the owner of numerous trademark registrations that it uses in connection with its information technology goods and services across various jurisdictions throughout the world, including in the United States, where the Respondent purportedly resides. Specifically, the Complainant’s trademark portfolio in the United States includes, inter alia, the following: IBM, United States Reg. No. 4,181,289, registered on July 31, 2012 in international classes 9, 16, 18, 20, 21, 22, 24, 25, 28, 35 and 41; IBM, United States Reg. No. 3,002,164, registered on September 27, 2005 in international class 9; IBM, United States Reg. No. 1,696,454, registered on June 23, 1992 in international class 36; IBM, United States Reg. No. 1,694,814, registered on June 16, 1992 in international class 36; IBM, United States Reg. No. 1,243,930, registered on June 28, 1983 in international class 42; IBM, United States Reg. No. 1,205,090, registered on August 17, 1982 in international classes 1, 7, 9, 16, 37, and 41; IBM, United States Reg. No. 1,058,803, registered on February 15, 1977 in international classes 1, 9, 16, 37, 41 and 42; and IBM, United States Reg. No. 640,606, registered on January 29, 1957 in international class 9. The above-referenced trademarks will hereinafter collectively be referred to as the “IBM Mark”. In 2019, the Complainant was ranked the 13th most valuable global brand by BrandZ, the 12th best global brand by Interbrand, the 38th largest company on the Fortune United States 500 list, and the 114th largest company on the Fortune Global 500 list. Thus, the Complainant is well known worldwide as a prominent company and the recognition of its IBM Mark has spanned multiple decades. The Complainant has acquired valuable goodwill in the IBM Mark, which has been, and continues to be, in full force and effect. The Disputed Domain Name was registered on October 4, 2019. When the Complainant drafted the Complaint in this proceeding, the Disputed Domain Name resolved to several of the Respondent’s pornographic and online gambling websites. The websites contained numerous links to other pornographic and online gambling websites, including but not limited to, “www.0465s.com”, “www.013983.com”, and “www.0191o.com”. Screenshots of the aforementioned websites, dated November 7, 2019, were provided by the Complainant in an annex to the Complaint.1 On October 22, 2019, after the Complainant discovered the Respondent’s use of the Disputed Domain Name, the Complainant sent a cease and desist letter to the Respondent on October 22, 2019 through the Registrar at the email address listed in the Registrar’s WhoIs records, requesting that the Respondent transfer the Disputed Domain Name to the Complainant. The Registrar sent a short email response to the Complainant on October 23, 2019, confirming that it had passed along the Complainant’s letter to the Respondent. The Complainant did not receive a response from the Respondent. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark. - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. - the Disputed Domain Name was registered and is being used in bad faith as it resolves to pornographic and gambling websites. - the Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding: (i) The Disputed Domain Name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights; and (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the IBM Mark. It is uncontroverted that the Complainant has established rights in the IBM Mark based on its many years of use as well as its registered trademarks for the IBM Mark in the United States and many jurisdictions worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the IBM Mark. The Disputed Domain Name consists of the IBM Mark in its entirety along with the number “20”, followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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”. Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s IBM Mark. Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its IBM Mark. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name (discussed below), the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the Respondent had used the IBM Mark in the Disputed Domain Name to promote its websites for illegitimate commercial gain. Specifically, the Respondent intentionally attempted to create a likelihood of confusion by using the Disputed Domain Name containing the IBM Mark to increase Internet user traffic to its pornographic and online gambling websites Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy. First, the Respondent’s use of the Disputed Domain Name to offer pornographic content is a significant indicator of bad faith. See VIVENDI v. Guseva Svetlana,WIPO Case No. D2018-2631; CHRISTIAN DIOR COUTURE v. Paul Farley,WIPO Case No. D2008-0008. Such conduct is known as “pornosquatting”, the practice whereby “confusion with a well-known trade mark is used to divert customers to a pornographic website for commercial purposes”. See Prada S.A. v. Roberto Baggio,WIPO Case No. D2009-1187. Here the Respondent created a Disputed Domain Name that incorporated the famous IBM Mark to capitalize on its fame and had the Disputed Domain Name resolve to various pornographic websites to realize financial gain. Specifically, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its pornographic and online gambling websites by creating a likelihood of confusion with the Complainant’s IBM Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites and thus generate revenue through the unauthorized use of the IBM Mark. See WIPO Overview 3.0, section 3.1(iv). Second, the Disputed Domain Name was registered many decades after the Complainant first began using its IBM Mark. The Panel finds it likely that the Respondent had the Complainant’s IBM Mark in mind when registering the Disputed Domain Name. Finally, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s IBM Mark for commercial gain. Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun 1 As of the writing of the Decision, the Disputed Domain Name no longer resolves to the pornographic or gambling websites, but instead resolves to a landing page of the Registrar that states: “CONTACT OWNER for more information about this domain”.
Sole Panelist
Date: December 28, 2019
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