The Complainant is International Business Machines Corporation, United States of America (“United States”), self-represented.
The Respondent is Translation Failed Translation Failed, China. 2. The Domain Name and Registraro
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2020. On January 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2020, 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 January 27, 2020 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 January 28, 2020. 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 February 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2020. The Center appointed Antony Gold as the sole panelist in this matter on March 10, 2020. 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 designs and manufactures a variety of products, including computers, computer hardware and software, and accessories. It was incorporated in 1911 and adopted its current trading style, that is IBM, in 1924. The scale of the Complainant’s business is such that it spends over USD 5 billion a year on research and over USD 1 billion a year marketing its goods and services globally. The Complainant owns numerous trade marks for IBM, including the following; - United States Service Mark, registration no. 1,243,930, for IBM, registered on June 28, 1983 in class 42; - United States Trade Mark, registration no. 3,002,164 for IBM, registered on September 27, 2005 in class 9. The disputed domain name was registered on May 23, 2019. It resolves to a webpage which contains pornographic images and various advertisements, in Chinese characters, for what are evidently sex and gambling-related services. 5. Parties’ Contentions A. Complainant The Complainant says that the disputed domain is identical or confusingly similar to its IBM trade marks other than the generic suffix, “.com”, the only difference is the addition of the letters “qq” and “dell”, which could stand for “quantum”, and the American multinational computer technology Dell, respectively. This minor variation does not obviate the confusing similarity between the disputed domain name and the IBM trade mark. The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been licensed, contracted or otherwise permitted to use the IBM trade mark or to apply for any name incorporating such trade mark. There is no evidence that “IBMqqdell” 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 trade mark or the disputed domain name for a bona fide offering of goods and services. In fact, the Respondent has been actively using the disputed domain name for illegitimate commercial gains, namely to increase Internet traffic to its pornographic and gambling websites, evidencing the Respondent’s clear attempt to bait Internet users by taking advantage of the recognition that the Complainant’s mark enjoys in order to cause them into believing that the Complainant is somehow affiliated with the Respondent or endorses its commercial activities. Nothing on the screenshot of the Respondent’s website, or anything else, suggests that the terms “IBM” or “IBMqqdell” in any language relate to pornography or online gambling. Lastly, the Complainant says that the disputed domain name was registered and used in bad faith. Having regard to the fame of the Complainant’s IBM mark, the Respondent was well aware of the Complainant’s trade mark at the time the Respondent registered the disputed domain name. The Respondent’s contact information is masked in the WhoIs records. Furthermore, the Respondent has been using the disputed domain name for illegitimate commercial gain by using it to attract visitors to its pornographic and gambling websites. This 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’s websites and/or goods and services. The Respondent’s conduct amounts to “pornosquatting”, that is the practice where 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. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate. Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint: (i) the disputed domain name is identical or confusingly similar to a trade mark or service mark 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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar The trade mark registrations produced by the Complainant establish its rights in the trade mark IBM. For the purpose of determining whether the disputed domain name is identical or confusingly similar to the Complainant’s marks, the gTLD “.com” is disregarded as this is a technical requirement of registration. The disputed domain name comprises the Complainant’s IBM trade mark in full, followed by the letters “qq” and the word “dell”; “qq” is capable of being perceived as having a variety of meanings, such as a known abbreviation for “quick question” or possibly as having no meaning at all; “dell” is likely to be perceived as a reference to a primary trading style of Dell Inc., particularly as a component of a domain name which also incorporates the Complainant’s mark. However, whether or not these words are perceived by consumers as having any particular meaning does not impact on an assessment of whether the disputed domain name is confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “[w]here 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”. The Complainant’s IBM trade mark is clearly recognizable within the disputed domain name and the Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue. Turning to the first of these circumstances, section 2.2 of the WIPO Overview 3.0 sets out a number of non-exhaustive examples of what might constitute prior use or demonstrable preparations to use a domain name in connection with a bona fide offering of goods and services. The last of these is “other evidence generally pointing to a lack of indicia of cybersquatting intent”. Section 2.2 adds that: “While such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required”. The screen shot of the website to which the disputed domain name resolves contains a series of advertisements, but there is nothing to suggest that the Respondent’s website, or any of the pornographic and gambling services on it, is promoted under the name “IBM”. This establishes that the marks comprised within the disputed domain name have no genuine connection with the services advertised and that the disputed domain name is not being used in connection with a bona fide offering of goods and services. So far as the second circumstance is concerned, there is no evidence that the Respondent has been commonly known by the disputed domain name. Lastly, the use of the disputed domain name is plainly commercial in character. As explained at section 2.1 of the WIPO Overview 3.0, once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden and the Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstances set out at paragraph 4(b)(iv) of the Policy are if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The Respondent’s registration and use of the disputed domain name falls within this paragraph. The intention of the Respondent in registering and using the disputed domain name will have been that Internet users will recognize the Complainant’s mark (and/or, it is assumed, that of Dell Inc.) within the disputed domain name and be prone to visit the website to which it resolves. It is immaterial that, at least, many of those Internet visitors are likely, on visiting the Respondent’s website, to appreciate from its content that it does not have any connection with the Complainant; the disputed domain name will have succeeded in serving as bait to lure them to the Respondent’s website and the Respondent is likely to derive pay-per-click income from any Internet users who visit any of the links featured on its website. The Panel accordingly finds that the disputed domain name was registered and is being used in bad faith. 7. Remedy for Domain Names which Combine a Complainant’s and a Third Party’s Trade Marks As indicated above, the disputed domain name includes both the Complainant’s trade mark and also the DELL trade mark (of Dell Inc.) and QQ (of multiple third parties). Section 4.13 of the WIPO Overview 3.0 outlines the range of orders available to panel in these circumstances. See also; Philip Morris USA Inc. v. Whoisguard Protected, Whoisguard, Inc. / MARK JAYSON DAVID,WIPO Case No. D2016-2194. Neither the Policy nor the Rules contain any provision which stipulate that a complainant seeking a transfer of a domain name in these circumstances should be deprived of that remedy. Similarly, there is no provision in the Policy or the Rules which would deprive the third party of its rights, whether under the Policy or otherwise, to seek redress against a complainant if it considers that the transfer to the complainant has put it in violation of the Policy, the Rules or any other applicable law. In the current proceedings, there are no exceptional circumstances which would require either the issue of Procedural Order seeking confirmation of the third party’s non-objection or to a transfer of the disputed domain name or an order for cancellation in lieu of the remedy of transfer sought by the Complainant. In these circumstances, the Panel orders a transfer of the disputed domain name to the Complainant. 8. 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 Antony Gold
Sole Panelist
Date: March 24, 2020
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