The Complainant is International Business Machines Corporation, United States of America (“United States”), internally represented.
The Respondent is IBM taxfiling, India. 2. The Domain Name and Registrar
The Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2020. On February 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 20, 2020, 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. In response to a clarification request from the Center, the Complainant filed an amended Complaint on February 24, 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 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2020. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on March 25, 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 is a leading innovator in the design and manufactures of a wide array of products that record, process, communicate, store and retrieve information, including computers and computer hardware, software and accessories. The Complainant owns numerous trademark registrations for the term “IBM” in 170 countries all around the world, including India, where the Respondent is domiciled, among others: - United States trademark registration no. 1,694,814, registered on June 16, 1992; The Respondent registered the Disputed Domain Name The Complainant contentions can be summarized as follows. Identical or confusingly similar The Complainant contends that the Disputed Domain Name consist of the letters “IBM” followed by the word “tax”. The letters “IBM” are exactly the same as the IBM trademark. The only difference is the addition of the generic term “tax”. Consequently, this minor variation does not obviate the confusing similarity between the Disputed Domain Name and the IBM trademark. Rights or legitimate interest The Complainant states that the Respondent has not been licensed, contracted, or otherwise permitted by the Complainant in any way to use its IBM trademark. In addition, there is no evidence that IBM is the name of the Respondent’s corporate entity. The Complainant further alleges that the Respondent has been actively using the IBM trademark in the Disputed Domain Name to promote its website for illegitimate commercial gains. Consequently, Internet users will believe that the Complainant is somehow affiliated with the Respondent or endorsing its commercial activities. In addition, the Respondent is not using the Disputed Domain Name with any bona fide offering of goods or services. Registration and use in bad faith The Complainant alleges that the Respondent was well aware of the Complainant’s trademark at the time the Respondent registered the Disputed Domain Name. In addition, the Respondent has been using the Disputed Domain Name for illegitimate commercial gain. Finally, the email servers have been activated for the Disputed Domain Name. As such, the Respondent could use any email address with the suffix “@ibmtax.com” for commercial emailing, spamming or phishing purposes. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements, which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case: (i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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 Based on the evidence submitted, the Panel finds that the Disputed Domain Name Furthermore, the Disputed Domain Name contains the Complainant’s IBM trademark in its entirety; the addition of the generic term “tax” after the Complainant trademark does not change this finding of confusing similarity. Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4 (a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name: (i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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 at issue. There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use its trademark in the Disputed Domain Name. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Name. In addition, the Respondent is not known by the Disputed Domain Name. The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, the Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions. As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. The Disputed Domain Name was registered on November 25, 2019, while the Complainant IBM Indian Trademark No. 428,972 was registered on October 25, 1984. The Complainant’s IBM trademark is well known as also recognized by previous decisions under the Policy (See International Business Machines Corporation (IBM) v. Greg Kimble,WIPO Case No. D2016-0546). Therefore, the Panel concludes that the Respondent was aware of the Complainant’s rights when it registered the Disputed Domain Name. Furthermore, the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Disputed Domain Name incorporating its IBM trademark. The circumstances in the case before this Panel indicate that the Respondent was aware of the Complainant’s trademark when registering the Disputed Domain Name and it has intentionally created a likelihood of confusion with the Complainant’s IBM trademark in order to attract Internet users for its own commercial gain. Due to this conduct, it is obvious that the Respondent intentionally created likelihood of confusion with the Complainant’s trademark and its website in order to attract Internet users for its own commercial gain, as described by paragraph 4(b)(iv) of the Policy. Therefore, taking all circumstances into account and for all above reasons, this Panel concludes that the Respondent has registered and using the Disputed Domain Name in bad faith. 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 Pablo A. Palazzi
- United States trademark registration no. 1,243,930, registered on June 28, 1983;
- India trademark registration no. 903,730, registered on February 15, 2000; and
- India trademark registration no. 428,972, registered on October 25, 1984.
Sole Panelist
Date: April 6, 2020
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