The Complainant is International Business Machines Corporation, United States of America (“United States”), internally represented.
The Respondent is Atira Dzhakupaeva, United States, self-represented. 2. The Domain Name and Registrar
The disputed domain name, The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2020. On May 15, 2020, the Center transmitted to the Registrar by email a request for registrar verification in connection with the Domain Name. On May 18, 2020, the Registrar transmitted to the Center by email its verification response, disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 19, 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 amendment to the Complaint on May 20, 2020. The Center verified that the Complaint together with the amendment to the Complaint (together, 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 May 22, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was June 11, 2020. On June 9, 2020, the Center received an email communication from the Respondent expressing an interest in settling the dispute. The Center responded with an email to the parties, dated June 10, 2020, in which it noted that if the Complainant so requested, the proceeding could be suspended under paragraph 17 of the Rules to accommodate settlement discussions. On June 12, 2020, the Complainant requested suspension of the proceeding. Accordingly, on the same date, the Center suspended the proceeding until July 12, 2020. On July 10, 2020, the Complainant requested reinstitution of the proceeding. The proceeding was recommenced on July 14, 2020, with the Response due on July 19, 2020. On July 19, 2020, the Respondent requested an extension. The Center granted the Respondent an automatic four calendar day extension for the Response under paragraph 5(b) of the Rules. The Response was filed with the Center on July 24, 2020. The Center appointed D. Brian King as the sole panelist in this matter on August 3, 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 A. The Parties The Complainant is International Business Machines Corporation, headquartered in Armonk, New York, United States. Its predecessor company was founded in 1911 and formally became International Business Machines Corporation in 1924. Since that time, the Complainant has produced and sold products under the IBM mark (Annex 7 to the Complaint). According to the Complainant, the IBM mark has achieved fame and recognition worldwide. The Complaint notes that in 2019, the Complainant was ranked the 12th best global brand by Interbrand (Annex 5 to the Complaint), and that in the same year, BrandZ valued the IBM trademark at USD 86 billion (Annex 6 to the Complaint). The Response states that the Respondent has a business called International Business Methodologies (Response, para. 5). No information about the nature of its activities has been provided, save for the assertion that it is a business consulting firm with USD 30,000 of sales in 2019. No documentary evidence was annexed to the Response. B. The Mark The Complainant has traded under the IBM mark since 1924 and has registered it as a trade or service mark in numerous countries over the course of the intervening decades. A representative list of registrations in the United States, where the Respondent is located, follows: Trademark/Service Mark Jurisdiction Registration Date Registration Number IBM United States January 29, 1957 640,606 IBM United States February 15, 1977 1,058,803 IBM (stylized) United States August 17, 1982 1,205,090 IBM United States June 28, 1983 1,243,930 IBM United States June 16, 1992 1,694,814 IBM (stylized) United States June 23, 1992 1,696,454 IBM (stylized) United States September 27, 2005 3,002,164 IBM (stylized) United States July 31, 2012 4,181,289 C. The Domain Name The Domain Name, was registered on August 22, 2016. It resolves to an inactive website. However, the Domain Name has an associated email server, which would allow the Respondent to send emails from the address “@ibmamerica.com” (Annexes 9 and 10 to the Complaint). 5. Parties’ Contentions A. Complainant The Complainant submits that the Domain Name is confusingly similar to its IBM trademark. The Complainant notes that the Domain Name consists of the letters “ibm” (not case sensitive) and thus entirely incorporates its mark. To this, the geographical term “america” and the “.com” generic Top-Level Domain (“gTLD”) are added. These additions, the Complainant says, do not sufficiently distinguish the Domain Name from its famous IBM trademark. Next, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant represents that it has not authorized the Respondent to use its mark in any way. According to the Complainant, there is no evidence that the Respondent is commonly known by a name corresponding to the Domain Name, or that the Respondent is using or intends to use the Domain Name for a bona fide offering of goods and services. The Complainant notes that although the Domain Name does not resolve to an active website, the Respondent has used the Domain Name to set up an email server. The Complainant asserts that this suggests an intention on the Respondent’s part to mislead Internet users by sending emails that create the appearance of a connection to the Complainant where none exists. Finally, the Complainant submits that the Domain Name was registered and is being used in bad faith. The Complainant contends that its mark is so well known that the Respondent must have had knowledge of the Complainant’s rights in the mark when registering the Domain Name, thereby establishing bad faith registration. With respect to bad faith use, the Complainant notes that: (i) the Respondent registered the Domain Name using a privacy shield, which may point to bad faith use in and of itself (Annex 1 to the Complaint); (ii) the Respondent failed to respond to a cease and desist letter sent on April 2, 2020 (Annex 11 to the Complaint); (iii) the Domain Name’s IP address is linked to the dissemination of malware and botnet servers (Annex 12 to the Complaint); and (iv) given the world-wide notoriety of the IBM mark, it is essentially impossible to conceive of any good faith use to which the Domain Name could be put. The Complainant adds that while the Respondent has not yet made use of the Domain Name, the Complainant need not await actual harm before commencing this proceeding. Rather, the foregoing circumstances are sufficient to infer bad faith under the doctrine of passive holding as established in earlier UDRP cases. B. Respondent The Respondent contests the allegations in the Complaint. With respect the issue of confusing similarity, the Respondent admits that the IBM trademark “is widely known throughout the world”, but argues that the Domain Name was chosen to differentiate the Respondent’s business, allegedly called “International Business Methodologies”, from the Complainant. The letters “ibm” are not proprietary to the Complainant, the Respondent says, and there is no realistic risk of confusion given the fame of the Complainant’s brand (Response at Heading A). The Response next argues that the Respondent has rights and legitimate interests in the Domain Name. According to the Response, the Respondent is “trying to start and grow own business and register[ed] [the] domain name to develop a website in relation to that business” (Response at Heading B). The Respondent has not used the website due to the low level of activity of the Respondent’s business resulting from “Covid[] and the economic downturn” (Ibid.). The Respondent further asserts that the email server was already configured by the provider when the Domain Name was purchased. Finally, on the question of bad faith, the Respondent suggests (under Heading C of the Response) that the Complainant tends not to use geographical terms in its domain names, and therefore the Domain Name will not engender any confusion among Internet users. The Respondent admits registering the Domain Name through a privacy shield service but argues that this cannot be deemed a suspect practice. As to the Complainant’s allegation that the Domain Name’s IP address is associated with the dissemination of malware, the Respondent denies knowledge of this and disclaims responsibility “for what GoDaddy hosts on their servers” (Ibid.). Lastly, the Respondent asserts that in the settlement discussions, there was no demand for compensation in excess of expenses. Based on these contentions, the Respondent argues that bad faith registration and use have not been shown. 6. Discussion and Findings Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action: (i) the 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) above. Paragraph 4(b) of the Policy sets out illustrative circumstances that could demonstrate registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) above. A. Identical or Confusingly Similar The Domain Name wholly incorporates the Complainant’s IBM mark, with the addition of the geographical term “america” and the “.com” gTLD. UDRP panels have consistently held that the addition of dictionary or descriptive words to a complainant’s mark does not distinguish a domain name from that mark (see, e.g., Nintendo of America Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434; eBay Inc. v. ebayMoving/Izik Apo,WIPO Case No. D2006-1307). Similarly, the addition of the gTLD does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8 and 1.11. Against this, the Respondent claims to operate a business called “International Business Methodologies” and argues that due to the fame of the Complainant’s mark, Internet users will not be confused as to the affiliation or sponsorship of the Domain Name. The Panel cannot credit this submission for two reasons. First, the Respondent has produced no evidence that it owns or operates any business. Second, the world-wide notoriety of the Complainant’s IBM mark, which the Respondent acknowledges and the Panel finds to exist, indeed suggests a probability of confusion on the part of Internet users, in circumstances where (as found above) the Domain Name wholly incorporates that mark with additions that do not adequately distinguish it. On these grounds, the Panel finds that the Domain Name is confusingly similar to the Complainant’s IBM mark. B. Rights or Legitimate Interests Many prior UDRP panels have found that a complainant only needs to establish a prima facie case in relation to the second element of the test under paragraph 4(a)(ii) of the Policy (see, e.g., Belupo d.d v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MatchNet plc v. MAC Trading,WIPO Case No. D2000-0205). Once a prima facie showing is made, the burden shifts to the respondent to show that it does have rights or legitimate interests in respect of the disputed domain name. The present Panel agrees that the Complainant need only make out a prima facie case and finds that it has met that standard here. In particular, the Complainant has represented that it has given the Respondent no permission to use its IBM mark in any way (a representation that the Respondent does not contest); and the Complainant has shown that the Domain Name is confusingly similar to its famous mark. In these circumstances, the burden of production shifts to the Respondent. The Respondent’s case is that the Respondent operates (or intends to operate) a business that can also be abbreviated as “ibm,” and therefore possesses rights or legitimate interests in the Domain Name. This situation is addressed by paragraph 4(c)(i) of the Policy, which provides that a respondent may establish rights or legitimate interests in a domain name by showing, “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”. Consistent with the plain text of that provision, UDRP decisions make clear that the respondent must provide proof of preparations to use the domain name in connection with a good faith business offering, and that mere assertions of an inchoate plan are insufficient, especially if significant time has passed since the registration of the domain name with no effort to act on those plans (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306). In this case, the Respondent had a full opportunity to submit documentary evidence with the Response but provided none. As a result, there is no evidence before the Panel that the Respondent operates or intends to operate a business that could be known by the initials “ibm”. That omission is particularly glaring given that the Domain Name was registered almost four years ago – a circumstance that also undermines the Respondent’s assertion that the COVID-19 crisis has impeded the implementation of those plans. For the sake of completeness, the Panel notes that there is likewise no evidence that the Respondent has “been commonly known by” the Domain Name (paragraph 4(c)(ii) of the Policy); nor is there any suggestion of “non-commercial or fair use” by the Respondent (paragraph 4(c)(iii) of the Policy). The Panel accordingly rejects the Respondent’s case for failure of proof and finds that the Complaint succeeds as to the second element of the test under paragraph 4(a) of the Policy C. Registered and Used in Bad Faith The third element of the test under paragraph 4(a) requires that the Domain Name has been registered and is being used in bad faith. The Complainant has demonstrated to the Panel’s satisfaction that the IBM mark is well known and of international repute – indeed, the Respondent accepts this (Response at Heading A). As such, the Respondent was plainly on notice of the Complainant’s rights in the mark when registering the Domain Name, which the Panel has already found to be confusingly similar to the IBM mark. Registering a confusingly similar domain name with knowledge of the trademark holder’s rights constitutes bad faith registration (see, e.g., Berlitz Investment Corporation v. Marcus Santamaria, WIPO Case No. D2006-1082; Berlitz Investment Corporation v. Transure Enterprise Ltd, Host Master,WIPO Case No. D2009-0836). The issue of bad faith use presents a somewhat closer question, since the Domain Name has not been used in the lengthy period since its registration (other than perhaps to set up an email server, although the circumstances there are disputed). In this regard, the Complainant relies on the doctrine of passive holding. As explained in the WIPO Overview 3.0: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” (WIPO Overview 3.0, section 3.3; see also Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.) In this case, each of the above-listed factors weighs in the Complainant’s favor. As the Respondent admits, the IBM trademark is distinctive and recognized world-wide. While the Respondent did submit a Response, no evidence of the assertedly contemplated good faith use of the Domain Name was provided. As the Respondent also accepts, the Domain Name was registered through a privacy shield service. Finally, given the world-wide fame of the IBM mark, it is difficult to conceive of a good faith use to which the confusingly similar Domain Name could be put. On balance then, and taking into account all the circumstances of this case, the Panel finds it more likely than not that the Respondent registered and is using the Domain Name in bad faith, with the intent to take advantage of confusion on the part of Internet users between the Domain Name and the Complainant’s business and trademark rights (compare Stertil B.V. v. Nergis,WIPO Case No. D2013-2081). Accordingly, the Complaint succeeds with respect to the third element of the paragraph 4(a) test as well. 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 Domain Name, D. Brian King
Sole Panelist
Date: August 17, 2020
Full & Egal Universal Law Academy