Complainant is International Business Machines Corporation, United States of America (“United States”), represented internally.
Respondent is Harish Gonthina, 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 July 21, 2020. On July 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 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 Complainant on July 24, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 27, 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 Respondent of the Complaint, and the proceedings commenced on July 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2020. The Center received three email communications from Respondent on August 3, 2020. The Center notified the parties of the Commencement of Panel Appointment Process on August 18, 2020. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on September 7, 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 Complainant is a company organized under the laws of the United States that is active worldwide in the computer industry. Complainant has provided evidence, that it is since many decades the registered owner of numerous trademarks relating to its company name and brand “IBM” (acronym for “International Business Machines”), inter alia, the following: - Word mark IBM, United States Patent and Trademark Office (“USPTO”), registration number: 1,694,814, registration date: June 16, 1992, status: active; - Word mark IBM, USPTO, registration number: 1,058,803, registration date: February 15, 1977, status: active. Moreover, this Panel has researched, within its general powers set forth by paragraph 10 of the Policy, that Complainant also owns since 1986 the domain name Respondent, according to the disclosed WhoIs information for the disputed domain name, is residing in India and registered the disputed domain name on August 16, 2019, which by the time of the rendering of this decision resolves to a typical parking page offered by the Registrar. Complainant, however, has demonstrated that on July 16, 2020, the disputed domain name resolved to a typical pay-per-click (“PPC”) website, containing hyperlinks to a variety of subjects, including, inter alia, the computer industry. Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant contends that its IBM trademark, tracing its roots to the 1880s, is meanwhile a world famous trademark that was ranked for many years by different international listings amongst the most valuable global brands worldwide. Complainant submits that the disputed domain name is confusingly similar to Complainant’s IBM trademark as it incorporates the latter in its entirety, simply added by the generic word “info”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent has not been licensed, contracted or otherwise permitted by Complainant in any way to use the IBM trademark or to apply for any domain names incorporating the same, (2) there is no evidence that “IBM” is the name of Respondent’s corporate identity, and (3) there is no evidence that Respondent is using or plans to use the disputed domain name for a bona fide offering of goods or services, but rather is promoting its website under the disputed domain name for illegitimate commercial gains. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) given that the IBM trademark is well known around the world, Respondent was well aware thereof when it registered the disputed domain name on August 16, 2019, (2) Respondent has been using the IBM trademark contained in the disputed domain name to generate illegitimate revenue through PPC advertisement links, and (3) email servers have been activated for the disputed domain name and it is hard to imagine in which legitimate way emails originating therefrom would be used. B. Respondent Respondent has not filed a formal Response, however, has expressed by email correspondence sent to the Center on August 3, 2020, that it would “close the domain with immediate effect”. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and The Panel concludes that the disputed domain name The disputed domain name incorporates the IBM trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panels that the addition of other terms (whether descriptive or otherwise) to a trademark in a domain name would not prevent a finding of confusing similarity under the first element of the UDRP (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). Accordingly, the Panel finds that the mere addition of the descriptive term “info” together with a hyphen is not at all capable to dispel the confusing similarity arising from the incorporation of Complainant’s entire IBM trademark into the disputed domain name. Therefore, Complainant has established the first element under the Policy as set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent has not been authorized to use Complainant’s IBM trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent obviously has no trademark rights associated with the acronym “IBM” on its own. Finally, Respondent obviously has neither used the disputed domain name for a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose. On the contrary, the disputed domain name, at some point before the filing of the Complaint, resolved to a typical PPC website showing a variety of hyperlinks related to the computer industry, for the obvious purpose of generating PPC revenues. UDRP panels agree that using a domain name to host a PPC website does not present a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s trademark or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.9). Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has not contested Complainant’s contentions, neither by the filing of a formal Response nor in its email correspondence sent to the Center on August 3, 2020, Respondent has not met that burden. Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. Resolving the disputed domain name, which is confusingly similar to Complainant’s IBM trademark, to a typical PPC website showing a variety of hyperlinks related to the computer industry being Complainant’s core business, for the obvious purpose of generating PPC revenues, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s IBM trademark as to the source, sponsorship, affiliation or endorsement of this website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The fact that the disputed domain name currently resolves to a parking page does not change the Panel’s findings. Therefore, Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 Stephanie G. Hartung
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: September 21, 2020
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