The Complainant is International Business Machines Corporation (IBM), United States of America (“United States”), represented internally.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / 骇浪 zhihua liu, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2020. On December 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 9, 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 December 11, 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 December 11, 2020. 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 December 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2021. The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on January 25, 2021. 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 International Business Machines Corporation. “IBM” is an acronym for its trade name. The Complainant is well known around the world as a manufacturer of computer and computer related goods and services. The IBM Mark The Complainant explains it has been offering products under the trade mark IBM since its incorporation on June 16, 1911. It states it has owned trade mark registrations for IBM in 131 countries for several decades, and that it uses its trade mark in relation to a broad range of goods and services, including information technology goods and services. In 2020 the Complaint notes “BrandZ” valued its IBM trade mark as being worth a figure in the high tens of billions, and ranked the Complainant as the 14th most valuable global brand. The Complainant states it spends a significant amount on globally marketing its goods and services using its IBM trade mark. It states it exerts careful control over use of the IBM trade mark, and imposes strict quality control measures over goods and services offered under the trade mark. The Complainant’s evidence is that it owns at least the following trade mark registrations: Trade mark Origin Registration No. Date of Registration Classes United States 4,181,289 July 31, 2012 6, 8, 9, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 28, 30, 35 and 41 United States 3,002,164 September 27, 2005 9 United States 1,696,454 June 23, 1992 36 IBM United States 1,694,814 June 16, 1992 36 IBM United States 1,243,930 June 28, 1983 42 United States 1,205,090 August 17, 1982 1, 2, 7, 9, 16, 37, 41 and 42 IBM United States 1,058,803 February 15, 1977 1, 2, 3, 4, 7, 9, 10, 16, 28, 37, 41 and 42 IBM United States 640,606 January 29, 1957 9 These are collectively referred to as the “IBM Mark”. The disputed domain name The disputed domain name resolves to a website which presents visitors with numerous links to pornographic and online gambling websites. 5. Parties’ Contentions A. Complainant The Complainant asserts its rights in the IBM Mark. The Complainant firstly contends that the disputed domain name is identical or confusingly similar to its IBM Mark. It states that non-case sensitive letters “ibm” contained in the disputed domain name are exactly the same as the IBM Mark. It states the only difference is the addition of the letters “hp”, which it suggests could stand for the American multinational information technology company Hewlett-Packard. The Complainant’s submission is that this minor variation does not obviate the confusing similarity between the disputed domain name and its IBM Mark. The complaint concludes that the disputed domain name is identical or confusingly similar to the IBM Mark. Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. In this respect, the Complainant states the Respondent has not been licensed, contracted, or otherwise permitted by the Complainant in any way to use the IBM Mark, or to apply for any domain name incorporating the IBM Mark. It states it has not acquiesced in any way to such a use or application of the IBM Mark by the Respondent. The Complainant states that, additionally, there is no evidence that “IBM” or “IBMHP” is the name of the Respondent’s corporate entity, nor is there any evidence of fair use. The Complainant states that it is not aware of any evidence that the Respondent is using or plans to use the IBM Mark or the disputed domain name for a bona fide offering of goods or services. Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Complainant states that the Respondent would have been aware of its international brand and trade mark before registering the disputed domain name. Therefore the Complainant suggests the disputed domain name was registered with the purpose of generating revenue from click-through Internet traffic. Specifically, it states the Respondent has been intentionally attempting to create a likelihood of confusion by using the disputed domain name containing the IBM Mark to increase Internet user traffic for its pornographic and online gambling websites. The Complainant provides evidence that it sent a cease and desist letter to the Respondent on October 13, 2020, and that the Respondent continues to use the disputed domain name in bad faith. B. Respondent The Respondent did not respond to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding: (i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and Each of these elements is addressed in turn. A. Identical or Confusingly Similar The Complainant has provided evidence of at least eight registrations in relation to the IBM Mark in the United States dating back to 1957. The Panel finds that the Complainant has sufficiently demonstrated its rights in the IBM Mark with a history of use going back to at least 1957, likely longer. The Panel is satisfied that the Complainant is internationally well-known by its IBM Mark in relation to a range of goods and services, including information technology goods and services. In comparing the IBM Mark to the disputed domain name, it is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, must be excluded from consideration as being a functional component of the disputed domain name. The remaining part of the disputed domain name term consists of the IBM Mark, followed by the letters “hp”. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element”. Accordingly, the Complainant’s internationally well-known trade mark is clearly identifiable in the disputed domain name, and the addition of “hp” does not prevent a finding of bad faith between the disputed domain name and the Complainant’s trade mark. The Panel notes that the addition of the letters “hp” to the IBM Mark could be a reference to a trademark of the third party Hewlett-Packard. As noted in the WIPO Overview 3.0, section 1.12: “Where the complainant’s trademark is recognizable within the disputed domain name, the addition of other third party marks (i.e., The Panel therefore finds the disputed domain name is confusingly similar to the IBM Mark. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any one of the following elements: (i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trade mark or service rights; or (iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant. The Complainant has stated, and the Panel accepts, that the Respondent has no rights or legitimate interests in the disputed domain name. In this respect, the Panel also accepts that the Respondent is not commonly known by the disputed domain name and has not acquired any rights (registered or otherwise) in the IBM Mark or name. Further the Panel is satisfied that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Complaint has provided evidence that the disputed domain name resolves to a website which presents visitors with numerous links to pornographic and online gambling websites. The Panel has reviewed screenshots from each of these websites and found nothing to suggest the terms “ibm” or “ibmhp” (in any language) were genuinely related to the pornography or online gambling content. The Panel therefore concludes the Respondent is using the disputed domain name to promote its website for illegitimate commercial gains. Specifically, that the Respondent has been intentionally attempting to create a likelihood of confusion by using the disputed domain name containing the IBM Mark to increase Internet traffic to generate click-through revenue. The Respondent’s use of the IBM Mark is likely an attempt to attract users by taking advantage of the recognition and reputation that the Complainant’s IBM Mark enjoys (See Ruby Life Inc. v. Alexander Varkov,WIPO Case No. D2017-1895). The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondent and the absence of any claim to rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. C. Registered and Used in Bad Faith The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons: (i) The Panel accepts the IBM Mark is internationally well known. The Panel therefore concludes that, at the time of registering the disputed domain name, the Respondent is highly likely to have been aware of the Complainant, its IBM Mark, and its associated goodwill. (ii) The combination of the IBM Mark and the letters “hp” in the disputed domain name suggests knowledge of a common area of commerce. Hewlett Packard trades as HP and is well known as (amongst other things) as a computer hardware brand. This common area of commerce supports the above inference the Respondent is highly likely to have been aware of the Complainant, its IBM Mark, and its associated goodwill. (iii) The content of the website to which the disputed domain name directs contains links to gambling and pornographic websites. There is nothing to suggest that any of the website content is connected to the letters “i”, “b”, “m”, “h”, or “p”. (iv) There is a clear absence of rights or legitimate interests in the IBM Mark by the Respondent. The failure of the Respondent to respond to the complaint means that there is no credible explanation for the Respondent’s choice of the disputed domain name. The Panel is entitled to draw inferences from the failure to respond. The Panel is satisfied that the disputed domain name has been used in bad faith for the following reasons: (i) Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of, or otherwise abuses a complainant’s mark (WIPO Overview 3.0, section 3.1). (ii) By using the disputed domain name to resolve to a website containing links to pornographic and gambling content, the Respondent has intentionally attempted to attract, Internet users to its website for commercial gain, by creating a likelihood of confusion with the IBM Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. (iii) The Respondent has continued to use the disputed domain name after the Complainant sent a cease and desist letter to the Respondent (through the Registrar email address listed in the WhoIs records on October 13, 2020) asking the Respondent to disable and transfer the disputed domain name to the Complainant. No response to that letter was received, and the Respondent did not cease to use the disputed domain name after being warned of the Complainant’s rights in the IBM Mark. (iv) With respect to the Respondent’s use of the disputed domain name to offer links to pornographic content, the Panel is satisfied that such conduct qualifies as “pornosquatting”. Pornosquatting is the practice where “confusion with a well-known trademark is used to divert customers to a pornographic website for a commercial purpose”. See Prada S.A. v. Roberto Baggio,WIPO Case No. D2009-1187. The Respondent’s commercial purpose is likely generating click-through revenue. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of 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 names Andrew Brown Q.C.
(ii) that the 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.
Sole Panelist
Date: February 2, 2021
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