The Complainant is International Business Machines Corporation (IBM), United States of America, represented by in house counsel.
The Respondent is DotMedia Limited, 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 January 21, 2021. On January 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2021 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. The Center verified that 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 January 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2021. The Center appointed Theda König Horowicz as the sole panelist in this matter on March 9, 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 known worldwide for being active in the design and manufacture of products that record, process, communicate, store and retrieve information, including computers and computer hardware, software and accessories. The Complainant was founded under its current name on February 14, 1924 and has been offering products under the name IBM ever since. The Complainant is notably known for having introduced in 1961 the IBM Selectric typewriter and has acquired throughout the world the reputation as one of the first manufacturers of computers and computer related goods. The Complainant owns trademark registrations for IBM in numerous countries mainly for information technology related goods and services, more particularly: - US trademark registration No 640,606, in international class 9, of January 29, 1957; The disputed domain name was registered on October 14, 2020. It is linked to a website with gambling and pornography content. The Complainant sent cease and desist letters to the Respondent on November 16, 2020 and December 2, 2020 asking the Respondent to disable and transfer the disputed domain name to the Complainant. These letters remained unanswered. 5. Parties’ Contentions A. Complainant The Complainant contends that the IBM trademark is a world-famous trademark. The disputed domain name is identical or confusingly similar to the Complainant’s trademark IBM. The only difference in the disputed domain name is the addition of the term “pop” which is not case sensitive. The Complainant further asserts that the Respondent was not licensed contracted or otherwise permitted by the Complainant to use the IBM trademark. Additionally, there is no evidence that IBM or IBMpop is the name of the Respondent’s corporate entity, nor is there evidence of fair use. Furthermore, there is no evidence that the Respondent is using or plans to use the IBM trademark or the disputed domain name for a bona fide offering of goods or services. On the contrary, the Respondent has been actively using the IBM trademark in the disputed domain name to promote its gambling and pornography website. The Respondent does therefore attempt to bait users by taking advantage of the Complainant’s famous trademark. This unauthorized use of the IBM trademark is likely to cause consumers into erroneously believing in an affiliation between the Complainant and the Respondent’s commercial activities. The Complainant also alleges that the Respondent knew about the Complainant’s famous trademark when registering the disputed domain name. The Respondent has been actively using the disputed domain name for illegitimate commercial gains generated by pornographic and online gambling websites which can be qualified as “pornosquatting”. Such use creates a likelihood of trademark dilution through the tarnishment of the IBM trademark. Consequently, the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; The Complainant showed it has trademark rights in IBM through several trademark registrations worldwide including in China where the Respondent is based. According to the WIPO Overview of WIPO, Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. The disputed domain name only differs from the Complainant’s IBM trademark through the addition of the term “pop”, which does not avoid a finding of confusing similarity (see WIPO Overview 3.0, section 1.8). The Complainant’s famous trademark is indeed nevertheless clearly recognizable and entirely contained in the disputed domain name. Finally, it is well established that the Top Level Domain (“TLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to “new gTLDs”). See WIPO Overview 3.0, sections 1.11.1 and 1.11.2. Consequently, the addition of the TLD “.com” in the disputed domain names is irrelevant in determining the first criteria under the Policy. Under the circumstance, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (i) the use of the domain name in connection with a bona fide offering of goods or services; Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See WIPO Overview 3.0, section 2.1. The Complainant contends that the Respondent has no rights and legitimate interests in the disputed domain names, notably stating that: - No license or authorization has been given by the Complainant to the Respondent to use the IBM trademark. - The Respondent is trying to benefit from the Complainant’s famous trademark and is not using the disputed domain name with a bona fide offering of goods or services, notably as it linked the disputed domain name to websites promoting gambling activities and pornography. - The consumers are likely to erroneously believe in an affiliation between the Complainant and the Respondent’s commercial activities. Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent. The Respondent has chosen not to reply. No evidence is contained in the case file which would demonstrate that the Respondent has rights or legitimate interests in the disputed domain name, in particular no evidence showing that the Respondent has been commonly known by the disputed domain name or any evidence showing a bona fide offering of goods or services, or any legitimate noncommercial or fair use of the disputed domain name. In view of the above and in the lack of any denial by the Respondent, the Panel concludes that the Respondent uses the disputed domain name without a bona fide offering of goods or services. Consequently, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith There is no doubt that the Complainant is a well-established company which operates since decades worldwide under the name and well-known trademark IBM. Consequently, the Respondent knew or should have known of the Complainant’s trademarks and deliberately registered the disputed domain name that is confusingly similar to the Complainant’s trademark (see WIPO Overview 3.0, section 3.2.2). Furthermore, the case file shows that the disputed domain name is used for gambling and pornography websites. This obviously falls in the scope of bad faith registration and use as defined by paragraph 4(b)(iv) of the Policy (see Prada S.A. v. Roberto Baggio, WIPO Case No. D2009-1187). The Panel further notes that the Respondent has chosen to remain silent within the proceeding, which is a further indication of bad faith. In light of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has established its case under paragraph 4(a)(iii) of the Policy. 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 Theda König Horowicz
- US trademark registration No 4,181, 289, in international classes 6, 8, 9, 11, 14, 16, 18, 20-22, 24-26, 28, 30, 35 and 41 of July 31, 2012;
- Hong Kong, China Trademark registration No 1959B1291, in international class 16, of November 30, 1955;
- Hong Kong, China Trademark registration No 199400717AA, in international classes 35, 37, 41 and 42, of July 3, 1992.
(ii) that the respondent has no rights or legitimate interests in 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
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Sole Panelist
Date: April 8, 2021
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