The Complainant is International Business Machines Corporation, United States of America (“United States”), internally represented.
The Respondent is Stephen Thorpe, Vrtx Agency, United States. 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 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 25, 2021, 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 January 26, 2021 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 amended Complaint on January 26, 2021. 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 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2021. The Center appointed Martin Schwimmer as the sole panelist in this matter on April 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 has been using the well-known trademark IBM in relation to computers and information technology, since at least 1924, and has registered the IBM mark in numerous jurisdictions, including, e.g., United States Reg. No. 640,606 for IBM, registered on January 29, 1957 (the “IBM Mark”). The Disputed Domain Name The Complainant has used the IBM Mark since at least 1924 in connection with a wide range of goods and services in the fields of computers and information technology. The Complainant holds trademark registrations for the IBM Mark in 170 countries, including numerous registrations with the United States Patent & Trademark Office (“USPTO”), such as United States Reg. No. 640,606 (registered January 29, 1957) and United States Reg. No. 4,181,289 (registered July 31, 2012). The IBM Mark is a famous trademark, and the Complainant’s IBM brand is consistently ranked among the 15 most valuable global brands, according to various brand ranking surveys. The Disputed Domain Name is identical or confusingly similar to the IBM Mark. The Disputed Domain Name consists of the letters “ibm,” followed by the string “digitalassets”, and the generic Top -Level Domain (“gTLD”) “.com.” Adding the string “digitalassets” does not obviate the confusing similarity between the Disputed Domain Name and the IBM Mark. The Respondent has not been licensed, contracted, or otherwise permitted by the Complainant to use the IBM Mark or to apply for any domain name incorporating the IBM Mark, nor has the Complainant acquiesced in any way to such use or application of the IBM Mark by the Respondent. Additionally, there is no evidence that “IBM” is the name of the Respondent’s corporate entity, nor is there any evidence of fair use. Furthermore, there is no 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. The Respondent has been using the IBM Mark in the Disputed Domain Name to promote its website for illegitimate commercial gains. Specifically, the Respondent has been intentionally attempting to create a likelihood of confusion by pointing the Disputed Domain Name to a pay-per-click parking page with advertisement links containing references to products and services in connection with which the IBM Mark has been, or is being, used: e.g., “Consulting Services”, “Enterprise Risk Management”, and “Digital Asset Management Library”. The Respondent was well aware of the Complainant’s trademark at the time the Respondent registered the Disputed Domain Name on December 8, 2020. The Complainant sent a cease and desist letter to the Respondent through the Registrar at the email address listed in the WhoIs information on December 10, 2020, asking the Respondent to disable and transfer the Disputed Domain Name back to the Complainant. The Complainant also sent a follow up letter to the Respondent’s listed email address on its company website on January 7, 2021. The Respondent’s failure to respond to the Complainant’s emails is evidence of bad faith. Encyclopedia Britannica v. Zucarini, WIPO Case No. D2000-0330; and RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242. The Respondent’s use of the Disputed Domain Name in connection with click-through ads is evidence of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel concludes that the Complainant has rights in the IBM Mark by virtue of the United States trademark registrations and the Complainant’s long-standing use of the IBM Mark. The Disputed Domain Name incorporates in its entirety the Complainant’s IBM Mark. Where a domain name incorporates a complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Berlitz Investment Corporation v. Marcus Santamaria,WIPO Case No. D2006-1082. The addition of the string “digitalassets” does not alter the assessment of confusing similarity. See International Business Machines Corporation v. Adam Stevenson, Global Domain Services,WIPO Case No. D2016-1695 (holding that the domain name, Similarly, adding the gTLD “.com” does not change the finding of confusing similarity because the gTLD is generally disregarded in such an assessment. For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests On the evidence of record, it is uncontested that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant maintains: (1) it has not licensed, contracted or otherwise permitted the Respondent to use the IBM Mark or to apply for any domain name incorporating the IBM Mark; (2) it has not acquiesced in any way to the Respondent’s use of the IBM Mark in the Disputed Domain Name; (3) there is no evidence that “IBM” is the name of the Respondent’s corporate entity; and (4) there is no evidence of fair use or 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. The Complainant asserts that the Respondent has been actively using the IBM Mark to generate profit by pointing the Disputed Domain Name to a pay-per-click parking page with advertisement links containing references to products and services in connection with which the IBM trademark has been, or is being, used: e.g., “Consulting Services”, “Enterprise Risk Management”, and “Digital Asset Management Library.” The Complainant has raised a prime facie case of the Respondent’s lack of any rights or legitimate interests in the Disputed Domain Name, and the Respondent has failed to rebut that presumption. The Panel is satisfied that the Complainant has carried its burden of proving that the Respondent has no rights or legitimate interests in the Name within the meaning of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant’s IBM Mark has been well-known around the world for many decades. The addition of the term “digitalassets” to the Disputed Domain Name, which term relates to one of the Complainant’s many services, affirms the Panel’s finding that it is beyond doubt that the Respondent obtained the name with prior knowledge of the Complainant’s reputation and goodwill in the trademark. The Respondent’s misuse of the Disputed Domain Name in relation to pay-per-click advertising is clear evidence of bad faith, because it creates a likelihood of confusion as to the relationship between the Complainant and the Respondent, as well as to the source, sponsorship, or endorsement of the advertised links. As stated in L’Oreal, Biotherm, Lancome Parfums et Beaute & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623, “such exploitation of the reputation of trademarks to obtain clickthrough commissions from the diversion of internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions [….]” Furthermore, “[A] respondent cannot disclaim responsibility for content appearing on the website associated with its domain name” regardless of whether “such links [are] generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that respondent itself may not have directly profited [….]” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.5. For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Martin Schwimmer
Sole Panelist
Date: April 27, 2021
Full & Egal Universal Law Academy