The Complainant is International Business Machines Corporation, United States of America (“United States”), internally represented.
The Respondent is Xiang Ma, 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 28, 2021. On January 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 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 February 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 amendment to the Complaint on February 26, 2021. 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 March 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2021. The Center appointed Douglas Clark as the sole panelist in this matter on April 23, 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 Incorporated on June 16, 1911, the Complainant is a multinational manufacturer of computer and computer-related goods and services throughout the world and produces a wide variety of products that process, communicate, store, and retrieve information. The Complainant is also one of the largest companies in the world. The Complainant officially began using the name “International Business Machines” on February 14, 1924 and has been offering products under the IBM trade mark ever since. Such products include office and research equipment such as punch machines, calculating machines, clocks and scales, but has since expanded to include computers and computer hardware, software and accessories. As a result of its extensive resources in providing goods and services and from investing its assets, the Complainant has developed a reputation as one of the top manufacturers of computer and computer-related goods and services around the world by leading publications. The IBM trade mark has been valued as worth over USD 83 billion in 2020, USD 86 billion in 2019 and USD 96 billion in 2018. The Complainant also spends over USD 1 billion annually marketing its goods and services using the IBM trade mark and has undertaken to protect its name and enforce the trade mark. The Complainant owns and has owned registrations for the IBM trade mark in 170 countries for several decades. In particular, the Complainant owns the following IBM trade mark registrations in the United States and China: Registration Number Registration Date Class Jurisdiction 4,181,289 July 31, 2012 9, 16, 18, 20, 21, 22, 24, 25, 28, 35, 41 United States 3,002,164 September 27, 2005 9 United States 1,696,454 June 23, 1992 36 United States 1,694,814 June 16, 1992 36 United States 1,243,930 June 28, 1983 42 United States 1,205,090 August 17, 1982 1,7,9,16,37,41 United States 1,058,803 February 15, 1977 1,9,16,37,41,42 United States 640,606 January 29, 1957 9 United States 1,914,464 August 7, 2002 9 China 0,221,321 February 27, 1985 9 China 0,221,319 February 27, 1985 16 China 5,744,856 April 7, 2012 16 China 770,063 October 21, 1994 35 China 0,770,326 October 21, 1994 37 China 1,412,819 June 21, 2000 38 China 770,699 October 28, 1994 41 China 771,396 November 7, 1994 42 China The disputed domain name The Complainant contends that: (a) The disputed domain name is confusingly similar to its trade mark. The addition of “2007” and “.com” to the Complainant’s trade mark in the disputed domain name does not eliminate the overall notion that the designation is connected to the trade mark and the confusing similarity between the disputed domain name and the trade mark; (b) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant in any way and the Complainant has never granted any authorization or license to use the Complainant’s trade mark. The Respondent is not commonly known by the disputed domain name, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name; and (c) The disputed domain name was registered and is being used in bad faith. The Respondent was aware of the Complainant’s trade mark at the time the Respondent registered the domain name and has actively used the IBM trade mark to increase Internet user traffic and app downloads. The Respondent is using the disputed domain name to attract Internet users for commercial gain, creating a likelihood of confusion with the Complainant’s trade mark. The Respondent’s use of the disputed domain name to offer pornographic Content constitutes further evidence of bad faith. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its action: (i) the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights to; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark. The disputed domain name incorporates the Complainant’s IBM trade mark in full with the number “2007” added to it. “2007” does not avoid a finding of confusing similarity. The generic Top-Level Domain (“gTLD”) “.com” is generally disregarded when considering the first element. The Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain name. Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” The Complainant has asserted that the Respondent has no business with and is in no way affiliated with the Complainant. The Respondent is not authorized nor licensed to use the Complainant’s IBM trade mark or to apply for registration of the disputed domain name. There is no evidence that “IBM” or “IBM2007” is the name of the Respondent’s corporate entity. Furthermore, there is no evidence that the Respondent has used or is planning to use the disputed domain name for a bona fide offering of goods and services. In addition, the Respondent has not responded to any of the Complainant’s contentions. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, which has not been rebutted by the Respondent. Accordingly, the Respondent has no rights or legitimate interests in regard to the disputed domain name. The Complainant has therefore satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Based on the given evidence, the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered long after the Complainant has registered the IBM trade mark. The IBM trade mark is used by the Complainant to conduct its business and the Complainant has used the trade mark for its computer and computer-related goods and services for almost 100 years. The Panel is satisfied that the Respondent was aware of the Complainant and its IBM trade mark when the disputed domain name was registered. It appears to the Panel that the Respondent has registered the disputed domain name to attract Internet users to the website for commercial gain in accordance with paragraph 4(b)(iv) of the Policy. The advertisements for online gambling and pornography on the website that the disputed domain name resolves to establish the Respondent is making a commercial gain from the website by attracting users to generate click through revenue. Nothing on the Respondent’s website or anything else suggest that “IBM” and “IBM2007” relate to pornography or online gambling. Further, the pornographic materials on the website tarnish the IBM trade mark. This has been found in previous UDRP cases to constitute evidence of registration and use of a domain name in bad faith. (See section 3.12 of WIPO Overview 3.0) For the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has therefore satisfied the third element under paragraph 4(a) 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 Douglas Clark
Sole Panelist
Date: April 30, 2021
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