The Complainant is International Business Machines Corporation, United States of America (“United States”), internally represented.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2021. On March 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 2, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 4, 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 March 4, 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 March 30, 2021. The Center appointed Dawn Osborne as the sole panelist in this matter on April 7, 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 the owner of the IBM trade mark, registered, inter alia, in the United States for computer goods as registration no. 1058803, registered on February 15,1977. The Domain Name registered on January 4, 2021, has been used for pay-per-click links and to offer malware. 5. Parties’ Contentions A. Complainant The Complainant is the owner of the well-known trade mark IBM, registered, inter alia, in the United States for computer goods since 1977. The Domain Name registered in 2021 is confusingly similar to the Complainant’s trade mark, adding only the term “transparency” and a generic Top-Level Domain (“gTLD”) “.com” which do not prevent said confusing similarity. The Respondent does not have rights or a legitimate interest in the Domain Name, is not commonly known by it, and is not authorised by the Complainant. The Respondent has used the Domain Name for pay-per-click links including some which are competing and others that reference the Complainant and its trade mark. The Respondent did not answer a cease and desist letter from the Complainant, but after it was sent began to offer malware via the Domain Name. The use of a domain name for pay-per-click links and/or malware is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. It is bad faith registration and use diverting Internet consumers for commercial gain. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Domain Name in this Complaint combines the Complainant’s IBM mark (registered in the United States for computer products since 1977), the dictionary word “transparency”, and the gTLD “.com”. The addition of a dictionary word and a gTLD does not prevent a finding of confusing similarity between a domain name and a trade mark contained within it. The addition of the dictionary word “transparency” and the gTLD “.com” does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s IBM mark which is still clearly recognisable in the Domain Name. Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy. B. Rights or Legitimate Interests The Complainant has not authorised the use of its IBM mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. The Respondent has used the site attached to the Domain Name for competing pay-per-click links and to offer malware, neither of which is a bona fide offering of goods and services or a legitimate noncommercial or fair use. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, which has not been rebutted by the Respondent. As such the Panelist finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy. C. Registered and Used in Bad Faith The Domain Name has been used for competing commercial pay-per-click links which is confusing and disruptive in that visitors to the site might reasonably believe services offered on that site are connected to or approved by the Complainant. Reference to the Complainant or its mark in pay-per-click links on the site attached to the Domain Name, and incorporation of the IBM Mark in the Domain Name, suggests actual knowledge of the Complainant and its rights, business, and services at the time of registration. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the website or services offered on it. This is also likely to disrupt the business of the Complainant. Further, using the Domain Name to disseminate malware indicates bad faith and constitutes a disruption of the Complainant’s business. As such, the Panelist finds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb 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 Domain Name Dawn Osborne
Sole Panelist
Date: April 14, 2021
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