The Complainant is International Business Machines Corporation, United States of America, internally represented.
The Respondent is Privacy Protection, Privacy Protection, United States of America / Yabani Eze, Sugarcane Internet Nigeria Limited, Nigeria. 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 10, 2021. On March 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 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 March 19, 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 April 6, 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 April 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2021. The Center appointed Peter Burgstaller as the sole panelist in this matter on June 10, 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 one of the world leading innovator in the design and manufacture of a wide array of products that record, process, communicate, store and retrieve information, including computers and computer hardware, software and accessories. The Complainant holds trademark registrations for IBM around the world, including numerous registrations with the United States Patent & Trademark Office (“USPTO”), such as USPTO Reg. No. 640,606 (registered January 29, 1957) and USPTO Reg. No. 4,181,289 (registered July 31, 2012) ( The disputed domain name The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its IBM trademark. The Complainant sent cease-and-desist letters to the Respondent at the email address listed in the WhoIs information on December 10, 2020, December 25, 2020 and February 15, 2021 asking the Respondent to disable and transfer the disputed domain name back to the Complainant; the Respondent did not respond to that. Additionally, the Respondent used the disputed domain name for addressing a website which contained pay-per-click advertisement links such as “New IBM Products”, “IBM Thinkpad on Sale”, and “Cheap IBM Laptop”. 5. Parties’ Contentions A. Complainant The Complainant owns and has owned trademark registrations for IBM in 170 countries all around the world for several decades, and for broad range of goods and services, including, although not limited to, information technology related goods and services. The IBM trademark is a world-famous trademark, tracing its roots to the 1880s. In 2020, the Complainant was ranked the 14th most valuable global brand by BrandZ, the 14th best global brand by Interbrand, the 38th largest company on the Fortune U.S. 500 list, and the 118th largest company on the Fortune Global 500 list. The IBM trademark was valued by BrandZ as worth over USD 83B in 2020, USD 86B in 2019, and USD 96B in 2018. The disputed domain name The Respondent has no rights or legitimate interests in respect of the disputed domain name – the Complainant has not licensed or otherwise permitted the Respondent to use its trademark IBM. The Respondent has moreover registered and used the disputed domain name in bad faith. The Respondent knew or must have known of the Complainant’s famous trademark IBM when it registered the disputed domain name and it used it to address a website with pay-per-click advertisements links relating to IBM-products. Moreover, the Complainant sent cease-and-desist letters to the Respondent; the Respondent did not response, but rather used the disputed domain name for addressing its website. Therefore, the disputed domain name is confusingly similar to the Complainant’s trademark IBM, the Respondent has no rights or legitimate interests in respect of the disputed domain name and the disputed domain name was registered and used in bad faith by the Respondent. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove that (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests with respect to 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 Complainant submitted evidence, which incontestably and conclusively establishes rights in the trademark IBM. The disputed domain name is confusingly similar to the Complainant’s registered trademark IBM since it entirely contains this distinctive mark and only adds the word “cloda”. It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Finally, it has also long been held that gTLDs are generally disregarded when evaluating the confusing similarity of a disputed domain name. The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests 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 (see section 2.1 of the WIPO Overview 3.0 ). Furthermore, the nature of the disputed domain name, comprising the Complainant’s widely-known mark in its entirety, and the use of the disputed domain name, taking advantage of the Complainant’s mark to attract Internet users to the Respondent’s website for profit, can not be considered fair as these falsely suggest an affiliation with the Complainant that does not exist. See section 2.5 of the WIPO Overview 3.0. C. Registered and Used in Bad Faith As stated in many decisions rendered under the Policy (e.g. Robert Ellenbogen v. Mike Pearson,WIPO Case No. D2000-0001) both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that: - the disputed domain name was registered by the Respondent in bad faith, and - the disputed domain name is being used by the Respondent in bad faith. (i) The Complainant is the owner of the distinctive and famous registered trademark IBM, and has registered and used such trademark in many jurisdictions around the world, long before the registration of the disputed domain name. The Complainant’s trademark IBM is well-known and has widespread recognition worldwide for decades. It is inconceivable for this Panel that the Respondent registered or has used the disputed domain name without knowledge of the Complainant’s rights, which leads to the necessary inference of bad faith. Furthermore, noting registrant obligations under UDRP paragraph 2, panels have found that respondents who (deliberately) fail to search and/or screen registrations against available online databases would be responsible for any resulting abusive registrations under the concept of willful blindness; this concept has been applied irrespective of whether the registrant is a professional domainer or not (see section 3.2.3 of the WIPO Overview 3.0). Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the Respondent. (ii) The disputed domain name moreover resolves to a webpage using pay-per-click advertisement links such as “New IBM Products”, “IBM Thinkpad on Sale”, and “Cheap IBM Laptop” that lead to websites offering computer hardware for sale; all these sites are not connected to the Complainant. Moreover, the Complainant sent cease-and-desist letters to the Respondent asking the Respondent to disable and transfer the disputed domain name to the Complainant; the Respondent did not reply, it rather continuing using the disputed domain name to address a website using pay-per-click advertisement links; this is additional evidence of bad faith usage (see International Business Machines Corporation v. Peter Malandrinos,WIPO Case No. D2020-2736). Therefore, the Panel is convinced that the Respondent registered the disputed domain name to take unfair advantage of the reputation of the Complainant’s well-known trademark IBM, and in so doing to disrupt the Complainant’s business and to attract, for commercial gain, Internet users to another website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement. On the basis of these facts and findings, it is for the Panel incontestable that the disputed domain name was registered and is being used in bad faith according to 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 Peter Burgstaller
Sole Panelist
Date: June 21, 2021
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