The Complainant is International Business Machines Corporation, United States of America (“United States”), internally represented.
The Respondent is guanxiaodong, 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 April 1, 2021. On April 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 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 April 15, 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 19, 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 May 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2021. The Center appointed Rachel Tan 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 was incorporated in 1911 as an amalgamation of three previously existing companies. It has been an 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 since the 1880s. It officially became International Business Machines on February 14, 1924 and has been offering products under the IBM trade mark ever since. The Complainant is the owner of a range of trade mark registrations that incorporate the element “ibm” in 131 countries, such as United States Registration No. 4,181,289 registered on July 31, 2012 in classes 9, 16, 18, 20, 21, 22, 24, 25, 26, 28, 35, and 41 and United States Registration No. 3,002,164 registered on September 27, 2005 in class 9. The Respondent is guanxiaodong, China. The disputed domain name was registered on November 25, 2020. According to the evidence provided by the Complainant, the disputed domain name previously resolved to active webpages featuring pornographic and online gambling content. However, at the time of this decision, the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to its IBM trade mark. The letters “ibm” contained in the disputed domain name are identical to the IBM mark. The addition of the letters “fuwuqi”, which is the Chinese word for the technical term “server” does not dispel the confusing similarity between the IBM mark and the disputed domain name. The Complainant further alleges that the Respondent has not been licensed, contracted, or otherwise permitted by the Complainant in any way to use the IBM trade mark, or to apply for any domain name incorporating such mark. The Respondent has not been commonly known by the disputed domain name. The Respondent has been intentionally attempting to create a likelihood of confusion by using the disputed domain name to increase Internet user traffic for its pornographic and online gambling websites. There is no evidence that the Respondent is using or plans to use the IBM mark or the disputed domain name incorporating the IBM mark for a bona fide offering of goods or services. The Complainant finally asserts that the Respondent was well aware of the Complainant’s trade mark at the time the Respondent registered the disputed domain name. The Respondent did not reply to the Complainant’s cease and desist letter. The Respondent has in bad faith tried to obtain financial gain by registering and using a well-known, non-generic domain name in which it has no rights or legitimate interests to generate revenue through increased Internet user traffic and to promote its pornography and online gambling businesses. Such conduct qualifies as “pornosquatting” and has created a likelihood of trade mark dilution through the tarnishment of the IBM trade mark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the IBM mark. The Panel notes that the IBM mark is wholly encompassed within the disputed domain name. The positioning of the IBM mark makes it instantly recognizable as the most distinctive element of the disputed domain name. In cases where a domain name incorporates the entirety of a trade mark, 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. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Moreover, the additional letters “fuwuqi”, which is the pinyin transliteration of the Chinese characters “服务器” meaning “server” do not preclude a finding of confusing similarity between the IBM mark and the disputed domain name. It is accepted by previous UDRP panels that the addition to the complainant’s trade marks of others words or terms (including terms that describe or refer to part of the complainant’s business in the disputed domain name) does not affect the finding of confusing similarity of the disputed domain name from the registered trade mark under the first element of the Policy. The word “server” is related to the Complainant’s business, its addition does not affect the confusing similarity between the disputed domain name and the Complainant’s IBM mark. See section 1.8 of the WIPO Overview 3.0. Lastly, it is permissible for the Panel to ignore the generic Top-Level Domain, in this case “.com”. See section 1.11.1 of the WIPO Overview 3.0. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests In circumstances where the Complainant possesses exclusive rights to the IBM mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0. The disputed domain name previously resolved to active webpages featuring pornographic and online gambling content. The Respondent has not provided evidence of a legitimate noncommercial or fair use of the disputed domain name or reasons to justify the choice of the term “ibm”. Further, there is no indication to show that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in it. In addition, the Complainant has not granted the Respondent a license or authorization to use the Complainant’s IBM mark or register the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy are present in this case. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Complainant’s IBM mark had been registered well before the registration of the disputed domain name. Through use and advertising, the Complainant’s IBM mark is known throughout the world. Moreover, “ibm” is not merely a term. Search results using the key term “ibm” on the search engines direct Internet users to the Complainant and its services, which indicates that a connection between the IBM mark and the Complainant has been established. As such, noting the composition of the disputed domain name, the Respondent either knew or should have known of the Complainant’s IBM mark when registering the disputed domain name or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai,WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes,WIPO Case No. D2011-0874. Section 3.1.4 of the WIPO Overview 3.0 states that the “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain name incorporates the Complainant’s widely-known IBM mark plus the word “server” in Chinese pinyin that is related to the Complainant’s business, thus, creating a presumption of bad faith. The Panel notes that the disputed domain name previously resolved to websites featuring pornographic and gambling content, which demonstrates the Respondent is making commercial gain from the website by attracting Internet users by creating a likelihood of confusion with the Complainant’s mark. See paragraph 4(b)(iv) of the Policy. Further, the pornographic materials on the website tarnish the IBM mark and this has been found by previous UDRP panels to constitute evidence of registration and use of a domain name in bad faith. See section 3.12 of the WIPO Overview 3.0. In addition, the Panel finds that the current inactive use of the disputed domain name in this case would not prevent a finding of bad faith under the doctrine of passive holding. In its determination, the Panel considered the degree of distinctiveness or reputation of the Complainant’s IBM mark, as well as the Respondent’s failure to respond in the face of the Complainant’s allegations of bad faith. See section 3.3 of the WIPO Overview 3.0. The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain name as discussed above, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel finds that the Complainant has 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 Rachel Tan
Sole Panelist
Date: June 23, 2021
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