ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION International Business Machines Corporation (IBM) v. MMM Name Case No. D2024-4571 1. The Parties The Complainant is International Business Machines Corporation (IBM), United States of America (the “United States”), internally represented. The Respondent is MMM Name, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2024. On November 7, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2024, 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 (John Doe) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 8, 2024, 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 November 8, 2024. 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 November 11, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2024.
page 2 The Center appointed Michelle Brownlee as the sole panelist in this matter on December 6, 2024. 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 and took its current name in 1924. The Complainant was initially in the business of offering office and research equipment, such as punch machines, calculating machines, clock and scales, and later began offering computers, computer hardware, software and accessories, which it still offers. The Complainant owns registrations for the IBM trademark in many countries around the world, including the following United States Trademark registrations: United States Registration Number 1694814 for services in International Class 36, registered on June 16, 1992; United States Registration Number 1058803 for goods and services in International Classes 1, 2, 3, 4, 7, 9, 10, 16, 28, 37, 41 and 42, registered on February 15, 1977; and United States Registration Number 640606 for goods in International Class 9, registered on January 29, 1957. The disputed domain name was registered on August 30, 2024. The disputed domain name redirected to the web site “http://wallet.coinbase.com”. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. The Complainant contends that its IBM trademark is a well-known trademark. The Complainant notes that the IBM brand has been ranked as one of the top 20 global brands in surveys by BrandZ and Interbrand in the last two years. The Complainant argues that the Respondent’s use of the disputed domain name to redirect to a third party’s web site is not a bona fide use of the disputed domain name. The Complainant suggests that the Respondent has engaged in a pattern of registering domain names that pair the word “ethereum” with the Complainant’s IBM trademark in the second level of the domain name, noting that the Complainant prevailed in another UDRP proceeding against multiple named respondents that registered nine different domain names that paired the word “ethereum” with the Complainant’s IBM trademark in the second level. See International Business Machines Corporation v. benhe yang, et al., WIPO Case No. D2024-1939 (July 22, 2024). In that proceeding, the panel found that the domain names were under common control because eight of the nine domains were redirecting to the same website that the disputed domain name is redirecting to in this case and because several of the domain names had the same email address in the contact information. The Complainant contends that the Respondent’s concealment of its identity through a domain proxy service is further evidence of the Respondent’s bad faith. The Complainant also notes that the Complainant sent two cease and desist letters to the Respondent and received no response and argues that this is further evidence of the Respondent’s bad faith.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “ethereum” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
page 4 In the present case, the Panel notes that the Complainant has established by a preponderance of the evidence that the Respondent has engaged in a pattern of bad faith conduct under Paragraph 4(b)(ii) of the Policy, since the disputed domain name resolves to the same cryptocurrency web site that was the subject of a previous UDRP proceeding and follows a similar pattern of pairing the Complainant’s IBM trademark with the word “ethereum.” See International Business Machines Corporation v. benhe yang, et al., WIPO Case No. D2024-1939 (July 22, 2024). The Panel finds that the Complainant has established the third element 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 be transferred to the Complainant. /Michelle Brownlee/ Michelle Brownlee Sole Panelist Date: December 21, 2024
Full & Egal Universal Law Academy