ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION International Business Machines Corporation v. Raphael PHILIPPE Case No. D2025-3338 1. The Parties The Complainant is International Business Machines Corporation, United States of America (“United States”), represented internally. The Respondent is Raphael PHILIPPE, France. 2. The Domain Name and Registrar The disputed domain name (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2025. On August 20, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 20, 2025, 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 (John Doe / Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 25, 2025, 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 August 25, 2025. 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 August 28, 2025. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2025.
page 2 The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on October 6, 2025. 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 designs and manufactures a wide array of products that record, process, communicate, store and retrieve information, including computers and computer hardware, software, and accessories. The Complainant was incorporated on June 16, 1911 and has been offering products under the trade mark IBM since 1924. In 2024, Complainant was ranked the 16th most valuable global brand by BrandZ. In 2023, the Complainant was ranked the 17th most valuable global brand by BrandZ and ranked the 18th best global brand by Interbrand. The Complainant spends over USD 1 billion annually marketing its goods and services globally, using the IBM trade mark. The Complainant owns trade mark registrations all around the world for both the word mark IBM and the figurative mark , including the following trade marks in the United States (the “Trade Marks”): - United States figurative mark IBM registration no. 4,181,289 registered on July 31, 2012; - United States figurative mark IBM registration no. 3,002,164 registered on September 27, 2005; - United States figurative mark IBM registration no. 1,696,454 registered on June 23, 1992; - United States word mark IBM registration no. 1,694,814 registered on June 16, 1992; and - United States word mark registration no. 640,606 registered on January 29, 1957. The Domain Name was registered on April 4, 2025. The Domain Name and an associated email address was used for a phishing attempt and impersonation of an employee of the Complainant based in Italy to solicit payments from clients via email. The Complainant sent a cease-and-desist letter to the Respondent on June 23, 2025, asking the Respondent to disable and transfer the Domain Name, to which the Respondent did not reply. 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 Domain Name, on the following grounds. The Domain Name is identical or confusingly similar to the Trade Marks as it consists of the letters “IBM” which are identical to the IBM word mark. The addition of a hyphen and the letters “it” which are commonly used as the shortened form abbreviation for the country Italy and could be reasonably understood as an indication of origin. The Complainant has a notable business presence and multiple office locations in Italy. These minor variations do not obviate the confusing similarity between the Domain Name and the IBM word mark. The Complainant has never licensed, contracted, or otherwise permitted anyone to apply to register the Domain Name. Furthermore, there is no evidence that the Respondent is using the Domain Name for a bona fide offering of goods or services, nor is there any evidence of fair use. On the contrary, the Respondent has been misusing the IBM word mark in the Domain Name to create a likelihood of confusion by using the Domain Name and an associated email address to impersonate an employee of the Complainant. In addition, the Respondent configured an email server on the Domain Name, indicating an intention of the Respondent to potentially use the Domain Name for purposes other than hosting a website, including potentially for constructing an email composition containing the Domain Name, to be used for
page 3 deceiving purposes. Such unauthorized use of the IBM word mark is likely to trick consumers into erroneously believing that the Complainant is somehow affiliated with the Respondent or endorsing its commercial activities, while in fact no such relationship exists. Furthermore, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with any bona fide offering of goods or services, nor that the Respondent has been commonly known by the Domain Name. Therefore, the Respondent has no rights or legitimate interests in the Domain Name. The Respondent was well aware of the Trade Marks at the time the Respondent registered the Domain Name. The Trade Marks are well known around the world, while there was a gap of over sixty years between the registration of the earliest of the Trade Marks and the Respondent’s registration of the Domain Name. Further, Internet search engines yield results for the Complainant and its products/services when using “IBM” and “IT IBM” as search terms, which indicates that a connection between the Trade Marks and the Complainant has been established. As such, the Respondent either knew or should have known of the Trade Marks when registering the Domain Name or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith.” This is proof of bad faith at the time of registration. Furthermore, the Domain Name is confusingly similar to the world-famous IBM word mark, while there is no relationship of the Respondent to the Complainant nor the Trade Marks, which creates a presumption of bad faith. In addition, the use of the Domain Name for purposes other than to host a website, such as sending deceptive emails, phishing, identity theft, or malware distribution, constitutes bad faith. In this case, the Respondent has connected the Domain Name to a mail server responsible for sending and accepting email messages on behalf of the Domain Name. This suggests that the Respondent may have intended to use the Domain Name for phishing or other fraudulent purposes. In fact, the Respondent has been using the Domain Name and an associated email account to impersonate an employee of the Complainant to phish for personal information and payments from unsuspecting potential clients of the Complainant. Specifically, the Respondent used the Domain Name to create a deceptively similar email address to that of an IBM employee based in Italy and used it to impersonate that IBM employee. The deceptive nature of this email impersonation caused actual confusion and is evidence of bad faith use. The consequence of such use can be detrimental not only to the Complainant, but to third parties who may entrust what appears to be the Complainant with sensitive information. The Respondent has registered the Domain Name through a privacy service shield, thereby concealing its identity and contact information, which may point to bad faith in itself. Moreover, the Complainant sent a cease-and-desist letter to the Respondent through the Registrar on June 23, 2025, asking the Respondent to disable and transfer the Domain Name. The Respondent did not reply to that letter. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the IBM word mark as well as the textual element of the figurative IBM mark. The addition of the letters “it” and a hyphen in the Domain Name does not prevent a finding of confusing similarity between the Domain Name and the Trade Marks (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; see also, inter alia, TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0361, and F. Hoffmann-La
page 4 Roche AG v. John Mercier, WIPO Case No. D2018-0980). The generic Top Level Domain “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (WIPO Overview 3.0, section 1.11.1). Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights. 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. See WIPO Overview 3.0, section 2.1. Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s authorization or consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name, and has not acquired trade mark rights in the Domain Name. In addition, the Respondent’s use of the Domain Name does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, since the Domain Name is connected to a mail server responsible for sending and accepting email messages on behalf of the Domain Name, which implies the activation of MX (“Mail Exchange”) records relating to the Domain Name to direct emails to a mail server under the Domain Name. This may suggest to recipients of any potential emails that they are originating in or authorized by the Complainant. In fact, evidence of one occasion of such a phishing operation has been presented, where the recipient was misled into believing that the e-mail originated from the Complainant. The Respondent’s control over the Domain Name and these MX records represents an ongoing threat to the Complainant and Internet users that the Domain Name may also in the future be used for such phishing or other fraudulent operations. In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name. 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. This list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, leaves open that other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. See WIPO Overview 3.0, section 3.2.1. Based on the undisputed information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was aware of the Trade Marks, since: - the Respondent’s registration of the Domain Name occurred some 68 years after the registration of the earliest of the Trade Marks; - the Trade Marks have a worldwide reputation, as evidenced, inter alia, by the worldwide presence of the Complainant, the ranking of the Complainant’s Trade Marks in the top 20 of most valuable global brands and its expenditures on the marketing of its goods and services using the Trade Marks;
page 5 - a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name would have informed the Respondent of the existence of the Trade Marks; and - the Respondent used the Domain Name in furtherance of a fraudulent scheme impersonating the Complainant. Since the Respondent has no authorization from or other affiliation with the Complainant, and was aware of the Complainant’s rights at the time of registration, the Domain Name was registered in bad faith. With regard to bad faith use, the Panel finds that the use of the Domain Name implies that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation, or endorsement of its website and the services offered on that website. In addition, the following circumstances taken together warrant a finding of bad faith use of the Domain Name: - the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks; - activation of MX (mail exchange) records relating to the Domain Name to direct emails to a mail server under the Domain Name, suggesting to recipients of any potential emails that they are originating from or authorized by the Complainant; - the use of the mail server connected to the Domain Name for a phishing operation; - the use upon registration of the Domain Name of a proxy service, apparently to hide the identity of the Respondent; - the lack of a Response of the Respondent in these proceedings; and - the lack of a response to the cease-and-desist letter sent by the Complainant. Therefore, the Panel concludes that the Domain Name has been registered and is being used in bad faith. 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. /Wolter Wefers Bettink/ Wolter Wefers Bettink Sole Panelist Date: October 20, 2025
Full & Egal Universal Law Academy