The Complainant is International Business Machines Corporation (IBM) of Armonk, New York, United States of America, represented internally.
The Respondent is Guanbing Meng of Beijing, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2011. On November 17, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On November 18, 2011, Moniker Online Services, LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the registration authority of .CC (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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2011.
The Center appointed Torsten Bettinger as the sole panelist in this matter on January 10, 2012. 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 an internationally-known computer and IT-technology company, based in the United States. The company was originally founded in 1911, and has traded under the International Business Machines (IBM) mark since 1924. Its IBM mark is registered in 170 countries worldwide, including in China where the Respondent appears to be located, and was valued at USD 69 million by the Interbrand ranking system in 2011.
The Respondent registered the disputed domain name on November 27, 2007, and uses it in connection with a pay-per-click parking page which includes links entitled, inter alia, “IBM Computers”, “IBM Operating Systems” and “IT Industry”. On October 15, 2011, the Respondent sent an email to the Complainant offering to sell the domain name for USD 10,000. The Respondent has made no other submissions on the record before the Panel. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
As regards the first element of the Policy, since the disputed domain name consists in its entirety of the Complainant’s well-known trademark, the Complainant contends that the domain name is identical to its mark.
With regard to the second element of the Policy, the Complainant avers that the Respondent has no rights or legitimate interests in the disputed domain name as it is not an authorized reseller of the Complainant’s goods, and has not been licensed to use the Complainant’s marks in any way. Further, the Complainant contends that there is no evidence of the Respondent’s use, or preparation to use, the disputed domain name in connection with a bona fide offering of goods and services, that the Respondent is not commonly known by the disputed domain name, and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Concerning the third element of the Policy, the Complainant argues that the Respondent has registered and used the disputed domain name in bad faith in order to realize unwarranted commercial gain, both through the use of its website to generate pay-per-click links and with the intent to resell the disputed domain name to the Complainant for a price in excess of its out-of-pocket costs. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement. See F. Hoffmann-La Roche AG v. P Martin,WIPO Case No. D2009-0323; BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR,WIPO Case No. D2001-1480; and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698.
The textual string of the disputed domain name in this matter is “ibm”, which is identical to the Complainant’s well-known trademark. The Complainant has demonstrated to the Panel’s satisfaction that it has secured numerous registrations for the mark in jurisdictions around the world, and has used said mark for a period of time substantially preceding the Respondent’s registration of the disputed domain name.
Additionally, it is well established that a TLD suffix, in this instance case the ccTLD suffix “.cc”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The Panel thus finds that the disputed domain name is identical to the Complainant's IBM mark and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires a complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name. However, it is the consensus view among WIPO UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant confirms that it has not licensed or authorized the Respondent to use its IBM mark in any fashion and that there is no connection between the Respondent and the Complainant. There is no evidence on the present record, or in the publicly-available WhoIs records, to indicate that the Respondent is commonly known by the disputed domain name or a name corresponding to the disputed domain name. The website active at the dispute domain name is used to host a parking page with pay-per-click links corresponding to the Complainant’s goods, services and industry, from which the Respondent presumably generates revenue, and additionally the Respondent has attempted to sell the disputed domain name to the Complainant for a large profit. Accordingly, it is clear that the Respondent is not making any noncommercial or fair use of the disputed domain name.
The Complainant’s trademark is a three-letter word mark comprising an acronym of its corporate name which might, in alternative circumstances, raise doubts as to the Respondent’s lack of rights or legitimate interests. It has been held in previous UDRP cases that three-letter acronym marks require a higher showing of secondary meaning, or of the respondent’s intent to target the complainant’s marks, in order to pass the test under the second element of the Policy, as many different combinations of terms could use the same three-letter abbreviation. See, for example, Family & Children’s Center Inc. v. James M. Van Johns a.k.a. Damian Macafee,WIPO Case No. D2004-0497; Schweizerische Bundesbahnen SBB v. Gerrie Villon,WIPO Case No. D2009-1426; and OVB Vermögensberatung AG v. Michele Dinoia and SZK.com,WIPO Case No. D2009-0307.
In this case, however, the Panel is satisfied that the Complainant has well documented its nearly 100 years of use of the IBM mark, including a broad sampling of its worldwide registrations for the term. Moreover, the Respondent has failed to supply any arguments or evidence demonstrating a legitimate reason for registering the term, or for routing the disputed domain name to a parking page with links related to the Complainant’s products and services. The Panel is unconvinced that the Respondent may have registered the disputed domain name for any purpose other than to take advantage of the Complainant and realize a profit on its investment.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
The Complainant has demonstrated that its IBM mark is widely recognized in connection with computers, software and the IT industry, and that said mark has been in use for nearly 100 years. Moreover, the Respondent has used the disputed domain name in connection with a pay-per-click landing page containing links to the Complainant’s and related goods and services, indicating that it was fully aware of the Complainant and its IBM mark.
By fully incorporating the IBM mark in the disputed domain name and using the domain name in connection with this parking page, in this Panel’s view, the Respondent was clearly attempting to divert Internet traffic intended for the Complainant’s website to his own for commercial gain by creating a likelihood of confusion with the Complainant’s marks. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy. See F. Hoffmann-La Roche AG v. DOMIBOT,WIPO Case No. D2006-0327.
Additionally, the Respondent’s attempt to sell the domain name at a price which must vastly exceed its out-of-pocket registration fees is an obvious attempt to realize unwarranted gain at the expense of the Complainant and its brand. Holding trademark owners “ransom” through the abusive registration of domain names containing registered or valuable marks is a prime example of the cybersquatting activities the Policy was designed to address, and constitutes bad faith registration of the domain name under paragraph 4(b)(i) of the Policy. See Advance Magazine Publishers Inc. v. Beroca Holdings B.V.I. Limited,WIPO Case No. D2007-0026 and Freddy Adu v. Frank Fushille,WIPO Case No. D2004-0682.
The Panel therefore concludes that the requirement of paragraph 4(a)(iii) of the Policy has also been met. 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.
Torsten Bettinger
Sole Panelist
Dated: January 13, 2012
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