The Complainant is International Business Machines Corporation of Armonk, New York, United States of America ("United States"), internally represented.
The Respondent is Libia Sanchez, SAS / Jairo Sandoval of Bogota, Colombia, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 24, 2015. On November 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2015, the Registrar 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 (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 27, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2015. The Response was filed with the Center on December 16, 2015.
The Center appointed Luca Barbero as the sole panelist in this matter on December 21, 2015. 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 recognizable computer hardware and software company, which is the owner of several trademark registrations for IBM, including:
- the United States trademark registration Nos. 640.606, registered on January 29, 1957, and claiming a date of first use in commerce of August 5, 1955, in International class 9; and 1,243,930, registered on June 28, 1983 and claiming a date of first use in commerce of February 2, 1982, in International class 42;
- the Colombian trademark registration Nos.122790, registered on July 10, 2013, in class 9; 80609 registered on July 10, 2013, in class 35; and 80610 registered on June 26, 2013, in class 38.
In 2015, the Complainant was ranked the 24th largest company in the United States by Fortune. The trademark IBM was ranked the 4th most valuable global brand by Brandz – being valued as worth over USD 93.9 Billion – and the 5th best global brand by Interbrand.
The Complainant registered the domain name on March 19, 1986, and has used it to promote its IBM goods and services.
The disputed domain name was registered on February 8, 2015, and has been pointed to a "coming soon" web page. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its registered trademark IBM since it reproduces the trademark IBM with the sole addition of the word "cloud" and the suffix ".co". The Complainant submits that the disputed domain name creates a likelihood of confusion with the Complainant since the Complainant has registrations that list many related goods and services, including software for providing access to a global computer network.
The Complainant informs the Panel that the Respondent has not been licensed, contracted or otherwise permitted by the Complainant in any way to use the mark IBM or to apply for any domain name incorporating the mark IBM, nor has the Complainant acquiesced in any way to such use or application of the mark IBM by the Respondent.
The Complainant also states that, although the Respondent indicated to the Complainant that "ibmcloud" would stand for "Information Bureau Management Cloud," the Respondent has provided no evidence that this is in fact the name of the Respondent's corporate entity, as the company name specified in the WhoIs record is "SAS". The Complainant also asserts that the Respondent has not proved its use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with any bona fide offering of goods or services, other than a vague Excel spreadsheet listing exorbitant expenses without any exhibits or actual proof of such expenses. The Complainant further states that the Respondent has not been commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name.
With reference to the bad faith requirement, the Complainant contends that the Respondent was well aware of the Complainant's trademark at the time the Respondent registered the disputed domain name, on February 8, 2015, since the Complainant's trademark is well known around the world.
The Complainant also informs the Panel that it sent a cease-and-desist letter to the Respondent on October 5, 2015, asking it to disable and transfer the disputed domain name to the Complainant, but the Respondent replied that it was willing to sell the disputed domain name to the Complainant for a total of USD 410,000. This amount was derived from a list of costs expressed in a spreadsheet created by the Respondent, which provides no proof of actual expenditures, but merely shows large investments in vague detail, supplying no real evidence that the Respondent's alleged business named "Information Bureau Management Cloud" actually exists. The Complainant states that it made further investigations and that there appears to be no website, web portal, or other presence for the Respondent's asserted company Information Bureau Management Cloud.
Therefore, the Complainant concludes that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant, or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name, as the amount of USD 410,000 requested by the Respondent for the transfer of the disputed domain name to the Complainant greatly exceeds the estimated reasonable price that the Respondent paid for the disputed domain name. B. Respondent
The Respondent states that the disputed domain name was registered in a lawful mannerand stands for "Information Bureau Management Cloud", that the disputed domain name is not related in any way to the Complainant's business or trademark and that the transfer of the disputed domain name to the Complainant would impact on the Respondent's business.
The Respondent confirms that, as mentioned by the Complainant, it requested USD 410,000 for the transfer of the disputed domain name to the Complainant.
The Respondent requests that the disputed domain name be kept in its name and not be transferred to the Complainant, stating that several sellers of domain names offer "the same name (ibmcloud) with no restriction orusage warning", that the ".co" suffix in the disputed domain name is only for Colombia, where the Respondent was born and is holding a citizenship, that it did not make any damage to the Complainant and the disputed domain name is not a registered trademark of the Complainant. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the mark IBM by virtue of its United States and Colombian registrations for IBM as outlined above. The Panel also agrees with previous UDRP Panels that IBM is a well-known trademark around the world. See, amongst others, International Business Machines Corporation v. Hulmiho Ukolen / Domain Admin,WIPO Case No. D2015-0320.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant's trademark IBM since it reproduces the mark in its entirety with the mere addition of the generic term "cloud", which is insufficient to avoid a finding of confusing similarity under the first element of the UDRP. See paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). Moreover, the Panel finds that the addition of the term "cloud" is particularly apt to increase the likelihood of confusion with the Complainant's mark, since the trademark IBM is also used in connection with the Complainant's cloud computing services.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark IBM in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
With respect to this requirement, a complainant is required to make a prima facie case that the respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393; Accor v. Eren Atesmen,WIPO Case No. D2009-0701, and WIPO Overview 2.0, paragraph 2.1.
In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in the disputed domain name.
According to the documents and statements submitted by the Parties, there is no relation between the Respondent and the Complainant, the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained any authorization to use the Complainant's trademark or to register the disputed domain name.
There is also no indication before the Panel that the Respondent, whose name is Libia Sanchez, SAS, according to the WhoIs records of the disputed domain name, but signed its Response as "Jairo Sandoval", might be commonly known by the disputed domain name.
The Respondent claimed that it registered the disputed domain name since it corresponds to its alleged company named "Information Bureau Management Cloud", but has not provided any evidence to demonstrate that such company actually exists or that the Respondent might have actually made preparations to use the asserted company name "Information Bureau Management Cloud" and the disputed domain name in connection with a bona fide offering of goods or services.
The Panel has attentively reviewed the spreadsheet submitted by the Respondent to substantiate the purported costs incurred for the development of its alleged project involving the disputed domain name, but indeed it merely shows indications of large investments in vague details, without providing proof of actual expenditures. In particular, the Respondent alleged to have spent USD 85,000 in sales and market development, advertising investment, and definition of web portal for 2014, and USD 110,000 in sales and market development, website development and manufacture of advertising for 2015, but, according to the documents on records, the disputed domain name was merely pointed by the Respondent to a "coming soon" web page and no further evidence has been submitted to demonstrate the Respondent's actual development of a website in connection with the disputed domain name.
The Panel therefore finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that, in light of the prior registration and use of the Complainant's trademark IBM also in Colombia, where the Respondent is based, and of the well-known character of the trademark, the Respondent could not ignore the existence of the trademark at the time of the registration of the disputed domain name, with which it is confusingly similar.
Indeed, the very selection of the disputed domain name combining the trademark IBM with the term "cloud", which is descriptive of services provided by the Complainant, suggests that the Respondent was likely aware of the Complainant's trademark and of the possible likelihood of confusion or association of the disputed domain name with the Complainant and its trademark.
The Respondent requested an amount of USD 410,000 for the transfer of the disputed domain name to the Complainant, claiming that this amount corresponded to the costs borne by the Respondent for market studies, advertising, investment and development of its website, as well as for its estimated rebranding, advertising and administrative expenses. As also highlighted in section 6.B, said allegations have not been substantiated by any evidence to demonstrate that the alleged costs were actually sustained and, indeed, there is also no evidence on records that the Respondent might have ever actually operated, or made concrete plans to operate, a business under the disputed domain name or the asserted company name "Information Bureau Management Cloud".
The Panel notes that the amount requested by the Respondent for transferring the disputed domain name to the Complainant is significantly higher than out-of-pocket costs related to the disputed domain name, and therefore finds that the Respondent registered the disputed domain name in order to sell it to the Complainant for a valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name according to paragraph 4(b)(i) of the Policy.
As to the use of the disputed domain name, the Panel notes that the Respondent has redirected it to a "coming soon" page and has failed to demonstrate any preparation to use the disputed domain name in connection with a legitimate purpose. Moreover and in accordance with the evidence provided by the Parties in the present proceeding, the Panel does not envisage any use of the disputed domain name, confusingly similar to the Complainant's well-known trademark, that would not be illegitimate, as Internet users could likely believe that the disputed domain name and corresponding website are operated by, or affiliated with, the Complainant. As stated, amongst others, in Missoni S.p.A. v. William Song,WIPO Case No. D2012-0208 (where the domain name at issue resolved to a landing page), "the passive holding of a domain name which has no other legitimate use and clearly references the Complainant's trademark may constitute registration and use in bad faith" (see also the leading case Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In light of the above, the Panel concludes that the disputed domain name was 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.
Luca Barbero
Sole Panelist
Date: January 3, 2016
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