The Complainant is International Business Machines Corporation, United States of America (“United States”), represented internally.
The Respondent is Murat Satir, Turkey, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2021. On January 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 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 January 21, 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 January 21, 2021. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO Domain Name Dispute Resolution Policy (the “Supplemental Rules”). Following receipt of an email communication from the Respondent, on January 28, 2021, the Complainant requested a suspension of the proceeding to allow negotiations between the parties. On February 5, 2021, the Center formally suspended the proceeding until March 7, 2021. The suspension period having expired with the proceeding unresolved, the Center formally notified the Respondent of the Complaint in accordance with the Rules, paragraphs 2 and 4, and the proceedings commenced on March 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2021. On March 29, 2021, the Respondent submitted the Response. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 12, 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 is the very well-known information technology products and services supplier. While it traces its roots back to the 19th century, it says it commenced using the initials IBM in 1924 when the corporation formed by the merger of three different companies in 1911 adopted the corporate name International Business Machines. At that time, it was a supplier of office machines. It now operates around the world with an extensive range of business and services. In 2018, it had annual revenues of USD 79.6 billion. In 2019, its annual revenues were USD 77.1 billion. According to the Complaint, the Complainant spends over USD 1 billion yearly in marketing its goods and services by reference to the trademark IBM. As a result of its activities, in 2018 it was ranked: (a) the 11th most valuable global brand by Brandz; In 2019, it was ranked: (a) the 13th most valuable global brand by Brandz; In 2020, it was ranked: (a) the 14th most valuable global brand by Brandz; The Complainant has numerous registered trademarks for IBM or a figurative version of IBM. The Complaint includes evidence of a number of these; the oldest of which is United States Registered Trademark No. 640,606, IBM, which was registered on January 29, 1957 in respect of magnetic recording tape and associated products in International Class 9. By way of further example, the most recent is United States Registered Trademark No. 4,181,289, IBM (figurative) which was registered in the Principal Register on July 31, 2012 in respect of a range of goods in International Classes 6, 8, 9, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 28, 30, 35 and 41. The other registrations also cover a range of goods and services in various International Classes. The Respondent registered the disputed domain name in October 2020. The disputed domain name resolves to a parking type page which appears to have pay-per-click advertising links listed. According to the Complainant, the IP address associated with the disputed domain name has been “associated with the dissemination of botnet command-and-control servers” since the registration of the disputed domain name. 5. Discussion and Findings Under the Policy (which came into effect on June 1, 2020), the Complainant must establish that: (a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and As will be appreciated, these requirements are very similar to the requirements under the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) save that, in particular, it is necessary for the Complainant to establish only that the disputed domain name was registered in bad faith or is being used in bad faith. In view of the close similarity of the requirements of the Policy and the UDRP, therefore, the Panel will draw on the principles established under the UDRP as appropriate. A. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has proven ownership of the registered trademarks for IBM (both plain and figurative styles) referred to in section 4 above. In addition, as the Complainant contends, the Panel accepts that the Complainant’s trademark is a very well-known trademark within the meaning of Article 6bis of the Paris Convention. Given the similarity with the UDRP, the Panel will apply the same test for the second stage of this inquiry which simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. As with the UDRP, this test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. In undertaking the comparison, it is permissible in the present circumstances to disregard the country code Top-Level Domain (“ccTLD”) component, “.io”, as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. Disregarding the “.io” ccTLD, the disputed domain name consists of the Complainant’s registered trademark and the letter “s”. That addition can be seen as making a plural or as simply a typographical-type error. Either way, as this requirement under the Policy is essentially a standing requirement, the addition of this single letter to the end of the Complainant’s trademark does not preclude a finding of confusing similarity. See e.g. WIPO Overview 3.0, sections 1.8 and 1.4. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name. It is also usual to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name. Thus, the figurative styling of some forms of the Complainant’s trademark can also be disregarded. See for example, WIPO Overview 3.0, section 1.10. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. As under the UDRP, these circumstances are stated to be provided “without limitation” to the circumstances which might give rise to a finding that a respondent has rights or legitimate interests in a domain name. Accordingly, they are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1. The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. The Panel also notes that use of the disputed domain name to host a parked page comprising PPC links does not qualify as a good faith offering of goods or services where the links compete with or capitalise on the reputation and goodwill of the Complainant’s trademark. See WIPO Overview 3.0, section 2.9. The evidence of the screenshot to which the disputed domain name resolved when the Complaint was submitted appears to satisfy that requirement. These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. In the Response, the Respondent denies that he acquired the disputed domain name to take advantage of the Complainant’s trademark. He says he acquired the disputed domain name because it is an acronym for “image base management system”. The Respondent contends that the Registrar has victimised him by selling him a domain name if he cannot use it. The Respondent says further that it is all the Complainant’s fault as a result of the Complainant’s “failure to take the necessary measures beforehand”. The Panel is unable to accept the Respondent’s claim that the disputed domain name was registered because it is an acronym of “image base management system”. First, the Panel does not deny that “ibms” can be seen as an acronym for that expression. However, it is not clear to the Panel what, if anything, an “image base management system” is or what the expression means. Secondly, the Respondent is not actually using the disputed domain name in connection with a good faith offering of goods or services which might fall within the description “image base management system” (whatever that may be). While the time between registration of the disputed domain name and filing of the Complaint is relatively short, the Respondent has not made any attempt to provide evidence that would qualify as demonstrable preparations to use the disputed domain name in connection with such a good faith offering. The Respondent’s claim is nothing more than bald assertion, which appears to be inconsistent with the way the disputed domain name is in fact being used. Thirdly, and in any event, it appears most unlikely that the Respondent was not aware how closely the disputed domain name resembled the Complainant’s trademark given how long and extensively the Complainant has been using its trademark. A reasonable person in the Respondent’s shoes would have realised that adoption of the disputed domain name in those circumstances was highly likely to lead to deception and confusion. The Panel would not be prepared to find that the adoption and use of the disputed domain name in such circumstances was in good faith. A finding of lack of good faith would be even stronger if (as the Complainant contends) the disputed domain name is being used, or intended to be used, for the dissemination of botnet command-and-control servers. See e.g. Confederation Nationale du Credit Mutuel v. Hardsoft, Inc. / Hilary Kneber,WIPO Case No. D2010-1352. The Respondent’s claim of victimisation by the Registrar cannot be sustained. Apart from anything else, clause 8 of the Registration Agreement makes it clear the responsibility for determining whether registration or use of the disputed domain name infringes a third party’s rights lies with the Respondent. However self-serving that may be in some cases and recognising the impossibility of a registrar policing all trademarks around the whole world, the Respondent voluntarily registered the disputed domain name on the basis of his contractual obligations. The Respondent does not indicate what “necessary measures” he considers the Complainant should have taken “beforehand”. Given how well-known the Complainant’s trademark is, one might express surprise if the Respondent is intending to convey that the Respondent did not know the disputed domain name had the potential to conflict with the Complainant’s trademark. More importantly, it is simply not possible for a trademark owner to register all possible domain names which are potentially confusingly similar to the trademark owner’s trademark in all possible domains and sub-domains. The fact that the Complainant had not registered this particular alphanumeric string in this particular domain does not entitle the Respondent to do so in the face of the Complainant’s trademark rights. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered or Used in Bad Faith In contrast to the UDRP, the Complainant must establish that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy. Generally speaking, a finding that a domain name has been registered or is being used in bad faith requires an inference to be drawn that the respondent in question has registered or is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. As already indicated, it seems very unlikely that the Respondent was unaware of the Complainant’s trademark when registering the disputed domain name. The reasons leading to the rejection of the Respondent’s claim to having rights or legitimate interests in the disputed domain name lead also to a conclusion that the Respondent registered the disputed domain name in bad faith. In addition, the way the Respondent is using the disputed domain name as a parked page with PPC links constitutes use of the disputed domain name in bad faith. The conclusions of bad faith would be reinforced if, as the Complainant alleges, the Respondent is using, or planning to use, the disputed domain name in connection with the dissemination of botnet command-and-control servers. Accordingly, the Complainant has established all three requirements under 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 Warwick A Rothnie
(b) the 12th best global brand by Interbrand;
(c) the 34th largest company on the Fortune US 500 list; and
(d) the 92nd largest company on the Fortune Global 500 list.
(b) the 12th best global brand by Interbrand;
(c) the 38th largest company on the Fortune US 500 list; and
(d) the 114th largest company on the Fortune Global 500 list.
(b) the 14th best global brand by Interbrand;
(c) the 38th largest company on the Fortune US 500 list; and
(d) the 118th largest company on the Fortune Global 500 list.
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered or is being used in bad faith.
Sole Panelist
Date: April 22, 2021
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