WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Business Machines Corporation v. WhoisGuard Protected / WhoisGuard, Inc. / Theo Nguyen

Case No. D2018-1129

1. The Parties

The Complainant is International Business Machines Corporation of Armonk, New York, United States of America (“USA” or “US”), internally represented.

The Respondent is WhoisGuard Protected / WhoisGuard, Inc. of Panama / Theo Nguyen of Pasadena, California, USA, self-represented.

2. The Domain Name and Registrar

The disputed domain name <ibm-global.services> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2018. On May 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 22, 2018, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on May 24, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint by May 29, 2018. The Complainant filed an amended Complaint on May 30, 2018. The Panel accepts the amended Complaint despite the one-day delay in filing.

The Center verified that the Complaint together with the amended 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 May 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2018. The Respondent requested a four-day extension of time to file the Response. The Respondent filed the Response with the Center on June 27, 2018, which the Panel accepts for consideration.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 3, 2018. 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 a publicly traded technology company listed on the New York Stock Exchange. It is headquartered in the US state of New York and organized under the law of that state. Established in 1911, the Complainant has done business under its current name since 1924 and has grown to become one of the largest technology companies in the world, with nearly 380,000 employees and operations in more than 170 countries. The Complainant reports that it spends more than USD one billion annually advertising under the IBM mark. The brand also receives considerable media attention beyond the Complainant’s advertising efforts. As noted in the Wikipedia article on the Complainant, the Complainant’s researchers have garnered five Nobel Prizes, six Turing Awards, ten National Medals of Technology, and five National Medals of Science. The Complainant is also a sponsor of the Olympic Games and several professional sports events. The IBM mark has been ranked among the most valuable brands in the world by Interbrand, BrandZ, and Forbes. The Complainant operates numerous websites, including “www.ibm.com”.

The Complainant holds numerous IBM trademark registrations, including the following registered by the United States Patent and Trademark Office:

“IBM Services” is a term used on the Complainant’s websites for professional services offered by the Complainant, and it appears from the Complainant’s websites that the term “IBM Global Services” has also been used to label its international service offerings.

The Domain Name was registered on February 27, 2018 in the name of a domain privacy service. The Domain Name resolves to a parking page showing that the Domain Name was “recently registered” by the Registrar and displaying pay-per-click (“PPC”) “Sponsored Listings” for items such as “Cloud IBM”, “IBM Software”, “IBM Hardware”, “IBM Support”, and “IBM Server”. These links lead in turn to websites advertising a multitude of products and services from various providers, many of them competing with the Complainant. A search box allows the user to search for other advertisers. A disclaimer at the bottom of the page reads as follows:

“The Sponsored Listings displayed above are served automatically by a third party. Neither Parkingcrew nor the domain owner maintain any relationship with the advertisers.”

The Complainant sent a cease-and-desist letter to the registrant of the Domain Name on May 9, 2018, with no response.

After receiving the Complaint in this proceeding, the Registrar identified the registrant behind the privacy service, the Respondent Theo Nguyen, an individual listing only a postal box in Pasadena, California, USA. The domain privacy service has not expressed an interest in the Domain Name, and Mr. Nguyen will be referred to as the Respondent hereafter in this Decision.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to its IBM mark and that the Respondent has no permission to use the mark and otherwise has no rights or legitimate interests in the Domain Name. The Complainant contends that the Respondent has registered and used a well-known mark in bad faith to attract Internet users to “his/her websites” for commercial gain from pay-per-click advertising revenues.

B. Respondent

The Respondent argues that there is no confusion because the Complainant’s websites are typically in the “.com” generic Top-Level Domain (“gTLD”), while the Domain Name uses the “.services” gTLD.

The Respondent explains his legitimate interest in the Domain Name as follows:

“Respondent has purchased the Domain Name <ibm-global.services> with the future intention of operating a discussion forum where technology professionals can share their knowledge and solutions to work projects

related to certain brand hardware and software. Such discussion board forums are protected free speech in the United States and the European Union.”

The Respondent argues that the registration was in good faith and that the Respondent has not benefitted financially from the Domain Name. The Respondent asks for a finding of reverse domain name hijacking.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The Respondent argues that the gTLD “.services” is a distinguishing feature in this case because it is not generally used by the Complainant for its websites. There is no reason why it could not be associated with the Complainant, however, and as noted above the term “IBM Global Services” has in fact been used by the Complainant itself. The Domain Name incorporates the Complainant’s IBM mark in its entirety, and the addition of dictionary words does not avoid confusion (see WIPO Panel Views on Selected UDRP Questions, Third Edition [“WIPO Overview 3.0”], section 1.8), especially as those words are relevant to the Complainant’s business.

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.3. The Panel concludes under this test that the Domain Name is confusingly similar to the Complainant’s IBM mark for purposes of the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, as it has here, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.

The Respondent in this case implicitly relies on paragraph 4(c)(iii), asserting an intent to use the Domain Name in the future for a noncommercial, technical discussion forum “related to certain brand hardware and software” (presumably IBM). But in nearly five months since registering the Domain Name, the Respondent has not established such a website; he does not even offer evidence of preparing to do so. (The Panel notes, in any event, that paragraph 4(c)(iii) refers only to use rather than demonstrable preparations to use, by contrast to paragraph 4(c)(i) in the case of commercial offerings.) The Registrar may well have parked the undeveloped Domain Name for PPC advertising without the Respondent’s gain or specific direction, but the Respondent remains responsible for allowing this commercial use of the Domain Name for months. The fact remains that the Domain Name, misleadingly based on the trademark of another, has been used only commercially and not for the noncommercial, fair-use purposes claimed by the Respondent. That is inimical to the fundamental notion of fairness underlying the Policy. See WIPO Overview 3.0, sections 2.4, 2.5.

The Complainant prevails on the second element, and many of the same facts are relevant in considering the issue of bad faith, below.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following cited by the Complainant (in which “you” refers to the registrant of the domain name):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Respondent denies profiting from the Domain Name, but it is undisputed that the Respondent has allowed it to be parked for the past five months at a PPC advertising portal and used for the commercial gain of third parties benefitting from the fame of the Complainant’s trademark. The Respondent represented in the registration agreement that “neither the registration of a domain name nor the manner in which it is directly or indirectly used … infringes the legal rights of a third party.” Even if the Respondent did intend eventually to make fair use of the Domain Name for a discussion site, such a plan would require careful execution to avoid violating the Complainant’s trademark rights. For example, WIPO UDRP panels considering the question of fair use under the second UDRP element have repeatedly observed that domain names incorporating a trademark carry a high risk of “implied affiliation”, and the lack of a clarifying term such as “discussion” or “problems” in the Domain Name itself heightens the risk of that implication (see WIPO Overview 3.0, section 2.5.1). “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner” (id., section 2.5).

The point is that the Respondent registered a Domain Name that was highly likely to be misleading, and then parked it with a Registrar who would use it indefinitely for commercial purposes. The Respondent could easily have posted instead a “coming soon” or “under construction” message. This conduct is evidence of a culpable disregard of trademark rights right from the beginning, and in the Panel’s view it reflects bad faith in the registration and use of the Domain Name. While it is routine for some registrars to park undeveloped domain names by default to a landing page with advertising, this results in using a domain name that is confusingly similar to a trademark for commercial gain, even if the gain is not the registrant’s. The registrant might still have an argument for legitimate fair use of the domain name and might be deemed to have registered and used the domain name in good faith, if the registrant acted reasonably promptly to remove the domain name from that default commercial use by the registrar. See, e.g.,Equifax Inc. v. Robert Dow,Warpaint Resources LLC, WIPO Case No. D2017-1882; AmylinPharmaceuticals, Inc. v. Watts Guerra Craft LLP, WIPO Case No. D2012-0486 (accepting noncommercial use by the respondent after a two-month default parking period by the registrar). That did not happen here.

The Panel concludes that the third element of the Complaint, bad faith, has been established within the meaning of the Policy.

D. Reverse Domain Name Hijacking

The Respondent has requested a finding of Reverse Domain Name Hijacking. Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

There are no grounds here for finding that the Complainant engaged in such abusive or harassing behavior and, in fact, the Panel concludes that the Complaint is well founded.

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 Domain Name, <ibm-global.services>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: July 18, 2018