Complainant is International Business Machines Corporation of Armonk, New York, United States of America (“United States”), internally represented.
Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Host Master, Transure Enterprise Ltd of Wilmington, Delaware, United States.
The disputed domain name <ibmdsseries.com> is registered with Above.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2018. On May 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 29, 2018, 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 Complainant on May 31, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 6, 2018.
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 Respondent of the Complaint, and the proceedings commenced on June 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 28, 2018.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on July 6, 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.
With its corporate roots extending into the late 1800s, Complainant today is a multi-billion-dollar global enterprise with over 380,000 employees. Since 1924, Complainant has continuously offered its technology-related goods and services worldwide under the IBM mark. Complainant owns trademark registrations for IBM in 170 countries. Complainant’s United States trademark registrations for the IBM mark include Registration Nos. 0640606 (registered January 29, 1957); 1058803 (registered February 15, 1977), and 4181289 (registered July 31, 2012). Complainant also owns Chinese trademark registrations for its IBM DS series storage system-related goods and services (“IBM DS series marks”) (e.g., IBM DS4000; Registration No. 4613179; registered November 21, 2008). In 2017, the IBM brand was ranked the 9th best brand in the world.
Respondent registered the disputed domain name <ibmdsseries.com> on July 10, 2016. The disputed domain name resolves to a page with pay-per-click links, including links for “IBM Storage” and “IBM DS 3400”.
Complainant argues that the disputed domain name is identical or confusingly similar to its marks in which Complainant has rights because the IBM mark and the IBM DS series marks (collectively, “IBM Marks”) are reproduced in the disputed domain name. According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name because Complainant did not license Respondent’s use of the IBM marks and there is no indication that Respondent is commonly known as either IBM or IBM DS, that Respondent is making a fair use of the disputed domain name, or that Respondent is using or planning to use the disputed domain name for a bona fide purpose. Lastly, Complainant contends that Respondent’s 2016 registration of the disputed domain name incorporating the world-famous IBM marks was in bad faith and that Respondent has used the disputed domain name in bad faith to channel Internet traffic to Respondent’s webpage for the purpose of generating revenue by pay-per-click advertising.
Respondent did not reply to Complainant’s contentions.
By virtue of its trademark registrations, Complainant has rights in the IBM Marks in general and in the IBM DS mark in particular. The Panel finds that the disputed domain name incorporates these marks in their entirety and, thus, is confusingly similar to Complainant’s marks. The inclusion of the word “series” does not dispel the potential for confusion as it serves to invoke the IBM DS series of goods and services offered by Complainant.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
Complainant has made a prima facie case for Respondent’s lacks rights or legitimate interests in the disputed domain name, which Respondent has failed to rebut. Respondent’s use of the IBM marks is unauthorized and there is no evidence to indicate that Respondent is commonly known by the IBM marks or that Respondent is preparing to use the disputed domain name for a bona fide offering of goods or services. To the contrary, it appears that Respondent is seeking to trade off on the fame of Complainant’s IBM marks.
The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Respondent registered and is using the disputed domain name in bad faith. Respondent’s incorporation of the word “series” into the disputed domain name and the use of the IBM marks on the associated website reflect Respondent’s actual awareness of Complainant’s distinctive IMB marks and the IBM DS series-related goods and services. Moreover, there is no plausible explanation for Respondent’s use of Complainant’s IMB marks in the disputed domain name other than that Respondent seeks to divert Internet users in search of Complainant’s good and services to Respondent’s site. Once funneled to Respondent’s site, users encounter pay-per-click links featuring what appear to be (among others) links to Complainant’s goods and services. This attempt to trade off on the fame of Complainant’s mark for the purpose of generating pay-per-click traffic is bad faith use. See Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363 (<adm.website>; transferred).
The Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 <ibmdsseries.com> be transferred to Complainant.
Lawrence K. Nodine
Date: July 20, 2018
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