The Complainant is International Business Machines Corporation of United States of America (“United States”), represented internally.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / I S, ICS INC of Grand Cayman, Cayman Islands, Overseas territory of the United Kingdom.
The disputed domain name <demoibm.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2019. On April 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 2019, 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 April 16, 2019, 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 amended Complaint on April 16, 2019.
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 April 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2019.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on May 21, 2019. 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.
The Complainant is a company headquartered in the United States, and is active in the information technology sector. The Complainant was first established on June 16, 1911 and adopted the company and trade name “International Business Machines”, abbreviated as IBM, on February 14, 1924. The Complainant provides evidence that its IBM brand was ranked amongst the world’s most valuable brands by various international directories, such as Fortune 500 and Interbrands. The Complainant owns a large number of trademark registrations (word and device marks) for “IBM”, see for instance United States trademark number 4181289, registered on July 31, 2012 and United States trademark number 3002164, registered on September 27, 2005. Incidentally, the relevant registered trademarks adduced by the Complainant were successfully registered prior to the registration date of the disputed domain name, which was registered on April 24, 2017. The Complainant provides evidence that the disputed domain name is linked to an active redirection page, which redirects Internet users to a website requesting users to download software which is presumed to be malware or a computer virus.
The Complainant also provides evidence that it has first sought to settle this matter amicably through a cease-and-desist letter on February 19, 2019 and a follow-up letter on March 4, 2019, to which it received no answer.
The Complainant essentially contends that the disputed domain name is identical or confusingly similar to its prior trademarks for IBM, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
The Complainant claims that its trademarks are famous and well-regarded in the information technology industry, and provides evidence of brand evaluation studies and its research and development investments. The Complainant also provides references to a number of prior domain name decisions in which its trademarks are recognised as well-known trademarks. Moreover, the Complainant provides evidence that the disputed domain name is linked to an active website, which redirects Internet users to a website requesting users to download software which is presumed to be malware or a computer virus. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name and constitutes use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The Policy requires the Complainant to prove three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Based on the evidence submitted, the Panel’s findings are as follows:
The Panel finds that the Complainant has shown that it has valid rights in the sign IBM based on its use and registration of the same as a trademark, incidentally commencing many years prior to the registration of the disputed domain name.
As to confusing similarity, the disputed domain name consists of two elements, being the term “demo”, which stands for “demonstration” and the Complainant’s trademark IBM. According to the WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark, which is recognizable in the disputed domain name. The addition of the descriptive component “demo” does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s trademarks, and the first element required by the Policy is fulfilled.
The Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel notes that the Respondent is not a licensee or authorized reseller, service provider or distributor, and is not making legitimate noncommercial use or fair use of the disputed domain name. The Panel therefore considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy apply (see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements of the second element under the Policy.
Given the strong reputation and the fame of the Complainant’s trademark, the registration of the disputed domain name, which incorporates such trademark in its entirety, is clearly intended to mislead and attract consumers to the disputed domain name. Even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned, and owns trademarks in IBM and uses them extensively throughout the world. Moreover, the addition of the term “demo” in the disputed domain name reinforces this finding, as it is intended to mislead Internet users and induces them to believe that the website linked to the disputed domain name provides demonstrations of the Complainant’s products or services. In the Panel’s view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.
As to use of the disputed domain name in bad faith, the website linked to the disputed domain name is linked to an active redirection page, which redirects Internet users to a website requesting users to download software which is presumed to be malware or a computer virus. In this regard, the WIPO Overview 3.0, paragraph 3.4 states: “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution.” Moreover, the Respondent chose not to respond to the Complainant’s cease-and-desist letter of February 19, 2019 and its follow-up letter of March 4, 2019. In the Panel’s view, this reinforces the finding of bad faith on the part of the Respondent.
Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third requirement under 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 <demoibm.com> be transferred to the Complainant.
Deanna Wong Wai Man
Date: May 28, 2019
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