Complainant is International Business Machines Corporation, United States of America (“United States”), represented internally.
Respondent is Peter Malandrinos, United States.
The disputed domain names <ibmservers.info>, <ibmservers.net>, <ibmservers.org> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2020. On October 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names, which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to Complainant on October 21, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 21, 2020.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on October 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 13, 2020.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on November 20, 2020. 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.
Complainant states that, since the 1880s, it “is and has been a leading innovator in the design and manufacture of a wide array of products that record, process, communicate, store and retrieve information, including computers and computer hardware, software and accessories”; that in 2019 it “was ranked the 13th most valuable global brand by BrandZ, the 12th best global brand by Interbrand, the 38th largest company on the Fortune U.S. 500 list, and the 114th largest company on the Fortune Global 500 list”; that it “officially became International Business Machines on February 14, 1924… [and] has been offering products under the trademark ‘IBM’ ever since”; and that it “spends over $1 billion dollars marketing its goods and services globally, using the IBM trademark, and has undertaken extensive efforts to protect its name and enforce the IBM trademark.”
Complainant states, and provides evidence to support, that it “owns and has owned trademark registrations for IBM in 170 countries all around the world for several decades, and for broad range of goods and services, including, although not limited to, information technology related goods and services,” including U.S. Reg. No. 640,606 for use in connection with magnetic recording tape (registered January 29, 1957), among many others. These trademark registrations are referred to herein as the “IBM Trademark.”
The Disputed Domain Names were created on August 3, 2020, and are being used in connection with parked pages that contain links with such labels as “Server Colocation,” Data Center,” and “Network Storage.”
Complainant sent emails to Respondent about the Disputed Domain Names on August 24, 2020, but Complainant states that it never received a response.
Complainant contends, in relevant part, as follows:
- Each of the Disputed Domain Names is confusingly similar to the IBM Trademark because “[t]he only difference is the addition of the word ‘servers’… [which is a] minor variation [that] does not obviate the confusing similarity between the disputed domain name[s] and the IBM trademark.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, “Respondent has not been licensed, contracted or otherwise permitted by the Complainant in any way to use the ‘IBM’ trademark or to apply for any domain name incorporating the IBM trademark, nor has the Complainant acquiesced in any way to such use or application of the IBM trademark by the Respondent”; “there is no evidence that ‘IBMSERVERS’ is the name of Respondent’s corporate entity, nor is there any evidence of fair use”; and “there is no evidence that the Respondent is using or plans to use the IBM trademark or the domain name incorporating the IBM trademark for a bona fide offering of goods or services.”
- The Disputed Domain Names were registered and are being used in bad faith because, inter alia, “Respondent was well aware of Complainant’s trademark at the time Respondent registered the Disputed Domain Names… [because] Complainant’s trademarks are well-known around the world”; “Respondent did not reply to any of Complainant’s correspondence”; and “Respondent has been intentionally attempting to create a likelihood of confusion by pointing the Disputed Domain Names to a pay-per-click parking page with advertisement links containing references to the IBM trademark, as well as products and services in connection with which the IBM trademark has been, or is being, used.”
Respondent did not reply to Complainant’s contentions.
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a).
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the IBM Trademark.
As to whether the Disputed Domain Names are identical or confusingly similar to the IBM Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Names only (i.e., “ibmservers”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
Each of the Disputed Domain Names contains the IBM Trademark in its entirety. As set forth in section 1.7 of WIPO Overview 3.0, “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”. Further, section 1.8 of WIPO Overview 3.0 states: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” Therefore, inclusion of the word “servers” in each of the Disputed Domain Names does not impact the Panel’s findings under this element.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, “Respondent has not been licensed, contracted or otherwise permitted by the Complainant in any way to use the ‘IBM’ trademark or to apply for any domain name incorporating the IBM trademark, nor has the Complainant acquiesced in any way to such use or application of the IBM trademark by the Respondent”; “there is no evidence that ‘IBMSERVERS’ is the name of Respondent’s corporate entity, nor is there any evidence of fair use”; and “there is no evidence that the Respondent is using or plans to use the IBM trademark or the domain name incorporating the IBM trademark for a bona fide offering of goods or services.”
WIPO Overview 3.0, section 2.1, states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Numerous UDRP panels have found the registration and use of a domain name that is confusingly similar to a complainant’s trademark to constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy where, as here, the domain name is associated with a monetized parking page that contains links for goods or services competing with Complainant. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005‑0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc., WIPO Case No. D2006‑0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753.
Further, Respondent’s failure to respond to Complainant’s email is additional evidence of bad faith. Encyclopedia Britannica v. Zucarini, WIPO Case No. D2000-0330; and RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001‑1242.
Accordingly, the Panel finds that Complainant has proven the third element 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 Names, <ibmservers.info>, <ibmservers.net>, and <ibmservers.org> be transferred to Complainant.
Douglas M. Isenberg
Date: December 2, 2020
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