WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines Corporation v. Egyptian Cultural Center
Case No. D2020-3291
1. The Parties
The Complainant is International Business Machines Corporation, United States of America (the ”United States”), represented internally.
The Respondent is Egyptian Cultural Center, Egypt.
2. The Domain Name and Registrar
The disputed domain names <ibmss.education> and <ibmss.net> are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2020. On December 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 4, 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 the Complainant on December 7, 2020 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 December 7, 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 the Respondent of the Complaint, and the proceedings commenced on December 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2020. On January 26, 2021, the Respondent sent an email communication to the Center.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on January 13, 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 American company International Business Machines (IBM) Corporation. The Complainant has been operating for over a century and, while originally a product based company, it shifted progressively to a service based company. The Complainant is active in particular in AI, block chain, cybersecurity, cloud, systems, and other IT services. These services are offered under the main brand IBM, which enjoys a very high degree of recognition worldwide. In 2020, this brand was ranked the 14th most valuable global brand by BrandZ, and the 14th best global brand by Interbrand. The Complainant spends over a billion dollar annually to promote its services, and invests significant amounts in protecting and enforcing its rights over IBM. Proof of that are the numerous UDRP cases brought by the Complainant.
For the purpose of the Complaint, the Complainant relies on, among other, the following trademark registrations:
- United States trademark registration No. 4,181,289 IBM (fig.) registered on July 31, 2012;
- United States trademark registration No. 3,002,164 IBM (fig.) registered on September 27, 2005;
- United States trademark registration No. 1,696,454 IBM (fig.) registered on June 23, 1992;
- United States trademark registration No. 1,694,814 IBM (word) registered on June 16, 1992;
- United States trademark registration No. 1,243,930 IBM (word) registered in June 28, 1983;
The disputed domain names were registered by the Respondent on October 23, 2020, through a privacy shield service. In the course of this proceeding, the identity of the Respondent was disclosed by the Registrar.
The Complainant contacted twice in writing the Registrar, on October 26 and November 10, 2020 in order to request the voluntary transfer of the disputed domain names. No response was received.
No information is available regarding the Respondent and its activities. The disputed domain names are active: they display on the upper left side the disputed domain names, on the upper right part the trademark of the Registrar, and in their center a table with a number of pay-per-click (“PPC”) links. Some of these links are entitled “manage customer software”, “CMMS asset management software”, “laptop”, “custom laptop”.
5. Parties’ Contentions
A. Complainant
The Complainant develops a full set of arguments supported by numerous case law and references to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). These arguments can be summarized as follows:
It claims, first, that the disputed domain names <ibmss.education> and <ibmss.net> are identical or confusingly similar to the Complainant’s trademarks IBM. It indicates that the trademarks IBM are reproduced identically and that the only difference lies in the addition of the letters “ss”. According to the Complainant, this simple variation does not obviate the confusing similarity between the disputed domain names and the trademarks IBM. It also adds that the addition of generic or descriptive words does not render the disputed domain names less identical or confusingly similar.
Second, the Complainant claims that the Respondent has no right or legitimate interests in the disputed domain names. It was not licensed or authorized in any way to use the trademark IBM. Besides, there is no evidence of a fair use of the disputed domain names. The Complainant indicates that, on the contrary, the disputed domain names are used by the Respondent for illegitimate commercial gains, through the PPC links.
Third, on the registration and use in bad faith, the Complainant indicates that the Respondent knew, or should have known, the world-famous trademarks IBM when choosing its disputed domain names. It then failed to respond to the cease and desist emails sent by the Complainant. On the use, the Complainant claims that the Respondent is benefiting from the attractiveness of the disputed domain names to make commercial profit through PPC advertisement: “Respondent’s misuse of the Disputed Domain Names containing the IBM trademark is clear evidence of bad faith because generating more traffic will result in more money for Respondent.”
B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, on January 26, 2021, the Respondent sent the following: “I have these two domains and I received a complain about them what can I do in this matter. Can I remove them?”.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(i) the disputed domain names are identical or confusingly similar to a trade mark 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 names; and
(iii) the disputed domain names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain names are confusingly similar to a trademark or a service mark in which it has rights.
It is generally accepted that the test of confusing similarity is reasonably straightforward and functions primarily as a standing requirement. As indicated in WIPO Overview 3.0, section 1.7, “While each case is judged on its own merits, 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.”
This test is satisfied here, as the disputed domain names <ibmss.education> and <ibmss.net> do reproduce, identically and in first position – plus the letters “ss”, the famous trademark IBM of the Complainant. The trademark IBM is clearly perceptible.
Therefore, the Panel finds that the disputed domain name are confusingly similar to Complainant’s trademark and that the first element of the Policy is satisfied.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain names. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Complainant has sufficiently argued that the Respondent is not commonly known by the disputed domain names, and has not been authorized by the Complainant to register and use the disputed domain names.
Besides, the Complainant has also outlined that the use of the disputed domain names to host PPC links does not amount to fair use, insofar it relies on the attractiveness of the trademark IBM. In this respect, the WIPO Overview 3.0, section 2.9 indicates that “the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.”
Accordingly and absent credible allegations of the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In order to prevail under the third element of paragraph 4(a) of the Policy, the Complainant must demonstrate that the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances, which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’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 respondent’s] website or location or of a product or service on [the respondent’s] website or location.
In this case the Complainant did not provide an explanation or a hypothesis as to why the Respondent chose to associate the elements IBM and “ss” in the disputed domain names. Therefore, it is not clear to this Panel whether the element “ss” is indeed “generic” or “descriptive”, as indicated in the Complaint. Whether “ss” is purely fanciful, or stands for “software support”, “software solutions”, or has any other meaning is therefore undetermined.
Notwithstanding this, the Panel notes that the trademark IBM is clearly perceptible in the disputed domain names. And indeed, as indicated in the Complaint, the Respondent could not ignore the existence of this trademark, which is among the most reputed and most valuable worldwide. When construing its disputed domain names, the Respondent did reproduce purposely the trademark IBM and the addition of the end letters “ss” does not prevent the finding of bad faith registrations.
The disputed domain names are also used in bad faith, as the reproduction of the trademark IBM is likely to generate more traffic, and thereafter more incomes trough the PPC scheme. It was noted in the description of facts that a number of links concern present (software) or past (laptop) activities of the Complainant.
The above is true even if these links are generated automatically. In this respect, section 3.5 of the WIPO Overview 3.0 mentions in particular that “Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith”.
Accordingly, the Panel finds that the third criteria element set out in paragraph 4(a) of the Policy is also satisfied.
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 names <ibmss.education> and <ibmss.net> be transferred to the Complainant.
Benjamin Fontaine
Sole Panelist
Date: January 27, 2021
