The Complainant is International Business Machines Corporation, United States of America (“United States”), represented internally.
The Respondent is Jian Wang, Wang Jian, China.
The disputed domain name <sz-ibm.com> is registered with enom646, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2021. On January 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 February 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2021.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on March 11, 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.
The Complainant, International Business Machines, was incorporated in 1911 as an amalgamation of three companies and became International Business Machines in 1924. It has been marketing products under the mark IBM ever since. Originally the products included office and research equipment such as punch machines, calculating machines, clocks and scales. It introduced its first vacuum tube computer under the name IBM 710 in 1952. Since then it has continuously used the mark IBM in association with computers and computer hardware, software and accessories.
The Complainant devotes substantial resources towards maintaining and building its product base. It spends over USD5 billion each year on advanced research in addition to its product development. A copy of its annual reports for 2019 and 2019 are exhibited as Annexes 8.1 and 8.2, to the Complaint, respectively.
The Complainant spends over USD 1 billion annually marketing its goods and services globally under the IBM mark. It has undertaken extensive efforts to protect the name and mark IBM. It exerts careful control over use of the mark and imposes strict quality control measures over goods and services offered in connection with the mark. It diligently pursues infringers of the mark.
The Complainant owns registrations for the mark IBM in 131 countries throughout the world for a broad range of goods and services including information technology. Specifically it relies upon the following United States trade mark registrations for the mark IBM;
No.4181289 in classes 9,16,18,20,21,22,24,25,28,35 and 41, registered on July 31, 2012.
No.3,002,164 in class 9, registered on September 27, 2005.
No.1,696,454 in class 36, registered on June 23, 1992.
No.1,694,814 in class 36, registered on June 16, 1992.
No. 1,243,930 in class 42, registered on June 28, 1983.
No.1,205,090 in classes 1,7,9,16,37 and 41, registered on August 17, 1982.
No. 1,058,803 in classes 1,9,16,37,41 and 42, registered on February 15, 1977.
No. 640,606 in class 9, registered on June 29, 1957.
It also owns the following Chinese registrations for the mark IBM;
Nos.1,914,464 in class 9, 221,321 in class 9, 221,319 in class 16, 5,744,856 in class 16, 770,063 in class 35, 770,326 in class 37, 1,412,819 in class 38, 770,699 in class 41, and 771,396 in class 42.
Copies of certificates of registration for the above marks are exhibited at Annex 4 to the Complaint. All the registrations pre-date the date of registration of the disputed domain name on November 5, 2020. The disputed domain name resolved at one point in time to a site displaying pornographic content.
The mark IBM was valued by BrandZ as worth over USD 83 billion in 2020 according to a chart exhibited as Annex 6 to the Complaint. In 2020 it was ranked by BrandZ as the 14th most valuable global brand and by Interbrand as the 14th best global brand. The Complainant is the 38th largest company on the Fortune US 500 list and 118th largest company on the Fortune Global 500 list.
The Complainant draws attention to the finding by the Panel in an earlier decision; International BusinessMachines Corporation v. Sadaqat Khan, WIPO Case No. D2018-2476 that the mark IBM; “has a strong reputationand is widely known throughout the world”.
In the absence of a Response the Panel finds the above evidence adduced by the Complainant to be true.
The Complainant submits;
i. it owns registered rights in the mark IBM which is a well-known mark. The disputed domain name is confusingly similar to the mark IBM;
ii. On the evidence the Respondent has no rights or legitimate interests in respect of the disputed domain name;
iii. The disputed domain name was registered and is being used by the Respondent in bad faith.
The Respondent did not reply to the Complainant’s contentions.
However on March 12, 2021 an email was sent to the Center from the Respondent stating; “I will not English domain name has stopped parsing, the website has alreadyclosed, I hope your company forgive me”.
Based upon the evidence of the Complainant’s trade mark registrations in the United States and China set out in section 4 above the Panel is satisfied that the Complainant is the owner of registered rights in the mark IBM.
The disputed domain name consists of the letters “sz” followed by a dash “-” and the letters “ibm” with the generic suffix or gTLD, “.com”.
The letters “ibm” are identical to the mark IBM. The difference between the mark IBM and the disputed domain name is the existence of the letters “sz”. The Complainant suggests that this could stand for the country Eswatini/Swaziland. Whether or not that is accurate the inclusion of “sz”, in the Panel’s view and as submitted by the Complainant, does not obviate the confusing similarity between the mark IBM and the disputed domain name. It is well-established that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less identical or confusingly similar to the mark.
The Panel finds that the disputed domain name <sz-ibm.com> is confusingly similar to the Complainant’s registered mark IBM, pursuant to paragraph 4(a)(i) of the Policy.
The Complainant points out that the Respondent has not been licensed, contracted, or otherwise permitted by the Complainant in any way to use the mark IBM, or to apply for any domain name incorporating the mark, nor has the Complainant acquiesced in any way to such use or application of the mark.
To the contrary, on the Complainant’s evidence, the Respondent has been actively using the IBM mark as part of the disputed domain name for “illegitimate commercial gains”. Specifically it submits that the Respondent has been intentionally attempting to create a likelihood of confusion by using the disputed domain name to increase Internet user traffic for its pornographic websites and applications to download.
The evidence is set out in Annex 10 to the Complaint which is a screenshot of the website in English taken on January 7, 2021. It is headed “Happy Forest Adult APP Application Download Center” with revealing images of two young women. It presents visitors with numerous links to other pornographic websites and applications for download, including but not limited to “Lutu video” and “91 Secret”.
Annex 11 is a copy of a screenshot of the same website in Chinese taken on January 7, 2021.
The Complainant submits that the evidence of the screenshots shows that a consumer is likely to access the websites on the basis that it erroneously believes that the Complainant, contrary to the fact, is somehow affiliated with the Respondent or endorses its commercial activities, while in fact no relationship exists.
Having considered the evidence contained in Annexes 10 and 11 and in the absence of a Response the Panel finds that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services and that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name.
Accordingly, the Respondent has no rights or legitimate interests in respect of the disputed domain name within paragraph 4(a)(ii) of the Policy.
The Complainant submits that the Respondent was well aware of the Complainant’s mark IBM at the time it registered the disputed domain name. It relies upon the fact that the mark IBM is a “well-known” mark throughout the world. This is supported by the extensive range of registered marks IBM, including in China, as shown in Annex 4 and also by the evidence of the scale of the Complainant’s operations under the mark IBM and its reputation referred to in Section 4 above.
The Complainant relies upon the evidence, set out in Annex 9 to the Complaint, of a cease and desist letter emailed to the Respondent at its WhoIs recorded address on December 7, 2020 and a follow up letter sent on December 24, 2020. The Respondent failed to respond to either letter. It is well-established that a Panel is entitled to rely upon such failure to reply as evidence of bad faith, see for example; Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330.
The subsequent email of March 12, 2021 received by the Center points out that the Respondent’s website has already closed and hopes that the Complainant will forgive him. In the Panel’s view this is evidence of recognition by the Respondent that he acted in bad faith but hopes that he will be forgiven.
The evidence contained in Annexes 10 and 11 of the use of the website, accessed by the disputed domain name, to attract visitors for pornographic purposes, is evidence that the Respondent has been actively using the disputed domain name for illegitimate commercial gains. Specifically the disputed domain name contains numerous links to other websites and applications that host pornographic material.
The Complainant submits that the Respondent’s use of the disputed domain name to offer pornographic content constitutes “pornosquatting”. This was described in Prada SA v. Roberto Baggio,WIPO Case No. D2009-1187 as a practice where “confusion with a well-known trademark is used to divert customers to a pornographic website for commercial purposes”. The Panel finds that this is the position here.
Moreover, it has been established in numerous decisions that pornographic content on a respondent’s website is in itself sufficient to support a finding of bad faith. See, for example, Vivendi v. Giuseva Swetland,WIPO Case No. D2018-2631.
In summary the Complainant submits that the Respondent’s undoubted familiarity with a world-famous mark, IBM, at the time of registration of the disputed domain name, the confusing similarity between the disputed domain name and the mark, the pornographic nature of the website, the website’s extensive use of click-through features to direct users to other pornography websites and applications for download and the overall “tarnishing” capacity of the website are in combination conclusive proof that the disputed domain name was registered and has been used in bad faith. In the absence of a Response and having considered the evidence adduced by the Complainant the Panel accepts this submission.
It therefore finds that the disputed domain name was registered and is being used in bad faith within 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 <sz-ibm.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: March 25, 2021
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