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Famous trademarks and #UDRP: IBM.nu lived for 4 months

World famous marks, such as IBM, are untouchable when trademark violations occur.

The registrant of IBM.nu managed to have his domain exist for less than 4 months, before the International Business Machines Corporation filed a UDRP at the WIPO.

The domain was listed for sale on Afternic with a “make offer” lander.

Can you guess the end result? 😀

International Business Machines Corporation v. Petar Ivanov [BG]8011123228
Case No. DNU2020-0003

1. The Parties

The Complainant is International Business Machines Corporation, United States of America (“United States”), represented internally.

The Respondent is Petar Ivanov [BG]8011123228, Bulgaria.

2. The Domain Name and Registrar

The disputed domain name <ibm.nu> is registered with Name SRS AB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2020. On June 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 2020, 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 July 3, 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 amended Complaint on July 3, 2020.

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 July 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2020.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on July 29, 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.

4. Factual Background

The Complainant is a multinational company based in the United States, incorporated in 1911 and doing business under its current name since 1924, which operates globally in the technology sector under the trademark IBM. Over more than 100 years, the Complainant has been manufacturing products in various areas of technology, from office and research equipment (such as punch machines, calculating machines, clocks scales and typewriters) to computers and computers related goods and services, which are commercialized worldwide under the trademark IBM. Previous UDRP panels’ decisions have acknowledged IBM as a well-known globally recognized trademark (among others, see International Business Machines Corporation v. Sadaqat Khan, WIPO Case No. D2018-2476; Physik Instrumente GmbH. & Co. v. Stefan Kerner and Jeremy Kerner and Magic Moments Design Limited, WIPO Case No. D2000-1001; and International Business Machines Corporation v. Luna Morgan, Machotech/Luna Morgan, Paramed Healthcare/Elie Dadoud, WIPO Case No. D2020-0598).

The Complainant holds numerous IBM trademark registrations around the world, including the following registered by the United States Patent and Trademark Office: United States Trademark No. 1,694,814 IBM, word, registered on June 16, 1992, in class 36; United States Trademark No. 1,243,930 IBM, word, registered on June 28, 1983, in class 42; United States Trademark No. 1,058,803 IBM, word, registered on February 15, 1977, in classes 1, 9, 16, 37, 41 and 42; and United States Trademark No. 640,606 IBM, word, registered on January 29, 1957, in class 9.

The Complainant operates its official website under the domain name <ibm.com> (registered on March 19, 1986).

The disputed domain name was registered on April 12, 2020 and it is linked to a parking page displaying pay-per-click (“PPC”) links related to the technology sector (including sections related to “cloud servers”, “computers”, “laptops”, “administration software”, etc.). This parking page offers, at its top, a link to a contact form for anyone interested in acquiring the disputed domain name. It further includes, in its footer, a privacy policy note, which refers to two companies located in Germany as providers of the technical infrastructure for monetization and data protection services, indicating that these companies are not responsible for the advertisements included in the website.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

As a result of the high quality products and services provided for over 100 years, as well as substantial resources devoted to advanced research and global marketing, the IBM trademark is a world-famous trademark, being ranked in 2019 among the most valuable brands by BrandZ, Interbrand, and Fortune. The Complainant devotes over USD 1 billion annually in marketing for its goods and services globally, and over USD 5 billion to advance research. Previous UDRP panels’ decisions have acknowledged IBM as a well-known trademark.

After disregarding the country code Top-Level Domain (“ccTLD”) “.nu”, the disputed domain name is identical to the IBM trademark. The Respondent has no permission to use this mark and otherwise has no rights or legitimate interests in the disputed domain name, not existing any evidence that “IBM” is the name of the Respondent’s corporate entity. The Respondent has been using the disputed domain name linked to a PPC website, generating illegitimate revenue through confusion or affiliation to the Complainant and its well-known trademark.

The Respondent has registered and used a well-known mark in bad faith to attract Internet users to his website for commercial gain from PPC advertising revenues, creating a likelihood of confusion as to the source, sponsorship, endorsement or relationship between the Respondent and the Complainant or its IBM mark. Furthermore, the Complainant sent a cease and desist letter through the Registrar to the Respondent, and someone on behalf of the Respondent offered the transfer of the disputed domain name for EUR 750, the Complainant replied with a counteroffer covering only the registration costs (estimated in USD 150), but the Respondent rejected the offer.

The Complainant has cited previous decisions under the Policy that it considers supportive of its position and requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy, being the ccTLD “.nu” is subject to the UDRP. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.

A. Identical or Confusingly Similar

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 identical or confusingly similar to that mark for purposes of the Policy. Further, the applicable generic Top-Level Domain (“gTLD”) or ccTLD in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See sections 1.7 and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant has shown consistent trademark rights in the IBM mark. The incorporation in its entirety of the IBM mark in the disputed domain name <ibm.nu> is apparent, and the ccTLD “.nu” is a standard technical registration requirement. Accordingly, the first element confusing similarity test is satisfied for the purposes of the Policy. The Panel finds that the disputed domain name is identical to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) is met.

B. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the Respondent to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests.

The Complainant’s assertions and evidence effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name to rebut the Complainant’s prima facie case (providing, without limitation, any of the circumstances of paragraph 4(c) of the Policy). However, the Respondent has not replied to the Complainant’s contentions, not providing any explanation or evidence of rights or legitimate interests in the disputed domain name.

The Panel has corroborated that the disputed domain name is linked to a parking page displaying PPC links, many of which relate to the Complainant’s business sector, and, therefore, compete with or capitalize on the reputation of the Complainant’s trademark, which cannot be considered a bona fide use in connection to a legitimate noncommercial or fair use or a bona fide offering of goods or services. See section 2.9, WIPO Overview 3.0.

Furthermore, a core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates IBM trademark in its entirety without any alteration or addition, being identical to the Complainant’s company name acronym and its reputed trademark. Therefore, the Panel considers that there is a high risk of implied affiliation.

It is further remarkable the Respondent’s reaction to the cease and desist letter offering the transfer of the disputed domain name, and his absence of Response to the Complaint, not providing any explanation connected to any circumstances that may be considered as a fair use or legitimate interests in the disputed domain name.

All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all these cumulative facts and circumstances point to consider that the Respondent lacks any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy under paragraph 4(a)(ii) has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.

The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.

The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name: (i) the disputed domain name incorporates the IBM trademark in its entirety without any alteration or addition; (ii) the IBM trademark is well-known globally and the Complainant operates internationally, including Bulgaria (where the Respondent is located according to the WhoIs record of the disputed domain name); (iii) the disputed domain name has been used linked to a parking page displaying PPC links mostly related to the technology sector, competing with or capitalizing on the reputation of the Complainant’s trademark; (iv) the reaction to the cease and desist letter was to offer the transfer of the disputed domain name for EUR 750 (alleged as the amount of the registration costs); and (iv) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint.

Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered targeting the IBM mark with the intention of obtaining a free ride on the established reputation of the Complainant, intentionally seeking to mislead and to attract Internet users, for commercial gain, to the parking page displaying PPC links linked to the disputed domain name, which constitutes bad faith.

Accordingly, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, and the Complainant has met its burden of establishing the third element of the Policy.

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 name <ibm.nu> be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: August 3, 2020


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