IBM was twice late in the domain game!

The domain name IBM.com was registered on March 19, 1986, more than a year after Symbolics.com made internet history by being the first .com domain ever registered.

IBM was already a giant and yet some small company creating Lisp machines beat them to the domain game. In fact, the domain IBM.com was only the 11th .com ever registered!

How is this possible?

Very simply, the use of domains was not necessary to conduct business and even email was in its infancy. In August 1982, Zaw-Sing Su and Jon Postel authored “The Domain Naming Convention for Internet User Applications.”

In November 1983, Paul Mockapetris authored “Domain Names—Concepts and Facilities” (RFC 882) and “Domain Names—Implementation and Specification” (RFC 883), which specified a set of protocols, called the Domain Name System, that implemented the hierarchical name space proposed by Su and Postel.

DNS was meant to be implemented in 1984 but did not until 1987. Domains registered prior to that had zero practical use and were secured for future use as part of a company’s name or brand.

With all that in mind, it’s shocking that IBM almost fell prey to a reverse domain name hijacking attempt recently, for the domains Resource.com (reg: 1995) and ResourceInteractive.com (reg: 2003.)

Despite a lack of response from IBM, a vigilant Forum panelist denied the domains’ transfer away from IBM on the following basis:

“Complainant has failed to demonstrate the existence of any of these circumstances, or any other evidence that would support a finding of bad faith registration and use of the Disputed Domain Names. Notably, Respondent’s acquisition of the Disputed Domain Names predates Complainant’s existence. This good faith acquisition is acknowledged by Complainant itself. […] Despite bearing the burden of proof, Complainant has failed to present any substantive evidence to establish standing in this proceeding or to demonstrate that Respondent acted with bad-faith intent to target Complainant or disrupt its business. The Complaint was filed without a plausible legal basis.”

Final decision: Despite being—once again—late to the domain game, IBM gets to keep the domains and the Complainant was found guilty of engaging in Reverse Domain Name Hijacking.

 

Resource Interactive v. IBM Corporation / International Business Machines Corporation

Claim Number: FA2501002137992

PARTIES

Complainant is Resource Interactive (“Complainant”), represented by Paul Proffitt, Ohio, USA. Respondent is IBM Corporation / International Business Machines Corporation (“Respondent”), represented by Cameron Meindl of IBM Corporation, New York, USA.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are resourceinteractive.com and resource.com, registered with CSC Corporate Domains, Inc.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

Ivett Paulovics as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 31, 2025; Forum received payment on January 31, 2025.

On February 4, 2025, CSC Corporate Domains, Inc. confirmed by e-mail to Forum that the resourceinteractive.com and resource.com domain names are registered with CSC Corporate Domains, Inc. and that Respondent is the current registrant of the names. CSC Corporate Domains, Inc. has verified that Respondent is bound by the CSC Corporate Domains, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On February 5, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@resourceinteractive.com and postmaster@resource.com. Also on February 5, 2025, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on February 27, 2025.

On February 27, 2025, pursuant to the Parties’ requests to have the dispute decided by a single-member Panel, Forum appointed Ivett Paulovics as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

Respondent requests the Panel to deny the remedies requested by the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant claims common law rights in the marks “Resource Interactive” and “Resource”, arguing that these have acquired secondary meaning through use.

Complainant asserts that the Disputed Domain Names resourceinteractive.com and resource.com are identical or confusingly similar to its trademarks.

Complainant contends that Respondent has no legitimate rights or interests in the Disputed Domain Names, arguing that any prior legitimate interest has lapsed.

Complainant alleges that the Disputed Domain Names has been registered and are being used in bad faith, claiming that the redirection of Disputed Domain Names to Respondent’s website disrupts its business and confuses consumers.

Complainant asserts that the fact that Respondent originally acquired the domains in good faith does not excuse their current bad faith use.

B. Respondent

Respondent argues that Complainant has not established rights in the marks “Resource Interactive” or “Resource”, as it has provided insufficient evidence of secondary meaning or distinctiveness.

Respondent asserts that it has legitimate rights and interests in the Disputed Domain Names because it acquired them in good faith long before Complainant was founded, and it operates a well-known global business and legitimately uses resourceinteractive.com for redirection to its website.

Respondent contends that the Disputed Domain Names were registered years before Complainant existed. It never targeted Complainant or sought to disrupt its business. Complainant’s allegations of bad faith are unfounded and unsupported by evidence.

Respondent argues that Complainant has failed to establish any of the three UDRP elements, and the Complaint should be dismissed.

FINDINGS

Complainant, incorporated on June 30, 2021, under the laws of the State of Ohio, USA, operates in business consulting, IT consulting and marketing services. Its primary website is associated with the domain name resourceinteractive.net, registered since June 5, 2021.

Respondent, established in 1911 and headquartered in Armonk, New York, USA, is a globally recognized multinational technology and consulting company, providing hardware, software, and IT services to businesses, governments, and organizations.

In 2016 Respondent acquired Resource/Ammirati, a US-based digital marketing and creative agency with over 300 employees, integrating it into IBM Interactive Experience (IBM iX), its digital agency and business design division.

Respondent also holds several registered trademarks incorporating the term “resource,” including:

· RESOURCE LINK (U.S. Reg. No. 2434398, Canadian Reg. No. TMA550290, EU Reg. No. 001371764, Swiss Reg. No. 493428, U.K. Reg. No. UK00901371764) – registered between 1999 and 2002 for goods and services in various classes.

· IBM APPLICATION RESOURCE MANAGEMENT (U.S. Reg. No. 7282378, International Reg. No. 1686995) – registered in 2024 and 2022, respectively, for goods and services in Classes 9 and 42, with international coverage.

· TURBONOMIC APPLICATION RESOURCE MANAGEMENT (U.S. Reg. No. 7282379, International Reg. No. 1687158) – registered in 2024 and 2022 for goods and services in Classes 9 and 42, with broad international protection.

The Disputed Domain Names were registered long before Complainant’s incorporation, with resource.com registered since 1995 and resourceinteractive.com since 2003.

Currently, resourceinteractive.com redirects to Respondent’s website, while resource.com remains inactive.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 10(d) of the Rules provides that the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The first UDRP element functions primarily as a standing requirement.

Paragraph 4(a)(i) of the Policy refers to “trademark or service mark”, encompassing both registered and unregistered (common law) marks.

Panels have consistently held that a complainant does not need a registered trademark to establish rights under Policy 4(a)(i), provided they can demonstrate common law rights. See Plain Green, LLC v. Andy Tang, FA 1722962 (Forum May 22, 2017) (“There is no requirement under the UDRP that a complainant must show registration of a trademark to demonstrate its rights therein. Rights may be shown by persuasive evidence of common law trademark rights in a mark.”). See also General Motors LLC v. Josh Oliver, FA 1976673 (Forum Jan. 12, 2022) (“If proven, common law rights are sufficient to establish rights for the purposes of Policy ¶ 4(a)(i).”).

To establish common law rights, a complainant must show that the mark has acquired strong secondary meaning-i.e., that it has become a distinctive identifier in consumers’ mind, associated specifically with the complainant’s goods and services. General Motors LLC v. Josh Oliver, FA 1976673 (Forum Jan. 12, 2022) (“Common law rights in a trademark can be established by evidence of secondary meaning, which is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor.”).

Since the UDRP process allows for only a single round of pleadings with no discovery phase, complainants must present relevant evidence of acquired distinctiveness or secondary meaning in the complaint. Conclusory statements about unregistered or common law rights are generally insufficient. Furthermore, when a claimed mark consists solely of descriptive terms lacking inherent distinctiveness, the burden on the complainant to establish acquired distinctiveness is even greater.

Complainant asserts common law trademark rights in the terms “Resource Interactive” and its variations, including “Resource”. It contends that these marks have been continuously used in connection with consulting and professional services since June 2021. The claimed services include, but are not limited to, business consulting, IT consulting, and marketing services.

However, Complainant has not submitted sufficient evidence demonstrating that such use has resulted in the marks “Resource Interactive” and “Resource”—which are inherently descriptive—acquiring distinctiveness or secondary meaning. No evidence has been provided to show that consumers widely recognize these marks as being associated primarily with Complainant.

The mere incorporation of the company and a printout of the homepage associated with resourceinteractive.net are insufficient to establish common law rights in the marks “Resource Interactive” and “Resource.”

Panel finds that Complainant has failed to establish to have rights in a mark under paragraph 4(a)(i) of the Policy.

Accordingly, the Panel finds that Complainant has failed to establish rights in a mark under paragraph 4(a)(i) of the Policy. As a result, there is no need to assess the identity or confusing similarity of the Disputed Domain Names.

Rights or Legitimate Interests

Given the above findings, it would not be necessary for the Panel to make a determination regarding the second UDRP element.

However, for the sake of completeness—and in light of the Panel’s finding of Reverse Domain Name Hijacking—the Panel notes that, under paragraph 4(a)(ii) of the Policy, Complainant bears the burden of proving that Respondent has no rights or legitimate interests in the Disputed Domain Names.

Pursuant to paragraph 4(c) of the Policy, the following non-exhaustive circumstances, if established based on the Panel’s evaluation of the evidence, may demonstrate Respondent’s rights or legitimate interests in the Disputed Domain Names:

i. Before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Names (or a name corresponding to them) in connection with a bona fide offering of goods or services;

ii. Respondent (whether an individual, business, or organization) being commonly known by the Disputed Domain Names, even without having acquired trademark or service mark rights; or

iii. Respondent making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s mark.

With respect to the second UDRP element, Complainant explicitly acknowledges in both its original Complaint and its Amended Complaint that Respondent acquired Resource/Ammirati in 2016, including the Disputed Domain Names as part of that acquisition. Nevertheless, Complainant contends that Respondent lacks rights or legitimate interests in the Disputed Domain Names because it abandoned the U.S. Trademark No. 3113434 (device mark for “Resource Interactive”) in 2017, along with any associated intellectual property rights. Additionally, Complainant argues that Respondent no longer uses the Disputed Domain Names in connection with the original business and that their continued use—specifically, redirection to a competing service—evidences bad faith and a lack of legitimate interest.

Complainant’s arguments are factually and legally flawed for several reasons.

First, Respondent’s acquisition of the Disputed Domain Names in 2016 was undoubtedly in good faith. At that time, Complainant did not even exist, and the Disputed Domain Names were legitimately associated with the acquired company and its business.

Second, trademark abandonment under national law does not automatically equate to a loss of rights or legitimate interests under the UDRP. A registrant may retain legitimate interests in a domain name even in the absence of an active trademark registration, particularly where the domain name was previously used in a lawful commercial manner or consists of descriptive terms.

Furthermore, since Respondent had prior rights to use the Disputed Domain Names in connection with its business, it remains entitled to continue doing so, even if that business has evolved.

Moreover, mere redirection of a domain name to a competing service does not automatically negate legitimate interest, unless such redirection is misleading or creates confusion that unfairly exploits Complainant’s mark—something Complainant has not demonstrated. There is no evidence that Respondent is using the Disputed Domain Names to impersonate Complainant, falsely associate with it, or unfairly exploit its goodwill (if any).

On the contrary, the domain name resourceinteractive.com redirects to Complainant’s website related to IBM iX and IBM Consulting services, into which the acquired company’s business was integrated. The domain name resource.com does not resolve to any active website. Passive holding of a domain name, in itself, does not constitute bad faith.

Additionally, Respondent has provided evidence that its social media accounts clearly disclose that Resource/Ammirati is an IBM company.

Accordingly, Respondent’s use and retention of the Disputed Domain Names is in good faith and fair.

For these reasons, the Panel finds that Complainant has failed to satisfy the second element of the UDRP, and Respondent has rights or legitimate interests in the Disputed Domain Names.

Registration and Use in Bad Faith

In light of the Panel’s findings regarding the first and second UDRP elements, it would not be necessary for the Panel to make a determination on the third element.

However, for the sake of completeness, the Panel notes that under Paragraph 4(a)(iii) of the Policy, the following non-exhaustive circumstances, if present, may serve as evidence of the registration and use of the Disputed Domain Names in bad faith:

i. Circumstances indicating that Respondent registered or acquired the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring them to Complainant (the trademark or service mark owner) or to a competitor, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Names;

ii. Respondent’s registration of the Disputed Domain Names to prevent Complainant from reflecting its mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct;

iii. Respondent’s registration of the Disputed Domain Names primarily to disrupt the business of a competitor; or

iv. Respondent’s use of the Disputed Domain Names to intentionally attract, for commercial gain, Internet users to its website or another online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, location, product, or service.

Complainant has failed to demonstrate the existence of any of these circumstances, or any other evidence that would support a finding of bad faith registration and use of the Disputed Domain Names.

Notably, Respondent’s acquisition of the Disputed Domain Names predates Complainant’s existence. This good faith acquisition is acknowledged by Complainant itself. However, Complainant argues that “[t]he fact that the domains were once legitimately held does not excuse their current bad faith use.” It further contends that Respondent’s abandonment of the related trademarks and its redirection of the Disputed Domain Names to a competing service demonstrate an intent to disrupt Complainant’s business and create consumer confusion.

These arguments are unsupported by the facts and contradict UDRP precedent.

First, the UDRP requires a complainant to establish both registration and use in bad faith. These are cumulative requirements—meaning that failure to prove either bad faith registration or bad faith use results in the complaint being denied.

Second, Complainant has not demonstrated that it has rights in a mark under Paragraph 4(a)(i) of the Policy. The limited evidence it has provided—namely, a website printout and a certificate of incorporation—is insufficient to establish that “Resource Interactive” or “Resource” have been used extensively or have acquired secondary meaning as distinctive identifiers associated exclusively with Complainant’s services.

Furthermore, there is no evidence that Respondent was ever aware of Complainant’s business or targeted it in any way. Given that Complainant was only established in 2021, it is inconceivable that Respondent could have intended to disrupt Complainant’s business or create confusion among consumers.

For these reasons, the Panel finds that the Disputed Domain Names were registered (acquired) and are being used in good faith by Respondent. Complainant has failed to establish the third UDRP element under Paragraph 4(a)(iii) of the Policy.

Reverse Domain Name Hijacking (“RDNH”)

The UDRP is designed to address clear cases of cybersquatting. Conversely, the UDRP Rules address abuses of the UDRP process, including Reverse Domain Name Hijacking (“RDNH”). RDNH is defined as the bad-faith use of the UDRP to attempt to deprive a legitimate domain name holder of its domain name.

Although Respondent has not explicitly requested a finding of RDNH, Paragraph 15(e) of the Rules grants the Panel the authority to make such a determination on its own initiative: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

In this case, the Panel finds that Complainant has engaged in RDNH and that the Complaint was brought in bad faith, constituting an abuse of the UDRP. Complainant clearly ought to have known that it could not succeed on any of the three required elements, including:

1. Complainant’s lack of common law trademark rights;

2. Complainant’s clear knowledge of Respondent’s rights or legitimate interests, given that the Disputed Domain Names were acquired in good faith prior to Complainant’s incorporation and continue to be used in good faith; and

3. Complainant’s clear knowledge of the absence of Respondent’s bad faith, as the Disputed Domain Names were acquired before Complainant’s asserted common law trademark rights and are being used legitimately.

Despite bearing the burden of proof, Complainant has failed to present any substantive evidence to establish standing in this proceeding or to demonstrate that Respondent acted with bad-faith intent to target Complainant or disrupt its business. The Complaint was filed without a plausible legal basis.

Complainant cannot justify its actions by claiming ignorance of the Policy or well-established UDRP case law. While parties are free to represent themselves in UDRP proceedings, they must also accept the consequences of failing to seek appropriate legal counsel. This is particularly relevant given that the Policy has been in place for 25 years and UDRP panel decisions are publicly available.

Finally, the Panel notes that Whois records indicate that Complainant’s own domain name is listed for sale, raising further questions about its motivations in bringing this Complaint.

In view of the above and in accordance with Paragraph 15(e) of the Rules, the Panel finds that Complainant has abused the UDRP process and has attempted to deprive Respondent of the Disputed Domain Names.

DECISION

Having NOT established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the resourceinteractive.com and resource.com domain names REMAIN WITH Respondent.

The Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Ivett Paulovics, Panelist

Dated: March 13, 2025

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