International Business Machines Corporation v. Whois Privacy Protection Service by onamae.com
Claim Number: FA1412001595788
Complainant: International Business Machines Corporation of Armonk, New York, United States of America.
Complainant Representative:
Respondent: Whois Privacy Protection Service by onamae.com of Shibuya-ku, International, JP.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: Uniregistry, Corp.
Registrars: GMO Internet, Inc. d/b/a Onamae.com
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Prathiba M. Singh, as Examiner.
Complainant submitted: December 17, 2014
Commencement: December 18, 2014
Default Date: January 5, 2015
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The Complainant submits that it owns several US federal trademark registrations for the mark IBM including, among others, Registration No. 1205090 in International Classes 1, 7, 9, 16, 37 and 41; Registration No. 1243930 in International Class 42; Registration Nos. 1694814 and 1696454 in International Class 36; and Registration No. 4161289 in International Classes 6, 8, 9, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 28, 30, 35 and 41. The Complainant submits that these registrations are conclusive proof of the validity of the IBM mark and of the Complainant’s rights in the mark.
The Complainant submits that the Respondent has no legitimate right in the disputed domain name. That there is no evidence that IBM is the name of the Respondent’s corporate entity, nor is there any evidence of fair use. The Complainant alleges that there is no evidence that the Respondent is using or plans to use the mark IBM for a bona fide offering for the goods and services. The Complainant submits that the disputed domain name is parked and for sale and that the mark IBM is being used by the Respondents solely to generate traffic to their website.
The Complainant alleges that the domain name <ibm.sexy> is being used by the Respondent in bad faith. The Complainant submits that the Respondent registered the domain name on October 10, 2014 despite receiving a notification from the Trademark Clearinghouse that the Respondent’s domain name matched a trademark already registered. The Complainant further submits that two cease and desist notices have been sent to the Respondent to which no response has been received.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires the Complainant to establish a prima facie case, proven by clear and convincing evidence in each of the following three elements, in order to obtain an order for suspension of the domain name.
“1.2.6.1. that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and this is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
a. Use can be shown by demonstrating the evidence of use – which can be a declaration and one specimen of current use in commerce
- Was submitted to, and validated by, the Trademark Clearinghouse.
b. Proof of use may also be submitted directly with the URS complaint
And
1.2.6.2 that the Registrant has no legitimate right or interest to the domain name; and
1.2.6.3 that the domain was registered and is being used in bad faith.”
The three elements are addressed by the Panel below:
1. Identical or Confusingly Similar:
The Complainant has established that it owns several US federal trademark registrations in various International Classes for the mark IBM including those as follows: -
|
S.No |
Registration No. |
Date of Filing |
Date of Registration |
|
1. |
1205090 |
April 30, 1980 |
August 17, 1982 |
|
2. |
1243930 |
May 10, 1982 |
June 28, 1983 |
|
3. |
1694814 |
August 31, 1990 |
June 16, 1992 |
|
4. |
1696454 |
August 30, 1990 |
June 23, 1992 |
|
5. |
4181289 |
December 21, 2010 |
July 31, 2012 |
The Complainant has therefore established that the mark ‘IBM’ registered by the Complainant is distinctive of its business. The mark ‘IBM’ is is derived from and originated as an acronym of the Registrant’s name i.e., International Business Machines Corporation. Thus the ‘IBM’ mark is a coined mark and the Complainant is entitled to the highest degree of protection. Apart from the same, IBM is a globally well known mark owing to extensive international use of the same.
The Respondent has registered the domain name in dispute <ibm.sexy> thus wholly incorporating the trademark “IBM” of the Complainant, which is found to sufficiently establish identity/confusing similarity. The Panelist finds that the extension “.sexy” does not sufficiently distinguish the disputed domain name from the Complainant’s registered trademark. In fact the registering of the domain name with the `.sexy’ extension adds to confusion and in fact dilutes the brand equity of IBM. The Complainant asserts, and the Panelist agrees, that the domain name <ibm.sexy> is identity and confusingly similar to the trademark IBM.
2. No Rights or Legitimate Interests:
The Respondent has registered the disputed domain name on October 10, 2014. The Complainant has several federal trademark registrations for the mark ‘IBM’. Some of the Complainant’s earliest registrations are since 1980. Thus, the Complainant has been using the trademark ‘IBM’ for a long time.
There is no evidence that would indicate that the Respondent has any rights or interests in the mark ‘IBM’. The Respondent is not commonly known by the disputed domain name and is not making legitimate non-commercial or fair use of the disputed domain name.
As the Respondent has not filed a Response, the Respondent has not proved its rights or legitimate interests in the trademark. The Complainant has prima facie proved that the Respondent has no right or legitimate interest in the domain name.
3. Domain is Registered and Used in Bad Faith:
The Respondent registered the domain name <ibm.sexy> on October 10, 2014. URS 1.2.6.3 elaborates on the circumstances that entail bad faith registration and use, which is reproduced below:
“1.2.6.3. ….
a. 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 documented out-of-pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder 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
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s website or location or of a product or service on that website or location.”
The Complainant has to prove that the Registrant has registered and used the domain name in bad faith. It has already been established that the trademark “IBM” is distinctive of the Complainant. It is further seen that the Respondent is not making use of the disputed domain name with bonafide offerings of goods or services in any commerce. The Respondent is not making any legitimate non-commercial use or fair use of this domain name. The domain name of the Respondent is parked and appears to be for sale. It is asserted by the Complainant and the Panelist agrees that the Respondent is using the ‘IBM’ mark to generate traffic to its website.
The Complainant’s Attorney on Record received a notification from the Trademark Clearinghouse regarding the activation of the disputed domain name ‘ibm.sexy’. It is established that despite receiving a notification from the Trademark Clearinghouse and two cease and desist letters from the Complainant the Respondent has parked a website reproducing the Complainant’s trademark ‘IBM’ in entirety. Thus, the Respondent’s registration and use of the impugned domain name by the Respondent is in bad faith.
As the Respondent has defaulted, and proof of service is evident, the Examiner has based the above findings on prima facie evidence and conclusions as provided by the Complainant.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<IBM.SEXY>
Prathiba M. Singh, Examiner
Dated: January 08, 2015
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