IBM Corporation v. WhoisGuard, Inc. et al.
Claim Number: FA1804001784388
Complainant: IBM Corporation of Armonk, New York, United States of America.
Respondent: WhoisGuard, Inc. of Panama, Panama.
REGISTRIES and REGISTRARS
Registries: Personals TLD Inc.
Registrars: NameCheap, Inc.
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.
Peter Müller, as Examiner.
Complainant submitted: April 30, 2018
Commencement: May 1, 2018
Default Date: May 16, 2018
Having reviewed the communications records, the Examiner finds that the 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").
The Complainant requests that the disputed domain name be suspended for the life of the registration.
Clear and convincing evidence.
No multiple Complainants or Respondents and no multiple disputed domain names require dismissal.
Findings of Fact:
Even though the Respondent has defaulted, URS Procedure 1.2.6. requires the Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1.] 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 that 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.
The Complainant provided documentary evidence that it is inter alia registered owner of the US trademark registration nos. 1243930 and 1694814 IBM, which were registered on June 28, 1983 and June 16, 1992, respectively, covering various services in classes 36 and 42 as well as documents to show that the trademarks are in current use.
The disputed domain name fully incorporates the Complainant’s IBM Marks. It is well established that a domain name that wholly incorporates a trade mark may be confusingly similar to such trade mark for purposes of the URS Procedure despite the addition of additional generic terms, such as ”group.” In addition, it is also well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name.
The Examiner finds that the disputed domain name is identical to the Complainant’s IBM Marks and that the Complainant satisfied the elements of URS Procedure 1.2.6.1.
[1.2.6.2.] The Respondent has no legitimate right or interest to the disputed domain name.
The Complainant argues that the Respondent has shown no legitimate right or interest in the disputed domain name, that there is no evidence that IBM is the name of Registrant’s corporate entity, that there is no evidence of fair use, and that there is no evidence that the Respondent is using or plans to use IBM for a bona fide offering of goods or services. The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name. In fact, the disputed domain name is used in connection with a website providing “Sponsored Listings,” i.e. advertising links to third parties’ websites.
The Examiner finds that Respondent has no rights to or legitimate interests in the disputed domain name and that the Complainant satisfied the elements of URS Procedure 1.2.6.2.
[1.2.6.3.] The disputed domain name was registered and is being used in bad faith.
The Complainant contends that the Respondent registered and is using the domain name in bad faith. The Complainant states that it sent a cease and desist letter to the Respondent asking the Respondent to disable and transfer the domain name back to the Complainant, which remained unanswered. In addition, the Complainant argues that the Respondent intentionally uses the domain name to list pay-per-click advertisement links, and that such use of the disputed domain name is another clear evidence of bad faith because it creates a likelihood of confusion as to the source, sponsorship, or endorsement of IBM’s websites.
Due to the fact that the highly distinctive IBM Marks are well-established internationally for decades, the Examiner accepts that the Respondent was aware of the Complainant’s IBM Marks at the time of the registration of the disputed domain name and therefore registered the disputed domain name in bad faith. As to bad faith use, by fully incorporating the IBM Marks into the disputed domain name and by using the website at such domain name as a parking website providing links to third parties, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant's website as set out in URS Procedure 1.2.6.3.d.
The Examiner finds that the disputed domain name was registered and is being used in bad faith and that the Complainant satisfied the elements of URS Procedure 1.2.6.3.
No abuse or material falsehood.
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.
<ibmgroup.tech>
Peter Müller, Examiner
Dated: May 20, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page