IBM v. Mark McNeely et al.
Claim Number: FA1404001556548
Complainant: IBM of Armonk, New York, United States of America.
Respondent: Mark McNeely of Mercer Island, Washington, United States of America.
Mark McNeely of Mercer Island, Washington, US.
REGISTRIES and REGISTRARS
Registries: COMPANY Registry; TECHNOLOGY Registry
Registrars: GoDaddy.com, LLC
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.
James Bridgeman, as Examiner.
Complainant submitted: April 29, 2014
Commencement: May 1, 2014
Response Date: May 9, 2014
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.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
The registered domain name(s) is/are identical or confusingly similar to a word or mark [URS 1.2.6.1]: for which the Complainant holds a valid national or regional registration and that is in current use.
Complainant owns WATSON trademark registrations and uses the WATSON trademark to sell IT-related goods and services. IBM owns trademark registrations for WATSON around the world including, among others, Japan Registration No. 5,482,464 in International Classes 9, 35 and 42; International Registration No. 1,113,321 in International Classes 9, 35, 38 and 42; Japan Registration No. 5,482,466 in International Classes 9, 35 and 42; and International Registration No. 1,113,322 in International Classes 9, 35, 38 and 42.
Complainant has provided certified evidence that the trademark WATSON is in current use.
Both of the domain names <watson.technology> and <watson.company> are identical to Complainant’s WATSON registered trademark.
2. Registrant has no legitimate right or interest to the domain name [URS 1.2.6.2]
Respondent has shown no legitimate right or interest in the disputed domains names or the WATSON trademark. Respondent is not known by WATSON, and both <watson.technology> and <watson.company> remain parked with “sponsored listings.” Such use without more does not establish rights or interest in either of the disputed domain names or the WATSON mark.
Respondent has submitted that there are many companies in the field of technology that use the name WATSON. Respondent has not however provided any evidence of its own rights in the WATSON name or trademark or either of the domain names.
3. The domain name(s) was/were registered and are being used in bad faith [URS 1.2.6.3]
On the evidence Respondent was actually aware of Complainant’s rights in the WATSON mark. Respondent registered the domain name <watson.technology> on March 24, 2014 after having received notification that the disputed domain name matched a trademark registered with the Trademark Clearinghouse.
Subsequently Respondent registered the domain name <watson.company> despite not only receiving notification that domain name matched a trademark registered with the Trademark Clearinghouse, but also after having received a cease and desist letter on April 15, 2014 from Complainant the earlier registration of <watson.technology>.
After Complainant sent Respondent a cease and desist letter, Respondent offered to sell the <watson.technology> domain name to Complainant stating “I would estimate that the cost to me of not having the URL could be quantified at about $6k/month. So if you would instead like to pay me that amount, I’ll transfer the URL to you, with the understanding that should you no longer want it, it would revert to me.” In response, Complainant rejected Respondent’s offer but made a counter- offered to Respondent his reimburse out of pocket costs, such costs not to exceed $300. Respondent rejected Complainant’s offer on April 18, 2014. Respondent then registered the <watson.company> domain name on April 21, 2014 three days later.
This Examiner finds that on the evidence Registrant registered the disputed domain names <watson.technology> and <watson.company> in bad faith. primarily for the purpose of selling, renting or otherwise transferring the said domain name registrations to Complainant who is the owner of the WATSON trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the respective domain names
This Examiner finds that on the evidence Registrant registered and is using each of the disputed domain names <watson.technology> and <watson.company> in bad faith.
There is no evidence that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.
After reviewing the parties’ 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: <watson.technology> and <watson.company>.
James Bridgeman, Examiner
Dated: May 13, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page