IBM Corporation v. Smitten John

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires 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(s) is/are 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.

Determined: Finding for Complainant

The disputed domain name is identical to Complainant's famous mark IBM.

[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant

Complainant's mark is famous around the world. Respondent's name is not similar in any way to the disputed domain name. The use of Complainant's mark under the gTLD .global suggests world-wide use. In light of the strength of Complainant's mark and world-wide reputation, it is hard to conceive of any such global use that would be legitimate. Consequently the Examiner finds that Respondent has no legitimate right or interest to the domain name.

[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  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 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 web site 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 web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant

Respondent registered the disputed domain name in June 2015 despite receiving notification that the domain name matched a trademark registered with the Trademark Clearinghouse. Additionally, Complainant sent a cease and desist letter to Respondent asking Respondent to disable and transfer the disputed domain name back to IBM. Respondent refused but stated that he could consider an offer to transfer the domain name to Complainant without putting the domain name on the market again (as maybe someone else would buy it before Complainant), as long as Complainant’s offer is tangible and serious. Complainant then offered to provide reasonable out of pocket expenses, not to exceed $225, in exchange for the domain name. Respondent refused again and claimed that he already spent more than 25, 000 British Pounds (around 38,969.98 US Dollars) for the domain name and he recently has been contacted by several companies offering much more. Respondent’s counteroffer greatly exceeds the estimated $225 that Respondent paid for registering the domain name. The Examiner finds that this constitutes evidence of bad faith registration and use under URS 1.2.6.3(a).

FINDING OF ABUSE or MATERIAL FALSEHOOD

The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:

The Complaint was neither abusive nor contained material falsehoods.

DETERMINATION

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 name(s) be SUSPENDED for the duration of the registration:

ibm.global

	Complainant Submitted: August 12, 2015
	Commencement: August 12, 2015
	Default Date: August 27, 2015
	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").

	Complainant: IBM Corporation of Armonk, NY, United States of America

	Registries: Dot GLOBAL AS
	Registrars: 1&1 Internet AG (R3336-AGRS)

	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.
	Richard W. Hill, as Examiner

	Respondent: Smitten John of Agen, II, FR