WIPO Arbitration and Mediation Center

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WIPO Arbitration and Mediation Center



ADMINISTRATIVE PANEL DECISION


International Business Machines Corporation v.
Investment Backed Mortgages Limited


Case
No.

DAU2007
-
0009





1.

The Parties


The Complainant is International Business Machines Corp
oration, Armonk, New York,
of United States of America, represented by Spruson&Ferguson Lawyers, Australia.


The Respondent is Investment Backed Mortgages Limited, Melbourne,Victoria, of
Australia.



2.

The Domain Name and Registrar


The disputed domain na
me <ibm.net.au> is registered with Melbourne IT trading as
Internet Names Worldwide.



3.

Procedural History


The Complaint was filed with the WIPO Arbitration and Mediation Center
(the


Center

) on
October

17,

2007. On
October

18,

2007, the Center transm
itted by
email to Melbourne IT trading as Internet Names Worldwide a request for registrar
verification in connection with the domain name at issue. On
October

19,

2007,
Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center
i
ts verification response confirming that the Respondent is listed as the registrant and
providing the contact details.

The Center verified that the Complaint satisfied the
formal requirements of the
.au
Dispute Resolution Policy (the


Policy

), the Rules f
or
.au
Dispute Resolution Policy (the


Rules

), and the WIPO Supplemental Rules for
.au
Dispute Resolution Policy (the


Supplemental

Rules

).


In accordance with the Rules,
paragraphs

2(a) and 4(a), the Center formally notified the
Respondent of the Complain
t, and the proceedings commenced on
October

24,

2007.
In accordance with the Rules,
paragraph

5(a), the due date for Response was
November

13,

2007. The Respondent did not submit any response. Accordingly, the
Center notified the Respondent
’s default on

November

20,

2007.


page
2

The Center appointed The Honourable Neil

Anthony

Brown

QC, Warwick

A.

Rothnie
and David

Stone as panelists in this matter on
December

24,

2007. The Panel finds that
it was properly constituted. Each member of the Panel has submitted
the Statement of
Acceptance and Declaration of Impartiality and Independence, as required by the
Center to ensure compliance with the Rules,
paragraph

7.



4.

Factual Background


The Complainant is an American corporation that is one of the largest compani
es in the
world and a leading supplier of information technology, software, hardware and related
services.

It has had extensive operations in Australia through its subsidiary IBM
Australia since 1932.

The Complainant has been conducting its worldwide bus
iness
under the famous IBM trademark for almost 100 years and it owns many trademark
registrations for the IBM mark throughout the world, including in Australia.


The Complainant is the registered proprietor of a series of trademarks registered
throughout
the world and in particular in Australia, where the Respondent is domiciled,
under the Australian
Trademark
s Act 1995 for IBM in various classes.


In particular, the Complainant is the registered proprietor of the following Australian
trademarks:


(a)

Trad
emark Number 1016331 registered with IP Australia (stylized) for IBM in
Class

36
;

and


(b)

Trademark Number 1016332 registered with IP Australia (stylized) for IBM in
Class 36.


The Respondent is a provider of financial services, in particular home loans,

mortgage
solutions and mortgage services.


It registered the disputed domain
name on
July

13,

2005.

The domain name has resolved to the Respondent

s website at

www.ibm.net.au


on which the Respondent has promoted its products and services
since at least

August

2006.



5.

Parties


Contentions


A.

Complainant


The Complainant alleges that the domain name <ibm.net.au> should no longer be
registered with the Respondent but that it should be transferred to the Complainant.


It contends that this should be d
one because, within the meaning of
paragraph

4 of the
Policy, the domain name is identical or confusingly similar to the Complainant

s
registered trademarks, that the Respondent has no rights or legitimate interests in the
domain name and that the domain n
ame has been registered or subsequently used in
bad faith. The Complainant maintains that it can prove all three of these requirements
and that the appropriate remedy is to transfer the domain name to the Complainant.


In support of its case on the first
of these three elements, the Complainant relies on the
extensive range of registered trademarks for IBM to which reference has already been
made.

Thus it contends that as the disputed domain name consists

entirely of the
expression


IBM

, except for the s
uffix

.net.au

, it is identical or confusingly similar
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3

to its trademarks.

The Complainant also contends that it has recorded over
AUD$13

billion in sales revenues in Australia alone in the five years from

2002


2006. Its gross marketing budget in Austr
alia for the last three years exceeded
AUD$32

million. It contends further that its trademark is a world famous mark, being
ranked the third most valuable brand in the world by Interbrand since 2001

with a
current valuation of US$57,091 billion.


The Comp
lainant then contends, to establish the second element, that the Respondent
has no rights or interests in the domain name because it has used the abbreviation IBM
as its domain name and in several places on its website, that such use is trademark
infringem
ent, conduct amounting to passing off and misleading and deceptive conduct
under Sections 52 and 53 of the Trade Practices Act 1974 (Cth) and that there is no
legitimate reason for the Respondent to make any such use of the IBM trademark in its
domain name
.



Finally, the Complainant contends that the domain name was registered or is
subsequently being used in bad faith. It contends that this conclusion follows from the
fact that the Respondent registered its domain name by using an abbreviation identical
to the Complainant

s IBM trademark and then us
ing

it for similar services to those for
which the trademark was registered, namely financial services.


The Complainant also contends that the registration of the domain name was clearly
intended for the purp
ose of riding on the reputation of the activities of the Complainant,
that it also prevents the Complainant from reflecting its trademark in the corresponding
domain space and that these considerations together with the overall conduct of the
Respondent sh
ow that the domain name was registered or is being used in bad faith.


B.

Respondent


The Respondent did not reply to the Complainant

s contentions.



6.

Discussion and Findings



Paragraph

15 of the Rules provides that the Panel is to decide the complai
nt on the
basis of the statements and documents submitted and in accordance with the Policy, the
Rules and any rules and principles of law that it deems applicable.


In doing so, the onus is on the Complainant to make out its case and both the Policy and
m
any auDRP and UDRP decisions have made it clear that a Complainant must show
that all three elements of the Policy have been made out before any order can be made
to cancel or transfer a domain name.


In that regard, the Panel also notes that the fact that

the Respondent has not filed a
Response does not avoid the necessity of examining the issues and of doing so in the
light of the evidence. The onus remains on the Complainant to make out its case and
past auDRP and UDRP panels have said that despite the
absence of a submission from
a
r
espondent, a
c
omplainant must nevertheless show that all three elements of the
Policy have been made out before any order can be made to transfer a domain name.


It is, however, possible to draw inferences from the evidence
that has been submitted
and in some cases from silence. Indeed,
paragraph

14 of the Rules incorporates both of
those notions into the procedures of the Panel.

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4

The Panel therefore turns to discuss the various issues that arise for decision on the
evidence.


For the Complainant to succeed, it must prove, within the meaning of
paragraph

4(a) of
the Policy, that:


A.

The domain name is identical or confusingly similar to a name, trademark or
service mark in which the Complainant has rights;

and


B.

The Resp
ondent has no rights or legitimate interests in respect of the domain
name;

and


C.

The domain name has been registered or subsequently used in bad faith.


The Panel will deal with each of these requirements in turn.


A.

Identical or Confusingly Similar


The Panel finds that the domain name <ibm.net.au> is identical to the Complainant

s
trademark IBM, which as a whole has been incorporated into the domain name and
which further consists of the second level domain suffix

.net.au

.


In that regard, it has

been held many times that suffixes and minor spelling differences may not be used to
negate a finding of identity or confusing similarity that is otherwise present on the
evidence.


The trademarks relied on by the Complainant are a large number of tradema
rks for IBM
that are registered both within Australia and internationally and the Complainant has
submitted evidence, which the Panel accepts, that it is the registered proprietor of each
of those marks.


Accordingly, the domain name is identical to a trad
emark in which the Complainant has
rights and it has therefore established the first of the three elements that it must make
out.


B.

Rights or Legitimate Interests


Under
paragraph

4(a)(ii) of the Policy, the complainant has the burden of establishing
th
at the respondent has no rights or legitimate interests in respect of the domain name.


But by virtue of
paragraph

4(c) of the Policy, it is open to a respondent to establish its
rights or legitimate interests in a domain name, among other circumstances,

by showing
any of the following elements:


(i)

before any notice to you of the subject matter of the dispute, your
bona fide

use of,
or demonstrable preparations to use, the domain name or a name corresponding to
the domain name in connection with an offe
ring of goods or services (not being
the offering of domain names that you have acquired for the purpose of selling,
renting or otherwise transferring)
;

or


(ii)

you (as an individual, business, or other organisation) have been commonly
known by the domai
n name, even if you have acquired no trademark or service
mark rights
;

or


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5

(iii)

you are making a legitimate non
-
commercial or fair use of the domain name,
without intent for commercial gain to misleadingly divert consumers or to tarnish
the name, tradema
rk or service mark at issue.


Thus, if the respondent proves any of these elements or indeed anything else that shows
it has a right or interest in the domain name, the complainant will have failed to
discharge its onus and the complaint will fail.


The P
anel

s task in deciding if a registrant has any rights or legitimate interests in a
domain name is made more difficult when the registrant is in default and does not file a
Response. The Respondent in the present case was given notice that it had until
No
vember

13,

2007 to send in its Response, that it would be in default if it did not do
so and that, by virtue of
paragraph

14 of the Rules, the Panel might draw appropriate
inferences from that default.

Accordingly, by not lodging its Response by the due d
ate,
the Respondent was in default and, as will be seen, the Panel proposes to draw certain
inferences from that fact.


It is also well established that, as it is put in the WIPO Overview of WIPO Panel Views
on Selected UDRP Questions,

…a complainant is r
equired to make out an initial
prima facie
case that the respondent lacks rights or legitimate interests. Once such
prima facie

case is made, respondent carries the burden of demonstrating rights or
legitimate interests in the domain name. If the respond
ent fails to do so, a complainant
is deemed to have satisfied
paragraph

4(a)(ii) of the UDRP

.


The Panel, after considering all of the evidence in the Complaint and the exhibits
attached to it, finds that the Complainant has made out a
prima facie

case th
at the
Respondent has no rights or legitimate interests in the domain name.


That
prima facie

case arises from all of the matters relied on by the Complainant, namely that the
Respondent has used
in

its domain name and without permission the Complainant

s
IBM trademark, one of the most prominent international trademarks and has then
proceeded to use it on its own website to promote its business.


The Respondent has not made any attempt by way of a Response to rebut this
prima
facie
case, and the Panel the
refore concludes that the Respondent has no such rights or
legitimate interests in the domain name.


The fact that the Respondent chose the famous IBM name as its domain name calls for
an explanation, which the Respondent could have given in its Response
.

The
Respondent, however,
has not
submitted a Response.


It is true that in the course of
correspondence between the parties


legal representatives prior to the filing of the
Complaint the Respondent put forward its only explanation for having used the le
tters
IBM in its domain name
.

That explanation was that the Respondent had a legitimate
interest in the expression IBM because it is the abbreviation for its na
me, Investment
Backed Mortgages “
… and as such is the obvious choice for (the Respondent

s) dom
ain
name
”.


Even had that explanation been put forward in a Response, the Panel
may

not have

been inclined on the available record and given the fame of the mark at issue

accepted
it as establishing the Respondent

s rights or legitimate interests in the do
main name
.

For such conduct to be legitimate would mean that any registrant who wanted to make
an abusive registration of a domain name in breach of a trademark owner

s rights and
trade off the good name of the mark, could simply do so, concoct a business

or
company name with the same initials and when challenged say that it was an obvious
choice for a domain name.

This would make a mockery of the Policy and the
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6

protection it is intended to give trademark owners against abusive domain name
registrations.

This is particularly so in the case of an established trademark that has
been famous for many years.


Thus, it is not surprising that in
BMW AG v. Loophole,

WIPO Case
No.

D2000
-
1156,
the panel rejected such an argument in remarks that seem applicable to
the present case:



The Respondent has failed to produce evidence of any legitimate
interests in respect of the Domain Name.


The Respondents
explanation of the meaning of the letters BMW in the Domain Name
(

B

MegaWatts

) is, especially in view of the Com
plainant

s well
known trademark BMW, not obvious to the common public, nor has
the Respondent produced any evidence that he or his business is
commonly known by the Domain Name or that he is making a
legitimate non commercial or fair use of the Doma
in Name
.”


Nor did such an argument avail the respondent in
FIFA v. Andy Muffy
, WIPO Case
No.DTV2001
-
0031, in seeking to retain the domain name <fifa.tv>, to contend that his
business was

commonly known as

Forrestry Information Forum of Australia
”.


The Panel a
ccepts that

IBM


is in fact an abbreviation of the Respondent

s name,
Investment Backed Mortgages. The Respondent has chosen not to put forward any
information about why or how this name came to be adopted. Moreover, this dispute is
not about the legiti
macy of the name Investment Backed Mortgages;

it is about
<ibm.net.au>.


Bearing in mind that the Respondent is located in Australia and conducts its business
there and also that the domain name is registered in the .au ccTLD domain name space,
it is ap
propriate to note that the
Trademark
s Act 1995 (Cth) provides in
§

122(1)(a) that
it is

not an infringement of a trade
mark for a person to use in good faith their name or
the name of their place of business.



IBM


or <ibm.net.au> are not, however, the R
espondent

s name.


The onus under the
Trademark
s Act is on the Respondent to demonstrate that it is using

IBM


or <ibm.net.au> in good faith;

that is, without any intention to trade on the
goodwill and reputation of the Complainant in its IBM trademark
.


The Respondent has chosen not to put forward any evidence that it is commonly known
in the trade or by the public more generally as

IBM

. Nor has the Respondent
otherwise sought to demonstrate its good faith.


This is all the more significant as the R
espondent could not have been unaware of the
Complainant

s trademark when it incorporated under its formal name or when it
registered the domain name.


The Respondent has, therefore, neither by way of a Response nor in any other material
put before the Pan
el shown anything constituting a right or legitimate interest in respect
of the domain name.

The Complainant has therefore made out the second of the three
elements that it must establish.





page
7

C.

Registered or Subsequently Used in Bad Faith


The Complain
ant must prove on the balance of probabilities that the domain name was
registered in bad faith or that it has subsequently been used in bad faith.


Further guidance on how to implement this requirement is to be found in
paragraph

4(b) of the Policy, which

sets out four circumstances, any one of which shall
be evidence of the registration and use of a domain name in bad faith, although other
circumstances may also be relied on, as the four circumstances are not exclusive.


The

four specified circumstances

are:



(i)

circumstances indicating that you (the Respondent) have registered or
you have acquired the domain name primarily for the purpose of selling,
renting, or otherwise transferring the domain name registration to another
person for valuable consid
eration in excess of your documented
out
-
of
-
pocket costs directly related to the domain name;

or


(ii)

you (the Respondent) have registered the domain name in order to
prevent the owner of a name, trademark or service mark from reflecting that
name or ma
rk in a corresponding domain name
;

or


(iii)

you (the Respondent) have registered the domain name primarily for
the purpose of disrupting the business or activities of another person
;

or


(iv)

by using the domain name, you (the Respondent) have intenti
onally
attempted to attract, for commercial gain, Internet users to a website or other
online location, by creating a likelihood of confusion with the complainant

s
name or mark as to the source, sponsorship, affiliation, or endorsement of
that website or
location or of a product or service on that website or
location.



The Complainant relies specifically on
paragraph

4(b)(ii) and also on a general notion
of bad faith. It contends that it can be concluded that the Respondent intended to
register or use th
e domain name in bad faith, because the IBM trademark is so
distinctive that by registering it as a domain name and then using it to attract

business,
the Respondent was “
riding on the reputation of the activities of the Complainant…

.

This conduct, it co
ntends, is in bad faith because it is an entirely inappropriate and
unjustified use of another

s trademark.


In support of this argument the Complainant relies on the additional facts that:


(a)

the Respondent used the IBM mark in several places on its we
bsite to promote its
products and as part of its telephone number, namely

13 IBM IBM

;


(b)

the Respondent coloured its website blue, thus invoking the notion, well
understood in commercial circles, that the Complainant is known as

Big Blue

;


(c)

if the

history of the Respondent

s conduct is traced since the Complainant first
raised its concerns, it will be seen that when the website was first established in
November

2006 and until July

1,

2007, it carried frequent use of the abbreviation
IBM and in very

prominent places.

After complaint, however, most references to
IBM were removed from the website, except that it remains as part of the
Respondent

s telephone number and still appears by way of a definition, as in the
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8

expression

Investment Backed Mortga
ges (IBM)

.

The Complainant maintains
that these frequent and prominent uses of the abbreviation IBM on the website,
when IBM is not even the name of the Respondent, followed by their deletion
from the website when challenged, are an admission by the Resp
ondent that they
should not have been on the website in the first place;


(d)

it is instructive that, if a search engine inquiry is made of the expression
IBM

NET, the first result is a listing on eBay for the Complainant

s products and
the second listing
produced is a link to the Respondent, thus enhancing the notion
that this use of the Complainant

s trademark will encourage at least some internet
users to believe that there is a connection or affiliation between the Respondent

s
domain name and website a
nd the Complainant when in fact there is none;


(e)

the Respondent

s services are not as different from those of the Complainant as
the Respondent

s advisers have maintained in the correspondence.


The
Complainant contends in this regard that the Responden
t used the
abbreviation
to
promote financial services, which are similar to the

financial services


specified
in the registration of two of the Complainant

s Australian trademarks.
No
.

1016331 and 1016332.


The Panel accepts the use that the Complainant
makes of these factors and concludes
on the balance of probabilities that the Respondent registered the domain name to give
the impression that it was associated in some way with the Complainant or that it
allowed that impression to arise and did nothing t
o counteract it and that until
challenged it continued to use the domain name to give the same impression.


That conclusion is certainly open when a trademark is of such prominence and
longevity as the IBM mark;

the use in the domain name of such a famous

trademark as
IBM is almost evidence in itself of bad faith, for it instantly arouses suspicion that the
motivation for registering and using the domain name was to create the false
impression that the website was in some way connected with IBM itself or,
if that
impression arose accidentally, to allow it to continue, knowing that it was false.


That being so, the Panel is faced with the fact that the Respondent has not filed a
Response to dispel such a tentative conclusion.

Moreover,
paragraph

14(b) of th
e
Rules provides in effect that in the absence of exceptional circumstances, the Panel
should draw such inferences as it considers appropriate from the failure to comply with
the Rules which themselves require a Response from the Respondent.


As there are

no such exceptional circumstances, the Panel draws the inference from all
of the facts that the Respondent

s conduct came squarely within the provisions of
paragraphs

4(b)(ii), (iii) and (iv) of the Policy and that it also amounted to general bad
faith an
d that as a consequence the Respondent must be said to have registered and
subsequently used the domain name in bad faith.


Accordingly, the Complainant has made out the third of the three elements that it must
establish.








page
9

7.

Decision


For all the

foregoing reasons, in accordance with
paragraphs

4(i) of the Policy
and

15

of the Rules, the Panel orders that the domain name <ibm.net.au> be transferred
to the Complainant.





_______________________________________________

The Honourable Neil Anthony
Brown QC

Presiding Panelist





___________________________

___________________________

Warwick A. Rothnie

David Stone

Panelist

Panelist


Date
d
:

January

7,

200
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