WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Business Machines Corporation v.
Investment Backed Mortgages Limited
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
The Domain Name and Registrar
The disputed domain na
me <ibm.net.au> is registered with Melbourne IT trading as
Internet Names Worldwide.
The Complaint was filed with the WIPO Arbitration and Mediation Center
2007, the Center transm
email to Melbourne IT trading as Internet Names Worldwide a request for registrar
verification in connection with the domain name at issue. On
Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center
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
Dispute Resolution Policy (the
), the Rules f
Dispute Resolution Policy (the
), and the WIPO Supplemental Rules for
Dispute Resolution Policy (the
In accordance with the Rules,
2(a) and 4(a), the Center formally notified the
Respondent of the Complain
t, and the proceedings commenced on
In accordance with the Rules,
5(a), the due date for Response was
2007. The Respondent did not submit any response. Accordingly, the
Center notified the Respondent
’s default on
The Center appointed The Honourable Neil
Stone as panelists in this matter on
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,
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
It has had extensive operations in Australia through its subsidiary IBM
Australia since 1932.
The Complainant has been conducting its worldwide bus
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
the world and in particular in Australia, where the Respondent is domiciled,
under the Australian
s Act 1995 for IBM in various classes.
In particular, the Complainant is the registered proprietor of the following Australian
emark Number 1016331 registered with IP Australia (stylized) for IBM in
Trademark Number 1016332 registered with IP Australia (stylized) for IBM in
The Respondent is a provider of financial services, in particular home loans,
solutions and mortgage services.
It registered the disputed domain
The domain name has resolved to the Respondent
s website at
on which the Respondent has promoted its products and services
since at least
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
4 of the
Policy, the domain name is identical or confusingly similar to the Complainant
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
Thus it contends that as the disputed domain name consists
entirely of the
, except for the s
, it is identical or confusingly similar
to its trademarks.
The Complainant also contends that it has recorded over
billion in sales revenues in Australia alone in the five years from
2006. Its gross marketing budget in Austr
alia for the last three years exceeded
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
current valuation of US$57,091 billion.
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
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
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
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
ow that the domain name was registered or is being used in bad faith.
The Respondent did not reply to the Complainant
Discussion and Findings
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
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
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,
14 of the Rules incorporates both of
those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the
For the Complainant to succeed, it must prove, within the meaning of
the Policy, that:
The domain name is identical or confusingly similar to a name, trademark or
service mark in which the Complainant has rights;
ondent has no rights or legitimate interests in respect of the domain
The domain name has been registered or subsequently used in bad faith.
The Panel will deal with each of these requirements in turn.
Identical or Confusingly Similar
The Panel finds that the domain name <ibm.net.au> is identical to the Complainant
trademark IBM, which as a whole has been incorporated into the domain name and
which further consists of the second level domain suffix
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
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
Rights or Legitimate Interests
4(a)(ii) of the Policy, the complainant has the burden of establishing
at the respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of
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,
any of the following elements:
before any notice to you of the subject matter of the dispute, your
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)
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
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.
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
2007 to send in its Response, that it would be in default if it did not do
so and that, by virtue of
14 of the Rules, the Panel might draw appropriate
inferences from that default.
Accordingly, by not lodging its Response by the due d
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
case that the respondent lacks rights or legitimate interests. Once such
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
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
Respondent has no rights or legitimate interests in the domain name.
case arises from all of the matters relied on by the Complainant, namely that the
Respondent has used
its domain name and without permission the Complainant
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
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
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
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
Backed Mortgages “
… and as such is the obvious choice for (the Respondent
Even had that explanation been put forward in a Response, the Panel
been inclined on the available record and given the fame of the mark at issue
it as establishing the Respondent
s rights or legitimate interests in the do
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
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
protection it is intended to give trademark owners against abusive domain name
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,
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.
explanation of the meaning of the letters BMW in the Domain Name
) is, especially in view of the Com
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
Nor did such an argument avail the respondent in
FIFA v. Andy Muffy
, WIPO Case
0031, in seeking to retain the domain name <fifa.tv>, to contend that his
commonly known as
Forrestry Information Forum of Australia
The Panel a
is in fact an abbreviation of the Respondent
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
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
s Act 1995 (Cth) provides in
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.
or <ibm.net.au> are not, however, the R
The onus under the
s Act is on the Respondent to demonstrate that it is using
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
. 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
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.
Registered or Subsequently Used in Bad Faith
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
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.
four specified circumstances
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
pocket costs directly related to the domain name;
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
you (the Respondent) have registered the domain name primarily for
the purpose of disrupting the business or activities of another person
by using the domain name, you (the Respondent) have intenti
attempted to attract, for commercial gain, Internet users to a website or other
online location, by creating a likelihood of confusion with the complainant
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
The Complainant relies specifically on
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
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
In support of this argument the Complainant relies on the additional facts that:
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
the Respondent coloured its website blue, thus invoking the notion, well
understood in commercial circles, that the Complainant is known as
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
2006 and until July
2007, it carried frequent use of the abbreviation
IBM and in very
After complaint, however, most references to
IBM were removed from the website, except that it remains as part of the
s telephone number and still appears by way of a definition, as in the
Investment Backed Mortga
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;
it is instructive that, if a search engine inquiry is made of the expression
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
domain name and website a
nd the Complainant when in fact there is none;
s services are not as different from those of the Complainant as
s advisers have maintained in the correspondence.
Complainant contends in this regard that the Responden
t used the
promote financial services, which are similar to the
in the registration of two of the Complainant
s Australian trademarks.
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
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,
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.
14(b) of th
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
4(b)(ii), (iii) and (iv) of the Policy and that it also amounted to general bad
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
For all the
foregoing reasons, in accordance with
4(i) of the Policy
of the Rules, the Panel orders that the domain name <ibm.net.au> be transferred
to the Complainant.
The Honourable Neil Anthony
Warwick A. Rothnie