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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 Corporation, 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 name <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 transmitted 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 its 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 .auDispute Resolution Policy (the “Policy”), the Rules for .auDispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .auDispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, 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.

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 companies 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 business 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 Trademarks Act 1995 for IBM in various classes.

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

(a) Trademark 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 done 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 name 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 suffix “.net.au”, it is identical or confusingly similar 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 Australia 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 Complainant 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 infringement, 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 using 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 purpose 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 show 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 complaint 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 many 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 respondent, a complainant 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.

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 Respondent 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 trademarks 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 trademark 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 that 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 offering 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 domain name, even if you have acquired no trademark or service mark rights; or

(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, trademark 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 Panel’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 November 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 date, 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 required 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 respondent 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 that 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 therefore 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 letters 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 name, Investment Backed Mortgages “… and as such is the obvious choice for (the Respondent’s) domain 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 domain 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 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 Complainant’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 Domain 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 accepts 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 legitimacy 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 appropriate to note that the Trademarks Act 1995 (Cth) provides in § 122(1)(a) that it is not an infringement of a trademark 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 Respondent’s name.

The onus under the Trademarks 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 Respondent 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 Panel 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.

C. Registered or Subsequently Used in Bad Faith

The Complainant 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 consideration 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 mark 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 intentionally 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 the 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 contends, 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 website 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 expression “Investment Backed Mortgages (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 Respondent 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 and 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 Respondent 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 to 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 the 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 and 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.

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.

Dated: January 7, 2008