First URS Decision Published on New gTLD’s

The first Uniform Rapid Suspension decision has been issued.

The case was decided 9 days ago, which was 6 days after the 1st URS was filed on the domain names; ibm.guru and ibm.ventures.

So while the decision was known 9 days ago, the actual decision was just published today so this is the first time we are seeing at how these URS decisions will look:

DOMAIN NAME

ibm.guru

ibm.ventures

PARTIES

Complainant: International Business Machines Corporation of Armonk, NY, United States of America

Complainant Representative: CSC Digital Brand Services of Wilmington, DE, United States of America

Respondent: Denis Antipov of Hoboken, NJ, United States of America

REGISTRIES and REGISTRARS

Registries: Pioneer Cypress, LLC,Binky Lake, LLC
Registrars: Godaddy LLC

EXAMINER

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.
Darryl C. Wilson, as Examiner

PROCEDURAL HISTORY

Complainant Submitted: February 5, 2014
Commencement: February 6, 2014
Response Date: February 7, 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”).

RELIEF SOUGHT

Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW

Clear and convincing evidence.

FINDINGS and DISCUSSION

Procedural Findings:
Multiple Complainants: No multiple Complainants are involved in this proceeding. This complaint and findings relate to the domain names and . No domain names are dismissed from this complaint.
Multiple Respondents: Both domain names are using the exact same privacy whois service. It is unclear whether there is one or multiple Respondents. This complaint and findings relate to the domain names and . No domain names are dismissed from this complaint.

Findings of Fact:

Complainant owns trademark registrations in 170 countries and has used the IBM mark to sell IT-related goods and services for one hundred years. Complainant sells a broad range of devices that record, process, communicate, store and retrieve information, including computer hardware and software. In 2011 Complainant was valued at over USD 69 billion. Complainant registered its domain name, on March 19, 1986, which is used to promote Complainant’s goods and services.

Respondent registered the disputed domain name on January 31, 2014 despite receiving notification that the domain names match a mark registered with the Trademark Clearinghouse.

The Respondent is required to have clicked on the GoDaddy notice “Acknowledge Claim” when presented with the Trademark Claims Notice to complete registration of the name.

Respondent at the time of registration of the disputed domain names knew of the existence of the Complainant’s trademarks.

The disputed domain names currently forward to IBM owned and operated websites.

This activity does not constitute a bona fide offering of goods or services or legitimate noncommercial fair use of the disputed domain name. Indeed, by redirecting the disputed domain names to IBM websites the Respondent has essentially acknowledged the dispute domain names can only refer to the Complainant.

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 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

URS 1.2.6.1 (i) covers the domain names at issue in this case.

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

Determined: Finding for Complainant

Respondent states only that the domains were to be used for a news and/or community support website. There is no indication of any authorization to use the Complainant’s mark. The Respondent believes others are using the mark but offers no support or details regarding the alleged use. Use by others is not justification for the Respondent to use Complainant’s mark.

[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

URS 1.2.6.3 (c) and (d) are applicable here. Respondent’s domain names resolve to websites of the Complainant.

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.

The Complaint was well founded. The response was merely three perfunctory sentences.

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.guru
ibm.ventures

Darryl C. Wilson
Examiner
Dated: February 12, 2014

Comments

Comment Policy:

TheDomains.com welcomes reader comments. Please follow these simple rules:

  • Stay on topic
  • Refrain from personal attacks
  • Avoid profanity
  • Links should be related to the topic of the post
  • No spamming. Listing domains, products, or services will get the comment deleted

We reserve the right to remove comments if we deem it necessary.

Join the Discussion