International Business Machines Corporation (IBM) v Hari Babu

WIPO Case No. D2025-0983

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

International Business Machines Corporation (IBM) v. Hari Babu

Case No. D2025-0983

1. The Parties

The Complainant is International Business Machines Corporation (IBM), United States of America (� United

States”), internally represented.

The Respondent is Hari Babu, India.

2. The Domain Name and Registrar

The disputed domain name <ibmwatsonanalyticstraining.com> is registered with GoDaddy.com, LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2025.
On March 11, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On March 11, 2025, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain name
which differed from the named Respondent (John Doe) and contact information in the Complaint. The
Center sent an email communication to the Complainant on March 12, 2025, providing the registrant and
contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the

Complaint. The Complainant filed an amended Complaint on March 13, 2025.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on March 14, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 3, 2025. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on April 4, 2025.

The Center appointed Anna Carabelli as the sole panelist in this matter on April 10, 2025. The Panel finds that it was properly constituted. 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 owns and has owned trademark registrations for IBM, WATSON and WATSON-based marks in several countries around the world for several decades.

The Complainant’s trademark portfolio includes, but is not limited to, the following registrations:

(i) for the IBM mark:

- United States trademark registration No. 4,181,289 registered on July 31, 2012, in International

Classes 6, 8, 9, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 28, 30, 35, and 41;

- United States trademark registration No. 3,002,164 registered on September 27, 2005, in International

Class 9;

-	United States trademark registration No. 1,696,454 registered on June 23, 1992, in International Class
36;
-	United States trademark registration No. 1,694,814 registered on June 16, 1992, in International Class
36;
-	United States trademark registration No. 1,243,930 registered on June 28, 1983, in International Class
42;
-	United States trademark registration No. 1,205,090, registered on August 17, 1982, in International

Classes 1, 9, 16, 37, and 41;
- United States trademark registration No. 1,058,803, registered on February 15, 1977, in International Classes 1, 2, 3, 4, 7, 9, 10, 16, 28, 37, 41, and 42; and

- United States trademark registration No. 640,606 registered on January 29, 1957, in International

Class 9.

(hereinafter collectively, “IBM Trademarks”)

(ii) for the WATSON and WATSON-based marks:

- International registration for WATSON (stylized word mark) No. 1113322, registered on September 21, 2011, in international classes 9, 35, 38, and 42;

- United States registration for IBM WATSON (word mark) No. 5082512, registered on November 15,

2016, in international classes 9, 35, and 42.

(hereinafter collectively, “WATSON Trademarks”)

The Complainant has a presence in over 175 countries through its wholly owned subsidiaries with over
288,300 employees worldwide. The Complainant has long provided information technology related goods
and services under its IBM trademark since 1924.

In 2010 the Complainant introduced Watson, a question answering computer system capable of answering question posed in natural language. Since the release of Watson computer, the Complainant has continuously used the trademark WATSON in connection with artificial intelligence (AI)-related goods and services. In 2014, the Complainant launched the IBM Watson Group, a business unit dedicated to developing artificial intelligence technology. Today, the Complainant offers industry-leading AI expertise and

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a portfolio of solutions to enterprises under the WATSON brand. Specifically, the Complainant offers the cloud application IBM Watson Analytics providing, amongst others, legitimate training courses associated with the Complainant’s offering.

On October 23, 2024, the Complainant sent a cease and desist letter to the Respondent, through the remained unanswered.

Registrar, requesting that the disputed domain name be deactivated and transferred to the Complainant.

The disputed domain name was registered on May 29, 2017. As per the evidence submitted with the Complaint, the disputed domain name resolved to a pay-per-click parking page with advertising links (which changed over time) containing reference to technology-related products and services. At the time of this decision, the disputed domain name points to a parking page stating “ibmwatsonanalyticstraining.com temporarily available free of charge courtesy of GoDaddy.com”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

- The Complainant owns rights in the trademarks IBM, WATSON, and other WATSON formative

trademarks, that are distinctive and globally well known;

- The disputed domain name is confusingly similar to the Complainant’s trademarks that are entirely

reproduced and recognizable within the disputed domain name. The additional terms “analytics” and “training” are commonly associated with the Complainant and would not prevent a finding of confusing similarity under the Policy;

- The Respondent has no rights or legitimate interests in the disputed domain name since the

Respondent is not commonly known by the disputed domain name, and the Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. In this regard the Complainant contends that as of May 29, 2017 the Respondent has been actively using the Complainant’s trademarks to create a likelihood of confusion by pointing the disputed domain name to a pay-per-click parking page with advertisement links to technology related products and services. The specific links have changed over time, indicating continued intent to profit off the Complainant’s marks;

- The disputed domain name was registered and is being used in bad faith to generate illegitimate

commercial gains through the use of the Complainant’s famous trademarks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Preliminary Issue - Delay in Bringing the Complaint

Based on the Complaint and information provided by the Registrar, the disputed domain name was registered on May 29, 2017. The time between the 2017 creation date of the disputed domain name and the filing of the Complaint in March 2025 is obviously a significant period of time.

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Panels have widely recognized that the Policy contains no limitation period for making a claim and a delay in bringing a complaint does not provide a defense per se under the Policy. Panels have noted that the UDRP remedy is injunctive rather than compensatory, and that a principal concern is to halt ongoing or avoid future abuse/damage, not to provide equitable relief. The mere delay between the registration of a domain name

and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.17.

As such, and even in the absence of an explanation from the Complainant, the Panel has not drawn a negative inference from the delay in the filing of the Complaint.

6.2 Substantive Issues

Paragraph 15(a) of the Rules instructs the panel to decide the complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the complainant must prove each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)       the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph
4(a)(iii) of the Policy, shall be evidence of registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if found by the Panel, shall be evidence of the respondent’s rights to or legitimate interests in a disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy above.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0”, section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The disputed domain name incorporates the entirety of the Complainant’s IBM Trademarks and WATSON Trademarks, with the addition of the terms “analytics” and “training”. The entirety of those marks is reproduced and recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here “analytics” and “training”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The addition of the Top-Level Domain, such as “.com”, is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1.

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The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The disputed domain name has been used for competing commercial pay-per-click links, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use (WIPO Overview 3.0, section 2.9) and the Respondent has failed to invoke any circumstance, which could have demonstrated any rights or legitimate interests in the disputed domain names under paragraph 4(c) of the Policy.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, given the reputation of the Complainant’s trademarks – whose registration and use precede by far the registration of the disputed domain name - it is not conceivable that the Respondent did not have in mind the Complainant’s trademarks when registering the disputed domain name. Such fact suggests that the disputed domain name was registered in bad faith (WIPO Overview 3.0, section 3.2.2). Prior panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (WIPO Overview 3.0, section 3.1.4).

With respect to use in bad faith, the disputed domain name has been used for competing commercial pay- per-click links. The Respondent is probably deriving some income from each click on those links thereby capitalizing on the Complainant’s trademarks and goodwill for its own profit. The Panel finds the use of the confusingly similar disputed domain name to lure Internet users to websites hosting links to competing products/services is evidence of bad faith. See Sodexo v. 杨� � (Zhi Chao Yang), WIPO Case No. D2020-1171, Intercontinental Exchange Holdings, Inc. v. �� (Yin Lei), WIPO Case No. D2021-1395). The Panel also finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its webpage, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s webpage.

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The fact that the disputed domain name does not currently resolve to an active website and merely points to a parking page, does not prevent a finding of bad faith under the passive holding doctrine given the totality of the circumstances in the present case. WIPO Overview 3.0, section 3.3.

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ibmwatsonanalyticstraining.com> be transferred to the Complainant.

/Anna Carabelli/
Anna Carabelli
Sole Panelist
Date: April 24, 2025