International Business Machines Corporation (IBM) v Nguyễn văn Lư

WIPO Case No. D2025-2284

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

International Business Machines Corporation (IBM) v. Nguyễn Văn Lư

Case No. D2025-2284

1. The Parties

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

States”), internally represented.

The Respondent is Nguyễn Văn Lư, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <w3-ibm.com> (the “Disputed Domain Name”) is registered with April Sea

Information Technology Corporation (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2025. On June 12, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 17, 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 June 25, 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 in English on June 27, 2025.

On June 25, 2025, the Center informed the parties in Vietnamese and English, that the language of the registration agreement for the Disputed Domain Name is Vietnamese. On June 27, 2025, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.

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 in English and Vietnamese of the Complaint, and the proceedings commenced on July 1, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default July 22, 2025.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on July 29, 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 is a well-known American multinational company, incorporated in 1911 through the amalgamation of three existing companies. It officially adopted the name International Business Machines (“IBM”) on February 14, 1924, and has since continuously offered products and services under the IBM trademark. The Complainant is recognized globally as a pioneer in the innovation, design, and manufacture of technologies that record, process, communicate, store, and retrieve information, including computers, hardware, software, and related services.

The Complainant owns many trademark registrations that consist of or contain the element “IBM” (the “IBM
trademark”) in 131 countries around the world, including, but not limited to the United States Trademark
Registration No. 640,606 registered January 29, 1957, in class 9, the United States Trademark Registration
No. 1,058,803 registered February 15, 1977, in classes 1, 9, 16, 37, 41 and 42, and the United States
Trademark Registration No. 1,696,454 registered June 23, 1992, in class 36.

The Disputed Domain Name was registered on July 9, 2004. As of the date of this Decision, the Disputed contents related to the sale of PCs and laptops, computer user training, and cloud server services.

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 as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark, in which the

Complainant has rights.

The Complainant argues that the Disputed Domain Name is confusingly similar to its IBM trademark because
it incorporates the element “IBM” in its entirety. The letters “IBM” appear as a distinct element in the
Disputed Domain Name, separated by a hyphen from the preceding letters.

The Complainant further contends that the addition the alphanumeric term “w3” and separated by a hyphen does not avoid a finding of confusing similarity. On the contrary, the term “w3” is associated with the Complainant, as it refers to IBM’s internal employee intranet system and is used in the Complainant’s own domain name <w3.ibm.com>.

Moreover, the Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” is disregarded under the first element confusing similarity test.

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(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant argues that the Respondent has no rights or legitimate interests in the Disputed Domain Name because the Complainant has never licensed, contracted, or otherwise permitted the Respondent to register or use any domain name incorporating the IBM trademark. The Respondent is neither affiliated with

the Complainant nor commonly known by the Disputed Domain Name.

The Complainant further asserts that there is no evidence that the Respondent is using the Disputed Domain Name in connection with any bona fide offering of goods or services, or for legitimate noncommercial or fair use. Nor is there evidence that the Disputed Domain Name corresponds to the name of the Respondent or any business operated by the Respondent.

The Complainant contends that the Respondent’s unauthorized use of the IBM trademark is likely to mislead consumers into believing that there is an affiliation, sponsorship, or endorsement by the Complainant, when in fact no such relationship exists.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith. It incorporates the well-known IBM trademark in its entirety, combined with the prefix “w3,” which refers to IBM’s internal intranet platform. The Complainant contends that such registration of a domain name comprising a famous mark and a descriptive or related term creates a presumption of bad faith.

The Complainant argues that the Respondent has no affiliation with IBM, has no rights in the IBM trademark, and registered the Disputed Domain Name long after IBM established rights in the IBM trademark, which dates back more than 47 years before the Disputed Domain Name’s registration. The Complainant further submits that IBM has used the “w3” name since 1992, which support a finding of opportunistic bad faith.

The Complainant contends that the Respondent uses the Disputed Domain Name to resolve to a PPC parking page displaying advertisements referencing IBM products and services, which constitutes bad faith by intentionally attracting users for commercial gain through confusion.

The Complainant also observes that email servers are configured for the Disputed Domain Name, raising risks of phishing or fraud, and that the Respondent failed to respond to cease-and-desist letters. These additional factors have been recognized in prior decisions as evidence of bad faith.

With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the

Complainant.

B. Respondent

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

6. Discussion and Findings

6.1. Procedural Issues

A. Language of the Proceeding

The language of the Registration Agreement for the Disputed Domain Name is Vietnamese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the Parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the

registration agreement.

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The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons, including the fact that (i) the website under the Disputed Domain Name contains sections in English, including key links such as “Policies” and “Registrant Educational Information”, suggesting that the Respondent is likely capable of understanding English; (ii) the Disputed Domain Name

consists entirely of Latin characters and includes the Complainant’s well-known IBM trademark and the prefix

“w3”, which corresponds to IBM’s intranet service, the PPC advertisements displayed on the website
resolving from the Disputed Domain Name are also entirely in English, further indicating the Respondent’s
familiarity with the language; and (iii) the Complainant, based in the United States, has no knowledge of
Vietnamese and the use of another language other than English would impose a burden of cost on the
Complainant.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

B. Delay in Bringing the Complaint

The Panel finds that the Disputed Domain Name was registered on July 9, 2004, but the Complaint was not filed with the Center until June 11, 2025. In considering this delay of nearly 11 years in challenging the Respondent’s registration of the Disputed Domain Name, the Panel is of the same view as those in previous UDRP decisions mentioned in section 4.17 of the WIPO Overview 3.0, which held that “panels have widely recognized that 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”. However, similar to previous decisions, the Panel has taken into account this delay when considering the second and third elements requiring the Complainant to establish that the Respondent lacks rights or legitimate interests and that the Respondent has registered and used the Disputed Domain Name in bad faith (see, CeltonManx Limited v. Pham Dinh Nhut, WIPO Case No. D2014-0109).

C. Identity of the Respondent

The Panel notes that at the time the Complaint was filed on June 11, 2025, the Respondent was identified as
“John Doe”. On June 17, 2025, the Registrar revealed the underlying registrant of the Disputed Domain
Name as “Nguyễn Văn Lư” with detailed contact information. The Center sent an email communication to
the Complainant on June 25, 2025, providing the registrant and contact information disclosed by the
Registrar, and inviting the Complainant to submit an amendment to the Complaint.

On June 27, 2025, the Complainant filed an amended Complaint reflecting the underlying registrant and contact information disclosed by the Registrar. The Panel will treat “Nguyễn Văn Lư” as the Respondent for purposes of this proceeding.

D. The Respondent’s Failure to Respond

The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413, and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.

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6.2. Substantive Issues

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 entirety of the mark is reproduced 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.

Despite the insertion the term “w3” and a hyphen, the Panel concludes that this does not prevent a finding of the confusing similarity between the Disputed Domain Name and the Complainant’s trademark, as per the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Furthermore, the Panel determines that the inclusion of the generic Top-Level Domain (gTLD) “.com” in the

Disputed Domain Name is disregarded, as it is a technical necessity. WIPO Overview 3.0, section 1.11.1.

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.

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain
name or a name corresponding to the domain name in connection with a bona fide offering of goods or

services; or

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

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(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial
gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization in any kind to use the Complainant’s IBM trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered

trademark rights in any jurisdiction related to “IBM” element. Consequently, the Panel finds that the
Respondent lacks rights or legitimate interests in the IBM trademark.

The Complainant presented evidence that the Disputed Domain Name resolves to a parked page containing PPC links that redirect users to other websites. As of the date of this Decision, the Panel confirms that some of the PPC links refer, among other things, to computer products that compete with those of the

Complainant. In light of these findings, the Panel concludes that operating a PPC parking page using a trademark, where the links lead to products or services in direct competition with the trademark owner, does not constitute a bona fide offering of goods or services (see Section 2.9 of the WIPO Overview 3.0).

Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds no evidence indicating that the Respondent, whether as an individual, business, or entity, is commonly known by the Disputed Domain Name, nor is the Respondent making a legitimate noncommercial or fair use of it. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, it is more likely than not that the Respondent had full knowledge of the IBM

trademark and had an intention to gain profit by riding on the goodwill and reputation of the Complainant.

In addition, when a domain name closely matches a complainant’s trademark, this is an indication of potential confusion or implied endorsement. WIPO Overview 3.0, section 2.5.1. In the present case, the Disputed Domain Name incorporates the Complainant’s well-known IBM trademark in its entirety, with the addition of the prefix “w3”, which itself is associated with the Complainant’s internal intranet system. This combination increases the risk of confusion by suggesting a direct link to IBM’s digital infrastructure. Considering the Complainant’s global recognition and long-standing presence in the technology sector, it is likely that users may mistakenly associate the Disputed Domain Name with the Complainant. Therefore, the Panel confirms the finding that the Disputed Domain Name does not constitute a legitimate or fair use.

Based on the foregoing findings, 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.

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from
reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such
conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a
competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet
users to your website or other online location, by creating a likelihood of confusion with the Complainant’s

mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or
service on your website or location.”

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In the present case, the Panel finds that the Complainant has put forth evidence that the Respondent has
registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the
Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.

The Panel has considered the Complainant’s assertions and evidence relating to the Respondent’s registration and use of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s trademark has been registered and put in use in multiple jurisdictions globally and has gained a significant reputation in the information technology sector in many countries. These trademark registrations well predate the registration of the Disputed Domain Name.

Further, the Disputed Domain Name incorporates the Complainant’s IBM trademark in its entirety, differing only by the addition of the prefix “w3”, which is itself associated with the Complainant’s internal intranet platform. Since IBM is globally recognized and extensively used by the Complainant in connection with information technology products and services, the Panel finds it improbable that the Respondent registered the Disputed Domain Name without prior knowledge of the Complainant and its trademark. Instead, given that the Disputed Domain Name resolves to a parked page displaying PPC links referencing products and related services with those of the Complainant, it is likely that the Respondent was aware of the Complainant and its IBM trademark at the time of registration. From this, the Panel considers the registration to be an intentional attempt to benefit from Internet user confusion. See section 3.2.1 of the WIPO Overview 3.0.

Moreover, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In the Panel’s view, the registration of a domain name by a respondent with no such rights or interests, combined with the absence of any credible explanation for the choice of domain name, supports a finding of bad faith.

As of the date of this Decision, the Panel accessed the website at the Disputed Domain Name and finds that it resolves to a PPC parking page where several of the links relate to computer products and services, some of which compete with those offered by the Complainant. In light of these findings, the Panel concludes that the Respondent has intentionally attempted to attract Internet users to its website and derive income from

click-through traffic by creating a likelihood of confusion with the Complainant’s trademarks as to the source,
sponsorship, affiliation, or endorsement of its website, which is indicative of bad faith within the meaning of

paragraph 4(b)(iv) of the Policy.

In addition, the Panel finds that the bad faith registration and use of the Disputed Domain Name is also

affirmed by the Respondent’s pattern of conduct. In fact, the Respondent, Nguyễn Văn Lư, is a serial

cybersquatter who was involved in a pattern of several cybersquatting cases of domain name disputes,
namely, Thi Factory S.A. v. Vietnam Domain Privacy Services, Nguyễn Văn Lư, WIPO Case No.
D2019-2596; Squarespace, Inc. v. April Sea Information Technology Company Ltd. / Nguyễn Văn Lư, WIPO
Case No. D2019-3064; Skyscanner Limited v. Nguyễn Văn Lư, WIPO Case No. D2020-0672; xHamster IP

Holdings Ltd v. Nguyễn Văn Lư, WIPO Case No. D2020-3163; CenterPoint Energy, Inc. v. Nguyễn Văn Lư,

WIPO Case No. D2020-3300; Hillsong Church Inc. v. Nguyễn Văn Lư, WIPO Case No. D2021-0368;

National Collegiate Athletic Association v. Nguyễn Văn Lư, WIPO Case No. D2021-4050; Equifax Inc. v.

Nguyễn Văn Lư, WIPO Case No. D2022-2750.

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

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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 <w3-ibm.com> be transferred to the Complainant.

/Pham Nghiem Xuan Bac/
Pham Nghiem Xuan Bac
Sole Panelist
Date: August 12, 2025