International Business Machines Corporation (Ibm) v Zachary Silva

WIPO Case No. D2025-1941

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

International Business Machines Corporation (IBM) v. Zachary Silva,
Catenact.io

Case No. D2025-1941

1. The Parties

The Complainant is International Business Machines Corporation (IBM), United States of America, internally represented.

The Respondent is Zachary Silva, Catenact.io, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ibmwatsonxai.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2025. On May 15, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On May 15, 2025, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 16, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an

amendment to the Complaint on May 16, 2025.

The Center verif ied that the Complaint together with the amendment to the Complaint satisf ied 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notif ied the Respondent of the Complaint, and the proceedings commenced on May 19, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2025. The Respondent sent an email communication to the Center on June 10, 2025, indicating its willingness to suspend the proceedings and discuss settlement with the Complainant. The Complainant requested suspension of the proceedings on June 11, 2025.

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The proceedings were suspended on June 12, 2025, for purposes of settlement discussions, and reinstituted on July 18, 2025, in accordance with the Complainant’s request. The Center informed the Parties it would proceed with Panel Appointment on August 5, 2025.

The Center appointed Joseph Simone as the sole panelist in this matter on August 8, 2025. The Panel f inds 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, International Business Machines Corporation, is a world-famous company that has been a leading innovator in the design and manufacture of a wide array of products that record, process, communicate, store and retrieve information, including computers and computer hardware, sof tware and accessories. The Complainant was ranked the 49th largest company on the Fortune United States of America 500 list, and the 168th largest company on the Fortune Global 500 list in 2022.

The Complainant has an extensive global portfolio of trade mark registrations incorporating the IBM,

WATSONX and IBM WATSONX marks, including the following:

- United States of America Trade Mark Registration No. 3002164 for IBM in Class 9, registered on
September 27, 2005;

- International Trade Mark Registration No. 1770434 for WATSONX in Classes 9, 35 and 42,
designating inter alia Australia, the European Union Intellectual Property Of f ice, India, Japan and
United Arab Emirates (UAE), registered on September 18, 2023;

- United States of America Trade Mark Registration No. 7656559 for WATSONX in Classes 9, 35 and
42, registered on January 21, 2025;

- International Trade Mark Registration No. 1773583 for IBM WATSONX in Classes 9, 35 and 42,
designating inter alia Chile, China and Mexico, registered on August 31, 2023; and

- United States of America Trade Mark Registration No. 7691371 for IBM WATSONX in Classes 9, 35
and 42, registered on February 18, 2025.

The disputed domain name was registered on December 8, 2024. The evidence provided by the Complainant further indicates that at the time of filing of the Complaint, the disputed domain name resolved to a pay-per-click site. At the time of issuance of this Decision, the disputed domain name resolved to an error page.

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 disputed domain name registered by the Respondent is identical or confusingly similar to the Complainant’s IBM, WATSONX and IBM WATSONX trade marks.

Furthermore, the Complainant argues that because of the addition of the term “ai”, the disputed domain name can falsely appear to be associated with the Complainant.

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The Complainant asserts that it has not authorized the Respondent to use the IBM, WATSONX and IBM WATSONX marks, and there is no evidence to suggest that the Respondent has used, or has undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide of fering of goods or services.

The Complainant also claims there is no evidence that the Respondent has any connection to the IBM, WATSONX and IBM WATSONX marks, and that there is no plausible good faith reason for the Respondent to have registered the disputed domain name. The Complainant therefore argues that the registration and any use of the disputed domain name must be in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, however sent an email on June 10, 2025, indicating its willingness to discuss settling with the Complainant. No further communication was received f rom the Respondent.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the f irst 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 trade mark and the disputed domain name. WIPO Overview of WIPO Panel
Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Panel acknowledges that the Complainant has established rights in the IBM, WATSONX and IBM WATSONX trade marks in multiple jurisdictions around the world. WIPO Overview 3.0, section 1.2.1.

Disregarding the generic Top Level Domain (“gTLD”) “.com”, the disputed domain name incorporates the domain name should be regarded as confusingly similar to the Complainant’s IBM, WATSONX and IBM WATSONX trade marks. The inclusion of the additional term “ai” does not prevent a f inding of confusing similarity. WIPO Overview 3.0, sections 1.7, 1.8 and 1.11.1.

The Panel therefore finds that the Complainant has satisf ied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the IBM, WATSONX and IBM WATSONX trade marks and in showing that the disputed domain name is confusingly similar to its marks.

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 of ten 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 satisf ied the second element. WIPO Overview 3.0,

section 2.1.

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In this case, the Complainant asserts that it has not authorized the Respondent to use its trade marks and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Having reviewed the available records, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The composition of the disputed domain name, incorporating the Complainant’s distinctive trade marks (one of which also corresponds to the Complainant’s company name) with the term “ai” (which is commonly used as the abbreviation of “artificial intelligence”), indicates the Respondent’s intent to cause consumer confusion between the disputed domain name and the Complainant with respect to the origin of the website and a possible affiliation between it and the Complainant. This carries a risk of implied affiliation, sponsorship, or endorsement with the Complainant, ref lecting an attempt to take unfair advantage of the Complainant’s fame. WIPO Overview 3.0, section 2.5.1. The Respondent did not f ile any evidence or address any

substantive issues in its communication, and has therefore failed to assert factors or put forth evidence to establish that it enjoys rights or legitimate interests in the disputed domain name. Meanwhile, no evidence has been provided to demonstrate that the Respondent, prior to the notice of the dispute, had used or demonstrated its preparation to use the disputed domain name in connection with a bona f ide of fering of goods or services.

There is also no evidence to show that the Respondent has been commonly known by the disputed domain name or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

As such, the Panel concludes that the Respondent has failed to rebut the Complainant’s prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name, and that none of the circumstances of paragraph 4(c) of the Policy are applicable in this case.

Accordingly, and based on the Panel’s findings above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The third and f inal element that a complainant must prove is that the respondent has registered and is using the disputed domain name in bad faith.

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered as evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trade mark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of -pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the

owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided
that the respondent has engaged in a pattern of such conduct; or

(iii)      circumstances indicating that the respondent has registered the domain name primarily for the

purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, af f iliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

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The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances in which bad faith may be found. Other circumstances may also be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith (WIPO Overview 3.0, section 3.2.1).

For reasons discussed below and under the preceding heading, the Panel believes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name.

When the Respondent registered the disputed domain name, the IBM, WATSONX and IBM WATSONX trade marks were already widely known and directly associated with the Complainant’s activities. UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4.

Given the extensive prior use and fame of the Complainant’s marks, in the Panel’s view, the Respondent should have been aware of the Complainant’s marks when registering the disputed domain name.

The Complainant’s registered trade mark rights in IBM, WATSONX and IBM WATSONX for its products and services predate the registration date of the disputed domain name. A simple online search for the terms “ibm”, “watsonx” and “ibm watsonx” would have revealed that it is an established brand. WIPO Overview 3.0, section 3.2.2.

The Respondent has not presented any evidence or explanation to justify its choice of the terms “ibm”, “watsonx”, and “ai” in the disputed domain name. Considering that the term “ai”, which is a widely used abbreviation for “artif icial intelligence”, directly relates to the Complainant’s business, the Panel f inds it unlikely that the Respondent’s selection of the term “ai” in combination with the Complainant’s trade marks is coincidental.

The Panel is therefore of the view that the Respondent registered the disputed domain name with knowledge of the Complainant’s trade mark rights.

The Respondent appears to be trading on the goodwill of the Complainant’s trade marks as well. The Panel f inds that, by having had the disputed domain name resolve to a website with pay-per-click links related to the Complainant’s business, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trade marks, which constitutes bad faith for purposes of paragraph 4(b)(iv) of the Policy. Therefore, the Panel f inds that the Respondent has engaged in a pattern of bad faith conduct, thereby indicating bad faith for purposes of paragraph 4(b)(ii) 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 <ibmwatsonxai.com> be transferred to the Complainant.

/Joseph Simone/
Joseph Simone
Sole Panelist
Date: August 22, 2025