International Business Machines Corporation v Emmanuel zacharias philip

WIPO Case No. D2025-1479

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

International Business Machines Corporation v. Emmanuel zacharias philip
Hoop

Case No. D2025-1479

1. The Parties

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

The Respondent is Emmanuel zacharias philip Hoop, Liechtenstein.

2. The Domain Name and Registrar

The disputed domain name <ibm-watsonx.com> is registered with Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2025. connection with the disputed domain name. On April 11, 2025, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which partly differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 14, 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 amendment to the Complaint on April 15, 2025.

The Center verified that the Complaint together with the amendment to the 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 17, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2025. The Respondent sent an email communication to the Center on April 22, 2025.

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The Center appointed Enrique Bardales Mendoza as the sole panelist in this matter on May 16, 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, whose origins date back to the 1880s, has long been recognized as a pioneer in the innovation, design and production of a wide range of products used to record, process, communicate, store and retrieve information, including computers, hardware, software and related accessories. Subsequently, the Complainant was formally incorporated in 1911, through the merger of three pre-existing companies, and officially adopted the name International Business Machines in 1924. As evidenced in Annexes 5.1, 5.8, 6.1, 6.5 and 6.8 to the Complaint, the Complaint owns, amongst others, the following trademark registrations:

- IBM, combined mark registered with the United States Patent and Trademark Office (“USPTO”) under No. 4181289 on July 31, 2012 in classes 9, 16, 18, 20, 21, 22, 28, 35, 41;

-	IBM, combined mark registered with the USPTO under No. 640606 on January 29, 1957 in class 9;
and
-	IBM WATSONX, registered with Institut National de la Propriété Industrielle, France, under No.

4971415 on October 13, 2023 in classes 9, 35, 42,

The disputed domain name <ibm-watsonx.com> was registered on November 23, 2024. The disputed domain name does not resolve to any active web page, but only to a page informing about the current status of the disputed domain name (Annex 17 to the Complaint).

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 it is identical or confusingly similar to the IBM WATSONX trademark.
The addition of the sign “-” and the additional generic Top-Level Domain (“gTLD”) “.com” to the

Complainant’s trademark does not prevent a finding of confusing similarity.

The Complainant claims to have well-known trademarks under its name, which is reinforced by previous
UDRP panel decisions (International Business Machines v. Niculescu Aron Razvan Nicolae, WIPO Case No.
DRO2010-0003, and International Business Machines Corporation v. Linux Security Systems srl, WIPO
Case No. DRO2010-0004).

According to the Complainant, the Respondent lacks rights or legitimate interests in the disputed domain name because:

(i) there is no relationship or authorization between the Complainant and the Respondent in respect of the
use of the IBM WATSONX mark.
(ii) the Respondent has not been commonly known by the disputed domain name or a related name.
(iii) the Respondent does not use the disputed domain name in connection with a bona fide offering of goods
or services.

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B. Respondent

The Respondent did not reply to the Complainant’s contentions. In response to the invitation to file a response, the Respondent answered: “If you pay me USD 300'000”.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that the following three elements are present in order to obtain the transfer or cancellation of the disputed domain name:

a. It must be demonstrated that the disputed domain name is identical or confusingly similar to a trademark
or service mark in which the complainant has rights.
b. It must be demonstrated that the Respondent has no rights or legitimate interests in respect of the
disputed domain name.
c. It is necessary to demonstrate that the disputed domain name has been registered and used in bad faith.

Since in the present case there was no formal response from the Respondent to the Complaint filed by the Complainant, the Panel can take as true those assertions of the Complainant that it considers reasonable (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No.

D2006-0292).

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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“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 Panel finds the marks IBM and IBM WATSONX are 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.

In this case, the disputed domain name reproduces the term “ibm-watsonx”, the term “ibm” precedes the term “watsonx”, and they are separated by a hyphen.

In addition, it is well established that the gTLD (in this case “.com”) is generally not considered when considering whether a disputed domain name is confusingly similar to the trademark in which the complainant has rights (see section 1.11.1 of the WIPO Overview 3.0).

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.

(i) before any notice of the dispute, the respondent’s 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

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(ii) the respondent (as an individual, business, or other organization) has been commonly known by the

domain name, in spite of not having acquired trademark or service mark rights; or

(iii) the respondent is 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.

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 Panel notes that there is no relationship or authorization between the Complainant and the Respondent concerning the use of the IBM WATSONX trademark. The Panel further finds that the Respondent has not used the disputed domain name for legitimate noncommercial or fair use, nor has the Respondent used it in connection with a bona fide offering of goods or services. Therefore, the Respondent has no rights or

legitimate interests in the disputed domain name

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

C. Registered and Used in Bad Faith

In the present case, the following circumstances demonstrate bad faith registration and use of the disputed domain name:

i) The disputed domain name was registered on November 23, 2024, long after the Complainant’s founding

(1924) and the registration of its trademarks: IBM (1957), and IBM WATSONX (2023);

ii) The Respondent has failed to provide any explanation for its choice of the disputed domain name nor
evidence of use or demonstrable preparations to use the disputed domain name in connection with a bona

fide offering of goods or services;

iii) The Respondent likely knew of the Complainant's existence because of its notoriety and online presence.
The notoriety of the trademarks was confirmed by previous UDRP panel decisions (e.g. International
Business Machines v. Niculescu Aron Razvan Nicolae, WIPO Case No. DRO02010-0003, and International

Business Machines Corporation v. Linux Security Systems srl, WIPO Case No. DRO2010-0004);

iv) While aggregating and holding for resale domain names consisting of acronyms, dictionary words, or
common phrases can be bona fide and is not per se illegitimate under the Policy, the Panel finds, on balance
of probabilities, that the Respondent registered the disputed domain name with the purpose of selling it at a
price likely in excess of his out-of-pocket costs directly related to the disputed domain name, presumably
knowing the Complainant could be a likely buyer, as supported by Annex 1 to the Complaint, which

demonstrates his bad faith;

v) The Respondent's failure to substantively respond to the Complaint.

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

/Enrique Bardales Mendoza/
Enrique Bardales Mendoza
Sole Panelist
Date: May 30, 2025