International Business Machines Corporation v. North Sound Names et al.
Claim Number: FA1406001563944
Complainant: International Business Machines Corporation of Armonk, New York, United States of America
Respondent: North Sound Names of Grand Cayman, KY; Respondent’s Repre-sentative: John Berryhill of Ridley Park, Pennsylvania, United States of America
REGISTRIES and REGISTRARS
Registries: Uniregistry, Corp.
Registrars: Uniregistrar Corp.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Examiner in this proceeding.
Terry F. Peppard, as Examiner
Complaint submitted: June 13, 2014
Commencement: June 17, 2014
Response Date: July 1, 2014
Having reviewed the relevant communication records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Proced-ure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspen-sion System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence
As here pertinent, 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:
1. The registered domain name is identical or confusingly similar to
a mark for which the Complainant holds a valid national or regional registration and that is in current use;
2. Registrant has no right to or legitimate interest in the disputed domain name; and
3. The same domain name was registered and is being used by Respondent in bad faith.
In its Complaint, Complainant shows that it holds valid registrations for the AIX and DB2 trademarks, both on file with the United States Patent and Trademark Office (word mark AIX registered October 17, 1989, Registry No. 1,560,640, in International Class 009 [computer programs for controlling the operation of com-puters and networks of computers], and registered September 12, 1989, Registry No. 1,555,750, in International Class 016 [books, manuals and documentation pertaining to computers, computer programs and computer operating systems]; and word mark DB2 registered July 9, 1991, as Registry No. 1,649,966, in Inter-national Class 009 [computer programs for database management and user and instruction manuals sold therewith], and that each of these marks is in current use. Respondent does not dispute any of this.
Complainant also shows that Respondent registered both of the domain names <aix.link> and <dbs.link> on April 15, 2014, and Respondent does not deny this.
Identity or confusing Similarity
There is no dispute that the domain names in question are substantively identical to Complainant’s marks, or that Complainant holds a valid registration for each of the marks and that they are in current use. Accordingly, we so find.
Registrant’s Rights or interests
Whether Registrant has rights to or legitimate interests in either of the contested domain names is in dispute. Complainant alleges that when an Internet user clicks on one of the links listed on the web pages resolving from either of the domain names, Respondent presumably receives income. Respondent does not deny this, instead conceding also that the domain names are part of a collection of “premium” three-letter domains which it has assembled primarily for sale to those seeking short monogrammatic or acronymic domain names.
Respondent also contends that neither of the trademarks AIX and DB2 is ex-clusive to Complainant. Respondent points to other uses in commerce of the AIX mark, including AIX Records (and <aixrecords.com>), AIX Insurance Group, vintner AIX Rose and restaurant AIX Brasserie. And Respondent also points to other uses of the DB2 mark, including the DB2 digital broadcast system of TC Electronic and the DB2 design group found at <db2.nl>.
In some circumstances, that Respondent profits or hopes to profit from the use of domain names which are substantively identical to Complainant’s marks might be taken as evidence that Respondent has no rights to or legitimate interests in them. However, we must also consider that, under the URS Procedure, Com-plainant’s claim of rights in the AIX and DB2 marks must be limited to the realms carved out for them in Complainant’s mark registrations, i.e.:
a. For AIX: “computer programs for controlling the operation of computers and networks of computers,” and “books, manuals and documentation pertaining to computers, computer programs and computer operating systems;” and
b. For DB2: “computer programs for database management and user and instruction manuals sold therewith.”
There is no evidence in the record to suggest that Respondent is attempting to create or exploit a connection between its use of the domain names and Com-plainant’s computer software and related database management business. In-deed the landing pages for the two domain names are devoid of any reference even indirectly pertinent to that business. Moreover, Respondent has presented a colorable rationale for a legitimate commercial use of the domain names away from Complainant’s business, and Respondent expressly disavows any intention either to use the domain names to conduct a computer software or database business or to sell the domain names to anyone having such an intention.
Further, URS Procedure 8.5 provides, in pertinent part, that:
The URS is not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse.
In light of this stricture, and on the spare facts presented, it cannot be said with confidence that Respondent is not making a bona fide offering of goods or ser-vices by means of the contested domain names. We must therefore conclude that Complainant has failed to demonstrate by clear and convincing evidence that Respondent has no rights to or legitimate interests in those domain names.
Bad Faith
URS Procedure 5.9.1 cautions that:
Trading in domain names for profit, and holding a large portfolio of domain names, are of themselves not indicia of bad faith ….
Likewise, URS Procedure 5.9.2 instructs that:
Sale of traffic (i.e. connecting domain names to parking pages and earning click-per-view revenue) does not in and of itself constitute bad faith under the URS.
Accordingly, on the record before us, and in light of the discussion above of Respondent’s claim of rights to and interests in the domain names, we cannot conclude from the facts presented that Respondent has registered and uses the domain names, or either of them, in bad faith.
There is no evidence in the record to suggest that the Complaint was brought by Complainant in abuse of this proceeding or that it contains material falsehoods.
Upon review of the parties’ submissions, and for all of the reasons set out above, we determine that Complainant has NOT demonstrated all required elements of the URS Procedure by clear and convincing evidence.
Therefore, it is Ordered that the <aix.link> and <db2.link> domain names be RETURNED to the control of Respondent.
Terry F. Peppard, Examiner
Dated: July 4, 2014
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