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Extended domain protection can protect against misuse

IBM is now waiting for the transfer of

Many companies have taken precautions a long time ago and have added the domains that are most important to them to their domain portfolio:
The domains are registered to the company's name and are in the best case consolidated into one place. The most important domains include at least the company name, registered trademarks and product names including variants (for example with and without legal form and misspelled domains). The following example shows how important regular monitoring of the portfolio and the domain market is:

The domain was registered by third parties, maliciously used and offered for sale. IBM (International Business Machines Corporation) based in the USA has therefore filed a complaint with the WIPO (World Intellectual Property Organization) with the claim to transfer this domain.

IBM was founded in 1911 and has been known worldwide for decades. In the 60s, the company reportedly produced 70% of all computers worldwide. Meanwhile, the focus is on computer services and software, with which the IBM brand is associated. The domain was anonymously registered by a proxy service on December 10, 2017 and is still used (as of January 7, 2019) to display pay-per-click links to computers and electronics.

In her complaint, the complainant cites past proceedings and decisions of WIPO with corresponding annexes. The core of the well-made plea is the statement that IBM is one of the best-known and most valuable brands in the world, thanks to the long usage and annual marketing budget of over a billion US dollars. Furthermore, the IBM trademark is protected by over 170 trademark and service mark registrations, has always been associated with computers and, according to the complainant, the Internet user will be deceived when visiting this domain. In addition, the respondent has no right or a legitimate interest to use the trademark. And since he also comes from the USA, the complainant assumes that he has malicious intent because he should be aware of the trademark. She therefore demands that the domain be transferred to her for the reasons stated. The respondent did not comment this complaint.

WIPO agrees with the complainant that the domain name is identical or similar to its trademark. The addition of the word "computer" to its trade mark does not preclude confusion. Furthermore, there is no evidence that the respondent has rights or a legitimate interest in this domain. This could be the reason why the defendant did not react to the WIPO proceedings. The conclusion could only be that with this registration he deliberately tried to profit from the reputation of the trademark "IBM". WIPO also agrees that the domain was used maliciously because it is inconceivable that the respondent accidentally and unknowingly registered the domain. WIPO therefore decides that the domain will be transferred to the complainant.

The complete decision D2018-2046 can be found on the WIPO website. To date (01/07/2019), no transfer has yet been carried out. However, the domain was set to a status last month that prohibits changes until the transfer.

This process was filed with WIPO in September 2018, giving the respondent enough time to earn enough money with pay-per-click links and annoy (potential) IBM customers. The domain is freely available and can be registered at any time - we are curious whether this will happen.

A WIPO procedure costs at least a four-digit amount, the registration of a .com domain is in the low two-digit range. We therefore recommend that you regularly check your portfolio, add additional domains and monitor relevant domains.


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