The Complainant is International Business Machines Corporation, United States of America (“United States”), internally represented.
The Respondent is Nick Paleveda, Moneymasterspbs Inc., United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2021. On February 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 10, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 February 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2021. The Responses were filed with the Center on February 26, 2021 and on March 3, 2021. The Center appointed Evan D. Brown as the sole panelist in this matter on March 17, 2021. 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 provides a broad range of goods and services, including information technology related goods and services. It owns trademark registrations around the world for the mark IBM, including United States Reg. No. 640,606, registered on January 29, 1957. The disputed domain name was registered on September 24, 2020. The Respondent has used the disputed domain name to publish online videos in a variety of categories. In a recent UDRP decision, International Business Machines Corporation (IBM) v. Nicholas Paleveda, IBM.TV,WIPO Case No. D2020-2030 (the “Prior Case”), the Complainant was successful in obtaining the transfer of several other domain names (which included the trademark IBM) from the same Respondent, based on underlying facts similar to this case. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent denies most of the Complainant’s assertions, arguing principally that IBM does not have the exclusive right to use the letters “ibm”, that fair use gives the Respondent rights or legitimate interests, and that the disputed domain name was not registered or used in bad faith. According to the Respondent, “ibmtv” stands for “International Broadcast Media Television. MoneymastersPBS is a not-for-profit company incorporated on July 1, 2016 with a “mission to improve financial literacy around the world and provide programs for underserved communities around the world. It has been consistent “to provide clean and evergreen programs and since 2017 using IBMTV.TV as a distribution platform for helping people worldwide improve their lives by watching “Smart Television””. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied, namely, that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel finds that the Complainant has established all three of these elements. A. Identical or Confusingly Similar A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the IBM mark by providing evidence of its trademark registrations. The disputed domain name incorporates the IBM mark in its entirety. This is sufficient for showing confusing similarity under the Policy. The Panel finds that the Complainant has established this first element under the Policy. B. Rights or Legitimate Interests The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. On this point, the Complainant asserts, among other things, that: - The Respondent has not been licensed, contracted or otherwise permitted by the Complainant in any way to register any domain name incorporating the IBM trademark, nor has the Complainant acquiesced in any way to the registration of the disputed domain name. Though the Complainant granted a license to the Respondent to the IBM trademark in 2017 and 2018, the scope of such use was (i) limited only to identify IBM interviewees on a TV miniseries regarding IoT software and (ii) has long since expired. - The Respondent has been actively using the IBM trademark in the disputed domain name to promote its website for illegitimate commercial gains. Such unauthorized use of the IBM trademark is likely to trick consumers into erroneously believing that the Complainant is somehow affiliated with the Respondent or endorsing its commercial activities, while in fact, no such relationship exists. - There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with any bona fide offering of goods or services. - The Respondent has not been commonly known by the disputed domain name. - The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Panel finds that the Complainant has made the required prima facie showing. The Respondent argues that it is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, and not trying to misleadingly divert consumers or to tarnish the IBM trademark. The Respondent claims to be known as International Broadcast Media, apparently to assert that the use of the letters “IBM” is legitimate. The website currently published at the disputed domain name appears to be commercial, despite the Respondent’s assertions that it is noncommercial. There is a page called “Pricing Plans” where users can sign up for a Silver Plan or a Gold Plan to access premium content, for USD 2.99 and USD 9.99, respectively. These facts are inconsistent with the Respondent’s assertion that the use of the disputed domain name is noncommercial. And the Panel rejects the notion that the disputed domain name is protected by fair use as the doctrine is found in the case of Toyota Motor Sales, USA, Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010) (“Tabari”). As a threshold matter, the Respondent’s invocation of fair use is misplaced. The Respondent is not using, nor claiming to use the IBM mark to communicate any fact about the Complainant or its goods or services. In other words, there are no facts here that necessitate a fair use analysis. In this case, when the Respondent says IBM, it means its own online video platform, not any referential use of the Complainant’s mark. That argument invites an ordinary likelihood of confusion analysis, not a fair use analysis. The Panel does not agree with the Respondent’s implication that the disputed domain name in this case does not actively claim affiliation with the Complainant. The disputed domain name is comprised of the Complainant’s IBM mark plus the term “TV”. The Panel believes that an ordinary, reasonable Internet user would expect the content on a site at the disputed domain name to be video content provided by the Complainant. See generally in this regard, section 2.5.1 of the WIPO Overview 3.0, stating in relevant part: “where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. As described in more detail below and in sections 2.6 through section 2.8, UDRP panels have articulated a broad continuum of factors useful in assessing possible implied sponsorship or endorsement. At one end, certain geographic terms (e.g., At the other extreme, certain critical terms (e.g., Just like the addition of “e-” merely indicates the electronic version of a brand, and a location modifier following a trademark indicates that consumers can expect to find the brand’s local presence, the word “TV” following a famous brand is prima facie likely to signal to the Internet user that the online location is where one can find video content provided by that famous brand. “IBM TV” is plausibly (indeed, more likely than not to be) understood as audiovisual content provided by IBM. Finally, the Panel sees no basis on which to credit the Respondent’s assertion that it is known as International Broadcast Media. Those words do not appear on the website at the disputed domain name. They are not in the WhoIs information for the disputed domain name, nor in the information provided to the Center by the Registrar. The Respondent has provided no business registration documents showing that name. The lack of extrinsic evidence coupled with the Respondent’s clear knowledge of the Complainant inter alia via its prior limited license undermines the Respondent’s assertions that its business is known as International Broadcast Media. The Panel finds that the Complainant has established this second element under the Policy. C. Registered and Used in Bad Faith The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location”. Given the past limited licensing relationship between the Complainant and the Respondent, there is little room to doubt that the Respondent targeted the Complainant when it registered the disputed domain name. The fact that the domain name was registered while the Prior Case was pending, indeed after the Respondent had been notified of that action, further shows the Respondent intentionally targeted the Complainant. This shows bad faith registration. As discussed under the second element above, it is clear that the website appearing at the disputed domain name is for commercial purposes. The Respondent’s use of the disputed domain name (which wholly appropriates the IBM mark) to set up an online commercial enterprise is a clear example of bad faith under the Policy as per paragraph 4(b)(iv) of the Policy. The Panel finds that the Complainant has met this third element under 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 Evan D. Brown
Sole Panelist
Date: April 12, 2021
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