WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Business Machines Corporation (IBM) v. Nicholas Paleveda, IBM.TV

Case No. D2020-2030

1. The Parties

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

Respondent is Nicholas Paleveda, IBM.TV, United States of America.

2. The Domain Names and Registrar

The disputed domain names <ibmchess.com>, <ibmchess.tv> and <ibm.tv> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2020. On August 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 3, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2020. The Response was filed with the Center on September 5, 2020.

The Center appointed Robert A. Badgley as the sole panelist in this matter on October 2, 2020. 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

Complainant’s roots trace back to the Nineteenth Century. Complainant describes itself as “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, software and accessories”.

Complainant has used the trademark IBM for more than a century. Complainant holds trademark registrations for IBM in 170 countries, including numerous registrations with the United States Patent & Trademark Office (“USPTO”), such as USPTO Reg. No. 640,606 (registered January 29, 1957) and USPTO Reg. No. 4,181,289 (registered July 31, 2012).

The Domain Name <ibm.tv> was registered on November 1, 2017, and the other two Domain Names were registered on June 3, 2019.

Respondent Mr. Paleveda apparently is the driving force behind Respondent MoneymastersPBS, a not-for-profit company founded in 2016 “with a mission to improve financial literacy around the world and provide programs for underserved communities around the world”. According to Respondent:

“MoneymastersPBS was filming educational television shows which were impossible to distribute in the USA market so in 2017, while filming with IBM, Moneymasters acquired [the Domain Name] IBM.TV to create a distribution channel for its programs.”

Respondent states that Complainant did not object to this Domain Name registration at the time.

Complainant licensed the IBM mark to Respondent from October 23, 2017 to October 22, 2018, with the scope of such use “limited only to identify IBM interviewees on a TV series regarding IoT softwar”. This license agreement contains numerous provisions which prevent Respondent from using the IBM mark in various manners. The license agreement does not refer specifically to domain names, but makes it clear that Respondent’s use of the mark is limited to the specific miniseries noted above.

As noted above, the Domain Names <ibmchess.tv> and <ibmchess.com> were registered after the license agreement expired.

The Domain Name <ibm.tv> resolves to an active website that appears to offer music videos and other content. The site also contains some third-party advertising. The website contains the following statement:

“IBM.TV is an independent not for profit company started out of a collaboration with IBM. IBM.TV does NOT provide any technology services or products such as hardware, software, cloud computing, but is a fan of companies such as IBM which uses technology to help people around the world. We exist to serve underserved communities‚Ķ”

The other Domain Names resolve to parking pages with hyperlinks to various sites, including online chess and desktop computers. These Domain Names are offered for sale at the parking page.

On June 14, 2019, Complainant’s counsel sent Respondent a cease-and-desist letter. Complainant first noted that Respondent’s website at <ibm.tv> was displaying Complainant’s stylized logo despite the expiration of the license agreement eight months earlier. Complainant also stated that the Domain Names themselves were not authorized by Complainant, and demanded that Respondent transfer the three Domain Names.

Respondent removed the IBM logo from its website, but took no action with respect to the Domain Names.

Complainant’s counsel sent another letter to Respondent on May 6, 2020. This time, Complainant demanded that Respondent remove the IBM logo from Respondent’s social media pages, and transfer the Domain Names. Respondent removed the logos, but took no action regarding the Domain Names.

Respondent asserts that “IBM.TV is educational media a/k/a International Broadcast Media”. There is no evidence in the record that Respondent has actually used the brand “International Broadcast Media”.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established each element required for a transfer of the Domain Names.

B. Respondent

Respondent asserts that he has a legitimate interest in respect of the Domain Names. Respondent asserts that he is “making a legitimate non-commercial or fair use” of the Domain Names. Respondent also notes that numerous other entities incorporate the letters “IBM” in their names, such as IBMTC (Indiana Business Management and Technology Corporation) and IBMBS (International Behavioral & Medical Biometrics Society).

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the trademark IBM through longstanding registration and use. The Panel also concludes that each of the Domain Names is identical or confusingly similar to the IBM mark. The Domain Name <ibm.tv> is identical to the IBM mark. The other two Domain Names, which incorporate the mark IBM and add the dictionary word “chess”, are confusingly similar to the IBM mark. The dominant element of these Domain Names is the mark IBM, which is clearly recognizable within the Domain Names.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your 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

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names. As respects the Domain Names <ibmchess.com> and <ibmchess.tv>, these were registered several months after the license agreement between the Parties expired. At that point, Respondent had no arguable right to use the IBM mark in the Domain Names.

As respects the Domain Name <ibm.tv>, which was registered a few days after the license agreement went into effect, the Panel also concludes that Respondent has no rights or legitimate interests in that Domain Name. As noted above, the license agreement made no reference to domain names, but it certainly restricted Respondent’s rights vis-√†-vis the IBM trademark. Indeed, the license agreement allowed Respondent to use IBM’s stylized IBM mark for very limited purposes. That agreement cannot be reasonably read to have given Respondent permission to use the letters IBM in a domain name.

With regard to Respondent’s point about other entities using abbreviations that start with the letters “IBM”, it is true that Complainant does not hold a monopoly over any and all abbreviations beginning with the letters “IBM”. Respondent’s situation, however, is different from those third-party examples. Respondent himself claims that he is using “IBM.TV” to mean “International Broadcast Media”. In other words, Respondent is admitting to trying to adopt the trademark “IBM”, without more. Given the longstanding and worldwide fame of Complainant’s IBM mark, in connection with computers, software, and technology (which products and services are often associated closely with modern broadcasting and media services), such use as alleged (though not proven) by Respondent would clearly be violative of Complainant’s rights in the strong IBM mark.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered or Used in Bad Faith

For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted 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 of a product or service on Respondent’s website or location.

The Panel concludes that Respondent registered and used the Domain Names in bad faith. The Panel finds that Respondent registered the Domain Name <ibm.tv> with obvious awareness of Complainant’s mark, in violation of a license agreement that closely circumscribed the circumstances under which Respondent could use the stylized IBM logo. The other two Domain Names, registered long after the license agreement expired, were clearly in bad faith. At that point, Respondent had absolutely no relationship with Complainant.

As respects bad faith use, the Panel incorporates its discussion above in the “Rights or Legitimate Interests” section. All three Domain Names are being used in bad faith within the meaning of the above-quoted Policy paragraph 4(b)(iv). As noted above, the Domain Name <ibm.tv> resolves to an active website that appears to offer music videos and other content. The site also contains some third-party advertising. Respondent is more likely than not deriving commercial gain from the advertising. The website contains some indication that Respondent is not formally related to Complainant, but then states that Respondent “started out of a collaboration with IBM”. This suggests some ongoing affiliation with, or approval of, Complainant, which the record in this case does not support.

As respects the two other Domain Names, both registered after the license agreement expired, they resolve to parking pages with hyperlinks to various sites, including desktop computers. The Panel finds it more likely than not that Respondent derives per-click revenue from these hyperlinks, and the links to “desktop computers” is clearly improper of Complainant’s product line over the years.

Complainant has established Policy, paragraph 4(a)(iii).

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 Domain Names <ibmchess.com>, <ibmchess.tv>, and <ibm.tv> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: October 10, 2020