WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viacom International Inc. v. Ir Suryani
Case No. D2001-1443
1. The Parties
The Complainant is Viacom International Inc., doing business at Broadway, New York, New York 10036 United States of America.
The Respondent is Ir Suryani, having a post office address of Surabaya Jawa Timur 89785 Indonesia.
2. The Domain Name and Registrar
The domain name is .
The Registrar is Address Creation, doing business at 53 Barcelona, Irvine, California 92614 United States of America.
3. Procedural History
On December 8 and 11, 2001, a Complaint about the domain name, was filed in electronic form and in hard copy, respectively, by the Complainant with the WIPO Arbitration and Mediation Center ("the Center").
On December 17, 2001, the Center transmitted by email to the Registrar a request for verification in connection with this case, and on January 8, 2002, the Registrar transmitted by email to the Center a verification confirming that the Registrant for the domain name is the Respondent.
On January 11, 2002, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers, 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").
On January 14, 2002, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding by email and post to Respondent. The due date for a response was indicated as February 3, 2002.
On February 5, 2002, the Center sent Notification of Respondent Default by email to Respondent as no response had been received by the due date.
On March 5, 2002, the undersigned Panelist, Mr. Mark Yang, submitted to the Center a Statement of Acceptance and Declaration of Impartiality and Independence.
On March 6, 2002, the Center transmitted by email to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Mark Yang was formally appointed as the Sole Panelist and the projected decision date was March 20, 2002.
The Sole Panelist is satisfied with the Center�s assessment that it verified the Complaint�s compliance with the relevant requirements of the Rules, Supplemental Rules and Policy, and that this Administrative Panel (hereinafter, "Panel") was properly constituted and appointed in accordance therewith.
This Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and this Panel has not found it necessary to request any further information from the parties (taking note of the Respondent�s default in responding to the Complaint).
Having reviewed the communication records in the case file provided by the Center, this Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, this Panel shall issue its decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of the Respondent�s response.
4. Factual Background
The Respondent registered the domain name on September 18, 2001, with the Registrar.
In the Complaint (at paragraph 10(A), subparagraphs (i) to (xii), and at paragraph 10(B), subparagraphs (i) to (vii)), and associated Exhibits, the Complainant submitted evidence and contentions of various factual and legal conclusions based on such evidence.
Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. This Panel�s position is amplified below (in Discussion and Findings).
In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence [1]. This Panel has some hesitation on several minor points.
(1) the contention (in paragraph 10(B) subparagraph (i) of the Complaint) that the Complainant has used the trademark BLUE�S CLUES in Indonesia for at least two years, is perhaps consistent with the contention that its Nickelodeon programming services have been available in Indonesia since 1999 but may not necessarily be consistent with the contention that the BLUE�S CLUES program first aired in Indonesia in April of 2001 (see paragraph 10(A) subparagraph (x) of the Complaint for latter two contentions).
(2) This Panel does not accept the Complainant�s contention (in paragraph 10(B) subparagraph (vi) of the Complaint) that the cartoon cat in the upper left-hand corner of the home page "�capitalizes on the fame of the BLUE�S CLUES program�". This Panel is aware that that particular depiction of a cat is a "public domain" cat well known in Asia with no association with any particular entity.
These minor points do not affect the final decision of this Panel.
5. Parties� Contentions
A. The Complainant alleges that the domain name, , is identical or confusingly similar to trademark BLUE�S CLUES in which the Complainant has rights, that the Respondent has no rights to or legitimate interest in the domain name, and that the domain name is registered and being used in bad faith by the Respondent. The Complainant requests the transfer of the domain name to the Complainant.
B. The Respondent has not filed a response to the Complaint, and is in default.
6. Discussion and Findings
One requirement of fundamental due process is that a Respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules and Supplemental Rules establish procedures intended to assure that a Respondent is given adequate notice of proceedings commenced against it, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
In this case, this Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a response to the Complaint is not due to any omission by the Center. There is sufficient evidence, in the case file provided by the Center, for this Panel to conclude the Center discharged its obligations under Rules, paragraph 2(a) (see Procedural History, supra).
Where there is default, under Rule 14(a), "this Panel shall proceed to a decision on the complaint", and under the Rule 14(b), "this Panel shall draw such inferences [from the default] as it considers appropriate". Furthermore, Rule 15(a) provides that a "Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems appropriate". Since the Respondent has not submitted any material and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant.
Paragraph 4(a) of the Policy sets forth three elements to be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. Each of the following three elements must be established by a Complainant:
(I) Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(II) Respondent has no rights or legitimate interests in respect of the domain name; and
(III) Respondent�s domain name has been registered and is being used in bad faith.
I. The Respondent�s domain name is identical or confusingly similar to the trademark BLUE�S CLUES in which the Complainant has rights.
Based on the uncontroverted evidence submitted by the Complainant and the facts and conclusions contended for (see Factual Background, above), this Panel finds that:
(a) the Complainant registered the trademark BLUE�S CLUES in the United States of America, Indonesia and elsewhere, in association with a variety of services and wares; and
(b) the Complainant has extensively used its trademark BLUE�S CLUES in commercializing its wares and services in the United States of America and Indonesia and elsewhere and in particular, has used it in its website, which is accessible to consumers in Indonesia, the United States of America and elsewhere.
This Panel finds that the Complainant has significant rights in its trademark BLUE�S CLUES in the United States of America, Indonesia and elsewhere.
This Panel finds that that omission of the apostrophe from the word BLUE�S and its concatenation with the word CLUES to form the word BLUESCLUES, is of no legal significance to distinguish the words BLUE�S CLUES from the word BLUESCLUES.
Accordingly, this Panel finds that the domain name is confusingly similar, if not identical, to the BLUE�S CLUES in which the Complainant has rights.
II. Respondent has no rights or legitimate interests in respect of the domain name
Respondent has submitted no evidence, generally, and none under paragraph 4(c) of the Policy in particular, to support a finding of it having any rights or legitimate interests in respect of the domain name.
Furthermore, based on the uncontroverted evidence submitted by the Complainant and the factual and legal and conclusions contended for (see Factual Background, above), this Panel accepts in large measure, the evidence and contentions of factual and legal and conclusions set out in the Complaint at paragraph 10(C) subparagraphs (iv) to (ix). In particular, this Panel finds that the Complainant�s aforementioned activities (a) and (b) under I above, were likely well known by the Respondent when it registered the domain name and that makes it very difficult, even if it had submitted evidence, for it to show it had rights or legitimate interests in the domain name .
Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
III. Respondent�s domain name has been registered and is being used in bad faith
Based on the uncontroverted evidence submitted by the Complainant and the factual and legal conclusions contended for (see Factual Background, above), this Panel accepts in large measure, the evidence and contentions set out in the Complaint at paragraph 10(C) subparagraphs (xi) to (xvi). In particular, the domain name was registered in bad faith because, amongst other reasons, it was done with knowledge of the Complainant�s prior trademark registrations of BLUE�S CLUES (in Indonesia, the United States of America and elsewhere) and its extensive use of BLUE�S CLUES as a trademark in the commercialization of its wares and services. Also in particular, the domain name is being used in bad faith because, amongst other reasons, the use is to divert Internet use traffic to the Respondent�s website, with a false association to the Complainant and its trademark BLUE�S CLUES.
This Panel finds that the Respondent�s domain name has been registered and is being used in bad faith.
7. Decision
This Panel finds, within the meaning of paragraph 4(a) of the Policy, that the domain name is confusingly similar to Complainant�s trademark BLUE�S CLUES in which it has rights; that the Respondent has no rights or legitimate interests in respect of the domain name; and that the domain name has been registered and is being used in bad faith by the Respondent.
This Panel orders that the domain name be transferred to the Complainant, Viacom International Inc.
Mark Yang
Sole Panelist
Date: March 20, 2002
Footnote:
1. This Panel considers that in paragraphs 10(B) subparagraphs (v) and (vi) of the Complaint, the Respondent is mis-titled "Opposer" through a typographical error.
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