WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viacom International Inc. v. All In Marketing LLC
Case No. D2008-0155
1. The Parties
The Complainant is Viacom International Inc., New York, New York, United States of America, represented by Davis Wright Tremaine LLP, United States of America.
The Respondent is All In Marketing LLC, Charlestown, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2008. On January 31, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name(s) at issue. On February 1, 2008, GoD, Inc. 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2008.
The Center appointed Adam Samuel as the sole panelist in this matter on March 4, 2008. 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 has had a registered trademark in the United States America for the word mark PIMP MY RIDE since May 17, 2005. The application for this was filed on November 3, 2003.
5. Parties’ Contentions
A. Complainant
This section contains the Complainant’s submissions. All of these are not necessarily accepted by the Panel. However, to avoid repetition, their presentation does not include further references to the fact that these are only submissions or contentions.
The Complainant’s wholly-owned subsidiary MTV Networks produces a reality television series entitled “Pimp My Ride”. Each episode features a car, chosen from among submissions sent in by viewers which is then restored and customized by the programme’s experts. The programme has become famous worldwide.
The Complainant applied for a trademark registration for the mark PIMP MY RIDE in anticipation of the launch of the show. The disputed domain name is identical to the registered mark except for the addition of the generic top-level domain signifier is insignificant. Since domain names are not case sensitive, the use of the Domain Name in lower case lettering nonetheless creates a confusingly similar domain.
Internet users will probably think that a website using the PIMP MY RIDE mark was owned or operated or at the very least affiliated with the Complainant or its MTV subsidiary.
The domain name was registered by the Respondent three months after the Complainant had filed its trademark application for PIMP MY RIDE and only four weeks before the highly anticipated show was first aired while the show was receiving considerable advance publicity.
There is no evidence that the Respondent or any of his businesses has been commonly known by the domain name or any variant of it. The Respondent is not a licensee of the Complainant or its subsidiaries. Nor is it authorized to use the Complainant’s trademarks in any way. The Respondent’s use of the Complainant’s mark in the domain name directly violates the Complainant’s exclusive trademark rights.
The domain name resolves to an extensive website which includes information on car modification, related and unrelated advertising and many links to subpages or related commercial sites offering commercial goods or services related to car modification. This is not a bona fide offering of goods and services.
The Respondent is operating an illegal scam through the domain name. The Respondent is soliciting on the homepage of the website applications from consumers to have their car pimped. Many consumers who complete this form do so in the mistaken belief that they are submitting their car to appear on the Complainant’s television show. Those who complete the form are prompted to send an application fee to the Respondent which is not refunded once the consumer realizes the deception. The use of the domain name for illegal activity is clear evidence of bad faith use.
The very act of registering the domain name so obviously connected with the Complainant suggests if not establishes opportunistic bad faith on the part of the Respondent.
The timing of the Respondent’s registration indicates his bad faith registration. The timing was intended to profit from the “Pimp My Ride” show and the publicity and goodwill already being generated by the Complainant in its trademark. The filing of a trademark application is constructive notice sufficient to indicate bad faith registration.
The Respondent is, in using a domain name that incorporates the Complainant’s mark, intentionally seeking to exploit user confusing by diverting internet users away from the legitimate website belonging to the Complainant relating to the MTV show to the Respondent’s website for its own benefit and commercial gain. The Respondent is operating an illegal scam on its website through which it knowingly profits from consumer confusion over the Complainant’s sponsorship of or affiliation with the website by soliciting application fees for service that it is unable to deliver.
The Respondent’s homepage contains a prominent tab labeled “Pimpmyride Game”. If a user clicks on the tab, a framed link appears to the MTV website and the game there produced by the Complainant in association with the television series. The Respondent’s unauthorized use of the Complainant’s original creative work is likely to confuse consumers further into believing that the Respondent’s website is endorsed by or affiliated with the Complainant.
Finally, the Complainant contends that failing to respond to a cease and desist letter sent by the Complainant is further evidence of the Respondent’s bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the 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 disputed domain name consists of the Complainant’s US registered trademark set out in lower case with the addition of the generic top-level domain signifier. The fact that registration of the domain name occurred before the date of trademark registration is not relevant here. The issue under Paragraph 4(a)(i) of the Policy is only whether the domain name “is” not “was at the time of registration” confusingly similar to a trademark in which the Complainant has rights; as the panel concluded in AB Svenska Spel v. Andrey Zacharov,WIPO Case No. D2003-0527:
“Paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name. The fact that the disputed Domain Name predates Complainant’s trademark registration may only be relevant to the assessment of bad faith pursuant to Paragraph 4(a)(iii), which is considered below.”
For these reasons, the Panel concludes that the domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not called “Pimp my ride” and does not appear to trade under that or any similar name. There is no evidence that the Complainant has authorized the Respondent to use its trademark PIMP MY RIDE. The Respondent has never asserted any rights or legitimate interests in the name. For these reasons, on the basis of the available record, notably the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
The website was registered in the knowledge that MTV was about to launch a television series with the identical name. The Complainant has alleged that the Respondent did this in order to use the Complainant’s trademark to attract members of the public, interested by the MTV programme, to look at its website. Registration occurred after the Complainant had applied to register the trademark. The Respondent would either have known this or guessed that the Complainant would register and be granted the trademark registration concerned. If it was in any doubt about the matter, it would have been able to verify whether the Complainant had applied to register the trademark. The Complainant’s allegation about the Respondent’s motives for registration is both plausible and uncontroverted. Otherwise, there would appear to have been no particular reason to have registered this particular name. It is bad faith knowingly to register a domain name for no other reason that to take advantage of someone else’s trademark.
The Complainant has provided a News Release issued by the Missouri Attorney General on July 28, 2004, indicating that the disputed domain name had been used by a Mr. Leiweke to induce customers to pay money to him to enter an illegal lottery for the opportunity to have their car selected to be “pimped”. That has not been contradicted by the Respondent. Since the WhoIs record indicates that the Respondent was the registrant at the time, it is reasonable to infer that Mr. Leiweke acted on behalf of the Respondent in engaging in these acts. At the very least, the Respondent allowed its website to be used by Mr. Leiweke for this purpose. These allegations are supported by the historical record of the website to which the disputed domain name resolves. This shows that in 2004, the website contained an offer that once $20,000 has been raised by members of the public paying $1 each for a chance to have their car “pimped”, one entry will be selected randomly. Players could buy more than one ticket. Further evidence provided by the Complainant and not contradicted by the Respondent indicates that the Respondent selects or has selected cars to be “pimped” and then asks for a $20 processing fee.
Currently, the disputed domain name invites viewers to enter their details on an application form to have their car “pimped”. To have the car entered in the draw, members of the public have to sign up for one of the site’s sponsors’ products or services. There is an indication that the more sponsors’ services to which the viewer signs up the greater the chance of their car being selected. In the meantime, the consumer has to waste a considerable amount of time giving away some highly confidential personal data. This suggests that the Respondent is knowingly using the Complainant’s trademark to persuade members of the public to pay money to its sponsors, presumably in exchange for some remuneration. That alone would justify a finding of bad faith.
The uncontroverted evidence in this case suggests that the Respondent registered the domain name to attract viewers of the Complainant’s subsidiary’s show to its website, using the Complainant’s trademark to do so. The Respondent used the disputed domain name to commit illegal acts in relation to the lottery for which the Missouri Attorney General obtained an injunction in 2004. It appears to have subsequently run a similar dishonest scam in relation to the $20 required payment. The uncontroverted evidence suggests that the Respondent is using the disputed domain name to defraud members of the public or make them purchase goods and services from the Respondent’s sponsors, presumably for the Respondent’s financial benefit in click-through revenue.
For all these reasons, the Panel concludes that the domain name has been registered and is being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Adam Samuel
Sole Panelist
Date: March 18, 2008
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