WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Viacom International, Inc. v. Domains by Proxy, Inc. / Max Fret Case No. D2008-2001 1. The Parties
The Complainant is Viacom International, Inc. of New York, New York, United States of America.
The Respondent is Domains by Proxy, Inc. / Max Fret of Scottdale, Arizona, United States / Manhattan, New York, United States respectively. 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 December 31, 2008. On December 31, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On December 31, 2008, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 6, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 9, 2009. The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 3, 2009.
The Center appointed M. Scott Donahey as the sole panelist in this matter on February 11, 2009. 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 is a media conglomerate with interests in cable and satellite networks and in movie production and distribution. Complainant owns the following trademark registrations issued by the United States Patent and Trademark Offices (the “USPTO”) the service mark SOUTH PARK in connection with entertainment goods and services with respect to “an ongoing television program in the field of comedy”; the trademark SOUTH PARK in connection with various goods, such as apparel, jewelry, mugs, etc. Complainant has used the marks at issue since as early as July 4, 1997. The marks have been used in connection with the animated television show of the same name. Complaint, Annexes 2, 3, and 5. Complainant maintains “the official South Park web site” at “”. Complaint, Annex 5.
In addition, an entity identified as “Comedy Partners1” owns registered copyrights for the cartoon drawings of the following characters that appear on the South Park television show: Cartman (Complaint, Annex 4), Stan (Complaint, Annex 9), Jimmy (Complaint, Annex 12), Kyle (Complaint, Annex 13), and Kenny (Complaint, Annex 14). Comedy Partners also owns copyright registrations for various episodes of the television show South Park. Complaint, Annexes 16 and 18.
A cartoon character, Mr. Marsh, who is identified as Stan's father, also appears on the television show. Neither Complainant, nor Comedy Partners apparently claim any copyright interest in the cartoon drawings for that character.
On March 22, 2007, Respondent Max Fret (hereinafter “Respondent” registered the domain name at issue. Respondent utilizes the domain name at issue to resolve to a web site designated “STANDSDAD.COM” in which a cartoon character's face corresponding to Mr. Marsh appears in place of the “O” in .COM. The web site includes episodes of the television show South Park, and the tagline W-W-WATCH SOUTHPARK ONLINE FREE! Complainant points out that those episodes include the two episodes the copyrights to which belong to Comedy Partners. Complaint, Annex 10. The web site currently features the following prominent disclaimer:
South Park is a registered trademark of Viacom International, Inc. and its related companies. All related videos, clips, images, etc. are copyrighted and owned by their respective owners.
STANSDAD.com is a streaming video indexing site for exterior media and is in no way associated with or authorized by Viacom or the creators of South Park, Matt Stone and Trey Parker. 5. Parties' Contentions A. Complainant
Complainant alleges that Respondent is using the domain name to resolve to a web site at which the illegal distribution and sale of unauthorized and infringing copies of episodes of South Park and related goods and/or services to the public without Complainant's consent. Complainant contends that the domain name at issue is expressly intended to deceive Internet users into believing that the web site is authorized by Complainant. Complainant further alleges that the domain name at issue is confusingly similar to Complainant's SOUTH PARK marks, because the domain name at issue “clearly evokes the SOUTH PARK marks when viewed in context”. Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name, because Respondent has never authorized or licensed Respondent to use the domain name and that the domain name at issue is being used for unlawful purposes. Complainant contends that the unlawful and illegitimate uses that are apparent on the web site to which the domain name resolves show that the domain name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(1) that the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(2) that respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith. A. Essential Purpose of the UDRP
The UDRP was designed to deal with the problem of cybersquatting. This problem arises when a party registers a domain name which consists of or contains the trademark of another, or some form confusingly similar thereto, which would lead a user to believe that if the user were to enter the domain name in a browser, the user would be taken to a web site which was sponsored by or affiliated with the trademark owner. The UDRP was designed to prevent such a registrant from profiting from the Internet users confusion. While Complainant may well have legitimate concerns regarding the conduct of Respondent and the content displayed on Respondent's web site, the UDRP is not the vehicle to address such concerns. Nothing could be clearer than an examination of the first prong of the three part burden of proof which must be met by a complainant. B. Identical or Confusingly Similar
The domain name at issue is clearly not confusingly similar to any trademarks or service marks asserted by Complainant. is not remotely similar to SOUTH PARK. An Internet user who enters “www.” in his / her browser may have a myriad of destinations in his or her mind that are totally unrelated to Complainant's television show. The domain name at issue does not incorporate Complainant's mark or a semblance of Complainant's SOUTH PARK mark. The Panel does not exclude the possibility of Complainant perhaps being able to succeed in some future proceeding if it was for example able to show rights in a mark such as STAN'S DAD. It has not done so here.
Complainant's principle concerns are not it seems with the particular domain name, but are with what is occurring on Respondent's web site. While the Panel acknowledges that Complainant's concerns may be legitimate and perhaps entitled to legal redress, the UDRP is not the vehicle to provide such redress. The issues of possible copyright infringement and other possible concerns are far beyond that which the simple procedure established in the UDRP was designed to redress. 7. Decision
For all the foregoing reasons, the Complaint is denied.
M. Scott Donahey
Sole Panelist
Dated: February 24, 2009
1 Although Complainant states that it is the owner of the copyrights indicated, the evidence it attaches shows the copyright registrations to belong to Comedy Partners. No explanation is given of what relationship, if any, exists between Complainant and Comedy Partners.
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