WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Viacom International Inc. v. Niek Giavedoni Case No. D2008-2002 1. The Parties
The Complainant is Viacom International Inc. of New York, United States of America, represented by White O'Connor Fink & Brenner LLP, United States of America.
The Respondent is Niek Giavedoni of Groningen, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems
GmbH through the reseller TransIP BV. 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 Key-Systems GmbH a request for registrar verification in connection with the disputed domain name. On January 5, 2009, Key-Systems GmbH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 13, 2009, the Center requested the Complainant to provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English, or to submit the Complaint translated into Dutch or to submit a reasoned request for English to be the language of the administrative proceedings. The Center on the same date requested the Respondent to indicate reasons why the proceedings should not be conducted in English. After no response from either of the parties 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2009. The Respondent submitted an e-mail on February 10, 2009.
The Center appointed William A van Caenegem as the sole panelist in this matter on February 27, 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.
The Complaint was filed in English. The language of the Registration agreement was asserted to be Dutch by the reseller TransIP BV. The Respondent is situated in the Netherlands. The Respondent did not file a Response but forwarded an email to the Center making a number of submissions in Dutch on February 10, 2009. The Respondent asserted that he had difficulty understanding the Complaint in English.
The Respondent did not request a translation or seek an adjournment. The Complainant by an email to the Center of February 10, 2009, asserted that the language of the registration agreement was upon its information and belief English, and therefore requested translation of the Dutch language message, and conduct of the proceedings in English.
The language of the registration agreement is Dutch. The Respondent submits that his understanding of the Complaint was hampered by his poor English. However, there is evidence of the Respondent's familiarity with English. For example the website to which the disputed domain name resolves is in English, and episodes in the English language are available from the website. The Respondent refers to this website as his. A number of English language documents appear at the website (“Terms and Conditions”; “Disclaimer”). The website contains numerous descriptions and instructions in English.
Furthermore, the Panel is fluent in Dutch and has read and understood the submissions made by the Respondent in his email of February 10, 2009.
The Panel is satisfied that it is both fair to the parties and expeditious that the proceedings are conducted in English. The Panel finds that no substantial prejudice will result to either Party if the proceedings are conducted in English and the decision accordingly rendered in that language. 4. Factual Background
The Complainant is the owner of the service mark SOUTH PARK, registered on February 9, 1999 in the United States for use in International Class 41 with respect to “an ongoing television program in the field of comedy”, and of the trade mark SOUTH PARK in International Classes 9, 14, 18, 21 and 25 in connection with goods and services with respect to certain merchandise.
The disputed domain name was registered by the Respondent on August 16, 2006. 5. Parties' Contentions A. Complainant
The Complainant uses the mark SOUTH PARK in relation to a television program of that name. The Complainant makes episodes available for sale on DVD and recently also by free legal streaming on the Internet at the website “”, where it also offers access to games, a fan forum, chat room, production blog, various images and screensavers, etc. Visitors can also purchase merchandise via the linked “Comedy Central Shop”.
The Complainant contends that the Respondent by way of his website is illegally distributing and selling unauthorized and infringing South Park goods and services, without consent and in violation of the Complainant's copyrights. The Complainant further asserts that the disputed domain name contains the identical phrase “South Park” and is expressly intended to deceive the public into believing that it is authorized by the Complainant to stream episodes and offer other South Park goods and services. An image of the character “Cartman” appears in the address bar of the Respondent's website in a manner identical to the Complainant's “” website.
The homepage contains SOUTHPARKZONE.COM prominently across the top of the homepage surrounded by various copyrighted South Park characters. The Respondent's website contains various links to South Park episode menus for various seasons, and “Top Rated” and “Most Viewed” episode guides with links to the streaming of numerous episodes. The website in question also has an “online store” with copyrighted goods, including DVD's of past seasons.
The Complainant contends that in the circumstances the disputed domain name is confusingly similar to the SOUTH PARK marks since it appropriates the dominant element of the Complainant's mark. The addition of the generic term “zone” and top level domain “.com” make no difference to this analysis. The availability of unauthorized episodes for streaming and goods for purchase reinforces the effect of misleading consumers to conclude mistakenly that there is a connection with the Complainant.
The Complainant is not aware of any use or preparations to use the disputed domain name in relation to bona fide legal or authorized offering of goods or services. The Respondent is not commonly known under the domain name and has no relevant service or trademarks. In fact the Complainant contends that the Respondent is making an illegitimate, commercial non-fair use of the disputed domain name. The website features an online store and displays numerous third party advertisements. This amounts to commercial use, and any purported disclaimer on the relevant website does not dispel the indisputability of this fact, according to the Complainant.
The Complainant asserts that the Respondent has demonstrated an intent to use, has used and continues to use the disputed domain name in bad faith by engaging in ongoing unauthorized promotion, performance and distribution of the Complainant's copyrighted content; registering the disputed domain name primarily to so disrupt the Complainant's promotion, performance and distribution of television programs and using the disputed domain name to intentionally attract for commercial gain, Internet users to “www.” by creating a likelihood of confusion with the Complainant's marks as to source, sponsorship, affiliation or endorsement of the disputed domain name and of the services provided by the website. B. Respondent
The Respondent asserts that when he registered the disputed domain name three years earlier he was not told anything about any infringement of the rights of the name holders of South Park. If this had been pointed out to him then he would have chosen another domain name. Furthermore, during the past three years he was not been warned or alerted that the disputed domain name infringes copyright. It was therefore impossible for him to see this coming and therefore the Respondent contends that he is in no position to defend himself. If the infringement of the Complainant's copyright had been drawn to his attention earlier the Respondent asserts that he would have taken steps, e.g. by choosing a different domain name. Furthermore the Respondent contends that the South Park videos on his website are all hosted on other websites. There are therefore no South Park videos on the servers of which is, according to Respondent, 100% legal according to Dutch law.
The website “www.” also contains an online store, which according to the Respondent offers products via the website “”. The Respondent's website serves as an affiliate and does not sell products itself. Visitors are referred to “”, where they can buy the relevant products. There is nothing wrong with this, according to the Respondent, given that “” is a legal store to which visitors are referred in a legal manner.
Further the Respondent contends that in his disclaimer he clearly indicates that the Southpark videos are not hosted on the server of . The disclaimer also clearly states that the website is a fansite and that the name SOUTH PARK is registered by Comedy Central and its closely related entities (including Viacom). The disclaimer also clearly indicates that the disputed domain name is in no way related to those businesses. This, the Respondent contends, prevents confusion amongst visitors to the site.
The Respondent asserts that it is unfair that the Complainant files a Complaint after three years. He contends that he has put enormous work into the relevant website over that time, which is also a fansite to boot. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant's trademark SOUTH PARK. However, the domain name wholly incorporates the Complainant's mark as its first and most prominent part. The addition of the term “zone” does nothing to dispel the confusing similarity between the disputed domain name and the Complainant's mark. It does not distinguish the disputed domain name, nor does it add a different connotation or meaning. It suggests an area or place, in this case on the Internet, associated with the Complainant's mark and hence with its goods and services. In fact no such connection exists.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
The Complainant has neither licensed nor authorized the use of its trademark to the Respondent. The Respondent is not commonly known by that domain name, nor has he provided evidence of the acquisition of trade mark rights in the domain name.
The Respondent contends that the streaming of copyright material belonging to the Complainant and offering of goods via the online shop are both perfectly legal. Whatever the true position may be in this regard, that does not necessarily make the use of Complainant's trade mark legitimate, in particular with regard to incorporating the trade mark in a domain name without authorization and thereafter running a website connected with it in the manner the Respondent does. The Respondent's website, with a domain name incorporating the Complainant's mark and also a pictorial representing one of its characters in the address bar; the prominent display of the term “southparkzone” surrounded by many South Park characters; the links to South Park episodes and merchandise and the links to the disclaimer which are not prominently displayed, all combine to promote the impression of an official endorsement, connection or affiliation with the Complainant. The activity of streaming the episodes and selling products via “”, even if permitted by Dutch law, a decision the Panel need not reach, is not such an activity under the Policy that would infer on the Respondent a legitimate interest or right in the disputed domain name. The offering of goods or services here is not bona fide as it relies at least in part on generating in the mind of Internet visitors to the site, a misleading impression of some official sanction from the trade mark owners. There is also no evidence of a legitimate non commercial use. The website does not have the hallmarks of a fansite. Simply offering goods or services of a trade mark owner does not render the offering site into a fansite, nor do endorsements or descriptions of the goods, or as here, the episodes and their contents. Furthermore various kinds of advertising are offered on the site; when the Panel accessed the relevant website on March 8, 2009 a prominent advertisement for a service offering online paid access to television shows was displayed on the homepage of the relevant website.
As to the delay in bringing these proceedings which the Respondent refers to, there is nothing to indicate that the Complainant was aware of the registration or use of the disputed domain name. The Complainant has never expressly authorized the registration or use of the disputed domain name, nor can acquiescence or tacit approval of the registration of the disputed domain name and the use to which it was put be inferred from the fact that the Complainant did not bring these proceedings earlier.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
There can be little doubt that the Respondent deliberately selected the disputed domain name because of its connection with the South Park programs in relation to which the Complainant has used the relevant trade marks. The subsequent conduct of the website only confirms this. There is no reference to any physical park or anything other than the South Park episodes and associated goods and services on the relevant website. The Panel finds that the Respondent registered the disputed domain name in the full knowledge of the Complainant's rights, and with an eye to establishing the kind of website he has subsequently developed.
The inherent character and use of the disputed domain name, in association with for example the address bar icon, the appearance of characters from the South Park show on the homepage and the featured episodes, all conspire to give the false impression of an official, endorsed or affiliated website. The disclaimer to which the Respondent refers is not on prominent display. It is only by clicking on the link “Disclaimer”, which appears in small lettering at the bottom and side of the page, that a visitor is taken to the substance of the disclaimer. The latter is lengthy and the disclaimer of any link or authorization or endorsement with the Complainant is not easy to discern. Nor is the Panel persuaded that the relevant website is a fansite. Rather it results from a bad faith effort to intentionally attempt to attract for commercial gain, Internet users to the disputed domain name.
Therefore the Panel finds that the disputed domain name was registered and 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.
William A van Caenegem
Sole Panelist
Dated: March 9, 2009
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