WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Viacom International Inc. v. Domains By Proxy, Inc./ Corey Mandell Case No. D2009-0001 1. The Parties
Complainant is Viacom International Inc., New York, New York, United States of America (“United States” or “U.S.”), represented by White O'Connor Fink & Brenner LLP, United States.
Respondent is Domains By Proxy, Inc., Scottsdale, Arizona, United States/ Corey Mandell, Toronto, Ontario, of Canada. 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 3, 2009. On January 5, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On January 6, 2009, 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 19, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The case was suspended from January 21, 2009 until February 20, 2009. The Complainant filed an amendment to the Complaint on February 27, 2009. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceeding commenced on March 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 24, 2009.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on April 3, 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 has registered numerous trademarks around the world for MTV and variants thereof. Complainant's use of some of these trademarks dates back to 1981. In 2008, Respondent registered the disputed domain name. The disputed domain name leads to a “parked” web page at GoD with “Sponsored Listings” for various goods and services. 5. Parties' Contentions A. Complainant
Complainant asserts that it has numerous trademarks incorporating the term MTV, with dates of first use going back to at least 1981. According to the WHOIS records of the registrar GoD, Inc., the disputed domain name was registered on January 26, 2008. Complainant asserts that Respondent's website provides links to other websites, some of which sell goods in competition with those sold by Complainant. Complainant also asserts that the word “much” is a trademark of a third party, and that in any event the addition of the generic word “much” and the gTLD .com to Complainant's trademark does not remove the confusing similarity between the disputed domain name and Complainant's trademark. Complainant further asserts that Respondent's use of Complainant's trademark is a commercial use that is neither legitimate nor fair, because Respondent receives click-through fees for diverting users from Complainant's legitimate MTV merchandise to third party merchandise. Finally, Complainant asserts that Respondent's registration and use of the disputed domain name is in bad faith because Respondent is making a “sham” use of the disputed domain name, registered the disputed domain name to prevent Complainant from doing so, registered the disputed domain name in order to disrupt Complainant's business, is attempting to attract users by creating a likelihood of confusion, and sought to hide his identity through the use of GoDaddy's Domains By Proxy service. B. Respondent
Respondent did not reply to Complainant's contentions. However, Respondent did send an e-mail message, apparently in response to the Center's notice of default, stating that Respondent is “happy to let [Complainant] have the domain”, but that he is out of the country and “really ha[s] no way of dealing with this.” 6. Discussion and Findings
Pursuant to paragraph 15 of the Rules, panelists in UDRP proceedings “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 [they] deem applicable”.
Under paragraph 4(a) of the Policy, Complainant must prove the following:
(i) Respondent's 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) Respondent's domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy the Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.
The registration certificates attached to the Complaint demonstrate that Complainant has rights in the marks MTV and MTV MUSIC TELEVISION, among others.
The disputed domain name consists of the generic word “much”, plus Complainant's trademark, plus the .com gTLD. The addition of a generic word to a trademark does not avoid confusing similarity to the mark. Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TV, Inc. f/k/a Affinity Multimedia,WIPO Case No. D2000-1253 (January 16, 2001) (“Although the domain names at issue are not identical to the Complainant's marks, a finding of similarity cannot be avoided by adding a common or generic term to the complainant's mark”). Similarly, the addition of the .com gTLD does not remove the confusing similarity between the disputed domain name and Complainant's trademark. Deutsche Lufthansa AG v. Nadeem Qadir,WIPO Case No. D2009-0003 (February 24, 2009).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”. Paragraph 4(a)(ii) of the Policy. “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [Respondent's] 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) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] 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.”
Policy, paragraph 4(c).
There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice from Complainant or that Respondent has been commonly known by “”. Rather, the submissions attached to the Complaint indicate that Respondent is using the disputed domain name in connection with “sponsored links” to products that compete with Complainant's products. “The use of a domain name (that is identical or confusingly similar to a trademark) as a parking page that generates click through revenue typically does not give rise to rights or legitimate interests.” MAACO Enterprises, Inc. v. IP Admin / DNAV ASSOCS,WIPO Case No. D2008-0009 (March 4, 2008). Further, the sale of competitive products using a complainant's trademark typically is not considered bona fide or “legitimate” or “fair” for purposes of paragraph 4(a)(ii). LTD Commodities, LLC v. Nadeem Qadir, NAF Claim No. FA0601000636445 (March 10, 2006) (“the Panel is entitled to and does presume that Respondent receives click-through fees in exchange for diverting Internet users to such websites. Respondent's use of the disputed domain name in this fashion is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); Humana Inc. v. Henry Tsung,WIPO Case No. D2005-0221 (May 9, 2005) (“Use for a portal linking to websites of the Complainant's competitors is not a bona fide offering, but rather one which seeks to profit from confusion with the Complainant”); Interstate National Dealer Services, Inc. v. Selwyn Colley,WIPO Case No. D2003-0934 (April 5, 2004) (“When Respondent is engaged in the commercial sale of competitive products, Respondent cannot take advantage of the rights or legitimate interests defenses of paragraph 4(c)(i) or (iii) of the Policy by relying on uses that are infringing, because such uses are not considered ‘bona fide' or ‘legitimate' or ‘fair use.'”).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the Respondent has] registered or [the Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) [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) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location.”
Complainant asserts that bad faith factor (i) is met, but presents no evidence to support that assertion. In particular, there is no evidence of any actions directed to selling, renting, or transferring the disputed domain name for valuable consideration in excess of Respondent's out-of-pocket costs. Complainant also asserts that bad faith factor (ii) is met, but does not allege or provide any evidence that Respondent has engaged in a pattern of such conduct.
Complainant also asserts that Respondent's sponsored links satisfy bad faith factors (iii) and/or (iv). The evidence shows that Respondent's website has sponsored links that offers goods and/or services for sale that compete with Complainant's goods and/or services. “The unauthorized use of Complainant's trademark to generate pay-per-click revenue or to sell competitive products constitutes bad faith under paragraphs 4(b)(iii) and (iv) of the Policy.” Hoffmann-La Roche Inc. v. Kevin Chang,WIPO Case No. D2008-1344 (October 27, 2008); see also Wal-Mart Stores, Inc. v. Modern Limited - Cayman Web Development, Domain Administrator,WIPO Case No. D2005-0322 (May 24, 2005).
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied. 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 Complainant.
Bradley A. Slutsky
Sole Panelist
Dated: April 19, 2009
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