WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Viacom International Inc. v. Miguel Gila Case No. D2009-0634 1. The Parties
The Complainant is Viacom International Inc., of New York, United States of America, represented by White O'Connor Fink & Brenner LLP, of United States of America.
The Respondent is Miguel Gila, of Puerto Iguazu, Argentina. 2. The Domain Name and Registrar
The disputed domain name is registered with Backslap Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2009. On May 12, 2009, the Center transmitted by email to Backslap Domains, Inc. a request for registrar verification in connection with the disputed domain name. On May 12, 2009, Backslap Domains, 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” 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 May 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on June 5, 2009.
The Center appointed Jonathan Agmon as the sole panelist in this matter on June 12, 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
The Complainant is a global entertainment content company, incorporated in Delaware with its principle place of business in New York, United States of America (“U.S.”).
The Complainant is an American media conglomerate with various worldwide interests in cable and satellite television networks (MTV Networks and BET), and movie production and distribution (the Paramount Pictures and DreamWorks movie studios).
The Complainant is the owner of a large number of trademark registrations in the U.S and the European Union, bearing the name “Nick”. Among them, U.S. trademark registration No. 3164754 – TEENICK, with the filing date of April 15, 2005.
The Complainant has been using the mark – TEENICK continuously since March 4, 2001, in connection with and as the title of its television programming block for children and teenagers from the age of 9 to 14, which airs in the U.S. on the Nickelodeon Television channel.
The Complainant is also the owner of U.S trademark registration No. 3044795 – NICK (logo), with the filing date of May 10, 2004.
The Complainant also owns several domain names that are similar to or partially include the wording “teenick”. For example: and .
The Complainant launched a website during December 1996, under the domain name , which features information about the Complainant's “Teenick” television shows and on which visitors may discuss the individual shows on message boards, watch clips and play on-line games.
The Respondent registered the disputed domain name on April 18, 2003. The disputed domain name is being used to lead Internet users to a website, which provides links to other websites that offer teenagers oriented entertainment goods and services. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is nearly identical or confusingly similar to the TEENICK trademark, in which the Complainant has rights. The Complainant further argues that the additional letter “n” is not a distinguishing factor and is not sufficient to avoid confusion between the disputed domain name and the trademarks owned by the Complainant.
The Complainant further argues that the Respondent has no legitimate interest in the disputed domain name and has not acquired any trademark rights that would indicate otherwise. The Complainant further states that it has not provided the Respondent with a license or otherwise authorized the Respondent to use its TEENICK trademark.
The Complainant further argues that the Respondent's use of the disputed domain name is aimed to obtain commercial gain by diverting consumers to the Respondent website. In addition, the Complainant argues that by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or products, the Respondent acts in bad faith.
The Complainant further argues that the use of the Complainant's distinctive trademark for quasi identical goods indicates bad faith on behalf of the Respondent.
The Complainant further argues that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant.
The Complainant further argues that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting the TEENICK and NICK marks in domain names.
The Complainant further argues that the Respondent registered the disputed domain name in order to disrupt the Complainant business in connection with the goods and services offered under the TEENICK and NICK marks.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant's trademark – TEENICK has been registered in the U.S. since April 15, 2005.
The disputed domain name differs from the registered TEENICK mark only by the additional “n” between the words “teen” and “nick”.
Previous URDP panels have found that the deletion or addition of one letter is an insignificant change for the purposes of Policy paragraph 4(a)(i). See T, Inc. v. Port-A-John,WIPO Case No. D2007-1497. Therefore, the TEENICK mark and the disputed domain name are deemed identical or confusingly similar.
The Complainant's mark – TEENICK was filed for registration almost two years after the disputed domain name had been registered, i.e., the disputed domain name precedes the filing date of the mark – TEENICK. Nevertheless, the absence of a trademark application or registration at the time of the registration of the disputed domain name does not necessarily preclude a finding by the Panel that the Complainant has the requisite rights in that mark for purposes of paragraph 4(a)(i) of the Policy, as has been long noted by prior UDRP panels. (See, for example, Great Plains Metromall, LLC v. Gene Creach, NAF Case No. FA97044; DigiPoll Ltd. v. Domain Administrator,WIPO Case No. D2007-0999 and The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050).
It has been the decision of previous UDRP panels that in determining if a complainant has defendable rights in an unregistered mark, the panel should analyze whether the complainant has established common law rights in the mark by assessing the complainant's showing of a secondary meaning that is directly associated with the complainant. Factors typically considered influential in such an analysis are longevity of use, amount of sales, nature and extent of advertising, consumer surveys and media recognition (see: WIPO Overview of WIPO Panel Views on Selected UDRP Questions and The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050).
The Complainant contends that it has been using the TEENICK mark continuously since March 4, 2001 in the U.S. The Panel also notes that the Complainant created and has been using the domain name since April 18, 2003. While the Complainant has not furnished the Panel with sales figures or advertising budgets relating to its services under the mark – TEENICK, the Complainant contains that its trademark is widely known throughout the world, and particularly in the U.S. and that it is widely recognized as the source of goods and services behind this widely known mark. These contentions and inferences are not contested by the Respondent. Previous panels have ruled that in similar situations, all reasonable inferences of fact in the allegations of the Complainant will be deemed true (See, for example, Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Case No. FA95095; Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 and The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050).
Certainly, in light of the circumstances, two years of consistent use is sufficient time for the Complainant, which is a large global entertainment content company in the entertainment business, to have achieved a secondary meaning in its TEENICK mark. (See: Kahn Development Company v. RealtyPRO c/o Carl Krause, NAF Case No. FA568350 and CavinKare Private Limited v. LaPorte Holdings, Inc. and Horoshiy, Inc.,WIPO Case No. D2004-1072). Such length of use, combined with the Complainant's constant use of the mark through the visual media, persuades the Panel that the Complainant has acquired common law rights in its service mark.
Consequently, the Panel finds that the Complainant had shown that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lack rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent had failed to assert any such rights, or legitimate interests.
The Panel finds the Complainant has established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the TEENICK trademark, or a variation thereof. The Respondent has not submitted a Response and has not provided any evidence to show he has any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).) .
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved to.
A review of the web site operating under the disputed domain name reveals it is being used to lead Internet users to a website, which provides links to other websites that offer teenagers oriented entertainment goods and services. The Respondent's use of the name “teen nick” to promote such similar media contents directed to teenagers clearly evidences that the Respondent registered the disputed domain name with knowledge of the Complainant and of the use the Complainant is making in the mark TEENICK. The Respondent's actions constitute bad faith. See Herbalife International, Inc v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”.
The Panel finds that the registration of the disputed domain name in the name of the Respondent shows the Respondent intent to operate a web site offering similar goods to the Complainant's and by doing so, creating likelihood that Internet users would be confused and identify the Respondent as either the source of the Complainant goods or associate the Respondent with the Complainant. The use of the Complainant's distinctive trademark for quasi identical goods constitutes bad faith on behalf of the Respondent.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant had met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name 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 disputed domain name, , be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: June 30, 2009
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