WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Viacom International Inc. v. Jason White / OperaMTV Case No. D2009-1615 1. The Parties
The Complainant is Viacom International Inc. of New York, United States of America, represented internally.
The Respondent is Jason White / OperaMTV of London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , , , , , , , , , , , are registered with R and the disputed domain name is registered with Ascio Technologies Inc. – Denmark. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2009. On December 2, 2009, the Center transmitted by email to R and Ascio Technologies Inc. - Denmark a request for registrar verification in connection with the disputed domain names. On December 3, 2009, R and on December 8, 2009, Ascio Technologies Inc. – Denmark transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 11, 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 the Respondent of the Complaint, and the proceedings commenced on December 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 5, 2010.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on January 11, 2010. 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 the owner of the MTV cable television channel, and has used MTV MUSIC TELEVISION and MTV as its marks since April 1981. It owns numerous registered trademarks and service marks for MTV and its variants, both in the United States (“USA”) and internationally. It has developed a family of marks that incorporate the MTV element, some of these are:
TRADEMARK UNITED STATES REGISTRATION NO. CLASS (ES) DATE OF FIRST USE
MTV MUSIC TELEVISION
1580650
41
April 13, 1981
MTV MUSIC TELEVISION
1818179
38 and 41
April 13, 1981
MTV
1955606
38 and 41
April 1981
MTV
1985017
9, 38, 41 and 42
April 13, 1981
MTV ONLINE
2059081
42
June 1994
MTV FILMS
2584726
41
January 1, 1998
THE MTV STORE
2762104
35
May 21, 2002
*MTV
3056089
9, 35, and 38
September 13, 2005
In the European Union's Office for Harmonization in the Internal Market (Trade Marks and Designs), the Complainant has registered the following MTV marks and its variants; MTV MUSIC TELEVISION, MTV, MTV RINGTONES, and MTV MOBILE, with filing dates for the applications ranging from January 4, 1996 to July 6, 2007. 5. Parties' Contentions A. Complainant
The Complainant states the MTV network is its earliest and most successful cable television channel, which has been popular for twenty-eight years since its inception. The Complainant's programming initially started with music videos, but expanded to include award shows, animated series, reality programs, game shows, sporting events and other programs. Its MTV television network reaches three hundred and eighty four million households around the world, in one hundred and forty countries, through thirty-one localized television channels and seventeen websites and numerous international channels. Its MTV Films has created a successful film franchise. It launched its website at in 1995, which averages twenty millions visitors per month for the past three years. The online shop at its website offers merchandise.
The Complainant requests for the transfer of the twenty-one disputed domain names registered by the Respondent on the grounds that they are confusingly similar with its MTV mark due to the use of its mark with musical terms like “opera”, “alternative”, “rock”, and “blues”, which represent a logical extension of its family of marks. Further, as the Complainant has registered its MTV family of marks for use in connection with entertainment goods and services for television and music production and for online information, it covers the same trade channels as the disputed domain names and therefore heightens the confusion for users.
The Respondent has no rights and legitimate interests with respect to the disputed domain names argues the Complainant, as it is not aware of the Respondent's use of the names in connection with a bona fide offering of goods or services, or that the Respondent has been known by the disputed domain names. The Complainant states that the Respondent's various communications shows his intentions for illegitimate use, where he has inter alia proposed: “creating a few of these new channels.… [through] new partnerships”, with the Complainant.
The Complainant has filed a sworn affidavit of its representative who had spoken with the Respondent over the telephone, which states that the Respondent mentioned he had solicited opera houses and record labels to participate in his proposed business venture based on the disputed domain names. Other correspondences and the copies of its notices to the Respondent, dated April 3, 2009 and April 9, 2009 are also filed. The Complainant quotes verbatim from the Respondent's email dated June 12, 2009 specifying three options: “1. Transfer the domains to an investor who has agreed to litigate your claims and pursue the business model we believe will succeed, 2. Let you sue me, or 3. Make me an offer. I leave this last option to your company [sic] make this issue disappear.”
The Complainant alleges the disputed domain names were registered and are used in bad faith primarily for the purpose of selling these to the Complainant. Requesting payment in exchange for release of the disputed domain names and stockpiling multiple domain names containing the MTV mark reveals the Respondent's bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Policy stipulates that the Complainant has to establish three factors under paragraph 4(a) to obtain the remedy of transfer of the disputed domain names.
(i) The disputed domain names are identical or confusingly similar to a mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names were registered and are being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first factor under paragraph 4(a) requires the Complainant to establish that the disputed domain names are identical or confusingly similar to a trademark in which it has rights.
The Complainant has established it has rights in the MTV MUSIC TELEVISION and MTV marks since its first use in 1981. It has provided figures showing that MTV is among the world's most watched television channels, which is evidence of the extensive reach of the MTV channel and the exposure of its mark through the powerful medium of television.
The Complainant has filed documents of its registered rights in the MTV marks in connection with goods and services such as consumer products, records, publishing, awards, sports events, game shows, games events, animated series, feature films, video games, online retail stores and online newsletters. The Panel also notes from the Complainant's pleadings and supporting documents, that its MTV mark is entitled to presumptive validity due to its having achieved the incontestability status under Sections 8 and 15 of the Lanham Act.
The fame of the Complainant's MTV marks has been recognized in a number of previous cases under the Policy some of these are: Viacom International Inc. v. MTVALBUMS - Mega Top Video Albums / Peter Miadshi,WIPO Case No. D2002-0196 pertaining to the domain names and , Viacom International Inc. v. Domains By Proxy, Inc./ Corey Mandell, WIPO Case No. D2009-0001, . The Complainant's online popularity is evidenced from the enormous web traffic it receives at its website “www.” and the presence of several other websites which the Complainant has for its international channels. For all these reasons, the Panel finds that the MTV mark is undoubtedly an internationally famous and distinctive mark associated with the Complainant and its business.
The Respondent's twenty-one domain names, which are the subject matter of the present dispute, contain the letters “mtv”. The disputed domain names use words such as “blues”, “motown”, “classical”, “latin”, “soul”, “rock” and “rnb” (short for reggae and base) which are genres of music. Other words used by the Respondent in the dispute domain names are “opera”, “alternative”, “diva”, “folk” and “world”. Given the fame of the Complainant's MTV mark in the area of music television broadcasting, the Respondents' choice of words, as argued by the Complainant, are likely to be confused as “logical extensions” of its family of MTV marks.
It has been recognized in numerous cases that adding descriptive words connected with the Complainant's business or using other descriptive words with a well-known trademark is bound to create confusion in the minds of Internet users. See for instance F. Hoffmann-La Roche AG v. IT Developers s.c. Tomasz Kraus, Lukasz Haluch,WIPO Case No. D2006-1547 pertaining to the domain name , where the use of the word “prescription” in the domain name was found confusingly similar to the trademark VALIUM, as the word “prescription” is related to the business of the Complainant. Also see Viacom International Inc. v. Domains By Proxy, Inc./ Corey Mandell, WIPO Case No. D2009-0001, where it was held that adding a generic word or a gTLD with the Complainant's MTV mark in a domain name does not reduce the confusing similarity with the MTV mark.
In the present case the Respondent has created a portfolio of domain names using the MTV mark along with terms that are likely to enhance the confusing similarity with the MTV mark. In the circumstances of the present case, the Panel therefore finds all twenty one disputed domain names, including the domain names , and are confusingly similar to the Complainant's MTV mark, without prejudice to any trademark rights of third parties in these domain names.
The Panel finds the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy B. Rights or Legitimate Interests
The second factor under paragraph 4(a) of the Policy requires the Complainant to make a prima facie showing that the Respondent lacks rights and legitimate interests in the disputed domain names. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
The Complainant has asserted that it has not licensed or authorized the Respondent to use its MTV marks in any manner. The Respondent has not filed a response in these proceedings to rebut the Complainant's assertions. The Panel notes from the Respondent's communication to the Complainant dated March 2, 2009 that he has admitted to registering thirty five domain names with the MTV mark with the hope that the Complainant would partner with him, and specifically in his words: “creating a few of these new channels … through the creation of the new partnerships and lines of businesses.” This confirms that the Respondent admittedly has no business using the disputed domain names.
In the Respondent's letter to the Complainant dated April 17, 2009, he states that he had been advised to remove the “www.” website and has discontinued the use of the email address. This statement by the Respondent does not indicate his having any rights to use the MTV mark in the disputed domain names.
Taking into consideration all these facts, the Panel finds there is no evidence to show that the Respondent uses any of the disputed domain names in connection with a bona fide offering of goods or that he is commonly known by the disputed domain names. Neither is it the case that the disputed domain names are being used for any legitimate noncommercial or fair-use purposes.
The Panel is convinced that the Complainant has made a prima facie showing that the Respondent lacks rights and legitimate interests in the disputed domain names.
The Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The third factor under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain names are registered and are being used in bad faith by the Respondent.
The Policy under paragraph 4(b)(i) stipulates, if a Panel finds circumstances indicating that the respondent has registered or acquired domain names primarily for the purpose of selling, renting, or otherwise transferring them to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out of pocket costs directly related to the domain names, it shall be evidence of the registration and use of a domain name in bad faith.
The Respondent's correspondence clearly shows his intentions to sell the disputed domain names to the Complainant or to a third party. In the Respondent's email dated June 12, 2009 he mentions three options, where the first option is to “[t]ransfer the domains to an investor who has agreed to litigate your claims and pursue the business model we believe will succeed”,. the second option is to “let you sue me” and the third option is to “[m]ake me an offer” and then adds “I leave this last option to your company [sic] make this issue disappear.”
The facts of the present case shows the Respondent has “stockpiled” domain names consisting of the trademark MTV. As discussed in the previous section, the Respondent lacks legitimate rights or interests in these disputed domain names. Furthermore, the Respondent's intention to sell the disputed domain names is manifest from his email communication dated June 12, 2009, where he has unequivocally indicated that he is apparently expecting the Complainant to make him an offer to purchase the disputed domain names.
The Panel finds, for the reasons discussed, the circumstances in the present case show the Respondent has registered the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names to the Complainant as described under paragraph 4(b)(i) of the Policy, which constitutes bad faith registration and use of the disputed domain names.
The Complainant has satisfied the third requirement of paragraph 4(a) of the Policy. 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 names , , , , , , , , , , , , , , , , , , , , be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Dated: January 25, 2010
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