WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Viacom International Inc. v. Transure Enterprise Ltd. Case No. D2009-1616 1. The Parties
The Complainant is Viacom International Inc. of New York, United States of America, represented internally.
The Respondent is Transure Enterprise Ltd. of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with A, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2009. On December 1, 2009, the Center transmitted by email to A, Inc. a request for registrar verification in connection with the disputed domain name. On December 2, 2009, A, 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 December 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 28, 2009.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on January 6, 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 owns the Nickelodeon Television Network and uses the trademarks NICK JR. and NICKELODEON in connection with its business. It has several registered trademarks and service marks with the United States Patent and Trademark Office (USPTO) and in other countries for its NICK JR. and NICKELODEON marks and variations thereof; some of these are:
TRADEMARK
UNITED STATES REGISTRATION NO.
CLASS (ES)
NICKELODEON
2222947
38
NICK JR.
1578189
41
NICK JR.
2750325
16
NICK JR.
2230595
25
NICK
3044795
41
NICK AT NITE
2263224
38
NICKTOONS
3026950
38
NICKELODEON
1907159
9, 14, 16, 24, 25, and 28
NICKELODEON
2028590
42
NICKELODEON
3026958
41
TEENICK
3164754
41
In the European Union's Office for Harmonization in the Internal Market (Trademarks and Designs), the Complainant has filed for the trademarks NICK, NICKELODEON, NICK JR, NICK AT NITE, NICKELODEON ROCKET POWER, NICKELODEON REPLAY. Filing dates of applications for these registrations range from January 1996 to February 2000.
The disputed domain name was registered on June 24, 2008. 5. Parties' Contentions A. Complainant
The Complainant states that for fourteen consecutive years, Nickelodeon Networks has been the foremost children's television network in the United States. Its Network reaches 287.6 million households in 162 territories worldwide via twenty eight channels, twenty two branded program blocks and two broadband services across Africa, Asia and the Pacific Rim, CIS / Baltic Republics, Europe, Latin America and the United States.
Nick Jr. was a programming block on its Nickelodeon Network since 1988 for broadcasting animated television programs on weekday mornings to a preschool-aged audience. In September 2009, the Nick Jr. Network became its own official channel replacing Noggin, a Nickelodeon sister station. The Complainant states it has used the trademark NICK as a short form for Nickelodeon Television; other such variants of its marks are NICK AT NITE and NICKTOONS. Its trademark NICKELODEON has achieved incontestable status under sections 8 and 15 of the Lanham Act.
The Complainant states its website “”, which it has used since June 2, 1997, displays its NICK JR. and NICKELODEON logos. From its website the Complainant offers special online content, gives information about its television programs, links to its shows, games and activities for parents. It also has an online shop from which it offers goods such as books, CDs, toys and links to its cartoon shows, movies, video clips and games. The Respondent's website on the other hand, has links to sites that offer unauthorized “‘Nickelodeon' oriented entertainment information” and goods and services, which the Complainant argues, compete with its authorized products.
The Complainant argues that the disputed domain name is confusingly similar to its NICK JR. mark by applying the Du Pont1 factors, and the word “live” does not reduce the confusing similarity of the disputed domain name with the Complainant's mark. Its NICK and NICK JR. mark registrations expressly provide for its online use in the field of entertainment concerning television programs, and therefore the disputed domain name covers the same territory as the Complainant's use and would heighten confusion for users.
The Complainant argues the Respondent has no rights or legitimate interests in the disputed domain name as it is not affiliated with the Complainant or licensed to use the disputed domain name nor made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods. The Respondent has not acquired any trademark rights in the name, but seeks to profit from the confusion with the Complainant's NICK JR. marks and tarnish it.
The Complainant states that the disputed domain name was registered and used in bad faith, due to its de minimis and “sham” use, which shows it was registered primarily for the purpose of selling, renting or otherwise transferring it to the Complainant for valuable consideration. Additionally, the Complainant contends the Respondent uses the Complainant's trademark to attract Internet users to the Respondent's website based on a likelihood of confusion which disrupts the Complainant's business and it also prevents the Complainant from reflecting its trademark in an equivalent domain name, and has engaged in a pattern of abusive domain name registrations in at least six previous cases. The Complainant therefore requests for the transfer of the disputed domain name. 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 elements under paragraph 4(a) to obtain the remedy of transfer of the disputed domain name.
(i) The disputed domain name is 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 name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first element under paragraph 4(a) requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
The Panel finds the Complainant has established its longstanding rights in the NICK and the NICK JR. trademarks and has filed evidence of its registered rights in these trademarks. The disputed domain name uses the Complainant's NICK JR. mark along with the term “live”. It is reasonable to infer that the Respondent has intentionally used the term “live” because it pertains to the field of media and broadcasting and is therefore associated with the Complainant's area of business and its products and services.
It is well established that the use of an apt or pertinent term related to the area of a complainant's business along with the trademark in the domain name would render it confusingly similar to the trademark. See Société Air France v. Privacy P / Rob McGee, WIPO Case No. D2008-1917 (where the addition of terms like “voyages” or “airlines” with the trademark AIR FRANCE in domain names was found to heighten the confusing similarity with the complainant's marks rather than lessen it).
The Panel therefore finds the addition of the term “live” in the disputed domain name is insufficient to distinguish the disputed domain name from the Complainant's trademark, and as argued by the Complainant, could increase the confusing similarity with the Complainant's marks. Also see Twentieth Century Fox Film Corporation v. Domains by Proxy, Inc./Samina Rahman,WIPO Case No. D2009-1121 (where the use of the word “live” in the domain name was found to be confusingly similar to the trademark FOX SPORTS). In the present dispute, the Panel finds analogous reasoning that the disputed domain name , is confusingly similar to the Complainant's trademark NICK JR.
The Panel finds the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case showing that the Respondent lacks rights and legitimate interests in the domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
The Complainant has argued that the Respondent has registered the disputed domain name in order to derive monetary gain from its trademark value by attempting to offer unauthorized goods from its website. Based on an evaluation of the evidence on record in the present case, the Panel finds the Respondent does not appear to be using the website linked to the disputed domain name for any business or other legitimate purpose, but uses it only as a link farm.2 Under the circumstances of the case, the Panel finds the use of the disputed domain name by the Respondent to misdirect Internet users to a link farm website is neither legitimate, noncommercial nor a fair use.
The Respondent appears to be exploiting the goodwill of the Complainant's mark by linking to third party websites and promoting goods and services of third party websites that are likely to compete with the Complainant's products and services. Such activity, within the meaning of paragraph 4(c)(i) of the Policy, does not give any indication of the Respondent's rights and legitimate interests in the disputed domain name. See MasterCard International Incorporated v. Paul Barbell,WIPO Case No. D2007-1139.
The Panel therefore determines that the Complainant has made a prima facie showing that the Respondent lacks rights and legitimate interests in the disputed domain name.
The Panel finds the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered and is being used in bad faith by the Respondent.
The Complainant has argued that the disputed domain name was registered and is used in bad faith due to its de minimis use, which indicates it was registered primarily for the purpose of selling, renting or otherwise transferring it to the Complainant. The Panel finds the Complainant has submitted no evidence to support its contentions that the disputed domain name was registered primarily for sale. The Panel therefore holds there is insufficient evidence to infer that the disputed domain name was registered primarily for the purpose of selling it to the Complainant.
The Panel is however convinced that the disputed domain name is being used by the Respondent to misdirect Internet users to a link farm that, inter alia, has links to unauthorized “‘Nickelodeon' oriented entertainment information”. The Complainant contends that the screen shots of the Respondent's website pages filed by the Complainant are replete with numerous links to various games, music and ringtones websites. Some of the links are titled “Free Nick Games”, “Nick Jr. Online Games”, “MP3Downloads” and “MTV Ringtones”. Such use of a well-known trademark in a domain name to attract users to the Respondent's link farm website to promote goods or services which compete with the Complainant's products and services is bad faith use under the Policy. See AMPO, S. COOP v. C, Taeho Kim, Philippine,WIPO Case No. D2009-0177.
The Panel finds the Respondent's adoption of the disputed domain name occurred long after the Complainant established its rights in the NICK JR. mark. The Complainant has provided evidence of its use of the NICKELODEON mark from March 1979 and the NICK JR. mark from 1987. Clearly, the Complainant's trademark adoption, use and registration predate the registration of the disputed domain name by a considerable length of time.
Given the fame of the Complainant's mark, its subsisting trademark registrations in numerous countries and the widespread broadcast of its programs in many jurisdictions, and the manner in which links are placed on the Respondent's website, it is doubtful that the Respondent was unaware of the Complainant's trademark rights when it registered the disputed domain name. These circumstances indicate that the disputed domain name was registered in bad faith.
The Panel also notes that the Respondent has engaged in similar abusive domain name registrations in other cases. Registering a domain name with the intention of attracting users to a respondent's link farm website, due to the fame associated with a complainant's trademark, to promote goods and services that compete with the complainant's products and services is bad faith registration and use of the domain name under the Policy. See Société Air France v. FP Transitions Pty Ltd,WIPO Case No. D2007-0988.
The Panel finds the disputed domain name is used by the Respondent in a manner that is likely to cause confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the products and services. Under the circumstances, as discussed in the present case, the registration and use of the disputed domain name constitutes abusive registration and use of the domain name under paragraph 4(b)(iv) of the Policy. See also Pandora Jewelry, LLC v. Wang Feng,WIPO Case No. D2009-1533, where the use of a complainant's trademark in the domain name to promote and sell counterfeit, unauthorized products through the Respondent's website links was held to be bad faith registration and use.
For the reasons discussed, the Panel finds that the disputed domain name has been registered and used in bad faith.
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 name be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Dated: January 20, 2010
Full & Egal Universal Law Academy