The Complainant is Viacom International Inc., United States of America (“US”), represented by Adams & Adams Attorneys, South Africa.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Uchechukwu Amaefule, Nigeria. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2020. On November 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 20, 2020, the Registrar 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 the Complainant on November 23, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 25, 2020. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2020. The Center appointed Gabriela Kennedy as the sole panelist in this matter on December 29, 2020. 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 leading multinational mass media and entertainment content conglomerate that provides entertainment content to its audience worldwide through various means including television, digital media, and motion pictures. MTV, one of the earliest and most renowned cable television channels in the world, is owned by the Complainant. The Complainant is the proprietor of numerous trade mark registrations for the MTV mark in various jurisdictions, including, inter alia, the MTV MUSIC TELEVISION trade mark (Reg. No. 1580650) registered in the US on January 30, 1990; the MTV trade mark (Reg. No. 1955606) registered in the US on February 13, 1996; the MTV FILMS trade mark (Reg. No. 2584726) registered in the US on June 25, 2002; and, the MTV trade mark (Reg. No. F/TM/0/2014/19857) registered in Nigeria, on March 4, 2019. The Complainant also owns and operates various domain names containing the MTV trade mark, including The Respondent registered the Disputed Domain Name on October 6, 2018. 5. Parties’ Contentions A. Complainant The Complainant’s primary contentions can be summarised as follows: (a) The Disputed Domain Name wholly incorporates the Complainant’s MTV trade mark, and is conceptually identical and confusingly similar to its MTV trade mark. The addition of the word “naija” does not distinguish the Disputed Domain Name from the Complainant’s MTV trade mark, as “naija” is a slang term used by Nigerians to refer to themselves or the country of Nigeria. Such a word is used by the Respondent to create an impression that the website to which the Disputed Domain Name resolves is associated with the Complainant. The Complainant’s MTV trade mark was also used by the Respondent on the website to which the Disputed Domain Name resolves without authorization. The Respondent also promoted its website on social media platforms using the profile name “@MTVNaija” and the Complainant’s MTV trade mark; (b) The Complainant is the exclusive owner of the MTV trade mark and third parties are prohibited from using any identical or similar signs. The Respondent must have been aware of the Complainant’s MTV trade mark and is not commonly known by the Disputed Domain Name. The Respondent is not making any legitimate, noncommercial or fair use of the Disputed Domain Name, as the Respondent’s use of the MTV trade mark on its website constitutes an infringement of the Complainant’s registered trade mark rights; and (c) The Disputed Domain Name has been used to mislead visitors into believing that the website is associated with or operated by, or otherwise connected with the Complainant. The Respondent continued to make use of the Disputed Domain Name and the MTV trade mark after being warned by the Complainant several times. The Respondent’s admission that the website receives over 10 thousand requests per week and a monthly revenue of USD 8,000 proves that the website to which the Disputed Domain Name resolves has successfully misled Internet users into believing that they are the authorized Nigerian representatives of the Complainant. As such, the Disputed Domain Name was registered and has been used by the Respondent in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437, and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements: (i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and, (iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar The Panel accepts that the Complainant has rights in the MTV trade mark, based on its various trade mark registrations. It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extension (“.com” in this case) is generally disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Disputed Domain Name incorporates the Complainant’s MTV trade mark in its entirety with the addition of the word “naija”. UDRP panels have consistently found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. See section 1.8 of the WIPO Overview 3.0. The mere addition of the term “naija”, whether or not it is an informal word for “Nigeria” or “Nigerian”, does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s MTV trade mark. As such, the Panel finds that the Disputed Domain Name is identical to the Complainant’s MTV trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0. The Panel accepts that the Complainant has not authorised the Respondent to use the MTV trade mark, and there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the MTV trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence. Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following: (i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; (ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services, since the Disputed Domain Name resolves to a website that reproduces the Complainant’s MTV trade mark without the Complainant’s consent or authorisation. As the Respondent receives a monthly revenue of around USD 8,000 through the operation of the website to which the Disputed Domain Name resolves, the Respondent’s use of the Disputed Domain Name does not appear to be legitimate, noncommercial, or without intent for commercial gain. The Panel agrees with the Complainant that such use of the Disputed Domain Name gives an impression that the Disputed Domain Name is associated with and/or endorsed by the Complainant and is capable of misleading and diverting visitors, and tarnishing the Complainant’s MTV trade mark. There is also no evidence to prove that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that he has become known by the Disputed Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. The Complainant’s MTV trade mark appears to be fairly well known. The Panel accepts the Complainant’s argument that the Respondent must have been aware of the Complainant and their rights in the MTV trade mark when registering the Disputed Domain Name. The fact that the Disputed Domain Name incorporates the Complainant’s MTV trade mark in its entirety creates a presumption of bad faith. In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name has been registered and is being used by the Respondent in bad faith: (i) the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name; (ii) it is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name is confusing similar to the Complainant’s MTV trade mark and domain name (iii) the Respondent undertook to the Complainant to remove its social media accounts and website but eventually failed to carry out such undertaking despite the Complainant’s repeated requests. In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied. 7. Decision For 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 Gabriela Kennedy
Sole Panelist
Date: January 14, 2021
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