Viacom International Inc. v. Frank F. Jackson and Nancy Miller

Case No. D2003-0755

The Complainant is Viacom International Inc., of New York, New York, United States of America, represented by Davis Wright Tremaine LLP, United States of America.

The Respondents are Frank F. Jackson and Nancy Miller, of Long Island City, New York, United States of America.

The disputed domain names <mtvdesign.com> and <mtvhosting.com> are registered with Wild West Domains, Inc.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 24, 2003. On September 26, 2003, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue. On September 26, 2003, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details for the administrative, billing, and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 Respondents of the Complaint, and the proceedings commenced on October 14, 2003. In accordance with the Rules, paragraph 5(a), the due date for response was November 3, 2003. The Respondents did not submit any response. Accordingly, the Center provided notice of the Respondents’ default on November 12, 2003.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on November 24, 2003. 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.

(a) The Complainant, through its wholly-owned MTV Networks, operates MTV: Music Television ("MTV"). Since 1981 – over twenty years before Respondents registered the domain names here at issue – MTV has provided twenty-four hour-a-day, seven-day-a-week programming services featuring music-related programming including music videos, interviews, documentaries, entertainment information and news. MTV programming is seen in 166 territories worldwide and in over 385 million households. In the United States alone, MTV reaches nearly 85 million domestic subscriber households.

(b) Viacom owns numerous trademark and service mark registrations in over 100 countries for the trademark MTV, including "MTV" in block letters, "MTV" in stylized format, and "MTV Music Television", among others (collectively the "MTV Marks") (see Annex 12 of the Complaint).

(c) Viacom uses the MTV Marks to promote MTV and its programming within the on-air programming itself and through advertising on television, in newspapers, magazines and other print media, and on billboards and other outdoor advertising nationwide. In all of these advertisements, the MTV Marks are prominently displayed or are otherwise referenced.

(d) Viacom has also maintained a presence on the Internet since at least 1994, and launched its MTV-related website, "www.mtv.com", in 1995 (the "MTV Website"). The MTV Website is consistently ranked the number one music content site among teens aged 13-17. In the year 2000, it had an average monthly audience of 7,708,363. In July 2003, the MTV Website had approximately 6.3 million unique visits alone.

(e) Viacom uses the MTV Marks in conjunction with programs that MTV produces including, among others: "The MTV Video Music Awards", "MTV Movie Awards", "MTV Spring Break", and "MTV Unplugged". These programs are frequently "hosted" by celebrities in the music, entertainment and fashion industries and fashion/design matters are discussed on these programs.

(f) Since MTV began broadcasting in 1981, Viacom has spent hundreds of millions of dollars in advertising and promoting its services and merchandise under the MTV Marks and, accordingly, building MTV’s reputation and goodwill.

The Complainant asserts, inter alia, as follows:

(i) The domain names <mtvhosting.com> and <mtvdesign.com> (the "Domain Names") are identical or confusingly similar to the MTV Marks within the meaning of the Policy, as adopted by Wild West Domains, Inc., the concerned registrar (see Policy 4(a)(i); Rules 3(b)(viii), (b)(ix)(1)).

(ii) The addition of a generic top-level domain name is insignificant.

(iii) Since domain names are not case sensitive, the use of the lower case lettering creates a confusingly similar domain. See Oxygen Media, LLC v. Primary Source,WIPO Case No. D2000-0326 (<oxygen.com> confusingly similar to OXYGEN mark).

(iv) A domain name that simply adds a word to a Complainant’s mark is confusingly similar to that mark.

(v) The MTV Marks are famous throughout the world and have been so for the better part of two decades. The MTV Marks are so famous that Internet users would likely think that a website using the MTV Marks, or any variant of them, was owned and operated, or at the very least affiliated with, Viacom and MTV.

(vi) By attaching the terms "hosting" and "design" to the MTV marks, Respondents clearly seek to reinforce an affiliation between the Domain Names and MTV, playing on the fact that many MTV programs are "hosted" by celebrities, and that popular fashion and design (themselves frequently driven by the entertainment and music industries) are often discussed on or are otherwise a part of many MTV programs (see e.g., Viacom International Inc. v. Matrix Management and T. Parrott,WIPO Case No. D2001-1442 (finding that use of term "videos" in conjunction with MTV Marks does not dispel confusion, but rather exacerbates it).

(vii) Over twenty years after Viacom adopted the MTV marks, Respondents, without authorization from Complainant, registered the <mtvhosting.com> and <mtvdesign.com> domain names on or about October 9, 2002 and September 14, 2002, respectively, (see Annex 1 of the Complaint).

(viii) Respondents are not licensees of Viacom or MTV, they have no relationship or association with Viacom or MTV, nor are they otherwise authorized to use the MTV Marks in any way.

(ix) Complainant sent four cease and desist letters to Respondent Jackson expressly informing him of Complainant’s obvious rights in the MTV Marks, that his use of the MTV Marks was unauthorized, and demanding that he cease using the marks and transfer the Domain Names to MTV Networks. At the time that the cease and desist letters were sent, Jackson was the registrant of both the <mtvhosting.com> and <mtvdesign.com> domain names, (see Annex 6 of the Complaint). The first of these letters was sent on January 29, 2003, by registered mail return receipt requested, to the address then listed on Internet registrar’s Whois database for the Domain Names (that address has since been changed to the Long Island City, New York address noted above). No response was received, and the letter was returned as undeliverable. A second letter was sent, also by certified mail, on February 10, 2003, to which Respondent Jackson similarly failed to respond. On February 21, 2003, Complainant sent yet another letter, this time by e-mail, to the e-mail addresses which are still listed as current addresses on the "mtvhosting.com" website and/or in the Whois information for both Respondents. Finally, on April 8, 2003, Complainant sent a fourth cease and desist letter to the same e-mail addresses. As before, Respondents failed to answer these letters or assert in any way that they had legitimate rights or interests in the Domain Names. (Copies of the January 29, February 10, February 21 and April 8, 2003, cease and desist letters are attached as Annex 14 to the Complaint).

(x) The MTV Marks are so well known that Respondents, who must have been aware of the marks at the time he/they registered the Domain Names in late 2002, can have no rights or legitimate interests in them, nor can Respondents present a fair use or noncommercial use of the Domain Names.

(xi) With respect to the <mtvdesign.com> domain name, Respondent Miller has not used the domain name lawfully to offer goods or services prior to the notice of this dispute. Indeed, the web page associated with the <mtvdesign.com> domain name contains nothing more than the two words "Coming soon" and does not offer any content – much less legitimate goods and services (see Annex 3 of the Complaint). In addition, there is no evidence that Repondent Miller has used or has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services.

(xii) With respect to the <mtvhosting.com> domain name, while the associated website purports to offer web hosting and related services, it is not clear that any such services are offered (see Annex 2 of the Complaint).

The Respondents did not reply to the Complainant's contentions and are in default.

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Moreover, under Paragraph 14(b) of the Rules, it is established that: "If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate".

In the light of the above, the Panel may draw such inferences from the Respondents' failure to comply with the Rules as he considers appropriate (see Paragraph 14(b) of the Policy; see TalkCity, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

Under Paragraph 4(a) of the Policy, Complainant must prove each of the following:

(i) the Domain Name in issue is identical or confusingly similar to Complainant’s trademark or service mark; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

The Domain Names are <mtvhosting.com> and <mtvdesign.com>. As mentioned above, the Complainant owns numerous trademark and service mark registrations, the "MTV Marks" in various formats.

The Domain Names differences from the MTV Marks are minor, namely the addition of the generic top-level domain name and the addition of the worlds "hosting" and "design".

These difference are legally inconsequential and do not prevent a finding of confusing similarity (see e.g. Viacom International Inc. v. Erik Peterson, WIPO Case No. D2000-0346). In fact, in the Panel’s view, the additional words may reinforce an affiliation among the Domain Names and Complainant. This reasoning is consistent with previous WIPO decisions (see Viacom International Inc. v. Matrix Management and T. Parrott, WIPO Case No. D2001-1442).

Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademarks pursuant to the Policy, Paragraph 4(a)(i).

According to Paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondents have no rights or legitimate interests in the Domain Name. In connection with the burden of proof, several WIPO decisions have held that "once a Complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to Respondent to rebut the showing" (see Universal City Studios,Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A.v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

The Complainant has asserted that the Respondents have no relationship with or authorization from the Complainant for using the MTV Marks; that the Respondents have not been commonly known by the Domain Names; and that the Respondents are not, and have never been, commonly known by the Domain Names. The Panel’s view is that these facts must be taken as proven provided that they have not been denied by the Respondents.

On the other hand, the Respondents have not submitted a proper response, therefore, they have failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the Domain Names under Paragraph 4(c) of the Policy.

Accordingly the Panel holds that the Respondents have no legitimate interests or rights in registering the Domain Names pursuant to Paragraph 4(b) of the Policy.

Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto RinconGarcia, WIPO Case No. D2002-0806) and under the Policy (see Section 2), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s trademarks and service marks are very well known worldwide, it is very unlikely that the Respondents, at the time of registration of the Domain Names or thereafter, were not aware that they were infringing the Complainant’s trademarks and service marks.

Respondent’s awareness of the fame of the MTV Marks is evident in that the <mtvhosting.com> website includes a disclaimer specifically referring to MTV and Viacom and stating that the site is not affiliated with them (see Annex 13 of the Complaint). The disclaimer evidences Respondents’ bad faith, rather than the lack of it, for several reasons. First, the disclaimer is (barely) visible only after the misleading domain name has attracted users searching for the legitimate MTV website. Attracting users in this manner and only then including a disclaimer is: "tantamount to committing a tortious act but then seeking to avoid liability after the event. It is only by unauthorized use of the trademark that the potential customer is brought to the website (containing the disclaimer) in the first place." Dr. Ing. H.c.F. Porsche AG v. Sabatino Andreoni, WIPO Case No. D2003-0224 (quoting ISL Worldwide and The Federal Internationale de Football Association v. Western States Ticket Service, WIPO Case No. D2001-0070). Second, the disclaimer appears in miniscule and faded typeface at the bottom of only the first page of Respondent’s website, which prominently displays the MTV Marks. Third, the disclaimer appears on the home page well below all of the numerous links to other portions of the site, and when a user click on any of these links, he or she is taken to additional pages, none of which contain the disclaimer, but nearly all of which prominently display the MTV Marks (see Pilva, Inc. v. Eric Kaiser, WIPO Case No. D2003-0316 (finding ineffective disclaimer that appeared at bottom of home page containing Complainant’s mark); (see Annex 13 of the Complaint).

Respondents are, in using domain names that incorporate the MTV Marks, seeking to exploit user confusion by diverting Internet users away from the legitimate MTV website to Respondents’ websites for their own benefit and commercial gain, such as by selling space to consumers who may be interested in advertising on Respondents’ websites. See Viacom International Inc. v. Matrix Management and T. Parrott, WIPO Case No. D2001-1442. A banner advertisement for "Time Out New York", a magazine, currently appears on the <mtvhosting.com> website, which, when clicked on by a user, links to the Time Out New York home page (see Annex 13 of the Complaint). Diverting users in this misleading manner is further evidence of bad faith.

With respect to <mtvdesign.com>, this domain name has been held passively by Respondent Miller and not used for any purpose since it was registered. The website consists of an otherwise blank page that states, as it has for at least the past eight months, "Coming soon" (see Annex E of the Complaint). Such "passive" holding of a domain name is evidence bad faith (see Quanta S.p.A. v. Francois Kyan,WIPO Case No. D2003-0158; Sanrio Company Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172).

Further evidence of bad faith is that Respondents have each submitted inaccurate, incomplete and false information in registering the Domain Names, which they have failed to correct (see A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc. WIPO Case No. D2003-0172).

The conduct described above falls squarely within paragraph 4(b)(vi) of the Policy and accordingly the Panel concludes that the Respondents registered and have been using the Domain Names in bad faith.

In the light of the above, the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondents.

For the foregoing reasons, the Panel orders that the Domain Names <mtvhosting.com> and <mtvdesign.com> be transferred to Complainant.