WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TVdot.net, Inc. f/k/a Affinity Multimedia
Case No. D2000-1253
1. The Parties
1.1 The Complainants are Viacom International Inc., Paramount Pictures Corporation, and Blockbuster Inc., all owned by Viacom Inc. having a business address of 1515 Broadway, New York, New York 10036, U.S.A.
1.2 The Respondent is TVdot.net, Inc. f/k/a Affinity Multimedia having a business address of 114 Lutece Circle, Kennett Square, Pennsylvania 19348, U.S.A.
2. The Domain Names and Registrar
2.1 The disputed domain names are:
2.2 The registrar of the disputed <nickkidstv.net> domain name is Network Solutions, Inc., having a business address in Herndon, Virginia, USA.
2.3 The registrar of the remaining disputed domain names is Bulkregister.com, Inc. having a business address in Baltimore, Maryland, USA.
3. Procedural History
3.1 Complainants initiated the proceeding by filing a complaint, received by the WIPO Arbitration and Mediation Center ("WIPO") on September 22, 2000.
3.2 On October 10, 2000, all formal requirements for the establishment of the complaint were checked by WIPO and found to be in compliance with the ICANN 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"). The Panel accepts the WIPO checklist as evidence of proper compliance with the Policy, Rules, and Supplemental Rules.
3.3 On October 11, 2000, WIPO transmitted notification of the complaint and commencement of the proceedings to Respondent via e-mail, facsimile, and courier mail.
3.4 On October 31, 2000, WIPO transmitted a notification of default by the Respondent to the parties.
3.5 On November 2, 2000, Respondent notified WIPO by email that it had received the notification of default but had already forwarded its Response. WIPO informed the Respondent the following day by email that the deadline for sending a Response was as stated in the Notification but that WIPO would accept supplemental filings made by either party before the appointment of the Administrative Panel, and that it would be at the Administrative Panelís sole discretion whether such filings will be considered in arriving at a decision.
3.6 On November 3, 2000, WIPO received the Response from Respondent.
3.7 On November 3, 2000, WIPO received Complainants' Reply to the Response. On November 7, 2000, WIPO received a number of documents that were faxed by the Respondent.
3.8 On December 7, 2000, Complainants and Respondent were notified by WIPO of the appointment of the three panelists comprising the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances it would be required to forward its decision to WIPO by December 20, 2000.
3.9 On December 18, 2000, the time for the Panel to forward its decision to WIPO, was extended up to and including January 16, 2001.
The Panel has not received any further requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
4.1 Complainants are well-known companies in the entertainment industry, including television networks and cable, motion picture and television distribution and production, audio visual retail, and on the Internet.
4.2 Complainants operate web sites at <viacom.com>, <paramount.com>, <vh1.com>, <nick.com>, and <blockbuster.com>.
4.3 Complainants own numerous U.S. and foreign trademark registrations for the marks "VH1," "PARAMOUNT," "VIACOM," "BLUESCLUES," "BLOCKBUSTER," "NICK," "NICKELODEON," "NICK JR," "NICK.COM," and "NICK AT NITE."
4.4 The Whois information for each domain name at issue indicates that "viacomtv.net" was registered on September 1, 1999; "vh1tv.net" was registered on December 15, 1998; "paramounttv.net" was registered on January 14, 1999; "nickkidstv.net" was registered on January 14, 1999; <bluescluestv.net> was registered on September 16, 1998; and <blockbustertv.net> was registered on February 11, 1999.
4.5 Respondent explicitly agreed in its Response to relinquish its registration of the <vh1tv.net> domain name.
5. Partiesí Contentions
Complainant states in pertinent part:
"Viacom is a diversified entertainment company with operations in: (i) Television Networks and Cable, (ii) Motion Picture and Television Distribution and Production, (iii) Audio Visual Retail, (iv) and Online, among others."
"Viacomís site at "viacom.com" posts information and articles about Viacom and links to its businesses."
"Paramountís "paramount.com" website provides information about upcoming and current movie releases, television productions, and home video products."
"MTVNís online group has numerous music destinations, including <mtv.com>, and <vh1.com>, and sites for childrenís television programming at <nick.com>, <nickjr.com>, and <nick-at-nite.com>.
"Blockbusterís <blockbuster.com> website provides store locations and allows customers to buy its products."
"Viacom owns trademark registrations in over 68 countries for the VH1 Marks. Information concerning U.S. trademark registrations are attached as Exhibit C. These registrations serve as prima facie evidence of the validity of the Marks and of Viacomís exclusive right to use the Marks. Many are incontestable and serve as conclusive evidence of Viacomís exclusive right to use the VH1 Marks on the goods and services listed."
"Nickelodeon features programming primarily geared for children, teens and young adults. The Nickelodeon marks, which include without limitation NICKELODEON, NICK, NICK JR., NICK.COM and NICK AT NITE in block letters and stylized format (collectively the Nickelodeon Marks) are used to promote Nickelodeon and its branded programming."
"Viacom own trademark registrations in over 87 countries for the Nickelodeon Marks. Information concerning U.S. trademark registrations for these marks are attached as Exhibit E. These registrations serve as prima facie evidence of the validity of the Marks and of Viacomís exclusive right to use the Nickelodeon Marks. Many are incontestable and serve as conclusive evidence of Viacomís exclusive right to use the Nickelodeon Marks on the goods and services listed."
"One of Nickelodeonís most popular shows is "Blueís Clues," which first aired in September 1996, and is an educational interactive television series geared to preschoolers featuring Blue, an animated puppy, and her human friend Steve."
"Viacom owns trademark registrations in over 87 countries for the Blueís Clues Marks. Information concerning U.S. trademark registrations for these marks are attached hereto as Exhibit F. These registrations serve as prima facie evidence of the validity of the marks and of Viacomís exclusive right to use the Blueís Clues Marks on the goods and services listed in the registrations."
"Viacom first used the VIACOM mark (the Viacom Marks) in interstate commerce in 1971 in connection with its distribution of television programming, thereafter expanding its businesses and registering the mark worldwide."
"Complainant Viacom owns trademark registrations for the Viacom Marks in over 80 countries worldwide. Information concerning U.S. trademark registrations for these marks are attached hereto as Exhibit I. These registrations serve as prima facie evidence of the validity of the Marks. Many are incontestable and serve as conclusive evidence of Viacomís exclusive right to use the Viacom Marks on the goods and services listed."
"Since as early as 1915, Paramount has been engaged in the business of producing entertainment in various media, primarily movies and television, and has used the mark PARAMOUNT as part of its corporate name (the Paramount Marks)."
"Paramount owns trademark registrations for the Paramount Marks in more than 80 countries worldwide. Information concerning U.S. trademark registrations for these marks are attached as Exhibit K. These registrations serve as prima facie evidence of the validity of the marks and of Paramountís exclusive right to use the Paramount Marks. Some are incontestable and serve as conclusive evidence of Paramountís exclusive right to use the Paramount Marks on the goods and services listed."
"Since 1985, Blockbuster has been selling and renting video and audio tapes to the public under the BLOCKBUSTER name and mark and variations thereof (the Blockbuster Marks) from BLOCKBUSTER VIDEOís stores, and today is the worldís leading retailer of home video cassettes, DVDs and video games."
"Blockbuster owns trademark registrations for the Blockbuster Marks in more than 80 countries worldwide. Information concerning U.S. trademark registrations for these marks are attached hereto as Exhibit M. These registrations serve as prima facie evidence of the validity of the marks and of Blockbusterís exclusive right to use the Blockbuster Marks. Some are incontestable and serve as conclusive evidence of Blockbusterís exclusive right to use the Blockbuster Marks on the goods and services listed."
"In September 1999, Respondent registered the domain names <viacomtv.net>, <paramounttv.net>, <vh1tv.net>, <nickkidstv.net>, <bluescluestv.net>, and <blockbustertv.net>. See Exhibit A. Each incorporates a trademark owned by Complainants, with the addition of the word "TV"."
"On January 21, 2000, Kevin McCann, Respondentís President, offered to sell the <paramounttv.net> domain name to Paramount. A copy of this offer is provided as Exhibit N hereto. Prior to receipt of that offer, Complainants had no knowledge of Respondentís registration of the Infringing Domain Names. Complainants demanded the transfer of the domain name <paramounttv.net> based on its prior rights. A copy of that demand is provided as Exhibit O hereto."
"By letter dated February 1, 2000, Respondent stated that it intended to use the <paramounttv.net> domain name as a commercial web site called "Paramount Television Network," dedicated to television content. See Exhibit P. Respondent refused to transfer the domain name unless it obtained a business meeting with Viacomís "New Business Development" group in order to discuss Viacomís purchase of its "broadband portal concept." (See Exhibit P)."
"Complainants subsequently discovered that Affinity had also registered the <viacomtv.net> domain name. Complainants sent a second demand letter to Affinity on February 29, 2000, and a third letter on March 16, 2000, requesting transfer of these domain names. See Exhibit Q. Affinity did not respond to these letters or to several phone messages."
"On April 25, 2000, Mr. McCann and Affinity agreed to transfer both <paramounttv.net> and <viacomtv.net> for reimbursement of Affinityís registration costs. Complainants transmitted to Affinity transfer documents for execution pursuant to this agreement. See Exhibit R. Affinity subsequently reneged, demanding either (1) a partnership with Complainants in the operation of Affinityís online television portal, or (2) an amount of money significantly exceeding Affinityís registration costs."
"Complainants thereafter learned that, in addition to <paramounttv.net> and <viacomtv.net>, affinity registered <vh1tv.net>, <nickkidstv.net>, <bluescluestv.net> and <blockbustertv.net>. Complainants also confirmed that Affinity owns additional domain names incorporating famous trademarks. See Exhibit S."
Respondent states in pertinent part:
"TVdot.net is owner of TVdot.net, an on-line portal network focused on broadband-centric communication and vertical e-commerce opportunities. TVdotnet's strategy includes the licensing of domain names, not the selling of domain names."
"TVdot.net is the owner of over nine hundred (900) domain names containing the suffix "TV.net"."
"The trademarks VIACOM, VH1, PARAMOUNT, BLOCKBUSTER, BLUES CLUES, NICK, NICKELODEON and NICK IS KIDS (for NICKKIDSTV.NET) are registered with the USPTO. TVdot.net recognizes that the trademarks are registered."
"Although TVdot.net registered the <vh1tv.net> domain name prior to the institution of the Anticybersquatting Consumer Protection Act ("ACPA"), TVdot.net hereby agrees to relinquish its registration of the <vh1tv.net> domain name since this domain name and its Complainant's trademark VH1TV has no other use other than as a source indicator for Complainant's VH1TV goods and/or services."
"In sum, TVdot.net registered the domain names <viacomtv.net>, <paramounttv.net>, < nickidstv.net>, <bluescluestv.net>, <blockbustertv.net> and <h1tv.net>, (the "TVdot.net Domain Names") with the good faith intent that perhaps these entities would like to join the TVdot.net portal network."
"Although TVdot.net does not intend to use the TVdot.net Domain Names itself, it does desire to license such TVdot.net Domain Names to others who have a legitimate right to use the TVdot.net Domain Names."
"Complainant correctly points out that TVdot.net has systematically registered domain names incorporating famous trademarks by other companies. TVdot.net's business agenda includes offering such other companies an opportunity to join the TVdot.net portal network."
6. Discussion and Findings
6.0 As a preliminary matter, the Panel must decide whether to accept the Respondentís Response, which was sent after the deadline. Under Clauses 10, 12, and 14 of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, the Panel has the power to either hold the Respondent in default, or to admit, as an exception, its belated Response.
The Panel has decided to accept the belated Response, since it was received only 3 days after the deadline and since it was dated within the deadline.
The Panel has decided not to accept any of the additional filings submitted by the parties after November 3, 2000.
6.1 The Uniform Domain Name Dispute Resolution Policy (the "Policy"), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration.
6.2 Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondentís domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
6.3 Complainant asserts that the domain names <viacomtv.net>, <paramounttv.net>, <vh1tv.net>, <nickkidstv.net>, <bluescluestv.net>, and <blockbustertv.net> are confusingly similar to Complainant's trademarks VIACOM, PARAMOUNT, VH1, NICK, NICKELODEON, NICK JR., NICK.COM, NICK AT NITE, BLUES CLUES, and BLOCKBUSTER.
6.4 Although the domain names at issue are not identical to the Complainant's marks, a finding of similarity cannot be avoided by adding a common or generic term to the complainantís mark. See Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO D200-0150 (WAL-MART and walmartcanada.com are confusingly similar); CSA International v. John OíShannon and Care Tech Industries, Inc., WIPO D2000-0071 (csa-canada.com is substantially identical to and confusingly similar to CSA trademark).
6.5 Simply adding the generic term "TV" to each of the Complainant's marks does not avoid a finding that the domain names at issues are confusingly similar.
6.6 The Panel finds that the <viacomtv.net>, <paramounttv.net>, <vh1tv.net>, <bluescluestv.net>, and <blockbustertv.net> domain names are identical or confusingly similar to the trademarks VIACOM, PARAMOUNT, VH1, BLUES CLUES, and BLOCKBUSTER, and that the Complainants have established they have rights in these same trademarks, pursuant to paragraph 4(a)(i) of the Policy.
6.7 With regard to the <nickkidstv.net> domain name, the Panel finds that it too is confusingly similar to Complainant's NICK and Nickelodeon marks. In this case two generic terms were added to the mark, which just happen to describe the services provided by the Complainant under the mark, i.e., children's television programming services.
6.8 There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain names at issue. Merely registering a domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy. See N.C.P. Marketing Group, Inc. v. Entredomains, D2000-0387, July 5, 2000.
The respondent argues, and provides ample evidence to prove, that complainantís trademarks are used for other products around the world. The respondent then goes on to argue that this give it the right to use the complainantís trademarks.
But this reasoning is incorrect. The same trademark can be used for different types of products within a country thanks to the class system; or it can be used by a different owner for the same type of product in a different country, thanks to national trademark registrations. Such is not the case of a domain name, which is unique worldwide. Since a domain name is unique world-wide, it can be used by only one owner, unlike trademarks, which can be used by several different owners.
In general, domain names are assigned on a first-come, first-served basis, but there are exceptions to this principle. The ICANN Policy, which this panel must enforce, contains such exceptions. And it is the exceptions created by the Policy, not general trademark law, which the Panel must examine.
Respondent cites cases no. D2000-1001, D2000-1086, and D2000-0906 to support its position (which is not contested) that domain names that incorporate trademarks can in fact identify different sources of goods and services. But in the first case cited, the panel held that the complainant did not hold a valid trademark that was identical or confusingly similar to the contested domain name. In the second case the panel held that the respondent had shown a legitimate interest in the contested domain name (prior use). In the third case, the panel held that the respondent was making a legitimate non-commercial use of the contested domain name. That is, the cases cited by the respondent can be distinguished on the facts from the present case, and hence do not apply.
6.9 The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the domain names <viacomtv.net>, <paramounttv.net>, <vh1tv.net>, <nickkidstv.net>, <bluescluestv.net> or <blockbustertv.net>, pursuant to paragraph 4(a)(ii) of the Policy.
6.10 Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(i) states:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
6.11 The Respondent admits (1) that it has "systematically registered domain names incorporating famous trademarks by other companies" and (2) that it does not intend to use the domain names itself but intends to license the domain names to others who have a legitimate right to use the domain names.
6.12 Registering famous trademarks in order to license them to their rightful owners falls squarely within the purview of paragraph 4(b)(i) of the Policy. The Panel finds that the Complainants have established that the Respondent registered and used the domain names <viacomtv.net> <paramounttv.net>, <vh1tv.net>, <nickkidstv.net>, <bluescluestv.net> and <blockbustertv.net> in bad faith.
6.13 Respondent cites D2000-0638, <manchesterairport.com>. But this case can be distinguished on the facts, because in D2000-0638 the panel held that the complainant had not established that it had a valid trademark. While the panel did hold in that case (as the respondent correctly points out) that, in general, resolution of disputes related to violation of national passing off laws should be left to the national courts, the panel also held that the Policy does cover certain specific types of passing off, namely in clause 4(b)(iv). Indeed, this clause states that evidence of bad faith use can be shown in a situation where:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
On the balance of the evidence presented, this panel finds that this clause of the Policy applies to the present case.
6.14 Later, Respondent cites D2000-1124 and D2000-0993. Again, these cases are distinguished on the facts. In both cases, the panel found that the respondent had a legitimate interest in the contested domain name and that it had not acted in bad faith.
Furthermore, Respondent cites Sportyís Farm L.L.C. v. Sportsmanís Market, Inc., 53 USPQ 2D (BNA) 1570 (2000). Respondent cites the following factors that are used to define bad faith in the US Anticyberquatting Consumer Protection Act:
(i) The intellectual property rights of the defendant in the domain name.
(ii) The extent to which the domain name actually identifies the defendant.
(iii) The defendantís prior use of the domain name in connection with any goods or services.
(iv) The defendantís bona fide noncommercial or fair use of the trademark in connection with any goods or services.
(v) The defendantís intent to divert consumers from the trademark owner.
(vi) The defendantís offer to transfer, sell, or otherwise assign the domain name for financial gain.
(vii) The defendantís conduct in acquiring and maintaining domain name registration.
(viii) The defendantís conduct in trafficking domain names.
(ix) The extent to which the trademark incorporated in the defendantís domain name registration is or is not distinctive or famous.
If we apply these factors to the present case, we would find against the respondent for all factors except (vii) and (viii).
6.15 Under 4(c)(i) of the Policy, it suffices for the respondent to show that it has a bona fide offering of goods or services under the contested domain name. But illegal use of anotherís trademark cannot be considered to be bona fide use (see for example D2000-0078, talkabout.com). And in the present case we are clearly faced with such a situation: the respondentís plans are to use domain names which incorporate the complainantís trademarks in a business (online TV) which is substantially similar to the complainantís business. Such use would undoubtedly create customer confusion. Indeed, the respondent cites Polaroid Corp. v. Polarad Electronics Corp., 287F.2d 492 (2d Cir.) cert. Denied, 368 US 820 (1961), according to which US courts should apply the following factors to determine likelihood of confusion:
(1) The strength of the plaintiffís trademark.
(2) The degree of proximity between a plaintiffís trademark and a defendantís trademark.
(3) The proximity of the products or services.
(4) The likelihood that the plaintiff will bridge the gap.
(5) Evidence of actual confusion.
(6) Defendantís good faith in adopting the trademark.
(7) The quality of the defendantís product or service.
(8) The sophistication of buyers.
If we apply these factors to the present case, we would find against the respondent for all factors except (5).
The panel also notes with approval complainantís citation of Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1062 (9th Cir. 1999), in which the court held that the defendantís use of plaintiffís trademark in its web site created an initial interest confusion which allowed defendant to trade off of plaintiffís goodwill in violation of US federal trademark law.
6.16 Both parties submitted extensive briefing that included issues beyond the scope of the Policy. The Panel has confined itself to making only those determinations necessary to resolve this administrative proceeding.
As the Complainants, Viacom International Inc., Paramount Pictures Corporation, and Blockbuster Inc., have established that the Respondent, TVdot.net, Inc. f/k/a Affinity Multimedia, has engaged in abusive registration of the domain names <viacomtv.net>, <paramounttv.net>, <vh1tv.net>, <nickkidstv.net>, <bluescluestv.net>, and <blockbustertv.net> within the meaning of paragraph 4(a) of the Policy, the Panel orders that each of these domain names be transferred to the Complainants.
R. Eric Gaum
Carol Anne Been
Dated: January 16, 2001