WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Viacom International Inc. and MTV Networks Europe v. Rattan Singh Mahon

Case No. D2000-1440

 

1. The Parties

1.1. The First Complainant is Viacom International Inc., a company incorporated under the laws of Delaware, United States of America. The Second Complainant is MTV Networks Europe, a partnership organised and existing under the laws of Delaware, United States of America, between Viacom Networks Europe, Inc. and MTV Networks Europe, Inc. Jointly the First Complainant and the Second Complainant are referred to herein as "the Complainants".

1.2. The Respondent is Rattan Singh Mahon, an individual residing in the United Kingdom.

 

2. The Domain Name and Registrar

2.1. The domain name the subject of this Complaint is "mtvbase.com".

2.2. The Registrar of this domain name is Internet Names Worldwide, a division of Melbourne IT Limited ("Registrar"), of Melbourne, Australia.

 

3. Procedural History

Issuance of Complaint

3.1. The Complainants by email and by courier submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy ("Uniform Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy ("Uniform Rules"), both of which were implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999. The copy of the Complaint submitted by email was received on October 23, 2000 and the copy of the Complaint submitted by courier was received on October 24, 2000. An Acknowledgment of Receipt of Complaint was sent by the WIPO Center to the Complainants, by email dated October 27, 2000.

Confirmation of Registration Details

3.2. A Request for Registrar Verification was dispatched by the WIPO Center to the Registrar by email on October 31, 2000. By email to the WIPO Center on the same day, the Registrar confirmed that it had received a copy of the Complaint from the Complainants; confirmed that it was the Registrar of the domain name the subject of this Complaint; confirmed that the current registrant of that domain name is the Respondent; identified the Administrative and Technical Contacts for the Registrant, and provided postal, telephone, facsimile and email contact details for the Respondent and the Contacts; confirmed that the Uniform Policy applies to the domain name the subject of this Complaint; and informed that the current status of that domain name is "licensed".

Notification to Respondent

3.3. On November 2, 2000, having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, and that payment of the filing fee had been properly made, the WIPO Center issued to the Respondent and the Technical Contact a Notification of Complaint and Commencement of Administrative Proceeding, by courier and email to the addresses provided by the Registrar. Copies of this Notification of Complaint were sent by email to the Complainant, the Registrar and ICANN on that date.

3.4. This Administrative Panel finds that the WIPO Center has discharged its responsibility under Rule 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".

Filing of Response

3.5. On November 20, 2000, the Respondent sent to the WIPO Center an email requesting an extension of the deadline for the filing of a Response, citing a technical error with its computer hardware as the reason it would be unable to meet the original deadline of November 21, 2000. Having sought and received the Complainantsí response (which was not favorably disposed) to the request for an extension, on the same day the WIPO Center pursuant to Rule 5(d) of the Uniform Rules granted the Respondent a non-extendable extension of five days in which to file his Response. On November 25, 2000, within the extended deadline, the WIPO Center received from the Respondent by email a Response to the Complainant. The hardcopy of this response was received by the WIPO Center on November 29, 2000. An Acknowledgement of Receipt of Response was sent by the WIPO Center to the Complainants and the Respondent by email on November 27, 2000.

Constitution of Administrative Panel

3.6. On November 30, 2000 in accordance with the request in the Complaint, the WIPO Center proceeded to appoint a single Panelist, and invited Andrew F. Christie to so act. On December 5, 2000, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date, stating that Dr. Christie had submitted a Statement of Acceptance and Declaration of Impartiality and Independence and had been appointed the sole Panelist in this case, and informing that absent exceptional circumstances a decision would be provided by this Administrative Panel by December 18, 2000. The case before this Administrative Panel was conducted in the English language, being the language of the registration agreement applicable to the domain name in issue.

Compliance with the formalities of the Uniform Policy and the Uniform Rules

3.7. Having reviewed the Case File in this matter, this Administrative Panel concurs with the assessment by the WIPO Center that the Complaint complies with the formal requirements of the Uniform Policy and Uniform Rules.

Submissions Subsequent to Filing of Response

3.8. On December 15, 2000 the Complainants by email filed with the WIPO Center a Reply (dated December 14, 2000) to the Respondentís Response, and requested this Administrative Panel to exercise its discretion under Rule 12 of the Uniform Rules to accept and consider the Reply in advance of giving its decision. On December 18, 2000 the Respondent by email filed with the WIPO Center a response to the Complainantsí Reply (termed herein the "Rebuttal"). In the Rebuttal the Respondent requested this Administrative Panel to exercise its discretion by not accepting the Complainantsí Reply. The Rebuttal went on to state that if the Panel does accept the Reply, the Respondent requested the Panel to accept also the Rebuttal.

3.9. The Uniform Policy and Uniform Rules do not provide for the parties to the dispute filing supplementary submissions subsequent to the Complaint and the Response. However, Rule 12 of the Uniform Rules does provide that:

"In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties."

3.10. There can be no doubt that neither the Complainants nor the Respondent has a right to file supplementary submissions subsequent to the Complaint and the Response. Supplementary submissions can only be filed in response to a request for such from the Panel. Accordingly, this Administrative Panel is strongly of the opinion that parties must refrain from purporting to submit unsolicited supplementary submissions. It is, of course, for each Administrative Panel to determine whether or not to request supplementary submissions, taking into account all the circumstances of the particular case (including but not limited to any plea from a party for leave to file further material). Nevertheless, this Administrative Panel considers that it would, and should, be in exceptional cases only that supplementary submissions are requested by a Panel. If requesting supplementary submissions were to become unexceptional, the dispute resolution procedure under the Uniform Policy and Rules would most likely become significantly more resource-consuming to all the actors (ie. the parties, the dispute resolution service provider, and the Administrative Panel) than is currently the case, as the unfolding scenario in this case demonstrates. Such an outcome seems contrary to the clear intention of ICANN in adopting the Uniform Policy and the Uniform Rules in their present form. A similar view has been expressed in other cases under the Uniform Policy, including Document Technologies, Inc. v. International Electronic Communications, Inc (WIPO Case D2000-0270) and Gordon Sumner, p/k/a Sting v Michael Urvan (WIPO Case D2000-0596).

3.11 The procedure this Administrative Panel has adopted in this case is as follows. The Complaint and the Response were read and considered. It was found that there was an extreme divergence of views in relation to some very basic facts and the interpretations that could be drawn from those facts. Although this Administrative Panel felt significant doubt on the point, it concluded that there was a possibility that this was a case with exceptional circumstances, such as would warrant taking into account the unsolicited supplementary submissions of both parties. These exceptional circumstances were the discrepancy in the Complaint regarding the claim of a UK trademark registration of the mark MTV BASE, and the discrepancies in the Response which are noted in the discussion below. This Administrative Panel thus concluded that, on balance, the most appropriate procedure in this case was (i) to extend to December 22, 2000 the date by which a Decision in this case would be rendered; and (ii) to read and take into account both the Reply and the Rebuttal. Having done both of these things, this Panel found that the supplementary submissions in fact did not provide any appreciable assistance in drawing conclusions about the appropriate resolution of this dispute.

 

4. Factual Background

Complainantsí Activities and Trademark

4.1. The Complainants asserted, and generally provided evidence in support of, the following facts. Unless otherwise specified, this Administrative Panel finds these facts established.

4.2. The Second Complainant is the trading entity of the First Complainant in the UK and Europe. The Complainants carry on a wide range of businesses under the MTV trade mark and different permutations of this trade mark, including the trade mark MTV BASE, inter alia, in the provision of communication and entertainment services, throughout the world. In particular, the Complainants operate cable and satellite television channels transmitting music and programmes under the name MTV in over 139 countries around the world, including the United States of America, the United Kingdom and Ireland and a number of other European countries, and in over 323 million households worldwide. MTV is a recognised leader in the music industry and has received numerous global awards and recognition of its achievements.

4.3. The Second Complainant has been operating a television channel under the name MTV BASE in the United Kingdom since July 1, 1999. There are currently approximately 3.8 million subscribers to the MTV BASE channel. Since the Second Complainantís launch of the MTV BASE channel, several million pounds (one pound is currently approximately USD 1.50) has been spent on advertising and marketing this channel in the United Kingdom. Further, the target market for this channel is young adults, which includes students, such as the Respondent.

4.4. The Complainants have had a presence on the Internet since 1994. In 1995, the First Complainant launched the website, mtv.com which is consistently ranked as the number one music site among teens aged 13-17 years old. During 1999, mtv.com averaged a monthly audience for teens aged 13-17 years old of approximately 1.9 million unique individuals.

4.5. In paragraph 3 of the Complaint it is claimed that the First Complainant "is the owner of the MTV BASE trademark registration" (emphasis added). In paragraph 12(1) of the Complaint it is further claimed that there exists a "UK Trade Mark No. 2199860 being the word mark MTV BASE, registered in Classes 38 and 41 in respect of communication services and education and entertainment services on 10 June 1999", and that "The trade mark MTV BASE is registered in the UK." (emphases added). However, it was subsequently stated in paragraph 12(1) of the Complaint: "The UK trade mark application filed by the First Complainant for the trade mark MTV BASE was filed on 10 June 1999" (emphasis added). In light of these contradictory assertions, and the fact that the Complainants provided no evidence of the alleged UK trademark registration for MTV BASE, this Administrative Panel does not find that the Complainants are, or that either of them is, the owner of any trademark registration for the mark MTV BASE.

4.6. The First Complainant is the owner of numerous trademark registrations in the United Kingdom and the United States of America of trademarks consisting of or including the letters MTV. Details of these registrations were set out in Annex 5 to the Complaint. The Complaint asserts that, in addition, there exists a published Community Trade Mark Application No.1518463 being the word mark MTV BASE HIP HOP REVIEW, pending in Classes 9, 25, 38, 41 and 42 in respect of a wide range of goods and services including, electrical and scientific apparatus, clothing, communications services, education and entertainment services, and miscellaneous services, which was applied for on February 21, 2000. However, the Complaint did not provide any evidence of this application, and did not even state who was the owner of it (although the implication was that it was one of the Complainants). This Administrative Panel does not find that the Complainants, or either of them, has any rights in such a trademark application.

Respondentís Activities

4.7. The Response is identical, in almost all substantial respects, with the Response of Chamandeep Singh, the Respondent in WIPO Case D2000-1441 in respect of the domain name "mtvextra.com", for which this Panelist is also the sole Panelist. The Complainants assert, and the Respondent expressly agrees, that the Respondent and Chamandeep Singh are acting in concert in respect of the domain names "mtvbase.com" and "mtvextra.com". The Response is very confusingly written, and is riddled with ambiguities and inconsistencies, especially in respect of dates. It is thus very difficult to form a clear picture about the true activities of the Respondent and Chamandeep Singh.

4.8. Commencing from at least some time in 1999 and continuing until at least some time in 2000, the Respondent has been a student at the University of Westminster, enrolled in a Bachelor of Science in Information Systems Engineering. According to an Enrolment Record contained as Annex I to the Response, the Respondent was enrolled in a number of subjects during this time, including Structured Systems Analysis (indicated as being undertaken and passed in "1999/1") and Project Management (indicated as being undertaken and passed in "1999/2").

4.9. The Respondent asserts that he undertook a "project" as part of the above two subjects, which he titled "Mobile Telephone & Videophone Base". Documents purporting to represent the aforesaid project were contained at Annexes A and B of the Response. In addition to this project, the Respondent also refers to "my project/company name and corporate identity". In particular, the Respondent claims to have established an "e-commerce corporate identity" under the name "MTV Base". In support of this claim, Annex D to the Response contains copies of email correspondence to the Respondent addressed to him at "rattan@mtvbase.com", and postal communication from him and addressed to him under the names "MTV Base" and "MTVBase.com" (with varying capitalization).

4.10. The Respondent asserts that, on both of January 14, 2000 and January 20, 2000, he sent an email to the Second Complainant the content of which stated: "mtvbase.com" has been registered. Please contact me for further information." On January 24, 2000, a representative of the Second Complainant sent an email to the Respondent (whether in reply to these communications or some other from the Respondent it is not clear) stating as follows:

"I received your email re the sale of the url mtvbase.com being finalised ??? and I was a bit confused ???? Can you enlighten me as to who you sold the url to ????????? MTV actually owns the name mtv base so if it has been sold to anyone but us we need to know."

On February 9, 2000, the Respondent replied as follows:

"In your last message you mentioned if I was selling the site "to anyone but us" I should let you know. Well, I was wondering would you (MTV) be interested in purchasing the URL? As my last deal fell through I am open to offers."

 

5. Partiesí Contentions

The Complaint

5.1. The Complainants contend that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to the domain name the subject of this dispute.

5.2. In relation to element (i) of Paragraph 4(a) of the Uniform Policy, the Complainants contend that the domain name in issue is identical to the allegedly registered UK Trade Mark No. 2199860 (being the word mark MTV BASE) and to the "distinctive element of" Community Trade Mark Application No.1518463 (being the word mark MTV BASE HIP HOP REVIEW). In addition, the Complainants contend that the domain name in issue is confusingly similar to its numerous registered trademarks consisting of or containing the letters "MTV", namely MTV, MTV MUSIC TELEVISION, MTV ONLINE and MTV MUSIC TELEVISION ONLINE.

5.3. In relation to element (ii) of Paragraph 4(a) of the Uniform Policy, the Complaints contend that before the Respondent was given notice of the dispute he was not making use of, nor had made demonstrable preparations for use of, the domain name, within the meaning of Paragraph 4(c)(i) of the Uniform Policy. Further, there is no evidence that the Respondent is commonly known by the domain name or that he is making a legitimate non-commercial or fair use of the domain name. Additionally, the Complainants do not accept the Respondentís explanation as to legitimate use and they note the inconsistency contained in the Respondentís correspondence with the Complainantsí lawyers (contained in Annex 2 to the Complaint), in which the Respondent stated that he offered to sell the domain name to the Complainants "as a gesture of goodwill" and then later in the same letter stated "I am sure you can now see why I require the domain". The Complainants submit that if the Respondent truly required the domain name, he would not have offered the domain name for sale to the Complainants. Finally, whilst the domain name has been registered since November 16, 1999, sample pages of the Respondentís purported website utilising the domain name were not created and sent to the Complainantís lawyers (at their request) until April, 2000. No website had been activated in respect of the domain name at that time. The sample pages contain just the title "Mobile and Telephone & Videophone Base" and isolated words which relate to mobile telephones or videophone. In the opinion of the Complainants this is not sufficient to demonstrate the legitimate use which the Respondent claims. As at the date of this Complaint, which is almost a year after the initial registration of the domain name and 6 months after the Respondent sent sample pages to the Complainantsí lawyers, no website is or ever has been activated in respect of the domain name.

5.4. In relation to element (iii) of Paragraph 4(a) of the Uniform Policy, the Complainants contend that, by reference to Paragraph 4(b)(i) of the Uniform Policy, the domain name in issue was acquired by the Respondent primarily for the purpose of selling or otherwise transferring it to the rightful owner of the MTV BASE trademark (the First Complainant) or to a competitor of the Complainants, for valuable consideration in excess of the domain name registrantís out of pocket costs directly related to the domain name, as indicated by the Respondentís e-mail to the Second Complainant of February 9, 2000 offering to sell the domain name to it. Further, by virtue of the widespread use and reputation of the MTV BASE trademark, the Complainants contend that it is inconceivable that the Respondent registered the domain name without knowledge of the Complainantís rights in and to the MTV BASE trade mark. Additionally, in light of the leading UK cases in this field (the decision of the High Court and Court of Appeal in the case of British Telecommunications plc v One in a Million Limited and others; and the decision of Britannia Building Society v Prangley & ORS), the Complainants submit that the UK Courts would find that the Respondentís registration of the domain name represents actionable passing off and trade mark infringement. Further, the Complainants contend that, by reference to Paragraph 4(b)(iii) of the Uniform Policy, the Respondent registered the domain name primarily for the purpose of disrupting the business of the Complainants. Finally, the Complainants contend that, by reference to Paragraph 4(b)(iv) of the Uniform Policy, the Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his prototype web site or other on-line locations, by creating a likelihood of confusion with the Complainantsí mark as to the source, sponsorship, affiliation, or endorsement of his prototype website or locations, or of a product or service on his prototype website or locations.

The Response

5.5. The Respondent contends that he had no knowledge of the Complainantsí activities. In particular, the Respondent contends that his own research establishes that "there is no evidence of the complainants Ďmillion pound advertising campaigní" for the MTV BASE channel, and that the number of subscribers to that channel at the time of the domain name registration "was less than 1 million", this being "insignificant".

5.6. The Respondent contends that he registered the domain name because it was an acronym for his University project titled "Mobile Telephone & Videophone Base", and that he then established a corporate identity under that name and used it to the extent that he has been commonly known as "Mobile Telephone & Videophone Base".

5.7. The Respondent further contends that he "never offered or had any intention to sell" the domain name, and he "turned down the offer to from (sic) the complainants when asked to sell". By way of explanation for his communications of January and February, 2000 with the Second Complainant, the Respondent contends:

"This email [the one to which the Second Respondent replied on January 24, 2000] had the intention to Ďgrabí the attention of the complainant. The only reason I wrote ĎI had finalised a dealí was to get an initial response to see if there would be any problems."

 

6. Discussion and Findings

Domain Name Identical or Confusingly Similar to Complainantsí Mark

6.1. The initial question to resolve is whether the Complainants have rights in a trademark or service mark to which the Uniform Policy applies. The Complainants have not established to the satisfaction of this Administrative Panel that they have, or either of them has, a trademark or service mark registration for the name MTV BASE. It is, however, clear that the Uniform Policy is not limited to a "registered" mark; an unregistered, or common law, mark is sufficient for the purposes of Paragraph 4(a)(i). The Complainants provided evidence to establish that they provide programmed television services under the name MTV BASE, and that they have a reputation in those services such that members of the public would associate those services with the Complainants and not with others not authorised by the Complainants to use that name. Accordingly, the Complainants have established to the satisfaction of this Administrative Panel that the name MTV BASE is an unregistered service mark in which the Complainants have common law rights. Thus, this Administrative Panel finds that the Complainants have rights in a service mark to which the Uniform Policy applies.

6.2. In relation to the domain name "mtvbase.com", the relevant part of this domain name is "mtvbase". This Administrative Panel finds that this part of the domain name is identical to the Complainantsí service mark MTV BASE (the absence of a space in the domain name being of no significance).

Respondentís Rights or Legitimate Interests in the Domain Name

6.3. The Respondent has purported to provide evidence of the circumstances of the types specified in paragraphs 4(c)(i), (ii) and (iii) of the Uniform Policy, being circumstances which demonstrate a right or legitimate interest in the domain name. However, there are substantial ambiguities and inconsistencies in the Respondentís evidence. This is particularly so in relation to the dates on which certain activities of the Respondent are alleged to have occurred. The ambiguities and inconsistencies are as follows.

6.4. In paragraph 2 of the Response, the Respondent stated that "my project/company began September 1999 (without knowledge of the complainants activities)". In paragraph 6 it is stated:

"It is logically clear , as explained in my correspondences and from Annexís A, B and D, that since October 1999 Chamandeep Singh and myself used and worked on MTVBASE and MTVEXTRA. In November 2000 we decided to take our projects one step further and to register the name on the web. After spending the Christmas semester break at friends houses, informing them of our entrepreneurial aspirations, I was told of Sky Digital Television for the first time. It was towards news years 29/30 December that I was informed, by fellow students that my project title was similar to the complainants MTV BASE name. As soon as the holidays were over, and the new university semester had started I sincerely thought I would contact MTV to see if there would be any problems with my domain name. I submit Annex L, my original emails to complainant. These emails were sent to inform the complainant that a registration of a domain name had taken place and if there were any information required they should contact me. As you can two emails were sent dating back to January 10th 2000. None of these emails obtained a response from the complainants. Therefore on 9th February 2000 I sent Annex 7 (in original complaint). This email had the intention to Ďgrabí the attention of the complainant." (emphases added)

6.5. In fact, it is far from logically clear what the Respondent has been doing. From the context of this paragraph it appears that the reference in the second sentence to "November 2000" is a mistake, and is intended to be "November 1999". It also appears that the reference to the undated "news year 29/30 December" is a reference to that period in 1999. There is, however, a gross inconsistency between the assertion that Annex L contains "my original emails to complainant" and the assertion that these "two emails were sent dating back to January 10, 2000". This is because the date on the first of these emails is "14 January 1999" and on the second of them is "20 January 1999". There are only two possibilities Ė (i) the Respondent in fact sent the emails in January, 1999 as per the date shown on the alleged originals contained at Annex L of the Response, but has wrongly described them in the Response as being sent in January, 2000; or (ii) the Respondent in fact sent the emails in January, 2000 as per the statement in the Response, and the alleged originals contained in Annex L to the Response are not authentic. Given the fact that the Respondent admitted that his "project/company began September 1999", and the fact that the Respondent did not dispute the Complainantsí assertion (supported by evidence of a WHOIS report) that the Respondent registered the domain name in dispute in November 16, 1999, this Administrative Panel inevitably concludes that the two emails were sent in January, 2000 (as stated in the Response). As a consequence of this conclusion, this Administrative Panel further inevitably concludes that the two alleged "original" emails showing dates in January, 1999 are not authentic.

6.6. There are additional discrepancies in the Respondentís assertions about his activities. In paragraph 2 of the Response, the Respondent states that "my project/company began September 1999". In paragraph 3 of the Response, the Respondent states that the material at Annexes A and B are part of the project produced for the purposes of the subjects Structured Systems Analysis and Project Management. The front page of the document at Annex A contains the following words:

"Structured Systems Analysis
3ISY201

Required System for Mobile Telephone & Videophone Base www.mtvbase.com

Written By
Rattan Singh Mahon
W99209734K
19 January 1999"

6.7. The presence of the date "19 January 1999" purports that this document was finalised in January, 1999. However, this is inconsistent with the Respondentís assertion that "my project/company began September 1999". It is also inconsistent with the date which appears at the bottom of the following page (headed "Contents"), namely "14 January 2000". Both of these dates are inconsistent with the date which appears at the foot of a number of other pages which follow in the document (including those headed "Context Diagram", "Logical Data Structure" and "System Data Flow Diagram Level 1"), namely "17 December 1999". Finally, the date of the front page (which contains the words "www.mtvbase.com") is inconsistent with the fact that the Respondent did not register the domain name "mtvbase.com" until November 16, 1999. These discrepancies were alluded to in the Complainantsí Reply (paragraph 3), to which the Respondent in his Rebuttal (paragraph 3) states "I could not find any Ďdifferent datesí". Whilst it is possible for this Administrative Panel to formulate an innocent albeit not uncomplicated explanation for these discrepancies, it is curious in the extreme that the Respondent "could not find" let alone explain any of these glaring discrepancies in his own document, even after the issue had been expressly raised by the Complainants.

6.8. More problematic, in the mind of this Administrative Panel, is that fact that the contents of the alleged project documents set out at Annexes A and B do not in fact describe a project consistent with the Respondentís assertions. In his letters to the Complainantsí solicitors of March 20, 2000 (contained at Annex K to the Response), the Respondent describes his project as "going to incorporate Mobile phones, Landline Telephones and new video phone technology, sales and Help". In the documents at Annexes A and B, there are references to the words "MTV BASE", "MTVBASE.COM" and "Mobile Telephone and Videophone Base" on the footer of a number of pages, but there are no references of substance to the alleged subject matter of the project (that is, mobile phones, landline telephones and video phone technology). Rather, the substance of the document is generic to systems analysis techniques and project management techniques. After a close reading of these two documents, this Administrative Panel can find no evidence of a bona fide project about mobile phones, landline telephones and videophone technology. Rather, this Administrative Panel is left with the strong impression that the Respondent utilised the phrase "Mobile Telephone and Videophone Base" in generic project work, so as to be able to later support a (false) claim to the existence of a bona fide project relating to these words.

6.9. In addition, there is an unexplained inconsistency in the evidence provided by the Respondent in support of his assertion of having established a corporate identity under the names "MTV Base" and MTVBase.com". Annex D purports to contain true copies of correspondence to and from the Respondent, using the alleged corporate identity. The earliest of the communications purporting to support the existence of this identity is a letter from the Respondent, on letterhead bearing the words "MTVBASE" and "Mobile Telephone and Videophone Base", dated "Wednesday, 18 October 1999". It is worthy of note that the 18th day of October in 1999 was a Monday (a fact not inconsistent with the likelihood that this correspondence, and some or all of the other correspondence produced by the Respondent, is not authentic).

6.10. In light of all of the above, this Administrative Panel finds that the Respondent does not have a right or legitimate interest in the domain name in issue.

Domain Name Registered and Used in Bad Faith

6.11. The Respondentís communications with the Second Complainant, as discussed in paragraph 4.10 above, are strongly suggestive of the Respondent registering the domain name primarily for the purpose of selling it to one of the Complainants for sum in excess of his out of pocket expenses. The Respondentís admission that he falsely referred to a sale of the domain name to a third party so as to "grab the attention" of the Second Complainant is consistent with such a conclusion. The Respondentís enquiry of the Second Complainantís interest in purchasing the domain name ("would you (MTV) be interested in purchasing the URL?") is consistent with such a conclusion. The Respondentís contention that he did so only "to see if there would be any problems" (presumably, problems with the Respondent holding the registration) is simply unbelievable.

6.12. When these actions of the Respondent are considered in the light of the fact that it is highly likely that the Respondent was aware of the Complainantsí trademark MTV BASE by virtue of the Second Complainantís TV channel operated under that name, and in the light of the ambiguities, inconsistencies, and actual and likely inauthentic documentation produced by the Respondent as identified in paragraphs 6.4-6.9 above, this Administrative Panel concludes that the Respondent did register the domain name in issue primarily for the purpose of selling it to one or both of the Complainants, for a sum in excess of his out of pocket expenses in registering the domain. Consequently, this Administrative Panel finds that the Respondent has engaged in conduct of the type specified in Paragraph 4(b)(i) of the Uniform Policy. Accordingly, this Administrative Panel finds that the Respondent has registered and is using the domain name "mtvbase.com" in bad faith.

 

7. Decision

7.1. This Administrative Panel decides that the Complainants have proven each of the three elements in paragraph 4(a) of the Uniform Policy in relation to the domain name the subject of this Complaint.

7.2. Pursuant to paragraph 4(i) of the Uniform Policy and paragraph 15 of the Uniform Rules, and in accordance with the request of the Complainants contained in paragraph 15 of the Complaint, this Administrative Panel requires that the Registrar, Internet Names Worldwide, a division of Melbourne IT Limited, transfer to the Complainants, Viacom International Inc. and MTV Networks Europe, the domain name "mtvbase.com".

 

 


 

 

Andrew F. Christie
Sole Panelist

Dated: December 22, 2000