WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Viacom International, Inc. v. MTVMP3.COM

Case No. D2001-0275

 

1. The Parties

The Complainant is Viacom International Inc. of 1515 Broadway, New York, New York 10036, USA.

The Respondent is MTVMP3.COM, located at 740 La Playa #414, San Francisco, California 94121, USA.

 

2. The Domain Name and Registrar

The domain name at issue is <mtvmp3.com>.

The Registrar of the disputed domain name is Network Solutions, of 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, USA.

 

3. Procedural History

The original Complaint was received by the Center by e-mail on February 21, 2001, and in hard copy on February 26, 2001. An Amendment to Complaint also was received by the Center on February 26, 2001. The Complaint and the Amendment to Complaint appear to have met the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The fee payment required of the Complainant appears to have been properly made.

The Center requested and Network Solutions provided verification that it is the Registrar of the disputed domain name <mtvmp3.com>, that Respondent is the registrant, that the Administrative Contact and the Billing Contact for the registration were shown by its records as of March 5, 2001, to be the single entity Viper Holdings of exactly the same address as that of the Respondent, and that Network Solutionís Service Agreement No. 5 is in effect.

After an appropriate check for compliance with the formal requirements of the Rules and Supplemental Rules, the Center notified the Complaint and Amendment to Complaint to the Respondent on March 7, 2001, along with a copy of the Complaint. This action was carried out as required by section 2(a) of the Rules. The Notification stated that the "last day for sending your Response to the Complainant and to us is March 26, 2001".

The formal commencement date of this administrative proceeding is March 7, 2001.

No response from the Respondent has been received by the Center.

On March 27, 2001, the Center sent to Respondent a Notification of Respondent Default.

The Center invited William L. Mathis to serve as the sole panelist for this case. He accepted and provided the Center with his Declaration of Impartiality and Independence.

On April 6, 2001, the Center notified the parties of the appointment in this case of an Administrative Panel consisting of a single member, William L. Mathis.

 

4. Factual Background

Complainant owns trademark registrations relating to MTV marks in many countries. Complainantís United States registrations include the following:

MARK

REG. NO.

DATE OF REGISTRATION

GOODS/INTíL CLASS

MTV MUSIC TELEVISION (Stylized)

1,310,411

December 18, 1984

Cable television broadcasting services in Intíl Class 38

MTV MUSIC TELEVISION (Stylized)

1,400,277

July 8, 1986

Books, posters, bumperstickers, calendars, decals in Intíl Class 16

MTV MUSIC TELEVISION (Stylized)

1,580,650

January 30, 1990

Production of tv programs; music shows; live concerts; tv news shows in Intíl Class 41

MTV MUSIC TELEVISION

1,818,179

January 25, 1994

Cable television broadcasting services; production of tv shows in Intíl Classes 38, 41

MTV

1,985,017

July 9, 1996

Video recordings featuring music and television programming and sound recordings featuring music in Intíl Class 9; Television broadcasting in Intíl Class 38; Production and presentation of TV news shows, sports events, fashion shows and others in Intíl Class 41; disseminating information on news, entertainment, sports, fashion etc. via the Internet in Intíl Class 42.

MTV

1,955,606

February 13, 1996

Cable television broadcasting in Intíl Class 38; Television and entertainment services in Intíl Class 41.

MTV

1,373,948

December 3, 1985

Clothing, namely t-shirts, sport shirts, sweat shirts, hats and shorts in Intíl Class 25

MTV

1,386,644

March 18, 1986

Audio cassettes and tapes in Intíl Class 9

MTV

1,373,690

December 3, 1985

Watches in Intíl Class 14

MTV

1,373,804

December 3, 1985

Tote bags in Intíl Class 18

MTV

1,401,140

July 15, 1986

Printed matter, namely books, posters, bumperstickers, calendars, decorative stickers or decals, and paper napkins in Intíl Class 16

MTV (Stylized)

1,401,139

July 15, 1986

Printed matter, namely books, posters, bumperstickers, calendars, decorative stickers or decals, and paper napkins in Intíl Class 16

MTV ONLINE

2,059,081

May 6, 1997

Providing multiple-user access to a global computer information network for the transfer and dissemination of a wide range of information in Intíl Class 42

MTV MUSIC TELEVISION ONLINE and Design

2,092,556

September 2, 1997

Providing multiple-user access to a global computer information network for the transfer and dissemination of a wide range of information in Intíl Class 42

Of these registrations, all of the ones which were issued before 1996 have become incontestable under 15 U.S.Code ß 1065.

The Complaint alleges, and the Respondent has not denied, that Complainant launched a music content website under the name mtv.com in 1995. According to Complainantís unchallenged allegations, this website had achieved great notoriety before the Respondent registered on November 17,1999, the <mtvmp3.com> domain name which is in dispute here, and at least since June, 1999, such website had made music downloads available using a technology which Complainant refers to as "the MP3 technology."

The Complaint also alleges, and the Respondent has not denied, that Complainantís MTV marks have been famous since long prior to Respondentís registration of the domain name <mtvmp3.com>. Articles supporting this assertion are attached to the Complaint as Exhibit D. Moreover, the Complaint says that a December 13, 1999 article in The New York Times names MTV as one of the 100 "most powerful corporate, media and product brands in the 20th century." Complaint, para. 9.A.(ix).

A well-known television programming service utilizing Complainantís MTV marks is MTV: Music Television ("MTV"). It features primarily music-related programming including music videos, interviews, documentaries, entertainment information, and news. The MTV programming service first aired in 1981 and is seen in more than 139 different territories worldwide and in over 520 million households. It is advertised on television, in newspapers and magazines, and on billboards and other outdoors advertising nationwide.

There has never been any relationship between Complainant and Respondent. The Respondent and its administrative contacts, past and present, have never been authorized to use the MTV marks in any way.

Although the domain name in dispute was registered on November 17, 1999, the domain name still does not lead a user of the Internet to a website.

 

5. Partiesí Contentions

A. Complainant

Complainant contends that the trademark Registrations referred to above are sufficient to establish that it owns trademark rights in MTV. Additionally, Complainant points to the extensive use of MTV in connection with entertainment enterprises controlled by Complainant and its predecessor as evidence of Complainantís rights in the mark.

Complainant contends further that the disputed domain name is confusingly similar to its MTV mark in that the entirety of its MTV mark is incorporated in <mtvmp3.com> and the addition of the generic term "mp3" does not produce a term that distinguishes the disputed name from Complainantís trademark.

It is also contended by Complainant that the Respondent has no rights or legitimate interests in the domain name in issue.

Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith.

The remedy requested by Complainant is transfer of the disputed domain name registration to Complainant.

Respondent

No contentions have been advanced by or on behalf of the Respondent.

 

6. Discussions and Findings

In order to prevail under the Policy, Complainant must show that <mtvmp3.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights; that Respondent has no rights or legitimate interest in respect of <mtvmp3.com>; and that <mtvmp3.com> has been registered and is being used in bad faith.

Confusing Similarity

Complainantís trademark registrations referred to above establish Complainantís rights in the registered marks under 15 U.S. Code ß 1057(b), ß1072 and ß1115. The registered marks either consist of "MTV" or include "MTV" as the dominant, distinguishing, component. The extensive use made of Complainantís marks consisting or including "MTV" in connection with music enterprises also establishes Complainantís rights in the MTV marks.

The domain name in issue is readily recognizable as a combination of two components, "mtv" and "mp3". The first of these is Complainantís mark. The second is a well-known designator for a type of music file. According to the Complaint "mp3 is a generic term relating to music files downloaded from the Internet," citing MP3.Com Inc v. Sander & Associates, WIPO D2000-0579.

The Panel finds that the disputed domain name is confusingly similar to Complainantís MTV trademarks. In particular, <mtvmp3.com> engenders an overall impression of a website sponsored by the owner of the famous MTV trademark and having something to do with mp3 music files.

The Respondentís Lack of Rights

Respondent has had an opportunity to come forward in this proceeding with evidence pertinent to whether Respondent has any rights or legitimate interests in <mtvmp3.com>, but Respondent has remained silent. From this, the Panel draws an inference that Respondent has no rights or legitimate interests.

It is significant that the disputed domain name was registered after Complainantís MTV marks had been registered and extensively used. Thus, Registrant acted with notice of Complainantís rights when choosing a domain name which has no discernable relation to a name or designation previously used legitimately by Respondent but which is confusingly similar to Complainantís marks. The Panel views such conduct, coupled with Respondentís silence here, as evidence that Respondent has no rights or legitimate interests in <mtvmp3.com>.

The particular domain name in issue is not a meaningless combination of letters and a numeral. The fact that it incorporates Complainantís mark and a well-known name for music files of a certain type is taken by the Panel as further evidence that the domain name was chosen not in furtherance of a preexisting right or legitimate interest possessed by Respondent but as an effort to create confusion detrimental to Complainant.

In all, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.

Respondentís Bad Faith Registration and Use

In paragraph 9.B.(x) of the Complaint, it is pointed out that "Complainant offers music downloads on its website." Thus, Respondentís disputed domain name not only incorporates Complainantís MTV mark but also refers to a type of file which may be involved in services of a type provided at Complainantís website. The Panel finds that Respondent acted in bad faith in choosing a domain name which can only be used to cause confusion and mislead consumers. It follows also that the registration of such domain name was in bad faith.

In November, 2000, Complainantís representative directed a letter by certified mail to "V Entertainment" the name shown by the Whois database to identify the Administrative Contact for the <mtvmp3.com> domain name registration. V Entertainment, like the current Administrative Contact Viper Holdings, had exactly the same address as that shown for the registrant. The letter (Exhibit H to the Complaint) charged that the domain name is confusingly similar to Complainantís mark and that the domain name would be likely to cause confusion among the consuming public with regard to the relation of Respondentís website to Complainant.

This expression of concern by Complainant went unaddressed. There was no response at all from Respondent or its representative. At this time, there was no use of the disputed name in connection with an active website which could be accessed through use of the domain name, but Respondentís holding of the domain name registration posed a threat that the confusion Complainant feared, as revealed in the letter, might be caused any day.

The Panel finds that in circumstances where any use of a domain name to provide access to a website would be likely to be injurious to a trademark owner, the act of holding a domain name registration as a threat, should be considered a use of the domain name in bad faith.

In the present case, there is another pertinent cause for Complainantís concern. Both of the names which have appeared in the Whois database for the disputed domain name to identify the Administrative Contact are names under which numerous other domain names are registered. Complainant charges, and Respondent has not challenged, that these so-called Administrative Contacts are "alter egos of the Respondent." The Panel accepts this as true. Of the numerous domain names so registered, many are "pornographic in nature." Complaint, paragraph 9.B.(iv). Further, Complainant charges that "[t]hese domain names generally all divert consumers to the same website," namely to <www.orgie.com>.

The Panel views the situation as one in which the Respondentís actions in holding the disputed domain name pose a continuing threat that the name may, at any time, be caused to divert consumers to a pornographic website. The confusingly similar relationship between the domain name and the Complainantís MTV marks puts Complainantís reputation at risk in this regard, in that consumers might in some way tend to associate Complainant with the pornography and/or with the diversion scheme which led them to the pornography.

Since Respondentís holding of the disputed domain name registration is a threat to injure Complainant through active use of the domain name in a manner which would be likely to cause confusion and to diminish Complainantís reputation, the Panel finds that the disputed domain name is being used in bad faith.

 

7. Decision

Having proved that the domain name in issue is confusingly similar to a trademark or service mark in which Complainant has rights, and that Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith, Complainant is entitled to prevail in this proceeding.

Therefore, it is ordered that registration of the domain name <mtvmp3.com> be transferred to the Complainant Viacom International Inc.

 


 

William L. Mathis
Sole Panelist

Dated: April 26, 2001