WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Viacom International Inc. v. Erik Peterson

Case No. D2001-0346

 

1. The Parties

The Complainant is: Viacom International Inc., a company with offices at 1515 Broadway, New York, New York 10036, U.S.A. The Complainant is represented by: Barbara A. Solomon, Esq., Fross Zelnick Lehrman & Zissu, P.C., 866 United Nations Plaza, New York, New York 10017, U.S.A.

The Respondent is Erik Peterson, whose address is 505 W. Grant Place, Chicago, Illinois 60614, U.S.A.

 

2. The Domain Name and Registrar

The domain name in dispute is: <www-mtv.com>

The registrar for the disputed domain name is: Register.com, whose address is 575 8th Avenue, 11th Floor, New York, New York 10018, U.S.A.

 

3. Procedural History

This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).

The Complaint was filed on March 9, 2001, by e-mail. On March 15, 2001, the Complainant requested a suspension from the Center as it appeared the Complainant and the Respondent were close to settling their dispute outside the context of this proceeding. In consequence, the Center granted a suspension until April 14, 2001.

However, the Complainant and Respondent failed to settle their differences, and on April 9, 2001, the Complainant requested that the Center re-institute this proceeding.

On April 18, 2001, the Center requested that the registrar, Register.com, check and identify the registrant for the domain name <www-mtv.com>. Register.com reported to the Center on April 19, 2001, that the registrant was the Respondent, Erik Peterson.

On April 23, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. The Respondent did not file a Response within the twenty (20) day time period required by Rule 5, and on May 14, 2001, the Center declared the Respondent in default.

The Administrative Panel submitted a Declaration of Impartiality and Independence on May 18, 2001, and the Center proceeded to appoint the Panel on May 21, 2001. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.

This Decision is due by June 3, 2001.

 

4. Factual Background

Complainant operates several well-known television programming services, including music television ("MTV"). The MTV programming service first aired in 1981.

The MTV marks are also used in connection with programs that Complainant produces such as "The MTV Video Music Awards," "MTV Movie Awards," "MTV Spring Break," and "MTV Unplugged."

Complainant has had a presence on the Internet since 1994 and, in 1995, Complainant launched the website <mtv.com>.

On April 28, 2000, Respondent registered the disputed domain name <www-mtv.com>. On January 16, 2001, the Complainant sent a demand letter to the Respondent in which it alleged trademark infringement and demanded the Respondent transfer the domain name to the Complainant ((Exhibit F). The Respondent did not reply to this letter.

The Complainant now is seeking to take possession of the disputed domain name in this proceeding.

 

5. The Parties' Contentions

Complainantís Contentions:

- Complainant owns trademark registrations in over 100 countries for the MTV marks.

- There can be little doubt that the Complainantís MTV marks are famous and that their fame existed long prior to Respondentís registration of the domain name <www-mtv.com>.

- When the Respondent registered the disputed domain name on April 28, 2000, the Complainant had been using its MTV marks for twenty (20) years.

- The addition of the generic prefix www, an acronym for the worldwide web, does not distinguish the domain name from Complainantís MTV mark.

- There has never been any relationship between Complainant and Respondent. Respondent has never been licensed or authorized to use the MTV mark in any manner, including in or as part of a domain name. In addition, the Respondent is not using the domain name in connection with a bona fide offering of goods or services, nor is Respondent making a legitimate non-commercial or other fair use of the domain name.

- The Respondent is using the disputed domain name to link to a pornographic website, "Big City Babes".

- Bad faith use and registration are evident from Respondentís use of the domain name to divert Internet users not only to a website unaffiliated with Complainant but, more significantly, to a pornographic site. Respondent is attempting to create an association with Complainant and to usurp Complainantís goodwill.

Respondentís Contentions:

The Respondent is in default in this proceeding and thus did not file any contentions.

 

6. Discussion and Findings

In order for Complainant to prevail and have the disputed domain name <www-mtv.com> transferred to it, Complainant must prove the following (the Policy, para 4(a)(i-iii):

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith

Identical or Confusingly Similar

The Complainant has produced a computer database printout of some of its MTV mark registrations, including no. 1,310,411 dated December 18, 1984, in international class 38 for cable television broadcasting services; and no. 1,386,644 dated March 18, 1986, in international class 9 for pre-recorded video cassettes. (Complaint Exhibit B) In addition, the Complainant has furnished a wealth of press material attesting to the famousness of its MTV mark (Complaint Exhibit C).

The disputed domain name adds "www", a dash "-" and the top level domain indicator "com" to the Complainantís famous mark. The dash is not distinctive and, in the context of the internet, neither "www" (world wide web) nor "com" are distinctive. The only distinctive element of the disputed domain name is the Complainantís mark MTV. The Panel therefore finds the disputed domain name is confusingly similar to the Complainantís mark. (InfoSpace.com.Inc. v. Blanck, ICANN/WIPO Case No. D2000-0069, April 3, 2000)

Legitimate Rights or Interests

The Complainant contends "there exists no relationship between Complainant and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use the domain nameÖ" (Complainant, p. 10)

For its part, the Respondent is in default in this proceeding and thus has made no attempt to make a showing of legitimate rights and interests or of fair use under the Policy at 4(c).

The Panel finds the Respondent has no legitimate rights or interests in the disputed domain name.

Registered and Used in Bad Faith

The Complainant has alleged a variety of grounds under which the Respondent should be found to have registered and to be using the disputed domain name in bad faith, but two grounds strike the Panel as being compatible with the facts of this case.

First, the Respondent has violated the Policy at 4(b)(iv) because it is using the good will of the Complainantís famous mark to attract traffic to its own website for commercial gain. And since the Respondentís website at the disputed domain name is linked to a pornographic site at "Big City Babes", the Panel finds this is a further ground for finding the disputed domain name was registered and used in bad faith. Many ICANN panels have found bad faith where, as here, the Respondent associated the Complainantís mark with pornographic websites despite the fact that the Complainantís mark previously was in no way associated with pornography. (Complaint Exhibit E, and see Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, ICANN/WIPO Case No. D2000-0021, March 9, 2000)

 

7. Decision

The Panel has found the Respondent registered a domain name that added non-distinctive features to the Complainantís famous mark and thus was confusingly similar to the Complainantís mark. The Respondent had no right to, nor interest in, the domain name. By using the name to link to a pornographic website, the Respondent registered and was using the domain name in bad faith.

Based on the Policy at 4(i) and Rule 15, the Panel orders that the disputed domain name <www-mtv.com> be transferred from the Respondent, Erik Peterson, to the Complainant, Viacom International Inc.

 


 

Dennis A. Foster
Sole Panelist

Date: June 3, 2001