WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Viacom International Inc. v. Abraham Godong

Case No. D2001-0603

 

1. The Parties

1.1 The Complainant is Viacom International Inc., a U.S. corporation with its principal place of business located at 1515 Broadway, New York, New York 10036, U.S.A.

1.2 The Respondent is Abraham Godong, an individual residing at Kotak Pos 2753, Jakarta, Indonesia.

 

2. The Domain Name and Registrar

2.1 The domain names upon which this Complaint is based are <radiomtv.com>, <radiomtv.net> and <radiomtv.org>. The registrar of the domain names as at the date of the Complaint is Network Solutions, Inc ("NSI").

 

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on April 26, 2001, and in hard copy on May 1, 2001. The fees prescribed under the Supplemental Rules have been paid by the Complainant. The Complaint states that a copy of the Complaint together with WIPOís cover sheet as provided for in the Supplemental Rules has been sent to the Respondent and that a copy of the Complaint has been sent to the Registrar of the domain names in dispute, NSI.

3.3 On April 30, 2001, the Center sent the Complainantís representative an Acknowledgment of Receipt of Complaint.

3.4 The Center sent a Request for Registrar Verification to NSI on May 3, 2001, by email. NSI responded to the Centerís request by email on May 4, 2001, stating:

(a) that NSI was the registrar for the domain names in dispute;

(b) that the Respondent was the current registrant of the domain names in dispute;

(c) that the domain names <radiomtv.com>, <radiomtv.net> and <radiomtv.org> were active;

(d) the Respondentís contact details; and

(e) that Network Solutionsí 5.0 Service Agreement was in effect.

3.5 The Panel notes that NSIís response to the Centerís Request for Registrar Verification did not state that NSI was in receipt of a copy of the Complaint, despite the Center asking NSI to confirm whether this was the case in its Request for Registrar Verification. The Complaint states, at paragraph 16: "On April 26, 2001, a copy of the complaint was sent to Network Solutions as Registrar by email and fax without exhibits and by FedEx with exhibits.".

3.6 In the absence of any relevant evidence, the Panel is of the view that the fact that NSIís response to the Centerís Request for Registrar Verification did not state that NSI was in receipt of a copy of the Complaint was probably an oversight on the part of the individual at NSI who responded to the Centerís Request for Registrar Verification. In the Panelís experience, if at the time of receiving the Centerís Request for Registrar Verification a registrar has not received a copy of the Complaint in accordance with the Rules, the registrar states this in its response. The Panel has no reason to doubt the Complainantís assertion in paragraph 35 of the Complaint that a copy of the Complaint was sent to NSI on April 26, 2001. In any event, the Panel is satisfied that no unfairness has resulted to the Respondent by the fact that NSI did not state in its response whether or not it was in receipt of a copy of the Complaint at the time it received the Centerís Request for Registrar Verification.

3.7 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on May 7, 2001, to the Respondent by post/courier (with enclosures), by facsimile (without attachments) and by email (without attachments), and to the Complainantís representative by email (without attachments).

3.8 A Notification of Respondent Default was sent by the Center to the Respondent and the Complainantís representative by email on June 18, 2001. This notified the Respondent that it had failed to comply with the relevant deadline for the submission of its Response in the domain name dispute. Although the Notification of Complaint and Commencement of Administrative Proceeding made specific reference to the 20 calendar day period within which the Respondent was entitled to submit a Response to the Complaint, no Response has been received from the Respondent at any time prior to the Panel commencing its deliberations.

3.9 The Center sent a Transmission of Case File to Administrative Panel by email on June 27, 2001. The documentation was received in hard copy by the Panel on July 2, 2001 in Sydney, Australia.

3.10 All other procedural requirements appear to have been satisfied.

 

4. Factual Background

4.1 Activities of the Complainant

The following information is asserted as fact in the Complaint and remains uncontested.

The Complainant, through its wholly-owned subsidiary MTV Networks, operates several well-known television programming services. One of the best known is MTV: Music Television ("MTV"). The MTV programming service is a 24 hour-a-day, 7 day a week programming service that features primarily music-related programming including music videos, interviews, documentaries, entertainment information, and news.

The MTV programming service first aired in 1981. MTV has become so popular that it is seen in more than 139 different territories worldwide and in over 520 million households. In the United States alone, MTV reaches over 77.3 million domestic subscriber households. MTV enjoys a level of popular success that is virtually unparalleled in cable television history. MTV is recognized as a leader in the music industry and has received numerous awards and recognition of its achievements.

Since at least as early as 1995, the Complainant has provided blocks of programming to more than 100 radio stations throughout the U.S., Latin America, South America and Central America. The programming is offered under a variety of names including Radio MTV, MTV Radio, and MTV. The stations have a combined listening audience of over 12 million people. The Complainant has also used the MTV mark in connection with radio broadcasts in Indonesia. Test broadcasts occurred on the Sky Network as early as April, 2000 and as of June 7, 2000 MTV officially launched its radio service in Indonesia under the name "MTV On Sky 101.6 FM." The service is available 18 hours a day in Jakarta which is where Respondent resides.

In 1999 MTV Networks acquired SonicNet which started an MTV branded radio station for the Internet titled Radio MTV. At least as early as March, 2000, before the Respondent registered the domain names, the Complainant provided the service "MTV.com Radio" on its MTV.com website. The service is now called Radio MTV.com. On the homepage of the Complainantís website there is a link to Radio MTV.com. Users who access Radio MTV.com can browse more than 40 music channels. Since March 2, 2001, 5.5 million pages on the RadioMTV.com area have been viewed.

4.2 The Complainantís trade marks

The following information is asserted as fact in the Complaint and remains uncontested.

Marks, including MTV in block letters, MTV in a stylised format, and MTV: Music Television in a stylised format (collectively the "MTV Marks") are used to promote MTV and its programs and are firmly associated with the Complainant.

The Complainant's MTV programming service is advertised on television, in newspapers and magazines, and on billboards and other outdoor advertising nationwide. In all advertisements, the MTV Marks are prominently shown.

The MTV Marks not only appear in off-channel advertising but also appear on-air at the beginning of all programs aired on the MTV channel. The MTV Marks are also seen on the set of many programs as well as in connection with station identifiers. In addition, the MTV Marks are the core element of on-air commercials for the programming service. These commercials have been recognized by the advertising industry for their innovation and excellence.

The MTV Marks are also used in connection with programs that MTV produces including, among others, "The MTV Video Music Awards," "MTV Movie Awards," "MTV Spring Break," and "MTV Unplugged.".

The Complainant has spent hundreds of millions of dollars over the last 19 years in advertising and promoting its services and merchandise under the MTV Marks.

The Complaint also provides various information regarding its trade mark registrations and applications of the MTV Marks, including a table which sets out various details of some registrations of the MTV Marks. The Complaint also states that the Complainant owns 15 trademark registrations and 3 pending applications in Indonesia all for marks which feature MTV. The Complaint further states that the earliest of these registrations was issued in 1994 and all 15 were issued before the Respondent registered the disputed domain names.

The Complaint finally states in respect of the MTV Marks that there can be little doubt that the Complainantís MTV Marks are famous and that their fame existed long prior to the Respondentís registration of the disputed domain names. MTV has been recognized by the media as changing television and as being among the most influential television channels. In proceedings before WIPO, panelists have repeatedly recognized the fame of the MTV Marks.

4.3 Activities of the Respondent

As stated above, no Response to the Complaint has been filed and no information has been made available by the Respondent to the Panel concerning the activities of the Respondent.

 

5. The Complainantís contentions in the Complaint

5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant asserts: that the domain names in dispute all incorporate in whole the Complainantís famous registered MTV Marks and the only deviation is that Respondent has added "radio" as a prefix; that the addition of this generic term does not distinguish the domain name from Complainantís MTV mark and adding this term is likely to actually create confusion since Complainant has a long and established relationship with radio stations and provides radio-like services under the MTV mark via the Internet. Evidence of the Complainantís relationship with radio stations and of the radio-like services it provides is annexed to the Complaint at Exhibits D and E.

The Complainant asserts that consumers are therefore likely to believe that the disputed domain names are related to the official MTV websites of the Complainant, and refers to the administrative panel decision Novus Credit Services Inc. v. Personal, WIPO D2000-1158. The Complainant further asserts that given that the Complainant has been using Radio MTV.com and has common law rights in that mark, it is evident that the domain names are identical to a mark in which Complainant has rights.

5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant states that numerous facts exist here to show that Respondent can demonstrate no legitimate interests in the disputed domain names:

- firstly, the domain names were registered after the Complainant had obtained numerous U.S. federal trademark registrations for its MTV Marks, after the MTV Marks were registered in Indonesia, after the MTV Marks had been used worldwide including in Indonesia, after the Complainant had been extensively advertising its MTV Marks in Indonesia, and after the Complainant had begun offering its radio services at the MTV.com website;

- secondly, there exists no relationship between the Complainant and the Respondent that would give rise to any licence, permission or authorisation by which the Respondent could own or use the disputed domain name, and the Complainant refers to the administrative panel decision Guerlain S.A. v. H.I. Investments, D2000-0494 (in which no rights or legitimate interest were found where a complainant had not licensed or otherwise permitted respondent to use its trademark or to apply for a domain name incorporating its trademark);

- thirdly, the Respondent is not using the domain names in connection with a bona fide offering of goods or services and nor is the Respondent making a legitimate non-commercial or other fair use of the domain names;

- fourthly, although the disputed domain names have been registered since May 2000, no functioning websites have ever been established under any of these domain names, and this failure to use the domain names further supports a finding of no legitimate interests or rights in the domain names. The Complainant refers to the administrative panel decision World Wrestling Federation v. Bosman, WIPO D1999-0001;

- fifthly, there is no evidence to suggest that the Respondent is now or has ever been known by the name Radio MTV or MTV. While the Respondent was given the opportunity to explain why it adopted the domain names, it chose instead to ignore the Complainantís cease and desist letter, giving rise to the inference that Respondent has no legitimate rights in the disputed domain names; and

- finally, the Respondent lacks the right to use the Complainantís MTV and Radio MTV.com marks as or as part of his domain name since the disputed domain names all falsely suggest that Viacom is or may be associated with the domain name registrant or may be authorising or sponsoring any eventual website at the domain names.

5.4 In reference to the requirements of paragraph 4(a)(iii) of the Policy, the Complaint asserts that the Respondent has registered the domain name in dispute in bad faith.

In support of this assertion, the Complaint states the following:

- firstly, the fact that the Respondent has taken the Complainantís very trademark MTV and its common law radiomtv.com marks for his domain names is evidence of bad faith. The Complainant refers to the administrative panel decision Chernow Communication, Inc. v. Jonathan Kimball, WIPO D2000-0119;

- secondly, the Respondent has failed to use the disputed domain names to sell or provide any goods or services and that this too is evidence of bad faith. The Complainant refers to the administrative panel decision Chanel, Inc. v. BuyBeauty.com WIPO D2000-1126;

- thirdly, the Respondent has failed to respond to the Complainantís cease and desist letter and that panelists have found this to constitute evidence of bad faith. The Complainant refers to the administrative panel decisions Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc. WIPO D2000-0090 and NFL Properties, Inc. et al. v. BBC Ab, WIPO D2000-0147. The Complainant states that the Respondent was given the opportunity to explain why the domain names were taken and his plans for using the domain names. But failing to respond, the Respondent in effect has admitted that there was no bona fide reason for taking the disputed domain names, that he has no legitimate rights or interests in those domain names and that the domain names were registered and are being used in bad faith;

- fourthly, bad faith is also found from the fact that the domain names are so obviously connected with the Complainant that its very use by someone with no connection with the Complainant suggests opportunistic bad faith. The Complainant refers to the administrative panel decision Novus Credit Services Inc. v. Personal, WIPO D2000-1158 and states that the MTV mark is so famous that Respondent had to have known about it. As such the registration of the mark as a domain name without any colour of title or justification is proof of bad faith on Respondentís part;

- fifthly, further evidence of bad faith is found by virtue of the fact that the Respondent has been warehousing the disputed domain names for almost one year. The Complainant refers to the administrative panel decision Chanel, Inc. v. Uraina Heyward, WIPO D2000-1802, in which bad faith was found where a respondent hoarded or warehoused a famous and valuable mark as a domain name without any legitimate interest in the mark;

- finally, there is evidence of bad faith by virtue of the fact that by taking the disputed domain names, the Respondent intentionally compounded the confusion that would result from its adoption of the MTV mark since the term "Radio" has been used by the Complainant in connection with its services under the MTV mark and given the relationship that the Complainant has had with radio stations under the MTV mark.

 

6. Discussion and Panel Findings

6.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.

6.2 Domain Name identical or confusingly similar to Complainantís trade mark

The domain names in dispute are <radiomtv.com>, <radiomtv.net> and <radiomtv.org>. The Complainant owns registrations in over 100 countries for various trade marks of or incorporating the letters "MTV", including "MTV" in block letters, "MTV" in stylised format, and "MTV: Music Television" in stylised format.

The domain names in dispute and the Complainantís trade mark are not identical, and the issue is therefore whether the domain names and the mark are confusingly similar.

As far as a comparison between the disputed domain names and the Complainantís trade marks of or incorporating the letters "MTV" is concerned, the addition of the word "radio" and to the letters "MTV" in the disputed domain names has, in the Panelís view, minimal impact on what the viewer focuses on, namely, the letters "MTV". In the Panelís opinion, the Respondent has deliberately added the word "radio" to the letters "MTV" in the disputed domain names because, as the Complaint asserts, the Complainantís "MTV" trade marks are well-known around the world in connection with music broadcasting, and because the activities of the Complainant extend to providing radio-like services to the public around the world, either through relationships with established radio stations or by providing these services under the MTV brand via the Internet.

This Panelís view, consistently expressed in prior decisions, is that common nouns are rarely distinguishing elements. Where, as here, the common noun selected coincides with and in fact connotes if not denotes precisely the goods or services in respect of which the other element of the domain name is registered as a trademark, confusing similarity is inevitable.

In each of Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty Ltd, Case No. D2001-0110 (WIPO Arbitration and Mediation Center, April 2, 2001) in respect of the domain name <ansellcondoms.com>; Christieís Inc. v. Tiffanyís Jewelry Auction Inc., Case No. D2001-0075 (WIPO Arbitration and Mediation Center, March 6, 2001) in respect of the domain name <christiesauction.com>; and Arthur Guiness Son & Co. (Dublin) Ltd v. Steel Vertigogo, Case No. D2001-0020 (WIPO Arbitration and Mediation Center, March 22, 2001) in respect of the domain name <guinessbeer.com>, an element of each domain name represented the goods or services in respect of which each Complainantís trade mark had been registered, and those goods or services which the general public would associate with that trade mark. Rather than removing or reducing the risk of confusing similarity from the domain names when compared with the trade marks in question, in such situations confusing similarity was regarded as inevitable. Even more recently, this Panel has held in Red Bull GmbH v Manuel Sousa, Case No. D2001-0584 (WIPO Arbitration and Mediation Center, July 6, 2001), in respect of <redbullentertainment.com>, that the "entertainment" portion of the domain name, as with "radio" in the subject case, is close to being descriptive of at least part of the Complainantís business, and therefore unlikely to be viewed as a point of differentiation.

The gTLD suffix ".com" forming part of the domain names in dispute has no relevant distinguishing function.

The Panel also infers that the domain names <radiomtv.com>, <radiomtv.net> and <radiomtv.org> were chosen by the Respondent to cause Internet users to believe that the Complainant endorses or is associated with any web site to which the domain names might resolve. The Panel in any event finds that the disputed domain name is confusingly similar to the Complainantís "MTV" trade marks and that the Complainant has proven paragraph 4(a)(i) of the Policy.

6.3 The Respondent has no rights or legitimate interests in the Domain Name

The Complaint asserts that the Respondent has no rights or legitimate interests in the disputed domain names and, as stated above, the Respondent has provided no information to the Panel asserting any right or legitimate interest it has in the disputed domain names. It is apparent from the Complaint that there is no connection between the Respondent and the Complainant or its business.

Paragraph 4 (c) of the Policy lists a number of circumstances which, if proven to exist by the Respondent, can be taken to demonstrate a Respondentís rights or legitimate interests in the domain name. However, there is no evidence whatsoever before the Panel that any of the situations described in paragraph 4(c) of the Policy apply in the case of the Respondent.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the Complainant has proven paragraph 4(a)(ii) of the Policy.

6.4 Domain Name has been registered and is being used in bad faith

The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith. Paragraph 4(b) of the Policy provides:

"The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith".

In this case, although NSI has confirmed that the domain names <radiomtv.com>, <radiomtv.net> and <radiomtv.org> are currently active, none of these domain name resolves to an active web site. Rather, the domain names resolve to a web page stating that the domain name is registered with Network Solutions and that the site is currently under construction.

In some cases it has been found that it is unnecessary to consider the two limbs of the provision separately, as the "use" requirement has been found not to require positive action, inaction being within the concept. In this case the direction/redirection to the "under construction" web page is sufficient to satisfy the "use" element and is not regarded by the Panel as "inaction" - the implication is that the registrant of the domain names is in the process of building relevant web sites. In any event, blocking is a relevant "use" in the consistent view of this and other Panels.

6.5 Paragraph 4(b) of the Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(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; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainantís 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."

6.6 The statements made by the Complainant in support of its assertion that the disputed domain names were registered and are being used in bad faith are set out in full in paragraph 5.4 of this decision. In this Panelís opinion, the word "MTV" is obviously a well-known mark used by the Complainant in its day-to-day business. The Panel agrees with the Complainantís contention that the use of the word "MTV" by someone with no connection with the Complainant suggests opportunistic bad faith. In the Panelís opinion, the disputed domain names were registered by the Respondent for either of the reasons outlined in sub-paragraphs 4 (b) (i) and (ii) of the Policy, and, if the domain names will at some point in the future resolve to active web sites (which are currently "under construction"), then the domain names in dispute may also have been registered for the reason outlined in sub-paragraph 4 (b) (iv) of the Policy.

A search of the Network Solutions "Whois" database carried out by the Panel revealed that the Respondent is the registrant of numerous other top level domain names with which the Respondent has no obvious connection, and this fact further reinforces the view of the Panel expressed above. The Respondent has not put forward any evidence that he has legitimate rights or interests in the disputed domain names, nor in the numerous other top level domain names that have been registered by him.

In light of the above, the Panel concludes that it is likely that the Respondent is in the business of speculatively registering domain names in which he has no legitimate right or interest for the purpose of seeking to sell them to corresponding trade mark owners for consideration in excess of the out-of-pocket expenses he has incurred in registering the domain names.

6.7 The Panel is of the view that the domain names in dispute were registered and are being used in bad faith by the Respondent at least at the time of the Complaint. Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(iii) of the Policy.

 

7. Decision

7.1 The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainant. Accordingly, and for the purposes of paragraph 3(c) of the Policy, the Panel orders that the domain names <radiomtv.com>, <radiomtv.net> and <radiomtv.org> be transferred by NSI to the Complainant, Viacom International Inc.

 


 

Philip N. Argy
Sole Panelist

Dated: July 9, 2001