WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Viacom International Inc. v. Elephantronics

Case No. D2001-0921

 

1. The Parties

Complainant is Viacom International Inc., a corporation with a place of business in New York, New York, United States of America ("Complainant"). Respondent is Elephantronics, status and structure unknown, with an address in Paramus, New Jersey, United States of America ("Respondent").

 

2. The Domain Name and Registrar

The domain name at issue is <mtvclubs.com>, registered with Network Solutions, Inc. ("NSI"), 505 Huntmar Park Drive, Herndon, Virginia 20170.

 

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received the complaint via email on July 18, 2001, and in hard copy form on July 20, 2001. The Center verified that the complaint satisfies the formal 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"). Complainant made the required payment to the Center. The formal date of the commencement of this Administrative Proceeding is July 25, 2001.

On July 24, 2001, NSI confirmed by e-mail to the Center that the domain name <mtvclubs.com> is registered with NSI and that the Respondent is the current registrant of the name.

On July 25, 2001, the Center transmitted to Respondent, and to the person listed on Respondent's registration as Technical, Administrative and Billing Contact, the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, via facsimile, courier and email. The Center advised, inter alia, that the response was due by August 14, 2001. The facsimile transmissions were not successful in that the facsimile numbers were not in service; however, the email were successfully transmitted, and the courier packages were successfully delivered on July 30, 2001.

On August 15, 2001, having received no Response or other communication from Respondent, using the same contact details as were used for the Commencement Notification, the Center transmitted to the parties a Notification of Respondent Default via email.

On August 28, 2001, pursuant to Complainant's request to have the dispute decided by a single-member panel, the Center appointed Sally M. Abel as Panelist.

Having reviewed the communications records in the case file, the Administrative Panel ("the Panel") finds that the Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Panel shall issue its Decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules, without the benefit of any Response from Respondent.

 

4. Factual Background

Complainant, through its wholly-owned subsidiary MTV Networks, operates the well known MTV: Music Television programming service featuring primarily music-related programming including music videos, interviews, documentaries, entertainment information and news. The MTV programming service first aired in 1981, and is now seen in more than 139 territories worldwide, reaching over 77.3 million subscriber households. MTV is a recognized leader in the music industry and has received numerous awards and other recognition of its achievements. Complainant has spent hundreds of millions of dollars over the last 19 years in advertising and promoting its services and related merchandise under MTV, and several other MTV-based trademarks and service marks.

Complainant's web site, <mtv.com>, averages a monthly audience of 429,000, and is consistently ranked as the top music content site among 13-17 year olds.

Complainant owns trademark registrations in over 100 countries for its various MTV and MTV-based marks, including the following in the United States:

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


In addition to other MTV-branded goods and services, Complainant currently markets a compact disc called "Club MTV Party to Go". The first cut on the CD is named "Club MTV Theme". The CD appears to be an extension of a series Complainant previously aired on MTV called "Club MTV" and of a related live tour of the same name, featuring prominent artists such as Paula Abdul. The record does not indicate when the series aired, or when the tour took place, but it appears that the CD has been available since 1991.

On September 27, 1999, Respondent obtained the domain name <mtvclubs.com>. There has never been any relationship between Complainant and Respondent. <mtvclubs.com> connects to an informational web site about various bars in New Jersey. The site also contains advertisements for unrelated businesses, such as Hewlett Packard Printer Repairs and <starbeamsoft.com>. Complaint, Exhibit G. Nothing on the site expressly or implicitly explains the reference to "mtv" in the domain name. Respondent never responded to Complainant's March 2, 2001 demand letter asking Respondent to cease use of the domain and transfer it to Respondent.

 

5. Parties' Contentions

A. Complainant

The Complaint is sufficient to allege that Respondent has registered a domain name which is identical or confusingly similar to Complainant's trademarks and service marks, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

B. Respondent

Respondent has not contested the allegations of the Complaint.

 

6. Discussion and Findings

Respondent has defaulted. Paragraph 14 of the Rules provides that the Panel may draw such inferences from such a default as it considers appropriate. Accordingly, the Panel infers from Respondent's silence that Complainant's allegations are, in fact, correct.

Complainant has therefore satisfied the requirements of Paragraph 4(a) of the Policy. The domain name <mtvclubs.com> is confusingly similar to Complainant's MTV trademarks and service marks, and to the MTV-based marks identified above. Respondent has no rights or legitimate interests in the domain name. Respondent has intentionally attempted to attract users to its site, for commercial gain, by creating a likelihood of confusion with Complainant's MTV marks as to source, sponsorship, affiliation or endorsement.

 

7. Decision

Because the undisputed evidence permits a finding in favor of Complainant on each element of its claim, and there is no evidence to the contrary, the Panel decides that Complainant has met its burden of proof with respect to each of the three elements of Paragraph 4(a) of the Policy.

Accordingly, the Panel requires that the registration of the domain name at issue be transferred to Complainant.

 


 

Sally M. Abel
Sole Panelist

Dated: September 18, 2001