WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viacom International Inc. v. Domains For Sale Sp
Case No. D2002-0481
1. The Parties
Complainant is Viacom International Inc., 1515 Broadway, New York, New York 10036, United States of America.
Respondent is Domains For Sale SP, Vastriku 9/1052, Tallinn, Estonia 19312, Estonia.
2. The Domain Name and Registrar
The domain name at issue is <tnnracing.com> (hereinafter referred to as the Domain Name).
The Registrar for the domain name is Dotster, Inc. (hereinafter referred to as the Registrar).
3. Procedural History
On May 23, 2002, Complainant filed a complaint, drafted in the English language, with the WIPO Arbitration and Mediation Center (hereinafter referred to as the Center). The Complaint was received via e-mail on May 23, 2002. The hardcopy of the Complaint was received on May 27, 2002.
On May 27, 2002, the Acknowledgement of Receipt by the Center was sent to the Complainant. On the same date, the Center sent the Request for Registrar Verification.
On May 29, 2002, the Registrar provided the Center with the full contact details available in its WHOIS database for the Domain Name registrant and confirmed that:
- a copy of the Complaint was sent to it by the Complainant;
- it is the current Registrar of the Domain Name registration;
- the Respondent is the current registrant of the Domain Name registration;
- the Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the ICANN Policy) applies to the Domain Name.
The Center proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the ICANN Rules) and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the WIPO Supplemental Rules), including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on June 3, 2002.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Supplemental Rules.
On June 3, 2002, the Center informed the Respondent of the commencement of the proceedings as of June 3, 2002, and of the necessity of responding to the Complaint within 20 calendar days, the last day for sending a response to the Center being June 23, 2002.
In a letter dated June 25, 2002, the Center informed the Respondent that it was in default pursuant to the ICANN Rules and the WIPO Supplemental Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant.
On July 12, 2002, the Center issued a Notification of the Appointment of Administrative Panel and of the projected decision date to the parties and transmitted the Case File.
The Panel is satisfied that it was constituted in compliance with the ICANN Rules and the WIPO Supplemental Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has received no further submissions from either party since its formation.
The Panel is obliged to issue a decision on or prior to July 26, 2002, in the English language.
4. Factual Background
The following uncontradicted and unchallenged facts appear from the Complaint, documents submitted with the Complaint in support thereof as well as routine verifications conducted by the Panel:
The Complainant operates the television programming service TNN: THE NATIONAL NETWORK ("TNN"). TNN is a cable television network that airs various types of programming, including sports programs, classic movies and television shows, as well as other programs. The TNN programming service premiered in 1983, and the TNN mark has been used continuously since that time to promote TNN and its programs.
TNN is in the top-ten television networks in overall viewership among all viewing households and among adult viewers aged eighteen through forty-nine.
Complainant in its own name and through its subsidiary, Network Enterprises, Inc., owns numerous trademark registrations and pending applications for the TNN Mark and variations thereof (collectively, the "TNN Marks"). All of the registrations have become incontestable in the U.S.
Complainant and its predecessor owners of the TNN Marks have had a presence on the Internet including the TNN Marks since at least as early as 2000. This presence has included and continues to include the website <tnnonline.com>.
The Domain Name <tnnracing.com>, was registered by the Respondent on July 30, 2001;
There has never been any relationship between Complainant and Respondent, and Respondent has never been licensed or authorized to use the TNN Marks in any manner, including in or as part of a domain name.
As of January 3, 2002, users who typed in the domain name <tnnracing.com> were brought to a web page that featured a litany of links to hardcore pornographic websites. See Exhibit C.
Sometime thereafter, when users entered the website at <tnnracing.com> they were brought to a web page featuring advertisements for a software product called "Internet Eraser Pro." See Exhibit D. The page featured link to the web site <interneteraser.com>, and when users sought to leave the <tnnracing.com> web site additional "pop-up" windows automatically appeared on the screen displaying web pages associated with the URL <interneteraser.com>. See Exhibit E. The WHOIS listing for <interneteraser.com> indicates that the domain name is owned by an entity in the United States that does not appear to be related to Respondent. See Exhibit F.
Moreover, upon further investigation on a "proprio motu" basis, conducted by the Panel, it seems that that the Domain Name presently directs internet users to a search engine site.
On September 21, 2001, Respondent sent a demand letter to the domain name holder by certified mail asking that the domain name be transferred. See Exhibit G. At the time the demand letter was sent, the domain name holder was "For Sale", 19 Bondarenko Square, Obninsk, Kaluga 24920, Russia. The administrative contact for the domain name was listed as Allen Ginsberg. See Exhibit H. No response was received to the demand letter.
After the demand letter was sent, but prior to January 24, 2002, the domain name was transferred once again into Mr. Ginsbergís own name, and he was listed as the domain name holder at the same address in Obninsk, Kaluga, Russia. See Exhibit I.
Subsequently, the domain name was transferred once again, and "Domain For Sale" is currently listed as the domain name holder. Mr. Ginsberg is listed as the administrative and technical contact. According to the WHOIS listing, all are located at Vastriku 9/1052, Tallin, Estonia 19312, Estonia. See Exhibit A.
5. Partiesí Contentions
Over and above the uncontested and unchallenged factual background as noted above, which is hereby incorporated herein by reference, it has been contended by:
With respect to its trademark rights
- TNN currently reaches 84 million households in the United States.
- It owns numerous trademark registrations and pending applications for the TNN Mark and variations thereof (collectively, the "TNN Marks") (Exhibit B). Additionally these registrations are valid, subsisting and in full force and effect and serve as prima facie evidence of the validity of the marks and of Complainant's exclusive right to use the TNN Marks on the goods and services listed in the registrations.
- This website is available to any consumer in Russia with unrestricted access to the Internet.
- There is no doubt that the Complainantís TNN Marks are famous and that their fame existed long prior to Respondentís registration of <tnnracing.com>. It claims the TNN Marks have been used from the outset in connection with TNNís programming and other services, and viewers associate the TNN Marks as representing goods and services associated solely with TNN.
- It is because of the fame of the TNN Marks that Respondent likely registered the domain name, used it to divert traffic to pornographic websites and is now renting cyberspace associated with it to third parties.
With respect to the Identity or Confusing Similarity between the Domain Names and its Trademarks
- The <tnnracing.com> domain name incorporates in whole Complainantís famous registered TNN mark and the only deviation is that Respondent has added the generic term "racing" as a suffix. The addition of a generic term to a famous mark such as TNN creates a domain name that is confusingly similar to the trademark.
- The addition of the generic term "racing" is likely to cause confusion because Complainant makes use of several marks consisting of TNN and a generic term, as demonstrated by the registration for the TNN marks.
- Because the domain name <tnnracing.com> refers to "racing," consumers are likely to believe that it refers to a website that concerns auto-racing programs featured on TNN since TNN regularly airs auto-racing programs, and owns the registered mark TNN MOTOR SPORTS which it has used in connection with auto racing programs.
With respect to the Absence of Rights or Legitimate Interests of the Respondent
- The domain name was registered long after the TNN programming service premiered and became famous, after Complainant had obtained numerous U.S. federal trademark registrations for its TNN Marks, and after Complainant had established an Internet presence available worldwide at <tnnonline.com>.
- Respondent is not using the domain name in connection with a bona fide offering of goods or services nor is it making a legitimate non-commercial or other fair use of the domain name. Instead, it has used the name to divert traffic to hardcore pornography websites thereby tarnishing the mark in violation of UDRP ∂4(c)(iii). See Exhibit C.
- Respondentís use of the domain name to link to pornographic websites was not legitimate or bona fide but was done to mislead consumers and tarnish the TNN marks.
- Respondentís use of the domain name that consisted of renting it to third parties for commercial benefit further supports a finding of no legitimate interests or rights in the domain name. Additionally, the cyberspace is valuable solely because of the associated domain name <tnnracing.com> Ė a name that has great recognition and goodwill due to its exclusive association with Complainant
- There is no evidence to suggest that Respondent is now or has never been known by the name TNN or TNN RACING.
- While Respondent was given the opportunity to explain why it adopted the domain name, it chose instead to ignore Complainantís cease and desist letter, giving rise to the inference that Respondent has no legitimate rights.
- Respondent lacks the right to use the domain name because the <tnnracing.com> domain name falsely suggests that Complainant is associated with the domain name registrant or may be authorizing or sponsoring any eventual website at the domain name.
- Respondent is offering to sell the domain name, as evidenced by the very name listed as the domain name holder in the WHOIS directory Ė "Domains for Sale SP" (Exhibit A) and Respondent has also solicited offers to purchase the domain name on the <tnnracing.com> website itself (Exhibit C).
- The fact that Respondent is willing to sell <tnnracing.com> shows that it had no intent to use the name for any legitimate purpose and can therefore demonstrate no legitimate interest or rights in the domain name.
With respect to the Registration and Use of the Domain Names in Bad Faith
- Respondent used the name to divert consumers to a warren of pornographic website (Exhibit C).
- The fact that Respondent has taken Complainantís very trademark TNN as the dominant part of its domain name shows bad faith.
- The fact that Respondent has failed to respond to Complainantís cease and desist letter shows bad faith since Respondent was given the opportunity to explain why the domain name was taken. By failing to respond, Respondent in effect has admitted that there was no bona fide reason for taking <tnnracing.com> other than to profit from Complainantís fame and reputation.
- Bad faith is found from the fact that the domain name is so obviously connected with the Complainant that its very taking by someone with no connection with the Complainant suggests "opportunistic bad faith."
- Internet users are likely to believe that the <tnnracing.com> connects to a website associated with or sponsored by Complainant given Complainantís use of the TNN Marks. By using Complainantís mark as its domain name, Respondent is attempting to ride on the fame of Complainantís mark and use that fame to divert consumers to its websites for commercial advantage.
- Respondent's offer to sell the domain name shows bad faith.
The Respondent has either chosen to abstain or has failed to file a timely response with the Center.
6. Discussion and Findings
Pursuant to the ICANN Policy, the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent upon the Complainant to cumulatively show:
(i) that the Domain Name is identical or confusingly similar to a trademark in which it holds rights; and
(ii) that the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
(i) Identity or Confusing Similarity between the Domain Name and Complainant's Trademark
The Panel finds Complainant has rights in the TNN Marks having used them in connection with TNNís programming and other services, and given that viewers associate the TNN Marks as representing goods and services associated with the Complainant.
While the Domain Name is not identical to Complainant's TNN marks, the Panel finds that it is confusingly similar. The test of confusion in comparing the words or marks at issue is from the stand point of the average unwary consumer, looking at the marks in their totality, having an imperfect recollection of the former.
The Domain Name <tnnracing.com> incorporates in whole Complainantís famous registered TNN mark and the only deviation is that Respondent has added the generic term "racing" as a suffix. The Panel adopts the finding in Viacom Intíl Inc. v. mtvmp3.com, WIPO Case No.D2001-0275 and Parfums Christian Dior v. Netpower, Inc., WIPO Case No. D2000-0022 where it was decided that the addition of a generic term to a famous mark (such as TNN) creates a domain name that is confusingly similar to the trademark. Because the Domain Name <tnnracing.com> refers to "racing," consumers are likely to believe that it refers to a website that concerns auto-racing programs featured on TNN since TNN regularly airs auto-racing programs, and owns the registered mark TNN MOTOR SPORTS which it has used in connection with auto racing programs.
Pursuant to the above mentioned reasons as well as the fact that there has been no explanation or evidence offered by the Respondent to establish the contrary, the Panel is therefore of the opinion that the Complainant has satisfactorily met its burden of proof as required by paragraph 4(a)(i) of the ICANN Policy.
(ii) Rights or Legitimate Interests in the Domain Names by Respondent
The Panel finds the Respondent has no rights or legitimate interests in the Domain Name given 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 Name <tnnracing.com>.
Moreover, Respondent has not even attempted to explain or rebut strong indications submitted in evidence by Complainant that it is not using the DomainNname in connection with a bona fide offering of goods or services nor is it making a legitimate non-commercial or other fair use of the Domain Name. The Panel adopts the finding in World Wrestling Foundation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256, where no legitimate interests were found because the domain names were used in connection with porn sites. Respondentís use of the Domain Name to link to pornographic websites cannot be considered legitimate or bona fide.
Also, Respondentís use of the Domain Name that consisted of renting it to third parties for commercial benefit further supports a finding of no legitimate interests or rights in the Domain Name.
Additionally, the Panel finds that the fact that Respondent is willing to sell <tnnracing.com> (Exhibit C) shows that it had no intention to use the name for any legitimate purpose and can therefore demonstrate no legitimate interest or rights in the Domain Name.
For these reasons, the Panel concludes that, on a balance of probabilities, the Complainant has discharged its burden to show that the Respondent has no rights or legitimate interests in the Domain Name especially since there has been no explanation or evidence offered by the Respondent to establish the contrary.
(iii) Bad faith in Registration and Use of the Domain Name by the Respondent
It is most of the time quite difficult, if not impossible to actually show bad faith with concrete evidence. While bad faith cannot be presumed, once Complainant has presented some evidence pointing in that direction, it is incumbent upon Respondent to either respond or explain why its conduct should not be assimilated to bad faith. Panel's understanding of the Policy is that although the initial burden to prove Respondent's bad faith in the registration or the use of the disputed Domain Name relies squarely on the shoulders of Complainant, such obligation is only to make out a prima facie case, and once it has done so, as it did in the present case, it is then incumbent upon the Respondent to either justify or explain its business conduct (if not to demonstrate the contrary). Failure to do so will, in some circumstances, enable the Panel to draw negative inferences. In the case at hand, the Respondent has elected (or failed) not to put forward any justification for its acquisition of the Domain Name and, in the circumstances, the Panel does draw a negative inference out of such omission. See Hebdomag Inc. v. Illuminaty Marketing, WIPO Case No. D2001-0206 (April 17, 2001), and InterTrade Systems Corporation v. Donna Lawhorn, FA0204000112488 ( Nat. Arb. Forum July 15, 2002).
This is particularly so, given that Internet users are likely to be induced to believe that the <tnnracing.com> connects to a website associated with or sponsored by Complainant given Complainantís use of the TNN Marks. Further, by using Complainantís mark as its Domain Name without any appearance of interest, Respondent is attempting to ride on the fame of Complainantís mark and use that fame to divert consumers to its websites for commercial advantage.
Consequently, the Panel finds that Respondent acted in bad faith in registering and using the Domain Name.
For the foregoing reasons, the Panel finds that:
- The Domain Name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Domain Name; and
- The Domain Name has been registered and is being used by the Respondent in bad faith.
Accordingly, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the registration of the Domain Name <tnnracing.com> be transferred to the Complainant and directs the Registrar, Dotster, Inc., to do so forthwith.
Jacques A. Léger, Q.C.
Dated: July 26, 2002