WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viacom International Inc. v. Hicham Baktit Media
Case No. D2008-0079
1. The Parties
The Complainant is Viacom International Inc., New York, United States of America, represented by White O’Connor Curry LLP, United States of America.
The Respondents as identified in the Complaint are (1) Christian Investments LLC d/b/a Protected Domain Services, Denver, United States of America (“first Respondent”), represented by Renova Ltd., Spain and (2) Hicham Baktit Media, Groningen, Netherlands (“second Respondent”).1
2. The Domain Name and Registrar
The disputed domain name <watch-avatar.com> is registered with Spot Domain LLC dba Domainsite.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2008. On January 21, 2008, the Center transmitted by email to Spot Domain LLC dba Domainsite.com a request for registrar verification in connection with the domain name at issue. On January 24, 2008, Spot Domain LLC dba Domainsite.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 25, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
On January 25, 2008, the Center received an email from a person denoted solely as “J K”, using the administrative contact email address for the disputed domain name. The email indicated that the writer had recently acquired the disputed domain name from the previous owner and that the registrant contact information was the previous owner’s details. On the same date, the Center replied to this email stating that formal notification of the Complaint would be made on completion of the compliance review.
The Complainant filed an amended Complaint (the “Complaint”) on January 30, 2008 (naming as the Respondents (1) Christian Investments LLC d/b/a Protected Domain Services and (2) Hicham Baktit Media). Also on January 30, 2008, “J K” sent a further email to the Center stating that the second Respondent was no longer the owner of the disputed domain name and that the contact information had yet to be updated. In response to this email, the Center emailed Spot Domain LLC dba Domainsite.com on January 30, 2008 requesting renewed confirmation that the registrant of the disputed domain name was as disclosed in the verification response of January 24, 2008. On January 30, 2008, Spot Domain LLC dba Domainsite.com confirmed that the details in the verification response were correct and were the details held both on record and shown in the WhoIs for the disputed domain name. On January 31, 2008, “J K” sent two further emails to the Center asking whether it was possible for the Respondent’s information to be updated on the basis that Hicham Baktit Media was no longer the owner of the disputed domain name. The Center replied to these emails on February 1, 2008, pointing out that Spot Domain LLC dba Domainsite.com had confirmed the registrant of record as Hicham Baktit Media.
On January 31, 2008, the Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on January 31, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2008. Neither the above referred first or second Respondent submitted any response by the specified due date.
On February 26, 2008, the first Respondent filed a submission containing a response to the Complaint together with a request that this be received late and considered by the Panel when appointed.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on February 26, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On February 29, 2008, in response to a request by the Complainant, the Panel instructed the Center to invite the Complainant to make a further submission in reply to the first Respondent’s submission. This reply was to be filed no later than March 5, 2008. The Panel also extended the due date for the Decision to March 16, 2008.
On March 5, 2008, the Complainant filed a submission containing a reply to the first Respondent’s response.
4. Factual Background
The Complainant is a Delaware corporation with its principal place of business in New York, United States of America. It is an entertainment service provider and the owner of rights in the animated television series entitled “Nickelodeon Avatar: The Last Airbender” which is broadcast in the USA on the Nickelodeon Television channel. The Complainant has also made the series available to purchasers for legal streaming over the Internet at BitTorrent.com, iTunes, and other Internet portals.
In addition, the Complainant has developed and published an online role playing adventure game entitled “Avatar: Autumn Twilight” which is available via the Nickelodeon website and is based upon the Complainant’s television series.
The Complainant is the owner of federal service mark registrations with the United States Patent and Trademark Office for the marks NICKELODEON AVATAR: THE LAST AIRBENDER, registration no. 3002720, registered on September 27, 2005 and AVATAR: AUTUMN TWILIGHT, registration no. 3265850, registered on July 17, 2007. It has also made numerous copyright registrations in the United States of America in connection with the television series.
The first Respondent is a limited liability corporation that is duly qualified to transact business in the State of Colorado, United States of America. It provides a so-called “privacy service” which is offered to domain name registrants through contractual relationships with various registrars, including the registrar of record of the disputed domain name.
The disputed domain name was registered on October 7, 2007. The screenshot of the associated website provided by the Complainant dated December 17, 2007, shows that the site claimed to make available for download all episodes of Avatar The Last Airbender from Seasons 1, 2 and 3 (the latter season was updated as each episode was released).
5. Parties’ Contentions
A. Complainant [amended Complaint]
The disputed domain name is unquestionably confusingly similar to the Complainant’s trademarks, and is likely to cause confusion, deception and mistake among the public and Internet users as to the authorization and participation of the Complainant in the Respondent’s activities. The slight differences between the marks at issue do not alter this conclusion, since the disputed domain name appropriates the dominant element of the trademarks: the term AVATAR. The addition of the generic term “watch” or the domain name suffix “.com” does not have any impact on this analysis. That the Respondent has made the unauthorized series episodes available on the site for users to “watch” increases the likelihood of confusion; the clear purpose of the domain name is to lead consumers to mistakenly conclude that the Complainant has authorized or is somehow associated with the site.
The Complainant is not aware of any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with the legal and/or authorized offering of the Complainant’s goods or services associated with the Complainant’s trademarks.
The Respondent is making an illegitimate, commercial, non-fair use of the disputed domain name, with the intent of commercial gain, by misleadingly diverting consumers away from the legal and legitimate purchase of the services associated with the Complainant’s trademarks, and by tarnishing the service marks at issue.
The Respondent has demonstrated an intent to use (and has used) the disputed domain name in bad faith, by engaging in the following conduct, without limitation:
a. engaging in the rampant, unauthorized promotion, performance, and distribution of the Complainant’s copyrighted content in the television series “Nickelodeon Avatar: The Last Airbender”;
b. registering the domain name primarily for the purpose of disrupting the Complainant’s business in the promotion, performance and distribution of the television program; and
c. using the disputed domain name to intentionally attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the AVATAR Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and of the services provided by the Respondent’s website.
B. Respondent [Response]
The second Respondent did not reply to the Complainant’s contentions. The first Respondent filed a Response, the substance of which may be summarized as follows:
The first Respondent is not the registrant of the disputed domain name; it is a privacy service that holds no ownership interest in and receives no benefit from the disputed domain name. The first Respondent promptly disclosed the identity of its client (the second Respondent) upon notice from the registrar following the Center’s request for registrar verification. The first Respondent also requested the Complainant’s counsel on numerous occasions to delete the first Respondent from the Complaint.
The first Respondent notes that the disputed domain name consists of the generic terms “watch” and “avatar” which do not give any impression that the phrase is a trademark. The first Respondent accordingly did not make judgments relative to the use and/or any potential third party interests regarding the disputed domain name. The second Respondent has sole responsibility for the registration and use of the disputed domain name. The first Respondent therefore requests that the Panel, regardless of the outcome of the dispute over the disputed domain name, declares that the first Respondent is not the registrant and thus not party to the dispute. Finally, the first Respondent requests that its Response be received and accepted although late.
C. Complainant [Reply to Response]
The Complainant opposes the late receipt and acceptance of the first Respondent’s Response. The first Respondent has premised its entire Response on the assertion that it is not the registrant of the disputed domain name; the second Respondent, being the registrant, is in default and the Panel should decide the dispute based upon the Complaint alone. Panels have recognized that privacy services have both legitimate and illegitimate uses and the Panel has discretion as to whether to treat the acts of the registrant as the acts of a Respondent privacy service. There is direct evidence that the first and second Respondents are acting in concert in that they share the same telephone number and email address (comparing the first Respondent’s details as provided in the Response and those of the second Respondent as listed in the disclosed registrant name and contact information provided by the registrar Spot Domain LLC dba Domainsite.com).
D. Respondent [Response to the Complainant’s Supplemental Filing]
The first Respondent submitted in reply that reason for the lateness of the Response was excusable, involving the first Respondent’s counsel’s inability to access email while travelling. The first Respondent’s privacy service is genuine as is demonstrated from the home page of the registrar’s site from which it is offered and the WhoIs and relative email contact address which are designed to ensure that not only the registrant but also that the first Respondent and the registrar both receive any notice. The Complainant’s Reply to Response relies almost entirely upon an inadvertent typographical error which arose from use of a Notification of Complaint form received from the Center; the correct details were provided in other documentation. The fact that the second Respondent has defaulted cannot become the basis for issuing adverse findings as to the first Respondent.
6. Discussion and Findings
A. Late Response/Supplemental Submissions
The first issue is whether the Panel should accept and consider the first Respondent’s late Response of February 26, 2008. Paragraph 14(a) of the Rules states that in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint. Accordingly, the Panel has discretion to consider the Response if it finds that exceptional circumstances are present. In addition, in terms of paragraph 10(b) of the Rules, the Panel must ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
It appears from the Response that the first Respondent’s counsel originally anticipated that the first Respondent would be deleted as a Party from the Complaint by the Complainant, on the basis that the first Respondent was the mere provider of a privacy service. Indeed, the first Respondent’s counsel states that he had attempted to seek agreement from the Complainant’s counsel to this effect. However, the Complainant chose to retain both Respondents in the Complaint, and, according to the first Respondent, only intimated this fact on the day before the deadline for a Response. By this time, the first Respondent’s counsel was travelling on business and did not become aware of the situation until the afternoon of February 20, 2008. The Response was prepared as soon as possible thereafter.
The Complainant opposes the first Respondent’s request that its Response be accepted late. However, the Complainant does not directly address the first Respondent’s assertions regarding the timing of the Complainant’s intimation that it would not delete the first Respondent from the Complaint. The Complainant focuses instead on the fact that the first Respondent had already received three weeks’ notice from the Center of the date on which a Response would be due.
Does the first Respondent’s explanation justify a finding of exceptional circumstances? In the Panel’s view, it does. The late Response in this case has been filed by a privacy service which was, during the period of notice, actively requesting that it be deleted from the Complaint on the grounds that the “true” registrant had been disclosed in timely fashion. The Complainant’s intimation that it would not delete the first Respondent was given so close to the deadline for a response that it would not have been practical for the first Respondent to file this in time, if so advised. The first Respondent asserts that the Response was filed as soon as practicable thereafter and this does indeed appear to be the case. The Panel considers that these circumstances justify the consideration of the Response, on the basis of both paragraphs 10(b) and 14(a) of the Rules. It is worth noting that in making this finding the Panel is not ruling on whether the Complainant should or should not have deleted the first Respondent from the Complaint but merely that its somewhat tardy intimation of the decision to retain the first Respondent in the Complaint is sufficient to entitle the first Respondent to file a late Response in the particular circumstances here.
It should also be pointed out that the Panel considers that the Complainant’s position is not prejudiced in any way by the late submission of the Response in this case, particularly in light of the fact that the Panel has subsequently afforded the Complainant a full right of reply by way of its own supplementary submission.
B. The Proper Party or Parties Respondent
The Complainant originally named the first Respondent as the party Respondent. However, during the registrar verification check the Center became aware that the first Respondent appeared to be a privacy service. The second Respondent was disclosed to the Center by the registrar as the registrant, and also on the registrar’s database and the WhoIs details amended accordingly. The Center therefore invited the Complainant to amend its Complaint to identify the disclosed second Respondent as party Respondent. This the Complainant duly did, but it continued to list the first Respondent as a Party despite the first Respondent’s counsel’s strong and detailed objections which have been noted earlier in this Decision.
Accordingly, the question for the Panel is whether to treat the first or second Respondent, or both, as the respondent in this case. This issue has been the subject of detailed and comprehensive analysis in the recent case of The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services , WIPO Case No. D2007-1438 which also included a consideration of relevant previous cases under the Policy. In examining this question, the panel in iFranchise stated:
“A panel must decide who is the registrant of the domain name for purposes of the application of the Policy. In a case in which a Panel had only the name of the privacy service as registrant, the Panel considered other available evidence in order to determine the actual identity of the registrant, and the Panel thereafter elected to treat the acts of the party whom it had determined to be the actual registrant as the acts of the Respondent privacy service. Building Trade 1868 Kft. v. RegisterFly.com, WIPO Case No. D2006-0396. In cases where information is provided, either from a change in the WHOIS information or from a communication to the provider by the registrar or the privacy service as to the identity of the underlying registrant panels have 1) treated the underlying registrant and the respondent jointly as respondent (Ohio Savings Bank v. 1&1 Internet, Inc. and David Rosenblum, WIPO Case No. D2006-0881; TDS Telecommunications Corporation v. Registrant  Nevis Domains and Registrant  Moniker Privacy Services, WIPO Case No. D2006-1620) or 2) elected to disregard the privacy service entirely and to analyze only the acts of the underlying registrant. Costco Wholesale Corporation and Costco Wholesale Membership Inc. v. Yezican Industries and Domains by Proxy, Inc., WIPO Case No. D2007-0638; Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070.”
In the present case, the registrar provided the information relating to the underlying registrant promptly upon receiving notification of the Complaint and request for registrar verification. Ordinarily, therefore, the Panel would have been inclined to treat the second Respondent alone as the proper party Respondent in this case. However, the Complainant, in its Reply to Response, has asserted that the first and second Respondents are acting in concert in that they share the same telephone number and email address.
Had there been sufficient evidence that the Respondents were acting in concert, the Panel would have been inclined to treat both together as the proper party Respondent. However, the first Respondent has explained that its listing of an identical telephone number and email address were inadvertent typographical errors and it points out that it provided its correct contact information in an email to the Complainant’s counsel of February 8, 2008. It adds that the Complainant was aware of this as it used that contact information in the Complaint.
In these particular circumstances and while the Panel does not entirely discount the possibility, there is no clear evidence that the Respondents are acting in concert and the Panel therefore elects to treat the second Respondent as the proper party Respondent in this case. Accordingly, it is the rights, legitimate interests and conduct of the second Respondent alone that will be determinative and the Panel will disregard the first Respondent’s submissions on the merits of the Complaint as these were not made by or on behalf of the second Respondent.
It is worth commenting briefly on the position of the third party “J K” who emailed the Center during the registrar verification stage asserting that the second Respondent was no longer the owner of the disputed domain name. While “J K” did contact the Center on several occasions, at no time did he/she provide any specification of his/her identity. Faced with a third party who was effectively asserting that it was the appropriate respondent, the Center renewed its request for registrar verification and was again informed by the registrar of the disputed domain name that the correct registrant was the second Respondent. Accordingly, it is the second Respondent and not “J K” that is the proper Party and the Panel considers that the assertions of “J K” do not require to be considered further.
Given that the second Respondent is the proper party Respondent in this case, and for convenience, the Panel will refer to the second Respondent merely as “the Respondent” for the remainder of this Decision.
C. Identical or Confusingly Similar
The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. Clearly the disputed domain name is not identical to the Complainant’s trademarks, but is it confusingly similar?
The Complainant asserts that the term “AVATAR” is the dominant element of its trademarks. In the first trademark, the remainder of the mark is NICKELODEON: THE LAST AIRBENDER, NICKELODEON being a registered trademark in its own right describing the channel which broadcasts the television series and “THE LAST AIRBENDER” being the series subtitle and as such being less dominant. In the second trademark, the remainder of the mark is the phrase AUTUMN HARVEST which is the descriptive title of a particular “AVATAR” game.
The disputed domain name itself consists of the term “avatar” with the descriptive word “watch”, disregarding the top level domain “.com” on the basis that this is wholly generic as is customary in cases under the Policy. The focus of the disputed domain name is therefore entirely on the word “avatar”. The addition of the word “watch”, while itself a non-distinctive and common term, can be readily associated with a television series or television in general and, in any event, does nothing to distinguish the disputed domain name from the dominant element of the Complainant’s trademarks. On this comparison, therefore, the Panel finds that the disputed domain name is confusingly similar to the trademarks cited by the Complainant and that accordingly, that the Complainant has met its requirements under paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
The Complainant is required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a disputed domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
As the Respondent did not file a Response, it did not submit any evidence demonstrating its rights or legitimate interests in the disputed domain name. The Complainant notes that the website associated with the disputed domain name is entirely focused on the Complainant’s television series. The Complainant asserts that the invitation on that website to stream or download episodes from the series is intended to deceive the public into believing that the Respondent is authorized by the Complainant to make these episodes available. The Complainant contends that such use cannot confer rights or legitimate interests upon the Respondent and notes that the Respondent is making an illegitimate, commercial and non-fair use of the disputed domain name to divert consumers from legitimate and authorized offerings.
In the Panel’s view, the Complainant’s submissions constitute a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Once such a case has been shown, it is for the Respondent to present evidence that it does have such rights or interests, given that these may be matters exclusively within the knowledge of the Respondent. However, the Respondent has not filed a Response in this case. In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has met its requirements under paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad Faith
The Complainant is required under paragraph 4(a)(iii) of the Policy to prove that the Respondent has registered and used the disputed domain name in bad faith.
On this subject, the Complainant asserts that the Respondent’s activities are targeted at the Complainant’s trademark and the relative television series, that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant and that the Respondent has intentionally attempted to attract Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark.
Having reviewed the submissions of the Complainant together with the screenshots of the website associated with the disputed domain name it is clear to the Panel that the intention of the Respondent was to target the Complainant’s trademarks and the fame of the Complainant’s television series and, in so doing, to create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Complainant does not deal directly with the Respondent’s commercial purpose. It is not clear, for example, whether the Respondent was seeking to charge a fee for the unauthorized downloads or streaming of the Complainant’s television series. Nevertheless, it does appear to the Panel from the screenshots provided by the Complainant that the website associated with the disputed domain name was carrying commercial advertising for other related websites and, in the absence of any clarification from the Respondent, the Panel is prepared to find that this use constitutes “commercial gain” as anticipated by paragraph 4(b)(iv) of the Policy.
Accordingly, the Complainant’s submissions on the Respondent’s conduct give rise to a reasonable inference that the disputed domain name has been registered and used in bad faith. The Respondent failed to file any Response which might have brought evidence of any good faith activity to the notice of the Panel and furthermore, the Panel doubts that there could be any conceivable explanation for the Respondent’s conduct with regard to its registration and use of the disputed domain name which might demonstrate good faith.
Accordingly, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <watch-avatar.com> be transferred to the Complainant.
Andrew D. S. Lothian
Dated: March 16, 2008
1 The issue of the proper party in the particular circumstances of this case is discussed further below by the Panel under paragraph B.