WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viacom International Inc. v. Jian Zhang / Whois Privacy Protection Services, Inc.
Case No. D2008-0099
1. The Parties
The Complainant is Viacom International Inc. of New York, United States of America represented by White O’Connor Curry LLP, United States of America.
The Respondent is Jian Zhang of Shanghai, China / Whois Privacy Protection Services, Inc., of Bellevue, United States of America.
2. The Domain Name and Registrar
The disputed domain name <mtvgames.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2008 via email and on January 25, 2008 in hardcopy. On January 24, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On January 25, 2008, eNom transmitted by email to the Center its verification response informing that Jian Zhang is listed as the registrant and providing the contact details. In response to a notice of change in registrant information by the Center, the Complainant filed an amendment to the Complaint on February 1, 2008 via email and on February 5, 2008 as a hardcopy. The Center verified that the Complaint together with the amendment to the 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 Respondent of the Complaint, and the proceedings commenced on February 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2008. The Response was filed with the Center on February 25, 2008.
The Center appointed Christian Schalk as the sole panelist in this matter on March 5, 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.
The Complainant made a supplemental filing after commencement of the proceedings on March 4, 2008. The Rules provide only for the submission of the Complaint by the Complainant and the Response by the Respondent. It is therefore, in the discretion of the Panel whether to admit and consider the Supplemental Filing in rendering its decision. The Panel finds that all relevant arguments and evidencing material have to be part of the Complaint and should not be subject of any supplemental filing. When preparing the Complaint, obvious counter arguments of the Respondent should be anticipated and discussed and sufficient evidence provided to support Complainant’s position. Therefore, the Panel decides that the decision of this case shall be based on the material brought before the Panel and all inferences that can reasonably be drawn therefrom.
The Panel agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements.
The language of the proceedings is English.
4. Factual Background
The Complainant has different activities in the media business. It was one of the earliest cable television channels in the 1980’s. The Complainant’s programming was initially comprised entirely of music videos, but has expanded over the years to include – among others – award shows, animated series, sporting events and game shows.
The Complainant owns a number of trademarks rights for MTV, MTV MUSIC TELEVISION and for many other variants, which incorporate the element MTV, like THE MTV STORE, MTV JACKASS, MTV ADDICT, MTV MUSIC, MTV MUSIC TELEVISION ESPANOL in the United States of America and in many other countries. Only in the European Community Trademark (CTM) online database the Panel found more than 100 registrations and pending applications for such trademarks. The filing date of nearly all of the trademark registration is in the mid 1990ties and between 2000 and 2005 and therewith before November 27, 2005, when the domain name at issue was registered. In Viacom Int’l inc. v. Bryan Dulsky, WIPO Case No. D2000-0961, the Panel stated that the MTV trademarks have acquired a significant world-wide goodwill through their association with Viacom’s media products.
In 1995, the Complainant launched the ”www.mtv.com” website and alleges that this website has averaged over twenty million unique visitors per month.
The printouts of the “www.mtv.com” website brought before the Panel show that this website offers visitors among other things, information and news concerning video games, and features an event called MTV Gamer’s Week, a “week-long celebration of everything video games”, including trailers, videos, and other segments about video games on the market. The printouts demonstrate also that Complainant’s website hosts also the MTV Arcade, which offers visitors instant access to a library of Action Games, Brain Games, Classic Games, and MTV Original Games which can all be played online and downloaded and played on cell phones and other mobile devices. A link on the website “www.mtv.com” guides Internet users to the “MTV SHOP” website which offers video games in major gaming formats supported by companies like Sony, Nintendo, Microsoft and others. The Complainant has other gaming online presences, e.g., “www.jackassthegame.com”, which prominently features the Complainant’s trademark MTV JACKASS.
The disputed domain name resolves to a website where the term “Mtvgames.com” is written in a prominent way on the top left. Below this headline there is a section named “find something interesting” which provides links to a number of computer games. The section “Most Popular Tags” which is written in bold yellow coloured letters in center left of this website provides links to “Mtv Ringtones”. This term is written in bigger underlined letters than the other links of this section. The upper center of the entrance page contains a photo of a Playstation device, like it is used, for instance, by companies like Sony or Nintendo. Two pictures in the lower center show images of computer games. The field “Play free games” on the top left of the website guides Internet users to a variety of free download computer games and to “MTV ringtones”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar with the Complainant’s MTV-trademarks. The Complainant states that the term MTV is the central element of the MTV trademarks in both text and graphic version. In this context the Complainant cites Viacom Int’l inc. v. Bryan Dulsky, WIPO Case No. D2000-0961, where the Panel found that the mark MTV has been strengthened by the distinctive “M” in MTV and by the significant worldwide goodwill through its association with the Complainant’s media products.
Furthermore the goods and services offered by the Respondent in connection with the domain name at issue are also likely to cause confusion, or to cause mistake or to deceive consumers as to the source of the Respondent’s goods and services and/or the Complainant’s affiliation with and/or sponsorship of the website “www.mtvgames.com”.
The Complainant alleges also that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Complainant explains that it is not aware of any evidence of the Respondent’s use of, or demonstrable preparations to use the domain name at issue with a bona fide offering of goods or services. The Complainant further believes that the Respondent is not commonly known by the disputed domain name and that the way the domain name is used is an illegitimate non- fair use with the intent of commercial gain, by misleadingly diverting consumers away from the legal and legitimate purchase of goods and services associated with the MTV trademarks.
Furthermore, the Complainant alleges, that the Respondent registered the domain name at issue in bad faith because the Respondent registered this domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of Respondent’s out of pocket costs directly related to the domain name. This behavior was evidenced by the “de –minimis” and apparently sham use of the domain name at issue and the fact that it was registered anonymously, with no legitimate interest for doing so.
The Complainant also believes that the Respondent registered the domain name at issue in order to prevent the Complainant from reflecting the MTV trademarks in the disputed domain name and to disrupt the Complainant’s business in connection with the goods and services offered under the MTV marks.
Furthermore, the Complainant contends that the Respondent uses the domain name at issue to intentionally attract Internet users to Respondent’s website for commercial gain, by creating a likelihood of confusion with the MTV trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. The Complainant explains in this context that none of the goods and services are actually provided by the website at “www.mtvgames.com” website despite the offers on this website. However, all these goods are offered by the Complainant’s websites.
The Respondent believes that the Complainant does not own trademark rights in the domain name at issue in China. The Respondent further explains that the Complainant is an operator of TV networks such as MTV and others. Therefore, the Complainant’s activities are in the field of game shows and music but not in games which, in his opinion, is a different business activity.
The Respondent also believes that he has legitimate interest in the disputed domain name. The Respondent explains that he has been or is commonly known by the domain name at issue, even if he has acquired no trademark rights. Unlike the Complainant the Respondent believes that it does not in itself imply bad faith that the website at “www.mtvgames.com” contains only sponsored links. The Respondent argues in this context that he owns hundreds of domain names which often have automatically sponsored links on their website and sometimes generate revenue. It is the Respondent’s aim to make such revenues. The domain name at issue is one of many domains that he controls and that its content is generated fully automatically.
The Respondent contends further that the Complainant has no legitimate interests in the disputed domain name because the Complainant’s game related activities are not well known and not a major part of its business. At least the fact that the Complainant has registered trademarks related to games (but not actually containing the word “games”) does not mean that the Complainant can claim worldwide rights to any domain name containing the words “mtv” and “games”. The Respondent explains further that he had never heard of the Complainant’s business activities related to games.
The Respondent believes that it would constitute reverse domain name hijacking if the Complainant regards games as a potential area of expansion and therefore regrets of not having registered the domain name at issue in the past.
The Respondent also states that he has neither registered the domain name at issue in bad faith nor is he using it in bad faith. In this context the Respondent rejects the arguments made by the Complainant. Especially, the Respondent denies the Complainant’s assumption that he would try to sell the disputed domain name for valuable consideration in excess of Respondent’s out-of pocket costs. He explains that there have never been such plans since he wanted to keep the domain name at issue to display sponsored links, which, in his view, is a legitimate use of this domain name.
6. Discussion and Findings
The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the Complainant has proven that each of the following three elements is present:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established trademark rights in the term MTV. As it has been stated by panelists in previous cases, the term MTV has acquired a significant worldwide goodwill through its association with Viacom’s media products and may even benefit from a higher degree of protection, inter alia under Article 6bis of the Paris Convention and Articles 16(2) and (3) of the TRIPS Agreement (see e.g., Viacom International Inc. v. Torontoseeker, WIPO Case No. D2005-0232; Viacom Int’l inc. v. Bryan Dulsky, WIPO Case No. D2000-0961). MTV is certainly one of the most well-known brands in the media industry. Although it is clear that the disputed domain name is not identical to any of the Complainant’s trademarks, the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademarks. As indicated by the Complainant and in accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark is not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis*, WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan, WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0565 and WIPO Case No. D2004-0624, with further references, for the domain names <aventislottery.org> and <aventisfoundationlottery.com>; Toyota France and Toyota Motor Corporation v. Computer Brain, WIPO Case No. D2002-0002. The word “games” is a generic term in English.
Furthermore, given the Complainant’s use of the MTV marks in connection with computer games, the Respondent’s addition of the word “games” to the mark MTV in the disputed domain name strengthens the false and hence confusing association with the Complainant conveyed by the Respondent’s use of the MTV mark (see Viacom International Inc. v. MTVALBUMS – Mega Top Video Albums / Peter Mladshi, WIPO Case No. D2002-0196).
B. Rights or Legitimate Interests
While the overall burden of proof rests with the complainant, once a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the respondent carries the burden. Here such prima facie case has been made by the Complainant. According to the material brought before the Panel, the Panel finds that the Respondent does not have demonstrated rights or legitimate interests in the disputed domain names for the following reasons:
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Especially, there is no evidence that the Respondent is known by the domain name at issue. The Complainant has also never granted the Respondent a license or authorization to use any of its trademarks.
Furthermore, the fact that the Respondent provides a website under the disputed domain name with services which are also offered by the Complainant is not a bona fide offering of goods or services but rather one which seeks profit from confusion with the Complainant because the Respondent receives click-through fees for diverting Internet users to such third parties websites (see Caesars Entertainment, Inc. v. Infomax, Ltd., WIPO Case No. D2005-0032; Humana Inc. v. Henry Tsung, WIPO Case No. D2005-0221; and Humana Inc. v. Domain Deluxe, WIPO Case No. D2005-0231).
The case cited by the Respondent to support his arguments (Dori Media International GmbH v. Sikreto LLC, WIPO Case No. D2007-1525) does not apply here since the domain name of that case was used by the Respondent many years before the Complainant started using this term as a trademark.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the domain name at issue in bad faith in violation of the Policy, paragraph 4(a)(iii). Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for the Complainant to show the Respondent’s bad faith registration and use of the disputed domain name:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out of pocket costs directly related to the domain name; or
(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.
The Complainant contends that the Respondent’s behaviour meets all these criteria. The Complaint does not show any evidence as far as the first three criteria are concerned. However, according to the material brought before the Panel, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
It is a well-established principle under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see Section 2), that the domain name registrant represents and warrants to the registrar that, to this knowledge the registration of the domain name will not infringe the rights of any third party. Given the fact that the Complainant is well-known in many countries of the world, that it has a considerable presence in the Internet and that the Respondent has coupled the term “MTV” with the generic term “games”, the Panel finds that the Respondent was aware of the Complainant’s trademark when it registered the disputed domain names (see Viacom International Inc., and MTV Networks Europe v. Web Master, WIPO Case No. D2005-0321; Liseberg AB v. Administration Local Manage Technical, WIPO Case No. D2003-0864). Therefore, the Panel believes that the Respondent registered the domain name at issue in bad faith.
The Respondent submits that it is not responsible for the content appearing on the Respondent’s website. The Panel does not accept that the Respondent can disclaim responsibility for the various links on the Respondent’s website which are concerned either with the Complainant or with fields of commercial activity in which the Complainant is a player. Therefore, the Panel finds that the only purpose of having registered the disputed domain name, was to divert traffic intended for the Complainant’s website to the website of the Respondent or otherwise benefit from likely Internet-user confusion, and thus to take advantage of the Complainant’s trademark and its reputation. Moreover, it provides Internet users, seeking information on the Complainant’s services, an access to goods and services of the Complainant’s competitors. Therefore, the Respondent’s use of the disputed domain name puts the Complainant at risk of commercial losses. The Panel further infers that the Respondent is benefiting from this confusion by receiving “click-through” commissions in accordance with conventional practice on the Internet when customers reach a site through a link on a portal (see also Humana Inc. v. Domain Deluxe, WIPO Case No. D2005-0231).
For the reasons outlined above the Panel does also not see any evidence for reverse domain name hijacking from the Complainant’s side.
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 <mtvgames.com> be transferred to the Complainant.
Dated: March 19, 2008