WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mediaset S.p.A. v. MustNeed.com
Case No. D2008-0723
1. The Parties
The Complainant is Mediaset S.p.A., Milan, Italy, represented by Studio Legale Cantamessa, Italy.
The Respondent is MustNeed.com, Taipei, Taiwan, Province of China.
2. The Domain Name and Registrar
The disputed domain name <mediaset.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2008. On May 8, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On May 8, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 May 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2008.
The Center appointed James A. Barker as the sole panelist in this matter on June 12, 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.
4. Factual Background
The disputed domain name was first registered on February 9, 2002 (as indicated by the “creation date” in the WhoIs record).
At the date of this decision, the disputed domain name reverted to a “portal” or “landing” website. The website purportedly contains links that exclusively relate to celebrities, including links under e.g. the titles “Celebrity”, “Celebrity Pictures”, “Celebrity Hairstyles” and “Celebrity Posters”. However, beyond its homepage, the links provided are a miscellaneous collection largely relating to shopping websites such as “bidz.com”, “cheapfashionstores.com”, “dealtime.com” and “shopping.com”, among others, as well as a list of links that relate to particular celebrities.
The Complainant is a company incorporated in Italy, and formed in 1993. It claims to be well-known in the media and communication markets. It maintains a website at “mediaset.it” which is a television portal dedicated to the Italian TV channels Canale 5, Italia 1, Retequattro and Tgcom. In 2005 the Complainant launched “Mediaset Premium”, a digital terrestrial television service that offers viewers live Serie A football, without a subscription. Mediaset Premium subsequently launched a pay-perview offer including films, theatre and live events.
The Complainant has registered trademarks for MEDIASET, including a trademark registered in Italy.
The Complainant is not entirely clear as to whether its marks have, in fact, been accepted for registration. In relation to the same marks, the Complainant refers to both its “trademark registrations” and also “trademark applications”. The Complainant provides evidence of its marks, but no English translation of them. However it is self-evident that the Complainant claims rights in a mark; and trades under the mark MEDIASET. In addition, as those registrations have not been put in dispute, the Panel has accepted for the purpose of these proceedings that the Complainant has such a registered mark.
In the absence of a Response, there is no direct evidence about the nature or activities of the Respondent. The Complainant refers to various past proceedings under the Policy, involving facts somewhat similar to this case, in which the Respondent has been involved. Those include Clinquest, Inc. v. MustNeed.com, WIPO Case No. D2006-1536 and Auto-C, LLC v. MustNeed.com, WIPO Case No. D2004-0025. The Respondent filed no Response in those cases.
5. Parties’ Contentions
The following contentions are drawn from the Complaint.
The Complainant claims that the disputed domain name is identical to its registered mark MEDIASET.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. It claims that the Respondent is in the business of registering domain names comprised of trade marks owned by established businesses, and keeping these domain names at a site with indexed links and a search engine and attempting to sell the domain names for sum in excess of its registration fees. The Complainant bases the latter claim on the Respondent’s conduct in prior cases filed under the Policy.
The Complainant states that, on information and belief, the Respondent does not own any trade mark or service mark registrations encompassing the word “mediaset” or the <mediaset.com> domain name nor any variation thereof; (ii) is not commonly known by the word “mediaset” or by the disputed domain name; (iii) has not made and is not making any bona fide offering of goods or services under the disputed domain name; (iv) is not licensed, authorized or permitted in any other way to make use of the Complainant’s trade mark or apply to register a domain name comprised of the Complainant’s trade mark; and (v) is not making a legitimate, noncommercial or fair use of the disputed domain name.
The Complainant claims that the mark MEDIASET is clearly and strongly associated with the Complainant, and is not a designation that anybody would legitimately choose unless seeking to create the impression of an association with the Complainant.
Finally, the Complainant claims that the Respondent has registered and used the disputed domain name in bad faith. The Complainant claims that its MEDIASET mark has a strong reputation and is widely known, and therefore it is inconceivable that the person or persons behind the Respondent were not aware of this fact when registering the domain name at issue. The Complainant also points out that the word “mediaset” is a coined word and, consequently, is not a word that the Respondent would legitimately choose to include in its domain name unless it was interested in trading on the goodwill of the Complainant or in profiting from the Complainant’s notoriety.
The Complainant claims that the Respondent is using the disputed domain name to misleadingly divert consumers to a generic pay-per-click web site. That web site contains indexed links for commercial gain which, the Complainant claims, attracts Internet users by creating a likelihood of confusion with the Complainant’s trademark. This is neither a bona fide offering of goods, nor a legitimate noncommercial or fair use of a domain name.
The Complainant notes that the Respondent has been named in at least 10 other UDRP actions. (See for example, Clinquest Inc., supra; Rino Greggio Argenterie S.p.A v. MustNeed.com, WIPO Case No. D2006-0961; Playtex Marketing Corporation v. Reserved for Customers, MustNeed.com, WIPO Case No. D2005-1301; and Auto-C, LLC, supra). In each of these actions, the panel ruled that the disputed domain name be transferred to the complainants. The Complainant argues that those former decisions demonstrate that the Respondent has engaged in a pattern of behavior; namely, registering domain names comprised of others’ trade marks, and using those domain names to direct Internet users to pay-per-click web sites. The Complainant claims that such behavior has been considered an indication of bad faith registration. (See, for example, Guerlain S.A v. Peikang, WIPO Case No. D2000-0055).
On December 13, 2007, the Complainant transmitted to the Respondent a registered warning letter in connection with the disputed domain name, to the contact details for the Respondent in the WhoIs record. That letter was returned as wrongly addressed. The Complainant also claims that the name of the Respondent (MustNeed.com) does not appear to be the real or complete name of any person or corporation. As noted in prior WIPO decisions, the provision of incomplete or inaccurate registration information can be an indicator of bad faith registration (Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and Home Director Inc. v. HomeDirector, WIPO Case No. D2000-0111).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These three elements are discussed in turn below.
A. Identical or Confusingly Similar
The Complainant claims that the disputed domain name is identical to its registered mark and the Panel so finds. It is well-established that the “.com” extension is to be disregarded in determining identicality. Disregarding that extension, there is no difference between the Complainant’s mark and the disputed domain name.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, a respondent may provide to show that it has rights to, or legitimate interests in, a disputed domain name. The Respondent has provided evidence of none of them, nor any other evidence to establish its rights in the disputed domain name.
The disputed domain name reverts to a homepage which, at first glance, suggests some connection with what is arguably a generic meaning for “mediaset”. That is, in the same way that e.g., “jetset” suggests social high flyers, it might be thought that “mediaset” is suggestive of celebrities in the media. The best that might be said of the Respondent’s motives was that it was trading off the potentially descriptive meaning of this term, rather than the Complainant’s mark. If this was the case, there may be some ground for finding that the Respondent had a right or legitimate interest in the disputed domain name.
The Panel does not however find that this is the case. Fundamentally, there is no evidence that the term “mediaset” has a recognized descriptive meaning. It is not a dictionary word. It might be suggestive of something relating to celebrities. That may simply arise because it is possible to find that suggestion from the marks components, taken separately. But, from the evidence provided by the Complainant, the term appears to be an artificial combination. As such, it is more likely to be distinctive as a mark.
Further investigation into the links more recently provided in the Respondent’s website indicate that it contains a miscellany of further links, many of them entirely unrelated to celebrities. The whole nature of the Respondent’s website suggests that it is merely a “portal” or “landing” website. Consistent with the nature of such websites, it does not provide any of its own content. These facts provide stronger evidence that the disputed domain name was not registered in connection with any descriptive meaning it might contain. Further supporting this, the Complainant provides evidence that, on December 11, 2007, the disputed domain name reverted to a portal website which had nothing at all to do with celebrities. Rather, it reverted to a website with a range of links listed under headings that included “Health”, “Finance”, and “Shopping” among others.
Both these facts suggest that the Respondent registered the disputed domain name because of its trademark value and hoped to attract Internet users for that reason. Where the links on a portal website are based on the trademark value of the domain name, rather than any descriptive value, the trend in decisions under the Policy is to recognize that such practices generally constitute abusive cybersquatting. (See, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Ranbaxy Laboratories Ltd v. Jucco Holdings, WIPO Case No. D2007-1562, and the cases cited in those ones.) It is obvious that such a practice cannot form the basis for a right or legitimate interest under the Policy.
For these reasons, the Panel finds that the Respondent has not established a right or legitimate interest in the disputed domain name. It follows that the Complainant succeeds also under this element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of illustrative circumstances which, if established, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include that:
(iv) “by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.”
Given the evidence set out in relation to the first and second grounds above, the Panel finds that the Respondent’s conduct falls within the circumstances described in paragraph 4(b)(iv) of the Policy. The disputed domain name is confusingly similar to the Complainant’s mark. The Complainant’s mark appears to be an invented term and, on the Complainant’s evidence, well-known. It seems unlikely therefore that the Respondent was unaware of it.
The Respondent’s conduct appears to have been intentionally designed to attract Internet users based on the value of that mark. This appears to have been done by the Respondent for commercial gain. The links on the Respondent’s site predominantly relate to commercial goods or services, and the Panel has inferred that the Respondent therefore seeks some commercial gain from the inclusion of those links on its website.
For these reasons, the Panel finds that the disputed domain name was registered and has been used 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, <mediaset.com>, be transferred to the Complainant.
James A. Barker
Dated: June 26, 2008