WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viacom International Inc. v. Bladimir Boyiko
Case No. D2008-0867
1. The Parties
The Complainant is Viacom International Inc., New York, United States of America, represented by White O'Connor Fink & Brenner, LLP, United States of America.
The Respondent is Bladimir Boyiko, Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <nickgames.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2008. On June 5, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On the same date, eNom 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 June 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 7, 2008.
The Center appointed David Perkins as the sole panelist in this matter on July 21, 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
4.1 The Complainant
The Nickelodeon Television Channel
4.1.1 The Complainant is the provider of, inter alia, a children's cable television channel, Nickelodeon television. That channel has been operated since 1979. It is now the most-watched television network by children in the United States of America. Moreover it is the number one cable television network in the United States of America.
4.1.2 Currently, Nickelodeon television's programming reaches 286.6 million households in 163 territories worldwide through 28 channels, 22 branded program blocks and two broadband services across Africa, Asia and the Pacific Rim, the CIS and the Baltic Republics, Europe, Latin America and the United States of America. Nickelodeon television has been the number one rated basic media network in the United States of America for the past 12 years.
4.1.3 As its business has expanded since 1983 the Complainant has used a number of its NICK registered trademarks both in the United States of America and Internationally for toys, websites (see, paragraphs 4.1.6 and 4.1.7 below), records, publishing, awards shows, animated series, feature films, video game machines, game cartridges for computer video games, wireless game software, board games, handheld units for playing video games, downloadable games, online retail store services featuring games and playthings, online newsletters, online entertainment information, online interactive computer games and the production of game shows, game events and sport events.
4.1.4 The NICK and NICKELODEON Trademark
As noted above, the Complainant has used the NICK service mark and trademark since 1983 in connection with Nickelodeon television. The Complainant is the proprietor of the following NICK and NICKELODEON registered trademarks.
|Country||Number||Trademark||Class(es)||Date of Application and Registration|
|United States of America||3,044,795||NICK||41||Filed: May 10, 2004|
Registered; January, 17, 2006
First Issued: December 31, 1983
|United States of America||1,452,553||NICK AT NITE||41||Filed: July 3, 1985
Registered: August 11, 1987
First Used: June 1, 1984
|United States of America||1,578,189||NICK JR||41||Filed: February 27, 1989|
Registered: January 16, 1990
First Used: October 1, 1987
|United States of America||1,875,735||NICK TOONS||16, 21, 24, 25, 28 and 41||Filed: May 8, 1992
Registered: January 24, 1995
First Used: August 1991
|United States of America||2,222,947||NICKELODEON||38||Filed: April 13, 1998|
Registered: February 9, 1999
First Used: March 25, 1979
|United States of America||1,907,159||NICKELODEON||9,14,16,24,25 and 38||Filed: April 6, 1994
Registered: July 15, 1995
First Used: June 1992
|United States of America||2,028,590||NICKELODEON||42||Filed: November 17, 1995|
Registered: January 7,. 1997
First Used: October 23, 1995
|United States of America||3,026,958||NICKELODEON||41||Filed: April 15, 2004
Registered: December 13, 2005
First Used: December 1, 1991
|United States of America||2,146,514||NICKELODEON RUGRATS||28||Filed: June 2, 1997
Registered: March 24, 1998
First Used: June 1994
|United States of America||2,155,268||NICK JR.com||41||Filed: December 4, 1995|
Registered: May 5, 1998
First Used: June 2, 1997
|United States of America||2,616,566||NICKELODEON GaS Games and Sports for Kids (and device)||41||Filed: June 22, 2000
Registered: September 10, 2002
First Used: March 1, 1999
|United States of America||2,592,465||NICKELODEON ROCKET POWER||9||Filed: June 2, 1999
Registered: July 9, 2002
First Used: March 21, 2001
|European Community||000180976||NICKELODEON||9,16,25, 28, 38, 41 and 42||Filed: April 1, 1996
Registered: October 13, 2004
|European Community||000180992||NICK JR||9,16,25, 28, 38, 41 and 42||Filed: April 1, 1996
Registered: July 18, 2002
|European Community||000180661||NICK AT NITE||9,16,25, 28, 38, 41 and 42||Filed: April 1, 1996
Registered: October 26, 1998
|European Community||00154017||NICKELODEON ROCKET POWER||9,16,25, 28, 38, 41 and 42||Filed: February 17, 2000 |
Registered: March 29, 2001
|European Community||001292432||NICKELODEON REPLAY||38 and 41||Filed: August 39, 1999|
Registered: October 27, 2000
4.1.5 The US registered trademarks for NICKELODEON, NICKELODEON RUGRATS and NICK JR.COM have been acknowledged as incontestable under ss. 8 and 15 of the Lanham Act by the US Patent and Trademark Office, respectively on July 26, 2005, June 5, 2004 and October 7, 2004.
The Complainant's Nick domain names
4.1.6 The Complainant launched its “www.nick.com” website in December 1996 which offers video games through links to Nick Arcade: Nick.Com New Game Of The Week: Free Games: Nick.Com's Video Game Insider: Nicktropolis; and a link to over 500 free games.
4.1.7 The “www.nick.com” website also links to “www.shop.nick jr.com”, through which a variety of toys and games can be purchased, including a wide variety of video games in the major gaming formats supported by Sony, Microsoft and Nintendo, as well as its other formats.
4.2 The Respondent
4.2.1. In the absence of Response all that is known of the Respondent, whose address is in Moscow, Russian Federation, is what is set out in the Complaint.
4.2.2 The Respondent has been a respondent in two proceedings brought under the Policy. The first is Smith and Hawken, Ltd. v. Bladimir Boyiko, NAF Case No. FA755733. There the complainant's trademark was SMITH & HAWKEN and the disputed domain name<smithandhawkin.com>. The complainant is one of the most popular home and garden retail businesses in the United States of America.
4.2.3 The second is American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252. There the complainant's trademark was AAA and the disputed domain name was <wwwaaa.com>. The complainant is one of the world's foremost automobile clubs, which was founded over 100 years ago, has over 47 million members, is commonly known by the acronym AAA and has owned US trademarks for AAA dating from 1965.
4.2.4 In neither case was a response filed. In both the disputed domain names were ordered to be transferred to the complainant.
4.2.5 The Respondent's disputed domain name – which was registered on February 22, 2000 – redirects to “www.usseek.com”, which in turn provides links to other websites promoting the sale of toys, games, hobbies, interactive educational devices and “cheat codes” for video games. None of the goods and services offered through those links are sponsored by the Complainant but they do compete with those offered under the Complainant's Nick website.
5. Parties' Contentions
5.A.1 Identical or Confusingly Similar
5.A.1.1 The disputed domain name is identical to the Complainant's NICK registered trademark, differing only by addition of the descriptive suffix “games”. The Complainant cites a number of cases under the Policy where it has been held that the addition of a common more generic suffix cannot avoid a finding of confusing similarity. These cases include Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TVdot.net Inc., f/k/a Affinity Multimedia, WIPO Case No. D2000-1253. There the Complainant's trademarks were, inter alia, VIACOM and NICK and the disputed domain names included <viacomtv.net> and <nickkidstv.net>. The respondent asserted that it owned over 900 domain names containing the suffix “tv.net”. Notwithstanding, the three member panel held that addition of “tv” to each of the Complainant's trademarks could not avoid a finding of confusing similarity. The panel ordered that all 6 of the disputed domain names be transferred to the Complainant.
5.A.1.2 The Complainant also relies upon the so-called DuPont factors which set out a test for assessing likelihood of confusion in trademark infringement cases, The thirteen factors set out in the DuPont are summarized by the Complainant in the following way:
– the salient portion of the marks are identical in appearance;
– the goods and services at issue are identical;
– the trade channels of both parties' goods and services are identical;
– the conditions under which buyers to whom sales are made are likely to be identical;
– the NICK and NICKELODEON trademarks are unquestionably famous;
– the Respondent has no license, permission or other authorization from the Complainant to use those trademarks; and
– the extent of potential confusion is enormous, given that the Respondent is using a mark which, not coincidentally, offers nearly identical services (albeit in a sham fashion) as those offered at the “www.nick.com” website and the links provided from that website.
[In re E. I. DuPont de Nemours & Co 476 F.2d 1357, 1361 177 USPQ 563 (C.C.P.A. 1973)]
5.A.2 Rights or Legitimate Interests
5.A.2.1 The Complainant's case is that none of the circumstances provided for in paragraph 4(c) of the Policy are present in this case. As to paragraph 4(c)(ii), by reference to the Respondent's website (see, paragraph 4.2.5 above) the Complainant asserts that the Respondent is making an illegitimate, commercial and non-fair use of the disputed domain name, to misleadingly divert consumers away from the legal and legitimate purchase of goods and services associated with the Complainant's NICK and NICKELODEON trademarks.
5.A.2.2 As to paragraph 4(c)(i) nor is such activity by the Respondent using the disputed domain name a bona fide offering of goods and services. The Complainant cites decisions under the Policy where such use has been held to be evidence of bad faith. They are:
– Caesars Entertainment, Inc. v. Infoma Ltd., WIPO Case No. D2005-0032, where the complainant's trademarks included PARIS CASINO RESORT, the disputed domain name was <paris-casinos.com> and that domain name pointed to an online gaming portal with a homepage headed “Paris Casinos” containing links to various online casinos.
– Humana Inc. v. Henry Tsung, WIPO Case No. D2005-0221, where the complainant's trademark was HUMANA, the disputed domain name was <humanamedicare.com> and that domain name pointed to a variety of websites, some with emphasis on healthcare, including sites of competitors of the complainant.
– Humana Inc. v Domain Deluxe, WIPO Case No. D2005-0231, where the disputed domain name <humanahealthcare.com> again pointed to a website containing links to various healthcare sites, including sites of competitors of the complainant.
5.A.3 Registered and Used in Bad Faith
5.A.3.1 The Complainant asserts that each of the 4 circumstances set out in paragraph 4(b) of the Policy are present on the facts of this case.
5.A.3.2 The Complainant relies upon the facts set out in paragraph 4.2.5 above as providing evidence of the circumstances prescribed by paragraph 4(b)(iii) and (iv) of the Policy. In that respect, the Complainant cites two decisions under the Policy. They are:
– Wal-Mart Stores, Inc. v. Modern Limited-Cayman Web Development, Domain Administrator, WIPO Case No. D2005-0322. There the complainant's registered trademark was WAL-MART and the disputed domain name <wamart.com>. Bad faith registration and use was found under paragraphs 4(b)(iii) and (iv) of the Policy by reason of the fact that the disputed domain name linked to companies offering goods and services similar to those offered by the complainant, Wal-Mart, and that the respondent derived click-through revenue from such use.
– Société Air France v. FP Transitions Pty Ltd, WIPO Case No. D2007-0988. There the complainant's registered trademark was AIR FRANCE and the disputed domain name was <airfranceonline.com>. Bad faith registration and use was found under paragraphs 4(b)(iii) and (iv) by reason of the fact that the disputed domain name was said by the respondent to link to competing websites in the field of tourism and that the respondent derived click-through revenues from such use.
5.A.3.3 As to registration in bad faith, the Complainant asserts that, by reason of the well-known status of the NICK and NICKELODEON trademarks, the Respondent could not have been in ignorance of them when registering the disputed domain name.
5.A.3.4 The Complainant asserts that the Respondent's bad faith demonstrated by reference to the use to which the disputed domain is put paragraph 4.2.5 above is compounded by the pattern of conduct established by the cases where the Respondent has already been ordered to transfer disputed domain names (see, paragraph 4.2.2 to 4.2.4 above). Consequently, the respondent is – according to the Complainant – a “serial cybersquatter”. In that respect, the Complainant cites two decisions under the Policy where, on similar facts, the respondents were found to have registered and used the disputed domain names in bad faith, and to have had an existing record as a “cybersquatter”. They are The Travelers Companies, Inc., Travelers Insurance Group Holdings, Inc., The St. Paul Travelers Companies, Inc., Travelers Property Casualty Corp. v. Whois Protection, WIPO Case No. D2007-0846 and Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar, WIPO Case No. D2006-0136.
As already noted, no Response has been filed.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
6.5 The Complainant has established that it has extensive rights in the trademark NICKELODEON dating from 1979 and also in the derivative trademark NICK dating from 1983, together with a series of trademarks where NICK is the prefix and dominant feature of the mark, for example NICK JR, NICK TOONS and NICK AT NITE.
6.6. Addition of the descriptive word “games” as a suffix to the Complainant's NICK trademark does not avoid confusing similarity. Accordingly, the Complaint satisfies the first requirement of paragraph 4(a) of the Policy.
Rights or Legitimate Interests
6.7 In the absence of a Response, there is no evidence that the Respondent can establish circumstances falling within paragraph 4(c) of the Policy, or otherwise demonstrate rights or legitimate interest in the disputed domain name.
6.8 On the evidence (see, paragraph 4.2.5 above) it is clear that there has been no bone fide use of the disputed domain name by the Respondent. Nor, given the Complainant's long established use of the NICK trademark (1983) and registration of the majority of its NICK trademarks (the earliest dating from 1984), can the Respondent's use of the disputed domain name be a legitimate or fair use of the domain name.
6.9 Accordingly, the Complaint meets the requirement of paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith
6.10 Typically where a respondent fails to establish rights or a legitimate interest in the disputed domain name, the same facts also lead to a finding of bad faith registration and use. This is a case in point.
6.11 The facts set out in paragraph 4.2.5 above support a finding that the circumstances set out in paragraph 4(b)(iv) of the Policy are present here. The earlier cases under the Policy involving the Respondent (see, paragraphs 4.2.2 to 4.2.4 above) further support such a finding.
6.12 As to paragraph 4(b)(iii) of the Policy, the facts also indicate that the disputed domain name was registered primarily to disrupt the Complainant's business in the sense that the sites to which the disputed domain name links offer products and services which compete with those offered by the Complainant.
6.13 Accordingly, the Complaint meets the two requirements of paragraph 4(a)(iii) of the Policy.
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, <nickgames.com> be transferred to the Complainant.
Date: August 4, 2008