The Complainant is Viacom International Inc. of New York, New York, United States of America, represented by Simmons & Simmons, United Kingdom of Great Britain and Northern Ireland.
The Respondents is CPIC NET, Nick Patel of Denver, Colorado, United States of America.
The disputed domain name <nickarabia.com> is registered with Name.com LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2009. On June 25, 2009, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On June 26, 2009, Name.com LLC 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. On June 26, 2009, the Complainant on its own motion filed an amended Complaint replacing the privacy shield provider with the current Respondent, CPIC NET, as disclosed by the registrar. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 2, 2009. The Center verified that the Complaint together with the amended Complaints satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 July 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 24, 2009.
The Center appointed William R. Towns as the sole panelist in this matter on August 4, 2009. 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 is a global entertainment content company, which owns a number of television and cable networks, including MTV Networks. MTV Networks owns and operates 150 television channels worldwide, including “Nickelodeon”, “Nicktoons”, “NickJr” and “NickToonsters” (the “Nick Channels”). Nickelodeon, launched in 1977, is one of the oldest children's television channels, and has long been known by the abbreviated name “Nick”. The Complainant also owns trademark registrations in the United States, the European Union and the Middle East for NICK as well as several NICK-formative marks, including NICK JR, NICK COMEDY, NICKTOONS, and NICKELODEON.
On October 16, 2007, MTV Networks in cooperation with Arab Media Group, a licensed partner of the Complainant in the Middle East, announced the proposed launch of Nickelodeon Arabia, a localized, Arabic language free-to-air channel dedicated to children in the Middle East.1 The Respondent registered the disputed domain name <nickarabia.com> on October 20, 2007. The disputed domain name resolves to a pay-per-click parking website provided by Sedo. The website is populated with advertising links to various third party commercial websites, including “sponsored listings” to various singles and dating sites. The Respondent's website also features “related searches”, including “Dora in arabic”, “Dora the explorer”, and “Nick at night”, all of which call to mind the Complainant's television programming. There is also indication on the website that the disputed domain name is for sale.
The Complainant maintains that the disputed domain name incorporates the Complainant's registered NICK mark in its entirety and is confusingly similar to the Complainant's registered NICK and NICK-formative marks. According to the Complainant, the Respondent is not commonly known by the disputed domain name and is not licensed to use the Complainant's marks. Further, the Complainant maintains that the Respondent is using the domain name to generate click-through advertising by taking advantage of the Complainant's reputation and goodwill, which does not constitute a bona fide offering of goods or services or any possible legitimate commercial or noncommercial use of the domain name.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant or a competitor of the Complainant, and has attempted to sell the disputed domain name to the Complainant. According to the Complainant, the Respondent has a long history of cybersquatting, and has been the subject of multiple UDRP complaints.
The Complainant further maintains that the Respondent has engaged in a pattern of registering domain names to prevent trademark owners from reflecting their marks in corresponding domain names. The Respondent registered the disputed domain name within days of the press release announcing the launch of Nickelodeon Arabia, and the Complainant asserts that the Respondent on numerous prior occasions has registered domain names in response to press releases, including recently registering the domain name <toonsters.co.uk> following the Complainant's launch of the digital television station Nick Toonsters.
The Complainant further alleges that the Respondent registered the disputed domain in bad faith in order to disrupt the business of the Complainant. According to the Complainant, there are “sponsored listings” on the Respondent's website to inappropriate adult content (i.e., singles and dating sites), which tarnish the Complainant's marks and are likely to cause substantial damage to the Complainant's business, namely the broadcasting of television entertainment channels aimed at young children.
Finally, the Complainant asserts that the Respondent has used the disputed domain name in a bad faith by intentionally attempting to attract for commercial gain Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website. The Complainant also contends that the Respondent's use of a privacy protection service to shield its identity constitutes bad faith in the circumstances of this case.
The Respondent did not reply to the Complainant's contentions.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name <nickarabia.com> is confusingly similar to the Complainant's NICK mark, in which the Complainant has established rights. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. In this instance, the disputed domain name incorporates the Complainant's NICK mark in its entirety. The confusing similarity thereby created is not diminished by the addition of the geographically descriptive word “arabia”. If anything, given the circumstances as reflected in the record, the disputed domain name tends to call to mind the Complainant's business activities, and may actually heighten such confusion. See National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc., WIPO Case No. D2007-1524.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is undisputed that the Complainant has not authorized the Respondent to use the Complainant's mark, and there is no indication that the Respondent has been commonly known by the disputed domain name. Nevertheless, the record reflects the Respondent's registration of the disputed domain name <nickarabia.com> within four days of the press release announcing the launch of the Complainant's Nickelodeon Arabia children's network. The record further reflects the Respondent's subsequent use of this confusingly similar domain name to divert Internet traffic to the Respondent's website, which is populated with pay-per-click advertising links and on which the disputed domain name appears to be offered for sale.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent has not submitted a formal Response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.2 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
There is no indication in the record that the Respondent has ever been commonly known by the disputed domain name, and it is undisputed that the Complainant has not authorized the Respondent to use its NICK or other NICK-formative marks. Nor does the record reflect the Respondent's use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. While it appears to be generally accepted that the use of a domain name to generate paid advertising revenues is not a per se violation of the Policy, provided there is no intent to exploit and profit from another's trademark, the record in this case clearly evinces that the Respondent's aim in registering the disputed domain name was to exploit and profit from the Complainant's mark through the creation of initial interest confusion. See Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986 (and decisions cited at Paragraph 6.18 therein). Such use does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See Barceló Corporación Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946; Edmunds.com v. Ult. Search, Inc., WIPO Case No. D2001-1319.
The Panel finds no basis in the record upon which the Respondent could assert rights or legitimate interests in the disputed domain name under the safe harbor provisions of paragraph 4(c) of the Policy. The Complainants' prima facie showing under paragraph 4(a)(ii) of the Policy stands unrebutted.
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
The Panel considers it a more than reasonable inference from the undisputed facts and circumstances reflected in the record that the Respondent knew of and had in mind the Complainant's mark when registering the disputed domain names. See Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551. The Respondent, lacking any connection to the Complainant, has registered and used a confusingly similar domain name to drive Internet traffic to a pay-per-click advertising website. Absent any explanation from the Respondent, the Panel can ascribe no motive for the Respondent's opportunistic registration and use of the disputed domain name except to capitalize on or otherwise take advantage of the Complainant's rights. See Aubert International SAS and Aubert France SA v. Tucows.com Co., supra. Under the circumstances presented here, the Panel is of the opinion that the Respondent has used the disputed domain names in bad faith to attract Internet users to the Respondent's website for commercial gain, by creating a likelihood of confusion in terms of paragraph 4(b)(iv) of the Policy. See Edmunds.com v. Ult. Search, Inc., supra. 3
Accordingly, the Panel finds that the Complainant has satisfied the 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 <nickarabia.com> be transferred to the Complainant.
William R. Towns
Dated: August 18, 2009
1 The Nickelodeon Arabia channel went live on July 23, 2008, and is supported by a dedicated website at “www.nickarabia.net”. Arab Media Group, the Complainant's licensee, registered the corresponding domain name on October 22, 2007, two days following the Respondent's acquisition of the disputed domain name.
2 Some panels have held that a respondent's lack of response in particular circumstances can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent's failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
3 In view of its decision, the Panel finds it unnecessary to consider the additional bad faith grounds that have been set forth in the Complaint and the Annexes thereto.