WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viacom International Inc. v. Paulo Kann
Case No. D2011-0058
1. The Parties
The Complainant is Viacom International Inc. of New York, United States of America, represented internally.
The Respondent is Paulo Kann of Dijon, France.
2. The Domain Name and Registrar
The disputed domain name <nickjrr.com> (the Disputed Domain Name) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2011. On January 12, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On January 12, 2011, GoDaddy.com, Inc. 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” 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 January 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2011.
The Center appointed Michael D. Cover as the sole panelist in this matter on February 25, 2011. 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 Complainant is a global entertainment company. One of its main brands is NICKELODEON, which it has used since March 1979 in connection with the cable television channel, “Nickelodeon Television”. This is a popular network in the United States and in many other territories throughout the world.
Since 1988, Nick Jr. has been a programming block on the Nickelodeon Network and, in September 2009, Nick Jr. became its own network. The trade mark NICK JR. has been used continuously in that connection by the Complainant since October 1, 1987.
The Complainant is the proprietor of valid and subsisting registered trade marks for NICK JR. in the United States and France and elsewhere, including in International Class 41 for the production and distribution of children’s television programmes. The Complainant is also the proprietor of certain registered trade marks for NICK.
The Complainant has a website at “www.nickjr.com”, which gives information on the Nickelodeon Network and provides links to <shop.nick.com>, where visitors to the website can purchase a wide variety of goods, including DVD’s.
The Respondent is an individual with an address in Dijon, France.
The Respondent uses the website at the Disputed Domain Name to offer various Nickelodeon-orientated entertainment information and related goods and services.
The Respondent has been involved in a number of other UDRP proceedings. One of those involved some 23 domain names, Verizon Trademark Services, LLC v. paulo c/o paulo kann, WIPO Case No. D2010-0989. In each such proceeding, the panel ordered the transfer of the disputed domain name(s).
5. Parties’ Contentions
The Complainant addresses each of the points in paragraph 4 of the Policy. It first submits that the Disputed Domain Name is confusingly similar to the Complainant’s NICK, NICKELODEON and NICK JR. marks and that the Disputed Domain Name is virtually identical to the Complainant’s NICK JR. mark. It says that previous Panels have found that intentional misspelling of a trade mark constitutes confusingly similarity for the purposes of this element and further points out that domain name registrants that register domain names that differ from famous trade marks by only one letter are “ typosquatting “ and taking advantage of users typographical errors. The Complainant cites Go Daddy Software, inc. v. Daniel Hadani, WIPO Case No. D2002-0568 in support of that contention.
The Complainant then submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name, as it is not aware of the Respondent’s use or demonstrable preparations to use the Disputed Domain Name in connection with any bona fide offering of goods or services. The Complainant also submits that there is no evidence that the Respondent has been commonly known by the Disputed Domain Name and that any use of the Disputed Domain Name by the Respondent is not legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers. The Complainant notes in any event that the burden on establishing this last point is on the Respondent.
With regard to the Disputed Domain Name being registered and used in bad faith, the Complainant directs the attention of the Panel to the non-exhaustive list of criteria in paragraph 4(b) of the Policy and notes that the Respondent has registered the Disputed Domain Name in order to disrupt the Complainant’s business offered under the NICK, NICKELODEON and NICK JR. marks and is using the Disputed Domain Name to attract users for commercial gain to a link that has links to unauthorized Nickelodeon and Nick Jr. orientated information material. Finally, the Complainant draws the attention of the Panel to the Respondent’s history of registering and parking domain names, which raises an inference of bad faith registration.
The Complainant requests that the Panel order a transfer to the Complainant of the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has both registered and unregistered rights in its mark NICK JR. The registered trade mark position has already been set out in this Decision and unregistered rights have been built up by use of that mark since 1987.
The Panel accepts the submission of the Complainant that the Disputed Domain Name is confusingly similar to the NICK JR. mark of the Complainant and that the Complainant has therefore established its case under paragraph 4(a)(i) of the Policy. There is only one letter difference between the Disputed Domain Name and the Complainant’s mark NICK JR. It is well established that such small differences are not sufficient to negate confusing similarity.
With regard to the Complainant’s marks NICKELODEON and NICK, the common element, “nick“ comprises the whole mark in the case of NICK and is at the beginning of the mark in the case of NICKELODEON, when those marks are compared to the Disputed Domain Name. Having found that the Disputed Domain Name is confusingly similar to the Complainant’s mark NICK JR., the Panel does not have to consider the point further but notes that the Complainant does not adduce any evidence in support of its contention “that the extent of potential confusion is significant since the Respondent is using a mark which offers virtually identical services as many of those offered” at its own websites and the links therefrom.
B. Rights or Legitimate Interests
The Panel also accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The only evidence of use almost mirrors in the negative paragraphs 4(c)(i) and (iii) of the Policy, in that the use by the Respondent of the Disputed Domain Name has been in quite the opposite sense to a bona fide offering of goods and services and is designed misleadingly to divert consumers for commercial gain. The Panel accepts the submissions of the Complainant in that regard.
There is no evidence that the Respondent has been commonly known by the Disputed Domain Name.
C. Registered and Used in Bad Faith
The Panel also accepts the Complainant’s submissions that the Disputed Domain Name has been registered and is being used in bad faith. It is a reasonable inference that the Respondent has registered the Disputed Domain Name for the purpose of disrupting the business of a competitor that is the Complainant. That much can be taken from the use that it is being made by the Respondent of the Disputed Domain Name and the very close similarity between the Complainant’s mark NICK JR. and the Disputed Domain Name.
The Panel also accepts the Complainant’s submission that, by using the Disputed Domain Name, the Respondent is attempting to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion and is typosquatting.
Support to this conclusion is lent by the fact that the Respondent has a history of registering and parking well-known domain names and then being forced to transfer them pursuant to UDRP Administrative Proceedings.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <nickjrr.com> be transferred to the Complainant.
Michael D. Cover
Dated: March 11, 2011