WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viacom Intemational lnc. v. Private Whois Service
Case No. D2011-0461
1. The Parties
The Complainant is Viacom Intemational lnc. of New York, NY, United States of America, represented by Michelena Hallie, United States of America.
The Respondent is Private Whois Service, Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <mtvhits.com> is registered with Internet.bs Corp (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2011. On March 11, 2011, the Center transmitted by email to Internet.bs Corp a request for registrar verification in connection with the disputed domain name. On March 17, 2011, Internet.bs Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact.
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 March 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2011.
The Center appointed Jane Lambert as the sole panelist in this matter on April 18, 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.
By an email to the Registrar dated April 8, 2011, the Center noted that the domain name would expire on April 18, 2011. The Center asked the Registrar to confirm that the domain name would be placed in Registrar LOCK status and that it would remain in such status until after the conclusion of these proceedings. The Center also asked whether any action would be required of either party to keep the domain in Registrar LOCK status for that period. The Registrar replied on April 19, 2011 that either party was entitled to renew the domain name for the usual fee before expiration and offered a hypertext link to its renewal page. The Registrar added that, as a courtesy, it had not deleted the domain name and that it would keep the registration alive to facilitate prompt renewal. The Center passed on that information to the parties and invited either of them to renew the domain name. On April 20, 2011 the Complainant advised the Center that it had renewed the domain name and that was confirmed by the Registrar. The registration is now in registrar LOCK pending this decision.
4. Factual Background
MTV Networks, a division of the Complainant, is one of the oldest and most popular cable television networks in the world. When the network started 28 years ago, its content consisted entirely of popular music videos but it now includes animated films, reality shows, game shows, sporting events and other matter. It has an audience of 384 million households in 140 countries. Its output is distributed through 31 television channels including MTV Asia, MTV Europe and MTV Latin America and 17 websites. The network also has a highly successful film franchise known as MTV Films.
The initials “MTV” on their own or in combination with other words have been registered as trade marks in relation to television shows and related goods and services such as sound recordings and computer games in the United States of America and around the world. Examples include:
(1) MTV MUSIC TELEVISION which is registered in the United States under registration numbers 1580650 and 1818179 for various types of television show, educational and entertainment services in classes 38 and 41 and has been used since April 13, 1981;
(2) MTV which is registered in the United States under registration numbers 1955606, 1985017 and 2952878 for television shows, dissemination of information and radio entertainment in classes 9, 38, 41 and 42 and has been used since June 22, 1994;
(3) MTV ONLINE which is registered in the United States under registration number 2059081for multi-user access to a global information network (that is to say, the Internet) for the transfer and dissemination of a wide variety of information in class 42 and has been used since June 1994; and
(4) MTV MUSIC TELEVISION which is registered in the European Union as a Community trade mark under registration number 180760 for a variety of goods and services in classes 9, 16, 25, 28, 38, 41 and 42 with effect from 1 April 1996.
The Complainant launched its first website under the domain name <MTV.com> in Autumn1996. That site publishes information about MTV services, news of celebrities and the like with links to separate websites for some of the Complainant’s shows such as “The Jersey Shore”, “Teen Mom” and “The Hard Times of R. J. Berger”, a link to the MTV Shop where DVDs and other goods are offered for sale. The site receives an average of 6.8 million visitors per week.
Through supplying and advertising the services and goods mentioned above, the Complainant has acquired a considerable goodwill in the initials MTV is relation to television, popular music and related goods throughout the world. Accordingly, members of the public and businesses in the music, media and leisure industries around the world associate the initials MTV whether on their own or in combination with other words such as “music” “television” or “online” with the Complainant and none other.
The Respondent uses and has used the disputed domain name as a single page website consisting of sponsored links to sites offering such services as free downloads and dating that are not offered by and have no connection with the Complainant. The Respondent’s site also has a panel advertising links to other sites including some marked MTV Music Videos and MTV Music. The panel has visited that site and tried some of those links. Some reverted back to the landing page while one opened a page that appeared to be a genuine MTV site.
5. Parties’ Contentions
The Complainant claims the transfer of the disputed domain name on the following grounds.
First, it says that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. It draws the Panel’s attention to its portfolio of trade mark registrations around the World for the initials “MTV” alone or in combination with other words. The word “hits” is not only incapable of distinguishing the domain name from its trade mark registrations but is actually likely to mislead members of the public into surmising a connection with the Complainant.
Secondly, the Complainant contends that the Respondent has no right or legitimate interest in the disputed domain name. The Complainant has never licensed or otherwise allowed the Respondent to use the disputed domain name. It is not aware of any use, or preparations to use, the domain name for a bona fide offering of goods and services. Nor is it aware of any evidence that the Respondent has been commonly known by the disputed domain name.
Thirdly, the Complainant refers to the Respondent’s use of the domain name and argues that the Respondent has registered and used the domain name in bad faith in order to disrupt the Complainant’s business and to attract Internet users to the Respondent’s site for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s site.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4 (a) of the Policy requires a Complainant to prove that each of the following elements is present:
(i) each domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent no rights or legitimate interests in respect of each such domain name; and
(iii) each domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Although the Complainant has not registered the sign “MTV hits” as a trade mark it has registered several other signs that are very similar. The registrations mentioned in paragraph 4 above are typical examples. The word “hits” immediately after the initials “MTV” is just the sort of sign that the Complainant could have registered somewhere in the world. Indeed, it may well register that sign in the future. Further, there is abundant evidence that the public associates the initials “MTV”, alone or in combination with other words, in relation to television and popular music with the Complainant and none other. The Panel is satisfied that the first element is present.
B. Rights or Legitimate Interests
Paragraph 4 (c) of the Policy provides that any of the of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate that the Respondents has rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to of the dispute, the Respondent used, or made 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
The Complainant has found no evidence that any of the above circumstances apply. It submits that it is for the Respondent to adduce evidence that one or more of those circumstances apply or that there are other grounds that demonstrate that the Respondent has rights or legitimate interests in the domain name. On this as in all other issues the Respondent has been silent. The Panel therefore finds that the second element is present.
C. Registered and Used in Bad Faith
Paragraph 4 (b) of the Policy provides that for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark 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 trade mark 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 web site 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 your web site or location or of a product or service on the Respondent’s web site or location.
The Complainant relies on the third and fourth ground. The Panel finds that the Complainant is entitled to succeed on the fourth, and possibly, the third ground.
As to the fourth ground, the Respondent has already found that the disputed domain name is confusingly similar to several of the Complainant’s marks, that the combination of the word “hits” with the initials “MTV” is just the sort of sign that the Complainant could have registered as a trade mark and that the initials “MTV” whether alone or in combination with other words are associated by the public with the Complainant and none other. It follows that members of the public are likely to suppose that the disputed domain name belongs to, is sponsored by or otherwise affiliated with or endorsed by the Complainant and that they will be induced to visit the site to obtain information or buy products or services from the Complainant. The site contains a number of sponsored links in respect of which the Respondent will receive payment every time one of them is clicked. Thus, the Respondent, will make a commercial gain.
As to the third ground, there is evidence that the Complainant does considerable business over the Internet. That business is bound to be disrupted when visitors to the Respondent’s site who were minded to do business with the Complainant are disappointed when they find that they cannot do so and decide to do something else or are led away to the site of one of the Complainant’s competitor. Since that is the obvious outcome of such use of the domain name, the Panel infers that that must have been the Respondent’s intention. This ground requires the Complainant to be a competitor of the Respondent. Clearly, the Respondent is not in the cable television business but it is a competitor for web traffic. If that is right, the Complainant is entitled to succeed under Paragraph 4(b)(iii) as well as Paragraph 4(b)(iv).
Accordingly, the Panel finds the third element of Paragraph 4(a) of the Policy to be present.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <mtvhits.com> be transferred to the Complainant.
Dated: May 2, 2011