WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viacom Intemational lnc. v. Two Chicks Productions / DomainsByProxy.com
Case No. D2012-0733
1. The Parties
Complainant is Viacom Intemational lnc., New York, New York, United States of America (the “United States”), internally represented.
Respondent is Two Chicks Productions, New York, New York, United States, and DomainsByProxy.com, Scottsdale, Arizona, United States.
2. The Domain Name and Registrar
The disputed domain name <mtvnstaff.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2012. On April 10, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On April 11, 2012 GoDaddy.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. The Center sent an email communication to Complainant on April 16, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 19, 2012.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on May 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 24, 2012.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on June 4, 2012. 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
MTV Networks (“MTV”) is a division of Complainant Viacom. MTV is one of the most successful cable television channels. MTV has operated this popular cable channel since 1981, originally comprised of entirely music videos, but has expanded to include shows, series, reality programs, game shows, sporting events, and other programming. According to the Complaint, MTV is the world’s most watched television network, reaching 603 million households worldwide, in 155 countries, through 40 localized television channels and 40 websites. MTV also has numerous international channels. MTV also has created a successful film franchise.
Complainant owns numerous United States and international trademark registrations for the marks MTV MUSIC TELEVISION and MTV (“the MTV marks”). Viacom has used these marks continuously since April 1981 in conjunction with the cable television channel and ancillary products.
Viacom has maintained a website at ”www.mtv.com” since fall 1995. In July-September 2011, the website averaged over 14 million unique visitors per month. The website features information about MTV’s television programming, links to websites for its television shows, online games and activities, music and music video clips, among other things. The website also has a link to “www.shop.mtv.com”, where consumers may purchase a variety of goods related to MTV shows, etc.
MTVN is an acronym commonly used to refer to the MTV Networks business. <mtvstaff.com> is an email extension used by a large number of Viacom employees.
The disputed domain name was created on October 12, 2010. It contains links to entertainment information, goods and services, much of which Viacom offers through its authorized channels, under the MTV marks.
5. Parties’ Contentions
Complainant alleges that its mark is a famous mark that is internationally recognized. Complainant contends that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s mark MTV in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is insertion of the single letter “n” and the generic term “staff”. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which 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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As set forth above, Complainant has used the mark MTV in commerce since 1981 for its cable television channel, its shows, films and related products. It has a federally registered mark for such goods, based on first use in April 1981. Complainant also holds numerous international trademark registrations. Additionally, previous UDRP panels have concluded that the MTV mark has acquired “significant world-wide goodwill” and is “one of the most well-known brands in the media industry”. See Viacom International Inc. v. Bryan Dulsky, WIPO Case No. D2000-0961 and Viacom International Inc. v. Jian Zhang/Whois Privacy Protection Services, Inc., WIPO Case No. D2008-0099. Consequently, the Panel agrees that the MTV mark is famous and finds that Complainant has rights in the mark alleged to be contained in the disputed domain name.
Complainant also registered and uses <mtv.com> and related domain names to promote its products. The domain name <mtv.com> has been in continuous use since 1995. Complainant also uses the domain name <mtvstaff.com> as an email extension used by Viacom employees.
The disputed domain name consist of Complainant’s mark MTV in its entirety, and the only difference between Complainant’s mark and the disputed domain name is insertion of the letter “n” and the generic word “staff”. It has long been held that the addition of a generic word is irrelevant to the determination of whether the domain name is identical or confusingly similar to a complainant’s mark. The Panel thus finds that the disputed domain name is identical and confusingly similar to Complainant’s MTV mark.
Accordingly, the Panel finds that Complainant has rights in the mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP decisions have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the MTV mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name. The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The MTV mark has been in use since 1981, and has become one of the most successful cable television channels. According to the Complaint, MTV is the world’s most watched television network, reaching 603 million households worldwide, in 155 countries, through 40 localized television channels and 40 websites. MTV also has numerous international channels. MTV also has created a successful film franchise.
As set forth above, this Panel and others have found that the MTV mark is famous. This Panel therefore infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and therefore registered it in bad faith.
Under paragraph 4(b)(iv) of the Policy, the Panel may find that Respondent has registered and used the disputed domain name in bad faith if “[respondent] has intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location.” Here, the disputed domain name resolves to a website that contains links, all for the commercial benefit of Respondent, that offer entertainment information, goods and services, much of which Viacom offers through authorized channels under the MTV mark. Respondent’s use of the disputed domain name clearly is an attempt to create confusion to attract Internet users to Respondent’s website for commercial gain.
It is now a well-known practice to display on a web page or search engine various links to other commercial websites under a pay-per-click commission scheme: every link activated by an Internet user enables the host to collect financial remuneration proportional to the number of connections. See, e.g., Deutsche Telekom AG v. WWW Enterprise, Inc., WIPO Case No. D2004-1078. Therefore, in the Panel’s view, it is evident that Respondent has registered and used the disputed domain name with the intent to attract Internet customers looking for Complainant’s goods and services, thereby likely profiting from click-through revenue generated by the sponsored links.
This Panel finds that Respondent has registered and used the disputed domain name in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy and that Complainant meets the third criterion of paragraph 4(a) of the Policy.
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 <mtvnstaff.com> be transferred to the Complainant.
Sandra A. Sellers
Dated: June 18, 2012