WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viacom International Inc. v. Bryan Dulsky
Case No. D2000-0961
1. The Parties
The Complainant is: Viacom International Inc., doing business at 1515 Broadway, New York, New York 10036, USA. Complainant is represented by: Barbara A. Solomon, Esq., of Fross Zelnick Lehrman & Zissu, P.C., 866 United Nations Plaza, New York, New York 10017, USA.
The Respondent is: Bryan Dulsky, 15025 East Jefferson, Gross Pointe Park, Michigan 48230, USA.
2. The Domain Names and Registrar
The domain names in dispute are: "mtvpolska.com" and "vh1polska.com". The Registrar is Register.com of 575 Eighth Avenue, 11th Floor, New York, New York 10018, USA.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on August 7, 2000. On August 24, 2000, the Center requested that the Registrar, Register.com, check and report back on the registrant for the domain names "mtvpolska.com" and "vh1polska.com". On August 25, 2000, Register.com reported to the Center that the registrant was the Respondent, Bryan Dulsky, 15025 East Jefferson, Gross Pointe Park, Michigan 48230, USA.
On August 29, 2000, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail, and this proceeding officially began. Respondentís response was received by the Center on September 17, 2000.
On September 25, 2000 Complainant sua sponte filed a supplement to its complaint, and on October 3, 2000 Respondent filed a supplement to its reponse opposing that the Panel take into consideration Complainantís supplement to complaint.
The Panel agrees with Respondent that the Complainantís supplement to complaint, filed on September 25, 2000, is not allowable under the Rules (paras. 10/12) since there are no special circumstances and the Panel did not request additional information from the Parties. Accordingly, the Panel did not take Complainantís supplement to complaint into consideration in reaching this Decision.
The Administrative Panel submitted a Declaration of Impartiality and Independence on November 6, 2000, and the Center proceeded to appoint the Panel on November 14, 2000. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision was due by November 28, 2000 but, owing to nonarrival of documents for the Panel, the due date was extended to December 5, 2000.
4. Factual Background
The Complainant, through its division, MTV Networks, operates several well known television programming services, among which MTV : Music Television ("MTV") and VH1 Music First ("VH1"). Both feature primarily music-related programming including videos, interviews, and documentaries. Complainant has affiliates all over the world, including in Poland, where it has been pursuing its television activities for several years. Respondent registered the disputed domain names on March 7, 2000. Respondent has never operated a functioning web site at the disputed domain names. On June 2, 2000 Complainant wrote to Respondent insisting that Respondent turn the disputed domain names over to Complainant. Respondent refused, and Complainant has brought this administrative proceeding in the alternative.
5. The Partiesí Contentions
By the time Respondent registered the two disputed domain names on March 7, 2000, Complainant had been using its "MTV" marks in the U.S. for more than 17 years, and in Poland for more than 10 years, and had been using its "VH1" marks in the U.S. for 15 years and in Poland for over 3 years.
At the time Respondent registered the disputed domain names, they were world-famous.
Respondent has no rights or legitimate interests in the disputed domain names, and does not have any license or permission from Complainant.
Respondentís domain names are confusingly similar to Complainantís trademarks since they only add the geographic term "polska". Thus, consumers are apt to believe that Respondent somehow represents or is affiliated with Complainant.
Respondent registered the disputed domain names on March 7, 2000 in an attempt to take advantage of the news announced March 6, 2000 that Complainant intended to create a separate company in Poland. Thus, Respondent registered the disputed domain names to prevent Complainant from registering them.
Respondent had actual and constructive notice of Complainantís famous trademarks, and consequently Respondentís registration of the two disputed domain names necessarily was in bad faith.
Complainant requests that the disputed domain names be transferred to Complainant.
Before registering the disputed domain names "mtvpolska.com" and "vh1polska.com", Respondent conducted a trademark search with the United States Patent and Trademark Office. It produced no registered marks. Viacom does not have a trademark in either of the disputed domain names.
MTV is a generic term. It can, for example, be a Linux software program or an institute in Denmark or a type of dog.
Currently, there are two channels broadcasting in Poland under the MTV mark. One is from Scandinavia, and the other, MTV Hungary, is the State run channel in Hungary.
Complainant claims to have trademarks for MTV in Poland. All but one (for a logo) was simply applied for and the rest are still pending approval.
A trademark search of "mtvpolska" produces no trademark. A further search shows the "MTV.com" trademark was abandoned on 2/13/97 by complainant. The "MTV.com" trademark is now registered to an individual, Rodney A. Hamilton.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain names, "mtvpolska.com" and "vh1polska.com" transferred to itself, Complainant must prove the following (the Policy, paragraph 4(a):
(i) the domain names are 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 in respect of the domain names; and
(iii) the domain names were registered and are being used in bad faith
Identical or Confusingly similar
Complainant has produced a printout of its trademark registrations for "mtv" and "vhl" in the United States (for example the U.S. trademark "MTV," no. 1,985,017, registered on July 9, 1996 for video recordings etc. in international class 42;" or "VH-1," U.S. service mark no. 1,391,880 registered on April 29, 1986 for television broadcasting services, international class 38. See complaint at pp. 6/10). While the trademarks may not initially have been of the strongest, with "tv" alone being generic and "vh" alone possibly also generic when referring to video, there is no doubt that they have been strengthened by the descriptive "mtv" and "vh1" and by the acquisition of significant world-wide goodwill through their association with Viacomís media products. It is well-settled that a geographic appellation such as "polska" cannot function as a trademark. Therefore, Respondent, in registering the disputed domain names has copied the distinctive elements of Complainantís trademark, i.e., the "m" in "mtv" and the "1" in "vh1".
Respondent uses its entire response to argue that Complainant cannot have trademark rights in the disputed domain names because both are generic. Respondent arrives at this conclusion by showing (response, exhibits A-Y) that "mtv" can refer to much else besides Complainantís media products: a research institute in Denmark, a type of dog, and a U.S. government department are some of Respondentís examples. The Panel views Respondentís analysis as erroneous because all his products and services are either in a different product or service class or in a totally different geographic area from that in which Complainant initially gained the fame and goodwill of its trademarks in the disputed domain names, ie, the United States of America.
In the Panelís view, Respondent misinterprets the meaning of generic. For the purposes of trademark law, the Panel understands generic to mean that the would-be trademark can not serve to distinguish the goods or services in question because the term has become a common term for the product or service regardless of its provenance. "Margarine", "aspirin", "linoleum" and "nylon" are examples of terms that started out as trademarks but gradually became generic. In the Panelís view, Complainant has demonstrated that "mtv" and "vh1" are not common terms for Complainantís types of media products and services, but instead identify the products and services of Complainant.
The Panel finds that Complainant has demonstrated trademark rights in the disputed domain names, and that Respondentís disputed domain names are confusingly similar to Complainantís trademarks.
Respondentís Rights or Interests in the Trademark
Respondent did not assert or attempt to show any rights or interests in the disputed domain names. Instead, Respondent argued that the disputed domain names were not trademarks, but were generic terms which could be registered on the internet on a first- come-first-serve basis.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Registering and Using the Domain Name in Bad Faith
The Panel is convinced that Respondent registered the disputed domain names while fully aware of Complainantís trademark rights since the trademarks are famous and were registered in many different permutations. Respondent chose to register the disputed domain names notwithstanding actual and constructive notice. In his response, Respondent never states to what purpose he registered the disputed domain names.
Complainant contends Respondent learned of its plans to launch television programming in Poland. This was announced on March 6, 2000 , the day before Respondent registered the two disputed domain names (Complaint, p.14, Exhibit K). The Panel believes this fact situation is almost identical to that in A. P. Moller v. Web Society, WIPO Case D2000-0135, in which the Respondent registered domain names using the Complainantís trademarks after learning of a business deal likely to make the domain names far more desirable to the Complainant. Similarly, the Panel in this proceeding finds that Respondent calculated that Complainant would find the disputed domain names attractive after the launch of Complainantís new business venture in Poland. Also, the Panel finds it reasonable to infer that Respondent intended ultimately to try to sell the disputed domain names to Complainant or another party for far more than he paid, in violation of the Policyís bad faith provision at 4(b)(i).
The Panel finds the Respondent has registered and is using the disputed domain names in bad faith.
In view of the foregoing discussion, and in accordance with ICANN Policy Para 4(i) and Para. 15, the Panel orders that the disputed domain names "mtvpolska.com" and "vh1polska.com" be transferred from Respondent, Bryan Dulsky, to the Complainant, Viacom International Inc. The Respondent registered domain names confusingly similar to Complainantís trademarks; the Respondent demonstrated no legitimate rights or interests in the disputed domain names; and, the Respondent registered and is using the disputed domain names in bad faith.
Dennis A. Foster
Dated: December 5, 2000