WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viacom International Inc. v Emperor Sedusa
Case No. D2001-1438
1. The Parties
Complainant is Viacom International Inc. ("Viacom"), doing business at 1515 Broadway, New York, New York 10036, U.S.A. Complainantís authorized representative is Barbara A. Solomon of Fross Zelnick Lehrman & Zissu, P.C., 866 United Nations Plaza, New York, New York 10017, U.S.A.
The Respondent is Emperor Sedusa, whose address is P.O. Box 2573, Ryanís Place, High Street, St. Johns NA, AG NA, Antigua and Barbuda.
The Respondent originally named in the Complaint was Jester Media whose address is P.O. Box 2573, Ryanís Place, High Street, St. Johns NA, AG NA, Antigua and Barbuda, the same address as that given by Emperor Sedusa who is listed as the administrative, technical and zone contact for Jester Media in the WHOIS printout obtained by the Complainant on December 7, 2001.
Subsequent to the filing of the Complaint but prior to the commencement of the proceeding, the Complainant established by contacting the Registrar Intercosmos Media Group, Inc. ("the Registrar") that the Respondent is Emperor Sedusa, the owner of Jester Media. The Complainant prepared an amendment to the Complaint on December 28, 2001, and forwarded copies of the amendment to the Respondent, the Registrar and the WIPO Arbitration and Mediation Center ("the Center").
2. The Domain Name and Registrar
The domain name in dispute is <mtvasia.net>.
The Registrar with which the disputed domain name is registered is Intercosmos Media Group, Inc. d/b/a DirectNIC located at 650 Poydras St., Suite 2311, New Orleans, LA, 70130, U.S.A.
3. Procedural History
The Complaint was filed pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy"), 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").
The Complaint was received on December 7, 2001, by the Center by e-mail and in hard copy on December 11, 2001. The Center acknowledged receipt of the Complaint on December 11, 2001.
The Complainant also sent the original Respondent Jester Media a copy of the Complaint by e-mail and courier on December 7, 2001. A copy of the Complaint was also sent by facsimile and first-class mail to the Registrar.
On December 13, 2001, a request for Registrar verification was forwarded to the Registrar. On December 13, 2001, the Registrar confirmed receipt of the Complaint by e-mail. The Registrar advised the Center that the current registrant of the domain name was Sedusa, Emperor. However, the Registrantís details appear as "Jester Media" whose address is P.O. Box 2573, Ryanís Place, High Street, St. Johns NA, AG NA, Antigua and Barbuda. The Administrative Contact, Technical Contact and Billing Contact are shown as Sedusa, Emperor.
On December 19, 2001, the Center forwarded an e-mail to the Registrar requesting the Registrar to confirm whether Sedusa, Emperor is the current registrant of the <mtvasia.net> domain name or whether the registrant is Jester Media and requesting the Registrar to provide the Center with the contact details of the current registrant.
On December 19, 2001, the Registrar advised the Center that the current registrant is Emperor Sedusa, with his company name being Jester Media.
The current status of the domain name is active and paid in full.
On December 21, 2001, the Center advised the Complainant by e-mail that the Registrar, Media Group, Inc. had advised that the Registrant is not Jester Media which is the name of Registrantís company. The Center requested the Complainant to file an Amendment to the Complaint listing the Registrant as the Respondent.
The Complainant advised the Center in an e-mail dated December 21, 2001, that publicly available databases continue to list Jester Media as the domain name holder and as a result, the Complainant was unable to amend the Complaint. The Complainant requested the Center to advise on how to proceed.
On December 27, 2001, the Center responded to the Complainant by attaching the e-mail communication received by the Center from the Registrar providing details of the current Registrant.
On December 27, 2001, the Complainant contacted the Center that according to the attachment to the Center's e-mail, the domain name is owned by Jester Media and Emperor Sedusa is listed as the individual at the organization. Complainant queried the need to amend the Complaint since they appeared to have named the correct registrant.
On December 28, 2001, the Complainant filed an Amendment to Complaint which it delivered by e-mail and courier to the Respondent Emperor Sedusa, by facsimile and first class postage to the Registrar and by e-mail and courier to the Center.
On January 8, 2002, the Center compiled a Formal Requirements Compliance checklist and confirmed that formal requirements had been complied with.
On January 8, 2002, the Center forwarded Notification of the Complaint and Commencement of Administrative Proceedings, together with a copy of the Complaint and Amendment to the Complaint to the Respondent Emperor Sedusa, by e-mail and post/courier. The Notification, Complaint, and Amendment to the Complaint (without attachments) were copied to the Complainant and the Registrar by e-mail. The Center advised the Respondent that the formal date of the commencement of the administrative proceeding was January 8, 2002, and that the last day for sending a Response to the Complainant and to the Center was January 28, 2002.
On January 29, 2001, the Center notified the Respondent that the Respondent was in default and attached a formal Notification of Respondent Default.
The Complainant elected to have the dispute decided by a single-member Panel. The Center appointed Ross Carson as the single member Panelist. Mr. Carson duly submitted a Statement of Acceptance and Declaration of Impartiality. On February 20, 2002, the Center forwarded Notification of Appointment of Administrative Panel to the Parties.
Also, on February 20, 2002, the Center e-mailed the Transmission of Case File, Complaint, and Amendment to Complaint to the Panelist and forwarded a hard copy by courier. The date scheduled for the Panelís decision is March 6, 2002. The language of the proceedings is English.
4. Factual Background
Complainant submits that Viacom, through its wholly owned division MTV Networks, operates several well-known television programming services. One of the best known is MTV: Music Television ("MTV"). Within the United States, the MTV programming service is a 24 hour-a-day, 7 day a week programming service that features primarily music-related programming including music videos, interviews, documentaries, entertainment information, and news. Marks, including MTV in block letters, MTV in a stylized format, and MTV: Music Television in a stylized format (collectively the "MTV Marks") are used to promote MTV and its programs and are firmly associated with Complainant
Complainant advises that the MTV programming service first aired in the United States in 1981. MTV is seen in 139 different territories worldwide and in over 365 million households.
Complainant submits that its MTV programming service is advertised worldwide on television, in newspapers and magazines, and on billboards and other outdoor advertising. In all advertisements, the MTV Marks are prominently shown.
The MTV Marks appear in off-channel advertising worldwide and on-air at the beginning of all programs on the MTV channel. The MTV Marks are also seen on the set of many programs as well as in connection with station identifiers. In addition, the MTV Marks are the core element of on-air commercials for the programming service. These commercials have been recognized by the advertising industry for their innovation and excellence.
Complainant submits that the MTV Marks are also used in connection with programs that MTV produces including, among others, "The MTV Video Music Awards," "MTV Movie Awards," "MTV Spring Break," and "MTV Unplugged." These shows are aired worldwide, including in Japan.
5. Partiesí Contentions
(i) The Complainant submits that the <mtvasia.net> domain name is identical or confusingly similar to the Complainantís MTV marks.
The only deviation is that Respondent has added the geographically descriptive term "asia" as a suffix. Consumers are likely to believe that the domain name <mtvasia.net> is related to Complainantís MTV Asia programming service or the <mtvasia.com> website operated by Complainant.
(ii) The Complainant submits that the Respondent has no rights or legitimate interests in the domain name <mtvasia.net>.
(iii) Respondent is not using the domain name in connection with a bona fide offering of goods or services nor is Respondent making a legitimate non-commercial or other fair use of the domain name. Respondent is using the name to divert traffic to hardcore pornography websites thereby tarnishing the mark in violation of UDRP 4(c)(iii). Respondentís use of the domain name is not legitimate or bona fide but was done to mislead consumers and tarnish the MTV marks.
(i) Identical or Confusingly Similar
The Complainant submits that the <mtvasia.net> domain name is identical or confusingly similar to the Complainantís MTV marks
Complainant submits that the only deviation is that Respondent has added the geographically descriptive term "asia" as a suffix. Consumers are likely to believe that the domain name <mtvasia.net> is related to Complainantís MTV Asia programming service or the <mtvasia.com> website operated by Complainant.
Complainant submits that it has spent hundreds of millions of dollars over the last 20 years in advertising and promoting its services and merchandise under the MTV Marks
Complainant advises that it owns trademark registrations in over 100 countries for the MTV Marks. At pages 5 and 6 of the Complaint, Complainant has provided details of several of its U.S. Registrations, registered since at least as early as 1984. The list of registrations includes the following:
DATE OF REGISTRATION
MTV MUSIC TELEVISION (Stylized)
December 18, 1984
Cable television broadcasting services in Intíl Class 38
MTV MUSIC TELEVISION (Stylized)
July 8, 1986
Books, posters, bumperstickers, calendars, decals in Intíl Class 16
MTV MUSIC TELEVISION (Stylized)
January 30, 1990
Production of tv programs; music shows; live concerts; tv news shows in Intíl Class 41
MTV MUSIC TELEVISION
January 25, 1994
Cable television broadcasting services; production of tv shows in Intíl Classes 38, 41
July 9, 1996
Video recordings featuring music and television programming and sound recordings featuring music in Intíl Class 9; Television broadcasting in Intíl Class 38; Production and presentation of TV news shows, sports events, fashion shows and others in Intíl Class 41; disseminating information on news, entertainment, sports, fashion etc. via the Internet in Intíl Class 42.
Complainant advises that these registrations are valid, subsisting and in full force and effect. Complainant has attached as Exhibit B copies of or information concerning Complainantís U.S. trademark registrations for the MTV Marks.
Complainant advises that in 1995, Complainant launched the website <mtv.com>, which is consistently ranked as the number one music content site among teens 13-17. In the year 2000, the average monthly audience was 7,708,363. This website is available to any consumers in Antigua with access to the Internet. These same consumers can access Complainantís other websites including <mtvasia.com>, which was launched on May 21, 1999.
Through MTV Networks Asia, known as MTV Asia, a joint venture of MTV Networks and Universal Music, Complainant provides programming under the MTV Mark in more than 130 million homes in Asia. Among the five programming services operated by MTV Networks Asia is MTV Southeast Asia, which was launched on May 5, 1995. The channel is available in 10 Asian countries including Indonesia, Malaysia, Philippines, Singapore, Thailand, Hong Kong and Vietnam. This channel alone reaches more than 20 million households. MTV is Asiaís most watched music channel with more than 200 advertisers and 40 sponsors. Under the terms of the joint venture, Complainant owns all rights in the MTV Asia mark. Complainant has attached as Exhibit C to the Complaint a trademark License Agreement relating to MTV MUSIC trademarks.
Complainant has registered or applied to register its MTV Marks in over 25 countries in Asia. A printout showing the status of these marks is attached as Exhibit D to the Complaint.
Complainant submits that Complainantís MTV Marks are famous and that their fame existed long prior to Respondentís registration of <mtvasia.net>. Complainant has attached articles attached as Exhibit E to the Complaint. In a December 13, 1999 article in The New York Times, MTV was named as one of the 100 "most powerful corporate, media and product brands in the 20th century."
Complainant advises that in proceedings before WIPO, panelists have repeatedly recognized the fame of the MTV Marks. See, e.g., Viacom Intíl Inc. v. Bryan Dulsky, WIPO Case No. D2000-0961 (noting that Viacomís MTV trademarks are famous); Viacom Intíl Inc. v. Sung Wook Choi and M Production, WIPO Case No. D2000-1114 (noting that the MTV Marks are well known, enjoy an "extensive reputation" and are famous).
(ii) Respondent has no Rights or Legitimate Interests in <mtvasia.net>
On September 9, 2001, Respondent registered <mtvasia.net>. As of that date, Complainant had been using its MTV Marks in the U.S. for 20 years, had obtained numerous federal trademark registrations for its marks in the U.S., had registered its marks worldwide and had been using its mark in Asia for over 5 years.
There has never been any relationship between Viacom and Respondent, and Respondent has never been licensed or authorized to use the MTV mark in any manner, including in or as part of a domain name.
Numerous facts exist here to show that Respondent can demonstrate no legitimate interests in <mtvasia.net>. First, the domain name was registered after Complainant had obtained numerous U.S. federal trademark registrations for its MTV Marks, after the MTV Marks had been used worldwide, and after Complainant had established an Internet presence available worldwide at <mtv.com> and <mtvasia.com>. See Viacom Intíl Inc. v. mtvmp3.com, WIPO Case No. D2001-0275; Guinness UDV North America v. Lewis, WIPO Case No. D2001-0621; Chanel, Inc. v. BuyBeauty.com, WIPO Case No. D2000-1126.
There exists no relationship between Complainant and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use the <mtvasia.net>. Under the circumstances, Respondent cannot show any legitimate rights or interests in the names. See Guerlain S.A. v. H.I. Investments, WIPO Case No. D2000-0494 (no rights or legitimate interest found where complainant has not licensed or otherwise permitted respondent to use its trademark or to apply for a domain name incorporating its trademark).
Respondent is not using the domain names in connection with a bona fide offering of goods or services nor is Respondent making a legitimate non-commercial or other fair use of the domain names.
When one types in the domain name <mtvasia.net> one is immediately diverted to a hardcore pornography site at <www.asianshardcore.com>. See Exhibit F. Once at that site, an Internet user cannot easily leave. Closing the page only brings the user to other hardcore porn sites. See Exhibit G.
On November 27, 2001, Viacom sent a demand letter to Respondent by email and first class mail asking that the domain name be transferred. See Exhibit H. No response was received to that letter.
Respondent is using the name to divert traffic to hardcore pornography websites thereby tarnishing the mark in violation of UDRP ∂4(c)(iii). See Exhibits F and G. Respondentís use of the domain name is not legitimate or bona fide but was done to mislead consumers and tarnish the MTV marks. Under such circumstances, no legitimate rights can be found. World Wrestling Foundation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256 (no legitimate interest where domain names used in connection with porn sites); Madonna Ciccone v. Dan Parisi, et al., WIPO Case No. D2000-0847 (use of domain name for adult entertainment site does not create legitimate rights where name obviously selected to trade on fame of Complainantís mark.)
There is no evidence to suggest that Respondent is now or has never been known by the name MTV or MTV ASIA. While Respondent was given the opportunity to explain why it adopted the domain name, it chose instead to ignore Complainantís cease and desist letter, giving rise to the inference that Respondent has no legitimate rights.
(iii) Respondent Registered and Used <mtvasia.net> in Bad Faith
Complainant submits that it has satisfied the final element of the Policy that the Respondent registered and used the domain name <mtvasia.net> in bad faith.
Complainant submits that the issue of bad faith is supported by the fact that Respondent is using the name to divert consumers to pornographic websites. See Exhibits F and G. Panelists have held this to be conclusive evidence of bad faith. Madonna Ciccone v. Dan Parisi, WIPO Case No. D2000-0847; World Wrestling Federation Entertainment, Inc., v. Bessette, WIPO Case No. D2000-0256; CCA Industries, Inc. v. Dailey, WIPO Case No. D2000-0148; Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021.
Complainant further submits that other evidence supports a finding of bad faith. First, Complainant submits that Respondent has taken Complainantís trademark MTV as the dominant part of its domain names shows bad faith. Chernow Communication, Inc. v. Jonathan Kimball, WIPO Case No. D2000-0119.
Second, Complainant advises that Respondent has failed to respond to Complainantís cease and desist letter. Panelists have found this to constitute evidence of bad faith. Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc. WIPO Case No. D2000-0090; NFL Properties, Inc. et al. v. BBC Ab, WIPO Case No. D2000-0147; Playboy Enterprises Intíl Inc. v. BEG Service KB, WIPO Case No. D2001-0494. Respondent was given the opportunity to explain why the domain name was taken. By failing to respond, Respondent in effect has admitted that there was no bona fide reason for taking <mtvasia.net> other than to profit from Complainantís fame and reputation.
Third, Complainant submits that the domain name is so obviously connected with the Complainant that its very taking by someone with no connection with the Complainant suggests "opportunistic bad faith." See Novus Credit Services Inc. v. Personal, WIPO Case No. D2000-1158 and cases cited therein which have followed this reasoning. The MTV mark is so famous that Respondent had to have known about it. As such the registration of the mark as a domain name without any color of title or justification is proof of bad faith on Respondentís part. See Guinness UDV North America v. Lewis, WIPO Case No. D2001-0621; Chanel, Inc. v. Uraina Heyward, WIPO Case No. D2000-1802.
Fourth, Complainant submits that Internet users are likely to believe that the <mtvasia.net> connects to a website associated with or sponsored by Complainant given Complainantís use of <mtvasia.com>, MTV Asia and MTV. Since Respondent has never been authorized by Complainant to use the MTV Marks, the very fact that Respondent has registered <mtvasia.net> establishes bad faith use and registration. See, e.g., Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134; Heelquick, Inc. v. Michael Goldman et. al., NAF 92527 (registration of domain name comprised of complainantís mark found to be in bad faith since it can mislead the public into thinking registrant owns the name). By using Complainantís mark as its domain name, Respondent is attempting to ride on the fame of Complainantís mark and use that fame to divert consumers to its websites for commercial advantage.
The Respondent did not file a Reply or any evidence to demonstrate Respondentís rights to and legitimate interest in the domain name, examples of which are set out in Paragraph 4 (c) of the Policy.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name <mtvassia.net> transferred to itself, Complainant must prove the following (Paragraph 4(a) of the Policy):
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no right or legitimate interest in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The first element which the Complainant must prove is that the domain name is identical or confusingly similar to the Complainantís trademark or service mark.
The MTV marks are very well known. In an article in the New York Times, Exhibit E. MTV was named as one of the hundred "most powerful corporate, media and product brands in the 20th Century." In earlier proceedings before WIPO Panelists have recognized the extensive reputation of MTV marks. Viacom Intíl Inc. v Bryan Dulsky, WIPO Case No. D2000-0961.
The domain name <mtvasia.net> is confusingly similar to the Complainantís registered trademarks MTV. The domain name <mtvasia.net> is identical to the Complainantís trademark MTV with the addition of the geographical term "asia". The first and inherently distinctive portion of the domain name <mtvasia.net> is identical to Complainantís trademark MTV. The Respondent has associated the geographical term "asia" with the word MTV to create a domain name which is confusingly similar with Complainantís trademark MTV.
The second element which the Complainant is required to prove is that the Respondent has no right or legitimate interests in respect of the domain name in dispute. The Complainant has established that the trademarks MTV, MTV design and MTV ASIA were in wide use throughout America and Asia before the registration of the domain name in dispute <mtvasia.net>. The Complainantís uncontested evidence is that the Respondent has not been authorized by the Complainant to use any of the Complainantís trademarks as part of a domain name or otherwise. The Respondent did not respond to the Complainantís cease and desist letter and did not file a Response submitting proof of rights or a legitimate interest in respect of the domain name. The Complainant has proven that the Respondent has no right or legitimate interest in respect of the domain name <mtvasia.net>.
The third element which the Complainant is required to prove is that the disputed domain name has been registered and is being used in bad faith.
The disputed domain name <mtvasia.net> was registered many years after the MTV marks had become renowned in America and Asia. By using the domain name in dispute the Respondent has attempted to attract internet users to Respondentís website and other on-line locations by creating a likelihood of confusion with the Complainantís well-known marks as to source. The confusion leads to a hit on the Respondentís web site or other on-line locations. Further the subject matter on the Respondentís web site and other on-line locations involving pornography is damaging to the Complainantís goodwill in its business and trademarks. Madonna Ciccone v Dan Parisi, WIPO Case No. D2000-0847; Ingersoll-Rand Co. v Frank Gully, d/b/a/ Advcomren, WIPO Case No. D2000-0021.
By using the domain name <mtvasia.net>, Respondent intentionally attempts to attract for financial gain Internet users to the Respondentsí websites and other on-line locations, by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondentís web sites and/or the goods or services offered therein.
7. Summary of Findings
a) The domain name in dispute is confusingly similar to the Complainantís trademark MTV.
b) The Respondent has no right or legitimate interest in respect of the disputed domain name. The disputed domain name promotes and suggests a connection or relationship of the Respondent with the Complainant, which does not exist.
c) The domain name has been registered and is being used in bad faith by the Respondent. The Respondent is using the confusingly similar domain name in dispute to attract business to the Respondentís website and associated pornographic sites.
In the Complaint, the Complainant requested that in accordance with Paragraph 4 .i of the Policy, the Panel issues a decision that the disputed domain name be transferred to Complainant. The Complainant having proved each of the three elements set out in Paragraph 4 (a)(i), (ii) and (iii) of the Policy is entitled to the remedy requested. The Panel requires that the domain name <mtvasia.net> be transferred to Viacom International Inc.
Dated: March 4, 2002