WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viacom International Inc. v. MTVALBUMS Ė Mega Top Video Albums / Peter Mladshi
Case No. D2002-0196
1. The Parties
The Complainant is Viacom International Inc., of 1515 Broadway, New York, New York 10036, United States of America, represented by Barbara A. Solomon Esq. and Joseph R. Molko Esq. of Fross Zelnick Lehrman & Zissu of New York, United States of America.
The Respondent is MVTALBUMS - Mega Top Video Albums / Peter Mladshi, of Podvojskogo st. 29/680, St. Petersburg SP 191119, Russian Federation.
2. The Domain Names and Registrar
The disputed domain names are <mtvalbums.com> and <mtvcharts.com>.
The Registrar of the domain name <mtvalbums.com> is BulkRegister.com of Baltimore, Maryland, USA and the Registrar of the domain name <mtvcharts.com> is Go Daddy Software, Inc. of Scottsdale, Arizona, United States of America.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by email on February 27, 2002, and in hard copy on March 4, 2001. The Complaint was acknowledged on March 5, 2002, and that day registration details were sought from the Registrars.
On March 6, 2002, Go Daddy Software, Inc. confirmed that the disputed domain name <mtvcharts.com> is registered with it in the name of Peter Mladshi (also named as the Technical, Administrative and Billing Contact) at the above address; that the Policy applies to that disputed domain name and that the language of the Registration Agreement is English.
On March 7, 2002, BulkRegister.com confirmed that the disputed domain name <mtvalbums.com> is registered with it in the name of "MTVALBUMS Ė Mega Top Video Albums" at the above address, that the Administrative and Billing Contacts are:
"Mr. MTV Albums < mailto:firstname.lastname@example.org>
The Moon 88
Galax, Galaxy 8888
Phone- 088 888888
that the Policy applies to that domain name and that the language of the registration agreement is English.
On March 11, 2002, the Center formally dispatched copies of the Complaint by courier (with enclosures) to the Respondent at the address mentioned above and on March 8, 2002, by email (without attachments). The Center included with that material a letter dated March 8, 2002, containing notification of the commencement of this administrative proceeding, with copies (of the Complaint without attachments) to the Complainant, the Registrars and ICANN.
The last day specified by the Center for a Response was March 31, 2002. No Response was filed within the time limited by the Rules. On April 2, 2002, the Center formally notified the Respondent of its failure to file a Response. On April 3, 2002, a Response (which did not comply with the formal requirements of the Rules) was filed by email. Receipt of the belated Response was acknowledged on April 4, 2002. Although filed few days late, the Panel admits the Response.
The Complainant elected to have the case decided by a single-member Administrative Panel ("the Panel") and on April 8, 2002, the Center appointed Alan L. Limbury as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the Panel and notified the parties of the projected decision date of April 22, 2002.
Rule 3(c) provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. The Panel is satisfied that the disputed domain names are registered by the same domain name holder. Accordingly the Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules.
The Panel is also satisfied that payment was properly made; the Complaint complies with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; the Response was filed within the extended time but was not in the form specified in the Rules. The Panel was properly constituted.
The language of the proceedings was English, being the language of both registration agreements.
4. Factual Background (undisputed facts)
Complainant owns trademark registrations in over 100 countries for the trademark MTV and variations thereof. Through its wholly owned subsidiary MTV Networks, Complainant provides television programming services, including one known as MTV, a non-stop service featuring music-related programming. This was first aired in the United States in 1981, and is now seen in 163 different territories worldwide and in over 370 million households. Complainant has spent hundreds of millions of dollars over the last 20 years in advertising and promoting services and merchandise under the MTV marks.
In 1995, Complainant launched the website <mtv.com> which is consistently ranked as the number one music content site among teens 13-17. During 1999, <mtv.com> averaged a monthly audience of 429,000 individuals. This website is available around the world, including in Russia.
Within the <mtv.com> web site, Complainant operates a page known as "MTV Charts" located at the URL http://www.mtv.com/charts. This page is also accessed by clicking on the "Charts" tab at the <mtv.com> home page. At the MTV Charts page, visitors can access various charts displaying sales information for record albums and singles. The MTV Charts page also features charts prepared by and concerning MTV, including charts displaying the most popular videos airing on MTV and listings of music videos currently being aired on MTV. The MTV Charts page also provides Ė through links embedded in the listings in the charts themselves Ė the ability to listen to songs, view music videos and download shared music files. Complainant has operated a MTV Charts page Ė in various formats and at different URLs Ė in connection with its <mtv.com> web site since at least November 1998.
Over 75 sound recordings have been issued under the MTV mark and their sales worldwide exceed 25 million copies.
The MTV mark has been used in connection with television programming services in Russia since September 26, 1998, when MTV Russia was launched. MTV Russia is seen in over 20 million households in cities in Russia and Kazakhstan including St. Petersburg (where Respondent resides). Complainant, through its wholly owned division MTV Networks International, has an ownership interest in MTV Russia. MTV Networks has licensed the use of the MTV marks for use in the Russian Federation and retains full ownership over the marks.
When the <mtvalbums.com> domain name was registered on October 27, 2000, Complainant had been using its MTV marks for almost 20 years in the U.S. and two years in Russia, had obtained numerous federal trademark registrations for its marks in the U.S. and owned five registrations in Russia for the MTV mark or marks that include MTV and eight pending applications. The earliest registration issued in September, 1998. The domain name <mtvcharts.com> was registered on June 18, 2001.
There has never been any relationship between Complainant and Respondent and Respondent has never been licensed or authorized to use the MTV mark in any manner, including in a domain name.
The <mtvalbums.com> domain name connects to a website that lists albums that have been recently released. The website also contains advertisements. The site links to various third party sites on which are stored music files. The site also contains various banner ads. On January 15, 2002. a banner ad appeared for Playstation.
When Complainant originally became aware of this matter in May 2001, the registrant was listed as "Mr. MTV Albums" with an address of "The Moon." The only real address was for the billing contact, Name Zero, in California. Complainant contacted Name Zero, which was able to contact the registrant who provided a real name, Kalin Ivanovitch, a/k/a Kalin Ivanov, and an address in St. Peterburg, Russia.
Complainant wrote to Mr. Ivanov. No response was received. However, changes were made to the registration record. Thus, as of January 3, 2002, the owner of the domain name was listed as <www.mtvalbums.com> while the address remained the same. The WHOIS data also contained a new email address for the administrative contact <email@example.com>. Complainant sent another letter, dated January 10, 2002, to the registrant via email. Subsequently the name of the registrant was changed to "MTVALBUMS Ė Mega Top Video Albums", still with the same address.
Throughout this period, it appears as though the owner of the domain name was using the URL <mtvalbums.com> in connection with a website devoted to music. Over the course of time, however, the appearance of that website altered. By January 8, 2002, the website prominently displayed the MTV logo and by January 15, 2002, a disclaimer had appeared. In an email dated January 14, 2002, an individual identifying himself as the "legal adviser" to <MTVAlbums.com> stated that his company had deleted the MTV logo from the site and included a disclaimer.
As of February 27, 2002, the date this Complaint was filed, the <mtvalbums.com> web site featured content identical to that featured on January 15, 2002, including banner ads and links to sites containing shared music files.
Beginning on or about February 5, 2002, when visitors sought to exit the <mtvalbums.com> web site, a new window would appear on the screen taking the user to a web site located at the URL <mtvcharts.com>. This web site is highly similar in appearance and style to the <mtvalbums.com> web site and provides precisely the same serviceĖ access to shared music files over the Internet. In addition, the <mtvcharts.com> web site features a logo highly similar to the MTV logo.
5. Partiesí Contentions
There is no question that a single party owns both disputed domain names and is using them as part of an integrated service for providing access to shared audio files over the Internet:
- the same address in St. Petersburg, Russia is provided for the registrant of each of the disputed domain names;
- both web sites provide the same service in the same manner Ė linking to sites offering access to shared audio files.
- both web sites are not only highly similar in appearance, but also feature the same banner ads and make use of the same graphical features.
- users entering the <mtvalbums.com> web site are repeatedly confronted by links to the <mtvcharts.com> site, and vice versa.
- when users exit the <mtvalbums.com> web site, a window featuring the <mtvcharts.com>web site automatically appears on the screen.
Complainantís MTV marks are famous and their fame existed long prior to Respondentís registration of the disputed domain names. In an article in the August 6, 2001, issue of Business Week that ranked the 100 most valuable brands in the world, MTV ranked 40th with an estimated brand value of $6.6 billion.
The disputed domain names are identical or confusingly similar to the MTV marks. They incorporate in whole Complainantís famous MTV mark. Respondent has added the generic terms "albums" and "charts". The addition of a generic term to a famous mark such as MTV creates a domain name that is confusingly similar to the trademark. Moreover, the addition of these common and generic terms is actually likely to create confusion since Complainant has produced and sold albums, and has operated a "MTV Charts" page within <mtv.com>, including charts promulgated by MTV itself, since at least 1998.
Further, because the domain name <mtvalbums.com> refers to albums, consumers are likely to believe that it refers to a website that lists sound recordings that have been featured or even endorsed by MTV. Similarly, because the domain name <mtvcharts.com> refers to charts, consumers are likely to believe that it refers to a web site featuring charts promulgated by or somehow endorsed by MTV. The disputed domain names engender an overall impression of web sites sponsored by the owner of the famous MTV trademark.
Respondent has no rights or legitimate interests in the disputed domain names, which were registered after Complainant had obtained numerous registrations for its MTV marks, after the marks had been used worldwide, after the marks had been registered in Russia, and after Complainant had been extensively using its marks, including in Russia.
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 a domain name which incorporates in whole Complainant's MTV mark.
The disputed domain names suggest that Complainant is or may be associated with the registrant of the domain names or may be authorizing or sponsoring the web sites attached to the domain names.
It is obvious that the adoption of the acronym "Mega Top Video Albums" or the name "Mr. MTV Albums" was done to try to assert a legitimate interest when none exists.
The fact that Respondent is using the domain names to direct traffic to an Internet site that provides information about music and albums and includes other commercial advertising does not provide Respondent with any legitimate interests in the domain names. As explained in Ciccone v. Parisi, WIPO D2000-0847, "use which intentionally trades on the fame of another can not constitute a Ďbona fideí offering of goods or services". Here, Respondent took Complainantís famous trademark MTV as its domain names in order to create confusion and to drive traffic to its sites for its commercial benefit.
Even if Respondent had a legitimate interest in providing information about albums or recordings, which is the subject of the material on the web sites, this does not give Respondent the right to use the MTV marks.
Where, as here, the MTV marks are venerable and distinctive and where, as here, Respondent was on constructive if not actual notice of the MTV marks, it is not reasonably possible for Respondent to demonstrate any legitimate interest in the domain names.
Respondent registered and used the disputed domain names in bad faith because Respondent knowingly adopted domain names that could be used only to cause confusion and mislead consumers. By using Complainantís mark as its domain names, Respondent is attempting to create an association with Complainant and to usurp Complainantís goodwill. The domain names are so obviously connected with the Complainant that the very use of the MTV mark by someone with no connection with the Complainant suggests "opportunistic bad faith." The MTV mark is so famous that Respondent must have known about it.
Respondent recognized the fame of the MTV mark when it registered the domain names and used the MTV logo on its web sites. Respondent took advantage of the fame of Complainantís mark by registering domain names confusingly similar to the MTV mark. This was obviously done in order to attract Internet users to Respondentís web sites with the view to maximizing Respondentís own commercial gain. The overall evidence and the inferences derived from the evidence clearly show bad faith registration and use. Weighing most against Respondent is its use of the MTV mark as the dominant part of its domain names. Based on the evidence, it is clear that Respondent was aware of Complainantís rights in the MTV mark before it adopted the domain names. The fact that the Respondent used the MTV logo shows that Respondent was aware of Complainantís rights. The fact that Respondent inserted a disclaimer on one of its web sites makes it clear that Respondent was aware that the MTV mark is associated exclusively with Complainant.
B. The Respondent
The domain name <mtvalbums.com> is an abbreviation of Mega Top Video Albums, clearly visible on all our webpages. <mtvalbums.com> is based on its links to third party sites as none of the music files are stored on <mtvalbums.com> servers, with the only one activity Ė to be an advertising list of all websites that offer music albums for downloading.
In reply to the letter sent by Complainant seeking amicably to resolve the problem concerning the "MTV" mark on <mtvalbums.com> and after careful examination of the disputed matter, we have made all the needed corrections and removed all the items that could be falsely associated with MTV Networks:
- we wrote the full website name "Mega Top Video Albums" on more places in the website as well as in the title and on the top of the main page.
- we changed the background "M" of the Logo of our website Ė to be not falsely associated with MTV Networks at first view.
Complainant was informed of the above changes and we considered that the problem was settled.
We did not agree to a gratuitous transfer of all our rights in the domain <mtvalbums.com> to Complainant because we have invested a lot of funds in this activity.
We have temporarily ceased using the domain name <mtvalbums.com> and we put an enter web page for visitors to redirect them to the domain <maxalbums.com> pending the decision in this case.
With reference to the domain <mtvcharts.com> the first time we have received a notification that MTVN has a claim on it was in the Centerís letter dated April 2, 2002. We did not receive any notification from the Complainant, which is contrary to the Policy.
We regret that we have failed to comply with the deadline for submission of a Response because we havenít received the Notification of Complaint and Commencement of Administrative Proceeding.
Attached are recent copies of the main pages of http://www.MTVALBUMS.com and http://www.MTVCHARTS.com.
6. Discussion and Findings
For the reasons advanced by Complainant and set out above, the Panel finds that the disputed domain names are registered by the same domain name holder (whoever that may be) and that, accordingly, pursuant to Rule 3(a), the Complaint may properly relate to them both.
Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely that:
(i) the disputed 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 disputed domain names have been registered and are being used in bad faith.
Identity or confusing similarity
Essential or virtual identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (WIPO Case No. D2000-0802); Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102) and Blue Sky Software Corp. v. Digital Sierra Inc. (WIPO Case No. D2000-0165).
Applying this test, the Panel finds that neither of the disputed domain names is identical to the Complainantís mark MTV nor to any of its variants.
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases: BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR (WIPO Case No. D2001-1480); Koninklijke Philips Electronics N.V. v. In Seo Kim (WIPO Case No. D2001-1195); Energy Source Inc. v. Your Energy Source (NAF Case No. FA101000096364); Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc. (WIPO Case No. D2001-1121) and the cases there cited.
In Microsoft Corporation v. Microsof.com aka Tarek Ahmed (WIPO Case No. D2000-0548) contributing factors to the likelihood of confusion were held to be the visual similarity between the domain name and the complainantís mark and the mark being strong and immediately recognizable.
Complainant has established that its mark MTV is famous and immediately recognizable. Given Complainantís use of that mark in connection with recorded music, Respondentís addition of the word "albums" to the mark MTV in the domain name <mtvalbums.com> strengthens the false and hence confusing association with Complainant conveyed by Respondentís use of the MTV mark. The Panel finds this domain name to be confusingly similar to Complainantís mark MTV.
For the same reason, together with Complainantís own prior and widespread use of the web page "MTV Charts" accessed through its <mtv.com> website, the Panel finds the domain name <mtvcharts.com> to be confusingly similar to Complainantís mark MTV.
The Complainant has established this element.
Respondent does not challenge the fame of Complainantís mark MTV nor Complainantís assertion that there has never existed any relationship under which Respondent has been authorized to use Complainantís mark in any way. These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in those names: Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited.
The only explanation of Respondent remotely touching this issue is its claim that <mtvalbums.com> is an abbreviation of Mega Top Video Albums. Those words appeared as part of the registrantís name "MTVALBUMS Ė Mega Top Video Albums" only after Complainant had complained of the use of its trademark in that domain name. Previously, the registrant was recorded as "Mr. MTV Albums" which remains the name of the Administrative and Billing Contacts, with the manifestly spurious address already set out on page 2 of this decision. There is no evidence before the Panel that any real person is known as "Mr. MTV Albums" nor that Mega Top Video Albums is an entity or business name known to the law of the Russian Federation or of any other country.
Nor has Respondent denied Complainantís assertion that the adoption of the acronym "Mega Top Video Albums" or the name Mr. MTV Albums was done to try to assert a legitimate interest when none exists.
Respondent does not claim to have been unaware of Complainantís mark before it registered the disputed domain names and the Panel finds Respondent did know of Complainantís famous mark before registering the disputed domain names. This alone makes it implausible in the extreme that Respondent could demonstrate a legitimate interest: Warner Lambert Export Limited v. Mr Darren Darcy (WIPO Case No. D2000-0453). Further, use which intentionally trades on the fame of another cannot constitute a Ďbona fideí offering of goods or services: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com" (WIPO Case No. D2000-0847).
Under these circumstances the Panel finds that Respondent has not demonstrated that it has any rights or legitimate interests in the domain name <mtvalbums.com> .
Respondent has made no attempt to demonstrate legitimacy with respect to the domain name <mtvcharts.com>. It asserts that it had no notice of any claim by Complainant regarding this domain name until it was notified by the Center of its default in filing a Response. Respondent claims not to have received the Notification of Complaint and Commencement of Administrative Proceeding.
The Complaint clearly concerns both domain names and was sent by the Center to all known addresses of Respondent. It ill behoves a Respondent who has provided an obviously false address, to claim that it is thereby disadvantaged. That is why the Panel may proceed to a decision, even in the absence of actual notice to a Respondent, once the Panel is satisfied that the Center has discharged its responsibility under Rule 2(a) "to employ reasonably available means calculated to achieve actual notice to Respondent".
Complainant has established this element of its case.
Bad faith registration and use
In SportSoft Golf, Inc. v. Hale Irwinís Golfersí Passport (NAF case FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trade mark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (NAF case FA94737); Canada Inc. v. Sandro Ursino (eResolution case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF case FA95037). This is not a case in which it is necessary to consider constructive knowledge because Respondent does not deny actual prior knowledge of Complainantís famous mark and the Panel has found such knowledge. On this footing alone the Panel finds the disputed domain names were registered in bad faith.
The Panel also finds that Respondent has used the disputed domain names in order to attract Internauts to Respondentís own web site, for commercial gain, by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation or endorsement of Respondentís web site. The changes effected by Respondent to the web site neither address nor remove the confusion created by the domain names themselves. This is evidence of both bad faith use and bad faith registration: Policy 4(b)(iv).
Complainant has established this element of its case.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the disputed domain names <mtvalbums.com> and <mtvcharts.com> be transferred to Complainant.
Alan L. Limbury
Dated: April 16, 2002