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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Viacom International Inc. v. Mary Rachel Kostreva

Case No. D2016-0200

1. The Parties

The Complainant is Viacom International Inc. of New York, New York, United States of America ("United States"), internally represented.

The Respondent is Mary Rachel Kostreva of Los Angeles, California, United States.

2. The Domain Name and Registrar

The disputed domain name <mtvglobal.club> is registered with eNom, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 2, 2016. On February 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar 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 the Complainant on February 12, 2016, providing the registrant and contact information disclosed by the Registrar and notifying that the Complaint was administratively deficient. On the same date, the Complainant filed an amendment to the Complaint.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2016. The Respondent did not submit any response. The Center accordingly notified the Respondent's default on March 9, 2016.

The Center appointed Richard G. Lyon as the sole panelist in this matter on March 16, 2016. The Panel finds that it was properly constituted. The Panel has submitted his 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

The Panel finds the following facts from the evidence submitted with the Complaint.

The Complainant is one of the largest and best-known entertainment and media companies in the world. Prominent among its services is MTV programming, one of the first and most successful cable television channels. In addition to cable television services the Complainant uses MTV as a brand for movies, MTV Films. The Complainant has used its MTV brand continuously since the 1980s.

The Complainant owns a number of trademarks and service marks, duly registered on the principal register of the United States Patent and Trademark Office ("USPTO"), that consist of or incorporate "MTV" (collectively, "MTV marks"). The earliest of these that accompanies the Complaint was registered in 1990. Courts and UDRP panels have recognized the renown of the Complainant's MTV marks. The Complainant's principal website for these services is "www.mtv.com", begun in 1995.

The Respondent registered the disputed domain name in April 2015. When the Panel attempted to access the disputed domain name he received an error message. However, at one time the disputed domain name resolved to a website with entertainment content, including the Complainant's logo and the phrase "I want my MTV global [expletive]." (Complaint, Exhibits 6 and 7.)

The Complainant sent the Respondent a cease-and-desist letter, alleging trademark infringement and demanding transfer of the disputed domain name, in July 2015 but received no reply.

5. Parties' Contentions

A. Complainant

The Complainant has rights in "MTV" by reason of its USPTO-registered MTV marks. The addition of the common word "global" does not obviate confusing similarity of the disputed domain name with the Complainant's MTV marks.

The Complainant has not authorized the Respondent to use its marks and there is no indication that the Respondent has ever been known by the initials "MTV". The use to which the Respondent has put the disputed domain name illustrates an attempt to capitalize on the renown of those marks, and is thus not legitimate or bona fide.

By registering and using the disputed domain name for services that crudely imitate those offered by the Complainant the Respondent has intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant's mark as to its source, sponsorship, affiliation, or endorsement. Failure to reply to the Complainant's cease-and-desist letter and an attempt "to disrupt the Complainant's business" are further evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

In this default case, the Center has discharged its duty under paragraph 2(a) of the Rules regarding notification of the Complaint. The Center's records indicate successful delivery by email and postal courier to the addresses in contact information provided by the Respondent to the Registrar. There is no question that the Panel has jurisdiction to decide this proceeding.

Unlike civil litigation in the United States, the Respondent's default does not automatically result in a decision for the Complainant or constitute an admission of any factual matters pleaded in the Complaint. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.6. As to the latter item, "The Policy requires the Complainant to prove each of the three elements." Western Research 3000, Inc. v. NEP Products, Inc., WIPO Case No. D2004-0755 (emphasis in original). The Complainant here has done so, in fact making out a textbook case of cybersquatting.

A. Identical or Confusingly Similar

The Complainant's numerous USPTO-registered marks establish its rights in "MTV", see WIPO Overview 2.0, paragraph 1.1. As the Complainant argues, addition of a common, descriptive word does nothing to diminish confusion with the disputed domain name's dominant feature, "MTV".

B. Rights or Legitimate Interests

With the Complainant's demonstrating without contradiction that the Respondent has never been authorized to use the Complainant's marks and has never been commonly known by the initials "MTV", the burden of production shifts to the Respondent to demonstrate a right or legitimate interest. No such thing appears in the record. Rather, website content similar to the Complainant's services is clearly not legitimate.

This case illustrates why, contrary to assertions in a number of UDRP cases, there is no automatic or even presumptive right or legitimate interest in the registration of a common word or short string of numbers or letters. Many such items are valid trademarks, some very well-known trademarks, for example BBC, CVS, apple, polo, and MTV. "Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase)." WIPO Overview 2.0, paragraph 2.2. There is no legitimate use in this case.

C. Registered and Used in Bad Faith

Imitation may be the sincerest form of flattery, but when used at a domain whose name's dominant feature is another's mark it reveals both necessary elements of bad faith under the Policy – knowledge of the mark and intentionally choosing it for a free ride on the mark's value. The Respondent's conduct falls squarely within the example of evidence of bad faith set out in paragraph 4(b)(iv) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <mtvglobal.club> be transferred to the Complainant.

Richard G. Lyon
Sole Panelist
Date: March 17, 2016

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