WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viacom International Inc. and Paramount Pictures Corporation v. Ramon Burnell
Case No. D2018-0261
1. The Parties
Complainants are Viacom International Inc. of New York, New York, United States of America ("United States") and Paramount Pictures Corporation of Hollywood, California, United States, represented internally.
Respondent is Ramon Burnell of Manchester, Missouri, United States.
2. The Domain Names and Registrar
The disputed domain names <owaviacom.com>, <paromountpictures.com>, and <securemail-viacom.com> (the "Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 6, 2018. On February 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the Respondent's contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on March 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2018. Respondent did not submit any response. Accordingly, the Center notified the parties of Respondent's default on March 23, 2018.
The Center appointed John C. McElwaine as the sole panelist in this matter on April 12, 2018. 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
Complainants are Viacom International Inc. ("Viacom"), a Delaware corporation, with its principal place of business in New York, New York, and Paramount Pictures Corporation ("Paramount"), also a Delaware corporation, with its principal place of business in Hollywood, California.
Complainant Viacom owns and uses various VIACOM trademarks. Complainant Viacom owns trademark registrations containing the word VIACOM, including the following marks registered in the United States: VIACOM, U.S. Reg. No. 1008233, registered on April 1, 1975, in classes 38 and 41; VIACOM, U.S. Reg. No. 1218627, registered on November 30, 1982, in classes 38 and 41; VIACOM (stylized), U.S. Reg. No. 3260476, registered on July 10, 2007, in class 38; and VIACOM (stylized), U.S. Reg. No. 3260477, registered on July 10, 2007, in class 41.
Complainant Paramount owns and uses various PARAMOUNT trademarks. Complainant Paramount owns trademark registrations for PARAMOUNT or PARAMOUNT PICTURES, including the following marks registered in the United States: PARAMOUNT PICTURES, U.S. Reg. No. 2683224, registered on February 4, 2003, in class 41; PARAMOUNT (and design), U.S. Reg. No. 1695847), registered on June 23, 1992, in classes 09 and 41; and PARAMOUNT (and design), U.S. Reg. No. 2736878), registered on July 15, 2003, in class 09.
Respondent resides in the United States in Manchester, Missouri. On August 3, 2017, Respondent registered <owaviacom.com>, on July 30, 2017, Respondent registered <securemail-viacom.com>, and on August 30, 2017, Respondent registered <paromountpictures.com>. The Domain Names do not resolve to active websites.
5. Parties' Contentions
Complainant Viacom asserts to be the most well-known global entertainment company focusing in television programming and networks. Viacom alleges it broadcasts into almost 530 million households in more than 180 countries and territories with 250 locally programmed and operated television channels in more than 40 languages, and through more than 500 digital media properties. Viacom's networks includes such popular and well-known networks as Nickelodeon, MTV, BET, CMT, VH1, and Comedy Central. Viacom asserts that its networks comprise the largest portfolio of ad-supported cable networks in the United States, in terms of audience share. Viacom also produces, finances and distributes motion pictures and other entertainment content under its MTV Films and Nickelodeon Movies brands.
Viacom avers that since at least as early as July 21, 1970, it has used the mark VIACOM in connection with cable television broadcasting and other entertainment-related services. In addition to its U.S. trademark registrations set forth above, Viacom is the owner of registrations for its various VIACOM trademarks in several other jurisdictions around the world, including, but not limited to in the European Union, Germany, Australia and Brazil.
Viacom also asserts that it owns and operates the website associated with the domain name <viacom.com>, which incorporates the VIACOM mark. Viacom further alleges that it uses this domain name to host the official website for its television programming services. Complainant contends that its VIACOM trademark is prominently featured on its main website and the website's of Viacom's respective networks, as well as in advertising, marketing, and promotional materials for Viacom's services. Viacom's trademark registrations and its use of marks containing the word VIACOM are referred to, collectively, as the "VIACOM Marks."
Complainant Paramount alleges that it is a famous film production studio and distributor. Paramount has been in business for more than 100 years and has used the well-known "mountain and stars" logo in its various forms since 1914. Paramount has produced numerous award-winning and popular movies, all of which have been shown at movie theaters in the United States and/or broadcast in the United States on television.
Since at least as early as 1914, Paramount alleged that it has used the mark PARAMOUNT in connection with film production and distribution services. In addition, Paramount asserts that it launched the PARAMOUNT website in 1993, which features information about Paramount's motion picture businesses, as well as corporate information about Paramount. In addition to its U.S. trademark registrations set forth above, Paramount is the owner of registrations for its various PARAMOUNT trademarks in the European Union and Australia. Paramount contends that the PARAMOUNT and PARAMOUNT PICTURES trademarks are prominently featured on its website, as well as in advertising, marketing, and promotional materials for Paramount's services. Paramount's trademark registrations and its use of marks containing the words PARAMOUNT and PARAMOUNT PICTURES are referred to, collectively, as the "PARAMOUNT Marks."
Complainant pleads that the Domain Names should be transferred to Complainant because each of the three elements required in paragraph 4(a) of the Policy has been established.
Addressing the first element of the Policy, Complainants assert that <owaviacom.com> and <securemail-viacom.com> are confusingly similar to the VIACOM Marks because they incorporate the distinctive VIACOM trademark in its entirety. Complainants additionally point out that the <owaviacom.com> and <securemail-viacom.com> domain names differ only in punctuation from Viacom's internal remote email extensions, <owa.viacom.com> and <securemail.viacom.com>, which are only accessible after entering secure login credentials. Complainants also contend that the <paromountpictures.com> domain name is confusingly similar to the PARAMOUNT Marks because it is the phonetic equivalent of the PARAMOUNT PICTURES mark and because Respondent is exploiting a minor misspelling of the famous PARAMOUNT mark. As such, Complainants conclude that the Domain Names are confusingly similar to the VIACOM Marks and the PARAMOUNT Marks for which Complainants' possess valid and existing trademark rights.
With respect to the second element of the Policy, Complainants contend that there is no evidence that Respondent has rights or a legitimate interest in the Domain Names because Complainants' respective first use of the VIACOM Marks and PARAMOUNT Marks pre-dates Respondent's registration of the Domain Names by decades. Complainants assert that there is nothing in the record, including the WhoIs information, to suggest that Respondent is commonly known by the Domain Names.
With respect to the third element of the Policy, Complainants allege that Respondent's registration of the Domain Names was without any bona fide basis as it was an attempt to capitalize unfairly on the goodwill of Complainants' well-known VIACOM Marks and PARAMOUNT Marks. Respondent asserts bad faith may be found if the registrant selected the domain name which consisted of a well-known trademark. Complainants assert that the passive holding of the Domain Names is evidence of bad faith use of the Domain Names. In particular, Complainants allege that Respondent has set up MX-records for the <owaviacom.com> and <securemail-viacom.com> Domain Names, which allows Respondent to use the <owaviacom.com> and <securemail-viacom.com> Domain Names to send fraudulent email messages, including those that contain spam, phishing attempts, or viruses.
Respondent did not reply to Complainants' contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainants must still prove their assertions with evidence demonstrating:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Because of Respondent's default, the Panel may accept as true the reasonable factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules ("If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint"). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel's findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainants show that the Domain Names are identical or confusingly similar to a trademark or service mark in which the respective Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.2.1. Viacom has provided evidence that it is the owner of a U.S. trademark registration for the VIACOM trademark and that it has substantially used the VIACOM marks in commerce throughout the word. Likewise, Paramount has provided evidence that is has substantially used the PARAMOUNT Marks and owns trademark registration for PARAMOUNT and PARAMOUNT PICTURES in the U.S. The Panel finds that Complainants own valid trademark rights in the VIAMCOM Marks and PARAMOUNT Marks, respectively, which significantly predate the registration of the Domain Names.
It is well established that the addition of a descriptive word to a trademark in a domain name does not avoid confusing similarity. See eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307. Here, with respect to Complainant Viacom, Respondent has added the letters "owa", which is known to stand for Outlook Web Access, and "securemail" to the VIACOM trademark. Both of these words are common or descriptive words used for email systems and, in fact, the <owaviacom.com> and <securemail-viacom.com> domain names differ only in punctuation from Viacom's internal remote email extensions. The Panel finds that the addition of these terms do not serve to distinguish either the <owaviacom.com> and <securemail-viacom.com> from the VIACOM Marks.
Paramount contents that the domain name <paromountpictures.com> contains a misspelling of the PARAMOUNT PICTURES trademark. As discussed in the paragraph 1.9 of the WIPO Overview 3.0, the consensus view is that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. Similarly, UDRP panels have consistently held that "a mere addition or a minor misspelling of Complainant's trademark does not create a new or different mark in which Respondent has legitimate rights." Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302 ("Such insignificant modifications to trademarks is commonly referred to as 'typosquatting' or 'typo-piracy,' as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser's location bar.") Here, the Domain Name is visually similar to the PARAMOUNT PICTURES mark differing only by the substitution of the letter "o" for the second "a" in "Paramount." It is important to note that the word "paromount" is phonetically virtually identical to "paramount". Many UDRP panels have recognized that phonetic similarity is a significant factor in finding of confusing similarity under the first element of the Policy. WhatsApp Inc. v. Francisco Costa, WIPO Case No. D2015-1708 (citing other cases). Moreover, this analysis is expressly supported by WIPO Overview 3.0, paragraph 1.7 which instructs that panelist may undertake an "aural or phonetic comparison of the complainant's trademark and the disputed domain name to ascertain confusing similarity."
The panel finds that Viacom has met its burden of showing that <owaviacom.com> and <securemail-viacom.com> are confusingly similar to the VIACOM Marks and that Paramount has met its burden of showing that <paromountpictures.com> is confusingly similar to the PARAMOUNT Marks.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Names. However, because the nature of a registrant's rights or legitimate interests, if any, in its domain names lies most directly within the registrant's own knowledge, a complainant need only make a prima facie case on this element. See Education Testing Service v. TOEFL, WIPO Case No. D2000-0044; Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703. The burden of production shifts then to the respondent to present evidence that it has some rights or legitimate interests in the domain names. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
Complainants assert that Respondent is not authorized to use the VIACOM Marks or the PARAMOUNT Marks for any activity. Furthermore, Respondent does not have any registered trademarks or trade names corresponding to the Domain Names. Complainants assert that Respondent has not been commonly known by the Domain Names, but is, instead, known as Ramon Burnell. Although properly notified by the Center, Respondent failed to submit any response to establish some rights or a legitimate interest in the Domain Names. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain names. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011.
Moreover, the Panel finds that purpose of registering the Domain Names was likely to divert Internet traffic or to engage in an email scam or a phishing scheme, none of which is a bona fide offering of goods or services. Twitter, Inc. v. Moniker Privacy Services / accueil des solutions inc, WIPO Case No. D2013-0062 ("This Panel accepts the Complainant's contention that the Respondent's use of the disputed domain name is not in connection with a bona fide offering of goods or services. It further finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name."); see also, CMA CGM v. Diana Smith, WIPO Case No. D2015-1774 (finding that the respondent had no rights or legitimate interests in the disputed domain name holding, "such phishing scam cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name".)
Accordingly, Complainants made a prima facie showing of Respondent's lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the panel may draw such inference from Respondent's default as it considers appropriate.
The panel finds that Respondent does not have rights or legitimate interests in the Domain Names and that Complainants have met their burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainants must show that Respondent registered and is using the Domain Names in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can be found where respondents "knew or should have known" of complainant's trademark rights and nevertheless registered a domain name in which he had no right or legitimate interest. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. Here, both Paramount and Viacom are well-known global entertainment companies. Both Complainants have used their respective marks in commerce for decades and have received world-wide notoriety. Based on Complainants' submissions, which were not rebutted by Respondent, Respondent must have known of Complainants' famous VIACOM Marks and PARAMOUNT Marks when it registered the Domain Names. See WhatsApp Inc. v. Francisco Costa, WIPO Case No. D2015-0909 (finding that "it is likely improbable that Respondent did not know about Complainant's WHATSAPP trademark at the time it registered the Disputed Domain Name considering the worldwide renown it has acquired amongst mobile applications, and the impressive number of users it has gathered since the launch of the WhatsApp services in 2009".) Supporting the inference that Respondent knew of Complainants' trademark rights, Respondent registered Domain Names that were either related to email systems of Viacom or a clear misspelling of Paramount.
There is also substantial authority that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark, is itself sufficient evidence of bad faith registration and use. See Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942 ("the Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements"), citing, Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. "null," aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435. Based on Complainant's submissions, it is clear that Respondent must have known of Complainants' VIACOM Marks and PARAMOUNT Marks at the time of registration of the Domain Names, and therefore Respondent registered and used the Domain Names in bad faith. With no Response from Respondent, this claim is undisputed.
The fact that the Domain Names do resolve to websites stating an error message and may be described as being passively held does not obviate a finding of bad faith. Section 3.3 of the WIPO Overview 3.0, instructs that panelists should examine the totality of the circumstances in each case of passive holding and that the following factors that have been considered relevant in applying the passive holding doctrine: "(i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put." Id.
Viacom established that it has used the VIACOM Marks since 1970 and that it has significant use throughout the world. Paramount established that it has used the PARAMOUNT Marks for more than 100 years and acquired significant goodwill. In sum, Complainants marks are distinctive, strong and widely known throughout the world. Complainant asserts that Respondent likely registered the Domain Names to send fraudulent email messages, including those that contain spam, phishing attempts, or even viruses. Such activity would constitute a disruption of Complainant's business and also establishes bad faith registration and use pursuant to Paragraph 4(b)(iii) of the Policy. Securitas AB v. Whois Privacy Protection Service, Inc. / A. H., WIPO Case No. D2013-0117 (Finding bad faith based upon the similarity of the disputed domain name and the complainant's mark, the fact that the complainant is a well-known global security company and the fact that the disputed domain name is being used to perpetrate an email scam.) It is inconceivable that Respondent coincidentally selected the Domain Names without any knowledge of Complainants. See e.g., Arkema France v. Steve Co., Stave Co Ltd., WIPO Case No. D2017-1632. Respondent did not respond to the Complaint and has provided no evidence of its intended use of the Domain Names. In fact, Respondent is not using any of the Domain Names in a manner to demonstrate a bona fide use or potential use.
For these reasons, the Panel holds that Complainants have met their burden of showing that Respondent registered and is using the Domain Names in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that Domain Names <owaviacom.com>, <paromountpictures.com>, and <securemail-viacom.com> be transferred to the Complainants.
John C McElwaine
Date: April 26, 2018