WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viacom International Inc. v. Contact Privacy Inc. Customer 1243820716 / Jerry A. Osei Tutu
Case No. D2019-0825
1. The Parties
Complainant is Viacom International Inc. of New York, New York, United States of America (“United States”), internally represented.
Respondents are Contact Privacy Inc. Customer 1243820716 of Ontario, Canada / Jerry A. Osei Tutu of Sayreville, New Jersey, United States.
2. The Domain Name and Registrar
The disputed domain name <viacomtalents.org> (the “Domain Name”) is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2019. On April 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 12, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 15, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 17, 2019.
The Center verified that the Complaint together with the amended 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 April 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2019. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on May 9, 2019.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on May 15, 2019. 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
Complainant owns various trademark registrations in the United States and other countries including United States Trademark Registration Nos. 1,008,233 and 1,218,627 for VIACOM (“the VIACOM Mark” or “the Mark”) that issued on April 1, 1975 (first use/commerce July 21, 1970) and November 30, 1982 (first use/commerce 1978) respectively. Further, Complainant owns and operates the website associated with the domain name <viacom.com> (the “VIACOM Domain Name”), which incorporates the VIACOM Mark. Complainant actively uses the VIACOM Domain Name to host the official website for its television programming services (the “VIACOM Website”). Complainant also uses the VIACOM Website to host information concerning career opportunities with Complainant and Complainant’s recruitment efforts.
Complainant, through its divisions Viacom Media Networks and Viacom International Media Networks, provides entertainment content, services, and related branded products for consumers. Globally, these divisions reach approximately 4.4 billion cumulative television subscribers in more than 180 countries and 46 languages, via 314 locally programmed and operated television channels, including flagship brands Nickelodeon, MTV, BET, Comedy Central, and Paramount Network. Complainant (or its predecessor) has used the VIACOM Mark continuously since the date of first use set forth in the trademark registrations.
The Domain Name was registered on January 1, 2019 and has been used to set up an e-mail address from which Respondents have sent fake offers of employment to individuals, purporting to come from Complainant’s executive and HR assistant.
On February 6, 2019, Complainant sent a cease and desist letter to Respondents, to which they failed to reply.
5. Parties’ Contentions
As a result of Complainant’s long and prominent use of its VIACOM Mark for and in connection with its services, the Mark has acquired worldwide recognition as identifying exclusively Complainant’s services, and the goodwill symbolized by the VIACOM Mark belongs exclusively to Complainant. The VIACOM Mark serves to identify a single source, namely, Complainant, and its services.
The Domain Name is confusingly similar to the Mark. The Domain Name copies the distinctive elements of Complainant’s VIACOM Mark. The primary element of the Domain Name is the term VIACOM, which incorporates Complainant’s VIACOM Mark in its entirety. The remainder of the Domain Name is comprised of the descriptive word “talents” and the generic “.org” Top-Level Domain (“TLD”). Adding a descriptive term is insufficient to distinguish the Domain Name from Complainant’s VIACOM Mark. And incorporating the TLD “.org” is similarly insufficient to distinguish the Domain Name.
Respondents do not have any rights or legitimate interests in the Domain Name. Complainant has established prior rights in and to the VIACOM Mark based on its trademark registrations for the same, the first of which was filed 46 years before Respondents’ registration of the Domain Name. Respondents have never been commonly known by the Domain Name. For Respondents to demonstrate that they are commonly known by the Domain Name, they must provide adequate extrinsic proof that a corresponding group of consumers who are likely to access the website hosted at the Domain Name associates the Domain Name with Respondents rather than with Complainant. Given the widespread renown enjoyed by Complainant’s VIACOM Mark, it is impossible for Respondents to meet this burden. Moreover, Respondents cannot demonstrate any bona fide use of the Domain Name because it directs Internet users to a website that appears not to be in operation. Upon information and belief, Respondents utilize the Domain Name solely as part of a scheme to defraud unsuspecting members of the public (“the Alleged Scheme”). Specifically, Respondents (and/or individuals affiliated with Respondents) pose as a “recruiter” employed by Complainant, and use the Domain Name to validate e-mail addresses used to defraud individuals into believing that Complainant seeks to offer them a position of employment. Respondents identify and contact individuals through various employment recruitment websites, including ZipRecruiter and Fiverr. Respondents then forward an “employment contract” along with instructions to wire certain funds to a designated account. Having wired the funds, the individual is then notified that his or her bank account has been suspended due to suspected fraudulent activity. Upon information and belief, these individuals also lose the funds that they have wired. Despite the fact that the alleged “recruiters” are entirely unaffiliated with Complainant, they communicate with individual victims using an e-mail address incorporating the Domain Name, e.g., “[...]@viacomtalents.org.”
Given the renown of the Mark and Complainant’s subsisting trademark registrations in numerous countries, Respondents could not plausibly assert that, in registering the Domain Name - which fully incorporates the VIACOM Mark - they were unaware of Complainant’s rights in the VIACOM Mark. Instead, it appears that Respondents registered the Domain Name with the specific intent to cause consumer confusion and to trade upon the goodwill associated with the Mark.
Respondents were further made aware of Complainant’s rights in the Mark by virtue of a cease and desist letter sent to Respondents on February 6, 2019. They failed to respond to the letter, which sets forth Complainant’s rights in the Mark, further evidencing Respondents’ bad faith. Moreover, Respondents use the Mark to defraud members of the public, including by falsely suggesting a connection between the Domain Name and Complainant. The misleading, deceptive, and fraudulent employment “services” offered through use of the Domain Name reflects paradigmatic bad faith, and supports the inference that Respondents registered the Domain Name with the bad faith intent to deceive members of the public.
By using the Domain Name, Respondents have intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion with the Marks as to the source, sponsorship, affiliation, or endorsement of Respondents’ fraudulent recruitment “services” offered through an e-mail address validated by the Domain Name. Respondents use the Domain Name in its scheme constitutes bad faith use of the Domain Name under the Policy.
Respondents did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds Complainant has established rights in the VIACOM Mark based on its long-standing use of the Mark, as well as its trademark registrations around the world, including the United States trademark registrations identified above.
The Panel further finds that the Domain Name <viacomtalents.org> is confusingly similar to Complainant’s VIACOM Mark. The relevant comparison to be made is with the second-level portion of the Domain Name (i.e., “viacomtalents”). The Domain Name wholly incorporates the VIACOM Mark, adding the descriptive word “talents”. See Groupon, Inc. v. Hector Miller, WIPO Case No. D2014-1105 (“Where a domain name incorporates the Complainant’s mark in its entirety, the domain name is generally confusingly similar to the Complainant’s mark…”). Furthermore, adding a descriptive term is insufficient to distinguish the Domain Name from the VIACOM Mark. See, e.g., Viacom Int’l Inc. and Paramount Pictures Corp. v. Ramon Burnell, WIPO Case No. D2018-0261 (domain names “owaviacom.com” and “securemail-viacom.com” held confusingly similar to VIACOM Marks, noting that it is “well established that the addition of a descriptive word to a trademark in a domain name does not avoid confusing similarity”); Viacom Int’l Inc. v. Bladimir Boyiko, WIPO Case No. D2008-0867 (adding the descriptive word “games” as suffix to trademark “does not avoid confusing similarity”).
Lastly, adding a generic Top-Level Domain (“gTLD”) such as “.org” does not distinguish the Domain Name from the Mark because the use of a gTLD is required of domain name registrants. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth Int’l, WIPO Case No. D2008-1393 (“The gTLD suffix is generally disregarded while assessing the identity or confusing similarity between the disputed Infringing Domain Name and the Complainant’s mark”).
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant asserts that Respondents cannot have any rights or legitimate interests in the Domain Name because: (1) They have not been commonly known by the Domain Name. Complainant has established prior rights in and to the VIACOM Mark based on its trademark registrations for the same, the first of which was filed 46 years before the Domain Name was registered; and (2) Respondents’ use of the Domain Name has not been in connection with a bona fide offering of goods or services because it directs Internet users to a website that appears not to be in operation. Upon information and belief, Respondents utilize the Domain Name solely for the Alleged Scheme. Complainant argues that this alleged fraudulent use of the Domain Name cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name citing Caterpillar, Inc. v. Dirk Dohmen, WIPO Case No. D2016-0138; and Rathbone Bros. Plc v. Privacy Dep’t, IceNetworks Ltd., WIPO Case No. D2018-0371.
Insofar as Complainant has made a prima facie showing that Respondents lack rights or legitimate interests to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261), this shifts the burden to Respondents to show evidence that they have rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. They have failed to adduce any evidence to shoulder their burden. Thus, Complainant’s facts, without contrary evidence from Respondents, are sufficient to permit a finding in Complainant’s favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.”
These criteria are not exclusive and the panel may conclude that Respondent acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the Domain Name.
The Panel concludes, on the evidence submitted by Complainant, that Respondents have registered and used the Domain Name in bad faith.
Respondents registered and used a domain name that, as the Panel found above, is confusingly similar to the Mark. Respondents have not disputed the fact that Complainant has been using the Mark in the United States and registered it there over 40 years before Respondents registered the Domain Name. Moreover, to perpetrate the Alleged Scheme, Respondents are using the VIACOM Mark in correspondence to the public to perpetuate the Alleged Scheme. Given the renown of the Mark and Complainant’s subsisting trademark registrations in numerous countries, Respondents could not plausibly assert that, in registering the Domain Name - which fully incorporates the VIACOM Mark - they were unaware of Complainant’s rights in the Mark. Instead, in view of the Alleged Scheme it appears that Respondents registered the Domain Name with the specific intent to cause consumer confusion and to trade upon the goodwill associated with the Mark. Furthermore, using the descriptive term “talent” with the Mark in the context of the Alleged Scheme and the fact that Complainant uses the VIACOM Website to host information concerning career opportunities with Complainant and Complainant’s recruitment efforts only serves to further the confusion.
Respondents’ use of the Domain Name to perpetuate the Alleged Scheme constitutes bad faith use of the Domain Name. See, e.g., Grupo Financiero Inbursa, S.A. de C.V. v. inbuirsa, WIPO Case No. D2006-0614 (holding that “[phishing] is a compelling indication both of bad faith registration and of use under paragraph 4(b)(iv).”); see also Australia and New Zealand Banking Group Limited v. Bashou Ltd, WIPO Case No. D2007-0031. Moreover, Respondents’ conduct evinces a motive to benefit financially from unsuspecting members of the public – by enticing people to wire funds to an account that Respondent likely benefits from. This is also a violation of the bad faith registration and use provisions of the Policy at paragraph 4(b)(iv). See CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <viacomtalents.org> be transferred to Complainant.
Harrie R. Samaras
Date: May 20, 2019