WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viacom International Inc. v. WhoisGuard, Inc. / Lionel Burks
Case No. D2019-1026
1. The Parties
Complainant is Viacom International Inc. of the United States of America (“United States” or “U.S.”), represented internally.
Respondent is WhoisGuard, Inc. of Panama / Lionel Burks of the United States.
2. The Domain Name and Registrar
The disputed domain name <viacom.press> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2019. On May 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 2019, 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 Complainant on May 8, 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 May 13, 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 May 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2019. On May 14, 2019 Respondent sent an informal email. Respondent did not submit a formal Response, and the Center notified the Parties that it would proceed to Panel Appointment.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on June 11, 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 is part of a family of companies that provide broadcasting and other entertainment-related services around the globe. Complainant holds several registrations for the mark VIACOM, including, among others, U.S. Registration Nos. 1008233 (registered 1975) and 1218627 (registered 1982), and European Union Registration No. 000190199 (registered 1999), all of which identify broadcasting and entertainment-related services.
In addition to its trademark registrations, Complainant also owns a registration for the domain name <viacom.com> (registered 1993). Complainant uses the URL associated with this domain name to offer information to prospective consumers about its products and services.
The disputed domain name, <viacom.press> was registered on January 15, 2019. Respondent has no affiliation with Complainant. Respondent has a parked web page at the URL. Complainant has not authorized these activities by Respondent, nor any use of its trademarks thereby.
5. Parties’ Contentions
Complainant contends that (i) the disputed domain name, <viacom.press> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
In particular, Complainant contends that the disputed domain name incorporates its VIACOM mark, which Complainant claims is well known. In this regard, Complainant asserts that Respondent has merely added a generic Top-Level Domain (“gTLD”) that reflects activities consumers would otherwise associate with Complainant’s services.
Complainant further asserts that Respondent has no legitimate rights or interest to the term, but that it is using the disputed domain names in bad faith to attract consumers to its parked web page, with full knowledge of Complainant’s global renown.
The same day that the Center notified Respondent of the commencement of this proceeding, the Center received an email from Respondent Lionel Burks, the registered owner of the disputed domain name registration, which stated as follows:
“I’m confused, am I being sued for buying a website which was vacant?!?”
Respondent did not send any further communications regarding this proceeding to the Center, and did not file any formal reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain names is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is.
The disputed domain name incorporates in full Complainant’s mark, VIACOM, and adds only the gTLD, “.press”. The applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition(“WIPO Overview 3.0”), section 1.11.
Thus, the Panel finds that Complainant has satisfied the first requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
Respondent did not submit a substantive reply to the Complaint, however, other than to indicate that he was “buying a website which was vacant.” No evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the domain name. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent merely has a parked web page for the disputed domain name.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph (4)(a)(ii) of the Policy which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site 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 [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has a parked webpage at the URL associated with the disputed domain name. It is well established that having a passive website does not necessarily shield a respondent from a finding of bad faith. See WIPO Overview 3.0, Section 3.2, consensus view (“With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith.”)
Rather, a panel must examine “all of the circumstances,” including, for example, whether a complainant has a well-known trademark, and whether a respondent conceals his/her identity and/or replies to the complaint. Respondent here did not formally respond to the Complaint, and took steps to maintain a cloaked identity, wherein only the Registrar had Respondent’s contact details. Given the level of exposure of Complainant’s marks and of its entertainment-related services, the Panel would be hard pressed to find that Respondent was not aware of them at the time he registered the disputed domain name.
Considering the totality of the circumstances, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with 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 disputed domain name <viacom.press> be transferred to Complainant.
Dated: June 21, 2019