WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ViacomCBS Inc., Viacom International Inc., CBS Broadcasting Inc v. Domains By Proxy, LLC / CBS Legal Online Enforcement Registrant, CBS Legal Online Enforcement
Case No. D2021-2562
1. The Parties
Complainants are ViacomCBS Inc., Viacom International Inc., CBS Broadcasting Inc., United States of America (“United States”).
Respondent is Domains By Proxy, LLC, United States / CBS Legal Online Enforcement Registrant, CBS Legal Online Enforcement, United States.
2. The Domain Names and Registrar
The disputed domain names <viacomcbs-copyrightnotice.com> and <viacomcbscopyright-notice.com> 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 August 6, 2021. On August 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on August 11, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on August 16, 2021.
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 Respondents of the Complaint, and the proceedings commenced on August 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2021. Respondents did not submit any response. Accordingly, the Center notified the Parties of Respondents’ default on September 29, 2021.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on October 19, 2021. 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 ViacomCBS Inc. (“ViacomCBS”) is the parent company of Viacom International Inc. (“Viacom”) and CBS Broadcasting Inc. (“CBS”). The combined entity was formed by a merger of Viacom and CBS. Complainants operate a global mass media company that creates and distributes content to audiences worldwide.
ViacomCBS is the proprietor of several trademark registrations worldwide for the VIACOMCBS mark, including United States Trademark Registration No. 6310095 for VIACOMBCBS (device mark), registered on March 30, 2021 for services in class 41, claiming a date of first use of December 4, 2019. ViacomCBS has registered the domain name <viacomcbs.com>, which it uses to host a website featuring information about its brands, television programming, and news and corporate information.
Viacom is the proprietor of hundreds of registrations worldwide for the VIACOM mark, including United States Trademark Registration No. 1008233 for VIACOM (word mark), registered on April 1, 1975 for services in class 38, claiming a date of first use of July 21, 1970. Viacom has registered the domain name <viacom.com>, which redirects to the website at “www.viacomcbs.com”.
CBS is the proprietor of hundreds of registrations worldwide for the CBS mark, including United States Trademark No. 852481 for CBS (word mark), registered on July 9, 1968 for services in class 38, claiming a date of first use of October 15, 1933. CBS has registered the domain name <cbs.com>. It uses this domain to host its corporate website, launched in 1996.
At the direction of Complainants, a vendor of ViacomCBS operates the domain name <viacomcbs.copyright-notice.com> to submit notices of alleged copyright infringements of Complainants’ intellectual property rights to various platforms on behalf of ViacomCBS.
The disputed domain name <viacomcbs-copyrightnotice.com> was registered on June 8, 2021. The record contains evidence that it redirects to Complainant’s “www.cbs.com” website. The disputed domain name <viacombcbscopyright-notice.com> was registered on July 13, 2021. It resolves to a website featuring pay-per-click links.
5. Parties’ Contentions
Complainants request consolidation of Complainants for the following reasons: all Complainants have a common legal interest in their respective rights against Respondents. Complainant ViacomCBS is the parent company of Viacom and CBS. Complainants Viacom and CBS had been part of a combined company from 1999 to 2005. In 1999, Viacom Inc. acquired CBS Corporation. Viacom Inc. and CBS Corporation separated in 2005. In 2019, CBS Corporation and Viacom Inc. merged again to form the entity ViacomCBS Inc. The disputed domain names contain the trademark of Complainant ViacomCBS, which is also the combination of the VIACOM mark with the CBS mark, both of which are widely known as the house marks of Complainants, in the same pattern.
Complainants request consolidation of Respondents for the following reasons: on information and belief, the disputed domain names are under common control. Respondents share the same email address and telephone number. The registrant names - CBS Legal Online Enforcement Registrant and CBS Legal Online Enforcement - are practically identical. The disputed domain names both use the same Registrar. Finally, the disputed domain names are identical except for the differing placement of the dash.
Complainants’ substantive contentions may be summarized as follows:
Under the first element, Complainants state that Viacom has used the VIACOM mark since at least 1970 in connection with cable television broadcasting and other entertainment-related services. Viacom reaches 4.3 billion television subscribers in more than 180 countries. Founded in 1927, CBS is a global leader in television programming, and one of the leading broadcasters in the United States. It has used the CBS mark since 1933. ViacomCBS had been a combined company from 1999-2005 and again from 2019. All three marks enjoy a high degree of public recognition and distinctiveness. The disputed domain names incorporate Complainants’ marks in their entirety.
Under the second element, Complainants state that Respondents are not affiliated in any way with Complainants, nor have Complainants authorized Respondents to use the marks. Respondents have never been commonly known by the disputed domain names. The use of the disputed domain names cannot establish rights or legitimate interests, since <viacomcbscopyright-notice.com> resolves to a parked page, and <viacomcbs-copyrightnotice.com> resolves to Complainants’ website.
Under the third element, Complainants state that, given the fame of the marks, Respondents could not plausibly assert that they were unaware of Complainants’ rights therein. The disputed domain name <viacombcbscopyright.com> is parked with paid advertisements. The disputed domain name <viacombcbscopyright-notice.com> redirects to Complainants’ website, which may be used to mislead users into believing that Respondents are affiliated with Complainants. Both disputed domain names employ the same naming convention as Complainants’ own website at the domain <viacombcbs.copyright-notice.com>. The names of Respondents reflects Complainants’ marks. Finally, Respondents have ignored Complainants’ notices of infringement.
Complainants request transfer of the disputed domain names.
Respondents did not reply to Complainants’ contentions.
6. Discussion and Findings
6.1 Preliminary Issue - Consolidation of Proceedings
Consolidation of Multiple Complainants
Pursuant to paragraph 10 of the Rules:
(a) the Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.
Consolidation of Multiple Complainants
The principles to assess a request to consolidate multiple complainants are set forth in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1.
Noting the circumstances of the case, the Panel finds that Complainants have a specific common grievance against Respondents, and that it would be equitable and procedurally efficient to permit the consolidation. The Panel finds that Complainants have a common legal interest, as Complainant ViacomCBS is the parent company of CBS and Viacom. Moreover, considering the composition of the disputed domain names, the Panel finds that Complainants are the target of common conduct by Respondents, which has affected their individual legal interests in a similar fashion. See, for instance, Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331.
Accordingly, the Panel accepts Complainants’ request to consolidate the present proceedings pursuant to the Rules, paragraph 10(e). Complainants are hereinafter referred to as “Complainant”.
Consolidation of Multiple Respondents
The principles to assess a request to consolidate multiple respondents are set forth in the WIPO Overview 3.0, section 4.11.2.
Noting the circumstances of the case, the Panel considers disputed domain names to be under common control. The email address and telephone number of Respondents as confirmed by the Registrar are identical. The names of Respondents are nearly identical, and the disputed domain names have been registered using the same Registrar and reflecting nearly identical naming patterns. Respondents do not challenge Complainant’s assertions to this effect. Accordingly, the Panel accepts Complainant’s request to consolidate the present proceedings pursuant to the Rules, paragraph 10(e). Respondents are hereinafter referred to as “Respondent”.
6.2 Substantive Issues
Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) Respondent has registered and is using the disputed domain names in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the VIACOMCBS, CBS and VIACOM marks through registrations in the United States and numerous other jurisdictions. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.1.
In comparing Complainant’s marks with the disputed domain names, the Panel finds that the disputed domain names are confusingly similar to Complainant’s marks. Each disputed domain name begins with Complainant’s VIACOMCBS mark, followed by dictionary terms, namely, “copyright notice.” It is the consensus view of UDRP panels that, where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark. Moreover, where the relevant trademark is recognizable within the disputed domain names, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, sections 1.7 and 1.8.
It is the well-established view of UDRP panels that the generic Top-Level Domain “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, respondent’s use of, or demonstrable preparations to use the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) respondent has been commonly known by the domain names, even if it has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names or is using the VIACOM, CBS or VIACOMCBS marks with the permission of Complainant. The nature of the disputed domain names cannot constitute fair use since they effectively impersonate or suggests sponsorship or endorsement by the trademark owner. See, for example, Iflscience Limited v. Domains By Proxy LLC / Dr Chauncey Siemens, WIPO Case No. D2016-0909; B&B Hotels v. WhoisGuard Protected, WhoisGuard, Inc. / Soro Wonna, WIPO Case No. D2020-2837. See also WIPO Overview 3.0, section 2.5.1.
The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.
Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain names.
Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. The circumstances of the case prevent the inference of rights nor legitimate interests on the part of Respondent. There is no evidence that Respondent is known by the disputed domain names. Rather, the disputed domain name <viacomcbscopyright-notice.com> resolves to a page comprising pay-per-click links, and the disputed domain name <viacomcbs-copyrightnotice.com> redirects to Complainant’s CBS Website. Neither use establishes rights or legitimate interests. See WIPO Overview 3.0, section 2.9, and cases cited thereunder.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain names. Complainant’s rights in its distinctive and well-known VIACOM, CBS and VIACOMBCBS mark significantly predate the registration of the disputed domain names. The disputed domain names reflect Complainant’s marks in their entirety, together with dictionary terms. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith on the part of Respondent. See WIPO Overview 3.0, section 3.1.4.
The use of the disputed domain names to redirect to Complainant’s website and to a pay‑per-click website is further evidence of bad faith. Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain names, nor does the Panel find any such use plausible. See, for instance, Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 names <viacomcbs-copyrightnotice.com> and <viacomcbscopyright-notice.com> be transferred to Complainant.
Date: November 2, 2021