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Viacom International Inc. v. Erik Peterson

WIPO Case No. D2001-0346

Outcome
Transfer
Domain names
www-mtv.com
Complainant
Viacom International Inc.
Respondent
Erik Peterson (Chicago)
Panelist
Dennis A. Foster
Decided
03 Jun 2001
Response
The respondent did not reply
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0346.html

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Viacom International Inc. v. Erik Peterson

Case No. D2001-0346

1. The Parties

The Complainant is: Viacom International Inc., a company with offices at 1515

Broadway, New York, New York 10036, U.S.A. The Complainant is represented by:

Barbara A. Solomon, Esq., Fross Zelnick Lehrman & Zissu, P.C., 866 United

Nations Plaza, New York, New York 10017, U.S.A.

The Respondent is Erik Peterson, whose address is 505 W. Grant Place, Chicago,

Illinois 60614, U.S.A.

2. The Domain Name and Registrar

The domain name in dispute is: <www-mtv.com>

The registrar for the disputed domain name is: Register.com, whose address

is 575 8th Avenue, 11th Floor, New York, New York

10018, U.S.A.

3. Procedural History

This dispute is to be resolved in accordance with the Uniform Domain Name Dispute

Resolution Policy (the Policy) and Rules (the Rules) approved by the Internet

Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999,

and the World Intellectual Property Organization Arbitration and Mediation Center's

Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy (the

Center, the Supplemental Rules).

The Complaint was filed on March 9, 2001, by e-mail. On March 15, 2001, the

Complainant requested a suspension from the Center as it appeared the Complainant

and the Respondent were close to settling their dispute outside the context

of this proceeding. In consequence, the Center granted a suspension until April

14, 2001.

However, the Complainant and Respondent failed to settle their differences,

and on April 9, 2001, the Complainant requested that the Center re-institute

this proceeding.

On April 18, 2001, the Center requested that the registrar, Register.com, check

and identify the registrant for the domain name <www-mtv.com>. Register.com

reported to the Center on April 19, 2001, that the registrant was the Respondent,

Erik Peterson.

On April 23, 2001, the Center forwarded a copy of the Complaint to Respondent

by registered mail and by e-mail and this proceeding officially began. The Respondent

did not file a Response within the twenty (20) day time period required by Rule

5, and on May 14, 2001, the Center declared the Respondent in default.

The Administrative Panel submitted a Declaration of Impartiality and Independence

on May 18, 2001, and the Center proceeded to appoint the Panel on May 21, 2001.

The Panel finds the Center has adhered to the Policy and the Rules in administering

this Case.

This Decision is due by June 3, 2001.

4. Factual Background

Complainant operates several well-known television programming services, including

music television ("MTV"). The MTV programming service first aired in 1981.

The MTV marks are also used in connection with programs that Complainant produces

such as "The MTV Video Music Awards," "MTV Movie Awards," "MTV Spring Break,"

and "MTV Unplugged."

Complainant has had a presence on the Internet since 1994 and, in 1995, Complainant

launched the website <mtv.com>.

On April 28, 2000, Respondent registered the disputed domain name <www-mtv.com>.

On January 16, 2001, the Complainant sent a demand letter to the Respondent

in which it alleged trademark infringement and demanded the Respondent transfer

the domain name to the Complainant ((Exhibit F). The Respondent did not reply

to this letter.

The Complainant now is seeking to take possession of the disputed domain name

in this proceeding.

5. The Parties' Contentions

Complainant’s Contentions:

- Complainant owns trademark registrations in over 100 countries for the MTV

marks.

- There can be little doubt that the Complainant’s MTV marks are famous and

that their fame existed long prior to Respondent’s registration of the domain

name <www-mtv.com>.

- When the Respondent registered the disputed domain name on April 28, 2000,

the Complainant had been using its MTV marks for twenty (20) years.

- The addition of the generic prefix www, an acronym for the worldwide web,

does not distinguish the domain name from Complainant’s MTV mark.

- There has never been any relationship between Complainant and Respondent.

Respondent has never been licensed or authorized to use the MTV mark in any

manner, including in or as part of a domain name. In addition, the Respondent

is not using the domain name in connection with a bona fide offering of goods

or services, nor is Respondent making a legitimate non-commercial or other fair

use of the domain name.

- The Respondent is using the disputed domain name to link to a pornographic

website, "Big City Babes".

- Bad faith use and registration are evident from Respondent’s use of the domain

name to divert Internet users not only to a website unaffiliated with Complainant

but, more significantly, to a pornographic site. Respondent is attempting to

create an association with Complainant and to usurp Complainant’s goodwill.

Respondent’s Contentions:

The Respondent is in default in this proceeding and thus did not file any contentions.

6. Discussion and Findings

In order for Complainant to prevail and have the disputed domain name <www-mtv.com>

transferred to it, Complainant must prove the following (the Policy, para 4(a)(i-iii):

- the domain name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain

name; and

- the domain name was registered and is being used in bad faith

Identical or Confusingly Similar

The Complainant has produced a computer database printout of some of its MTV

mark registrations, including no. 1,310,411 dated December 18, 1984, in international

class 38 for cable television broadcasting services; and no. 1,386,644 dated

March 18, 1986, in international class 9 for pre-recorded video cassettes. (Complaint

Exhibit B) In addition, the Complainant has furnished a wealth of press material

attesting to the famousness of its MTV mark (Complaint Exhibit C).

The disputed domain name adds "www", a dash "-" and the

top level domain indicator "com" to the Complainant’s famous mark.

The dash is not distinctive and, in the context of the internet, neither "www"

(world wide web) nor "com" are distinctive. The only distinctive element

of the disputed domain name is the Complainant’s mark MTV. The Panel therefore

finds the disputed domain name is confusingly similar to the Complainant’s mark.

(InfoSpace.com.Inc. v. Blanck, ICANN/WIPO

Case No. D2000-0069, April 3, 2000)

Legitimate Rights or Interests

The Complainant contends "there exists no relationship between Complainant

and Respondent that would give rise to any license, permission or authorization

by which Respondent could own or use the domain name…" (Complainant, p.

10)

For its part, the Respondent is in default in this proceeding and thus has

made no attempt to make a showing of legitimate rights and interests or of fair

use under the Policy at 4(c).

The Panel finds the Respondent has no legitimate rights or interests in the

disputed domain name.

Registered and Used in Bad Faith

The Complainant has alleged a variety of grounds under which the Respondent

should be found to have registered and to be using the disputed domain name

in bad faith, but two grounds strike the Panel as being compatible with the

facts of this case.

First, the Respondent has violated the Policy at 4(b)(iv) because it is using

the good will of the Complainant’s famous mark to attract traffic to its own

website for commercial gain. And since the Respondent’s website at the disputed

domain name is linked to a pornographic site at "Big City Babes",

the Panel finds this is a further ground for finding the disputed domain name

was registered and used in bad faith. Many ICANN panels have found bad faith

where, as here, the Respondent associated the Complainant’s mark with pornographic

websites despite the fact that the Complainant’s mark previously was in no way

associated with pornography. (Complaint Exhibit E, and see Ingersoll-Rand

Co. v. Frank Gully, d/b/a Advcomren, ICANN/WIPO

Case No. D2000-0021, March 9, 2000)

7. Decision

The Panel has found the Respondent registered a domain name that added non-distinctive

features to the Complainant’s famous mark and thus was confusingly similar to

the Complainant’s mark. The Respondent had no right to, nor interest in, the

domain name. By using the name to link to a pornographic website, the Respondent

registered and was using the domain name in bad faith.

Based on the Policy at 4(i) and Rule 15, the Panel orders that the disputed

domain name <www-mtv.com> be transferred from the Respondent, Erik Peterson,

to the Complainant, Viacom International Inc.

Dennis A. Foster

Sole Panelist

Date: June 3, 2001

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