Viacom International, Inc. v. Jester Media

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Viacom International Inc. v Emperor Sedusa

Case No. D2001-1438

1. The Parties

Complainant is Viacom International Inc. ("Viacom"), doing business

at 1515 Broadway, New York, New York 10036, U.S.A. Complainant’s authorized

representative is Barbara A. Solomon of Fross Zelnick Lehrman & Zissu, P.C.,

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

The Respondent is Emperor Sedusa, whose address is P.O. Box 2573, Ryan’s Place,

High Street, St. Johns NA, AG NA, Antigua and Barbuda.

The Respondent originally named in the Complaint was Jester Media whose address

is P.O. Box 2573, Ryan’s Place, High Street, St. Johns NA, AG NA, Antigua and

Barbuda, the same address as that given by Emperor Sedusa who is listed as the

administrative, technical and zone contact for Jester Media in the WHOIS printout

obtained by the Complainant on December 7, 2001.

Subsequent to the filing of the Complaint but prior to the commencement of

the proceeding, the Complainant established by contacting the Registrar Intercosmos

Media Group, Inc. ("the Registrar") that the Respondent is Emperor

Sedusa, the owner of Jester Media. The Complainant prepared an amendment to

the Complaint on December 28, 2001, and forwarded copies of the amendment to

the Respondent, the Registrar and the WIPO Arbitration and Mediation Center

("the Center").

2. The Domain Name and Registrar

The domain name in dispute is <mtvasia.net>.

The Registrar with which the disputed domain name is registered is Intercosmos

Media Group, Inc. d/b/a DirectNIC located at 650 Poydras St., Suite 2311, New

Orleans, LA, 70130, U.S.A.

3. Procedural History

The Complaint was filed pursuant to the Uniform Domain Name Dispute Resolution

Policy ("the Policy"), 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").

The Complaint was received on December 7, 2001, by the Center by e-mail and

in hard copy on December 11, 2001. The Center acknowledged receipt

of the Complaint on December 11, 2001.

The Complainant also sent the original Respondent Jester Media a copy of the

Complaint by e-mail and courier on December 7, 2001. A copy of the Complaint

was also sent by facsimile and first-class mail to the Registrar.

On December 13, 2001, a request for Registrar verification was forwarded to

the Registrar. On December 13, 2001, the Registrar confirmed receipt of the

Complaint by e-mail. The Registrar advised the Center that the current registrant

of the domain name was Sedusa, Emperor. However, the Registrant’s details appear

as "Jester Media" whose address is P.O. Box 2573, Ryan’s Place, High

Street, St. Johns NA, AG NA, Antigua and Barbuda. The Administrative Contact,

Technical Contact and Billing Contact are shown as Sedusa, Emperor.

On December 19, 2001, the Center forwarded an e-mail to the Registrar requesting

the Registrar to confirm whether Sedusa, Emperor is the current registrant of

the <mtvasia.net> domain name or whether the registrant is Jester Media

and requesting the Registrar to provide the Center with the contact details

of the current registrant.

On December 19, 2001, the Registrar advised the Center that the current registrant

is Emperor Sedusa, with his company name being Jester Media.

The current status of the domain name is active and paid in full.

On December 21, 2001, the Center advised the Complainant by e-mail that the

Registrar, Media Group, Inc. had advised that the Registrant is not Jester Media

which is the name of Registrant’s company. The Center requested the Complainant

to file an Amendment to the Complaint listing the Registrant as the Respondent.

The Complainant advised the Center in an e-mail dated December 21, 2001, that

publicly available databases continue to list Jester Media as the domain name

holder and as a result, the Complainant was unable to amend the Complaint. The

Complainant requested the Center to advise on how to proceed.

On December 27, 2001, the Center responded to the Complainant by attaching

the e-mail communication received by the Center from the Registrar providing

details of the current Registrant.

On December 27, 2001, the Complainant contacted the Center that according to

the attachment to the Center's e-mail, the domain name is owned by Jester Media

and Emperor Sedusa is listed as the individual at the organization. Complainant

queried the need to amend the Complaint since they appeared to have named the

correct registrant.

On December 28, 2001, the Complainant filed an Amendment to Complaint which

it delivered by e-mail and courier to the Respondent Emperor Sedusa, by facsimile

and first class postage to the Registrar and by e-mail and courier to the Center.

On January 8, 2002, the Center compiled a Formal Requirements Compliance checklist

and confirmed that formal requirements had been complied with.

On January 8, 2002, the Center forwarded Notification of the Complaint and

Commencement of Administrative Proceedings, together with a copy of the Complaint

and Amendment to the Complaint to the Respondent Emperor Sedusa, by e-mail and

post/courier. The Notification, Complaint, and Amendment to the Complaint (without

attachments) were copied to the Complainant and the Registrar by e-mail. The

Center advised the Respondent that the formal date of the commencement of the

administrative proceeding was January 8, 2002, and that the last day for sending

a Response to the Complainant and to the Center was January 28, 2002.

On January 29, 2001, the Center notified the Respondent that the Respondent

was in default and attached a formal Notification of Respondent Default.

The Complainant elected to have the dispute decided by a single-member Panel.

The Center appointed Ross Carson as the single member Panelist. Mr. Carson duly

submitted a Statement of Acceptance and Declaration of Impartiality. On February 20, 2002,

the Center forwarded Notification of Appointment of Administrative Panel to

the Parties.

Also, on February 20, 2002, the Center e-mailed the Transmission of Case File,

Complaint, and Amendment to Complaint to the Panelist and forwarded a hard copy

by courier. The date scheduled for the Panel’s decision is March 6, 2002. The

language of the proceedings is English.

4. Factual Background

The Trademark

Complainant submits that Viacom, through its wholly owned division MTV Networks,

operates several well-known television programming services. One of the best

known is MTV: Music Television ("MTV"). Within the United States,

the MTV programming service is a 24 hour-a-day, 7 day a week programming service

that features primarily music-related programming including music videos, interviews,

documentaries, entertainment information, and news. Marks, including MTV in

block letters, MTV in a stylized format, and MTV: Music Television in a stylized

format (collectively the "MTV Marks") are used to promote MTV and its programs

and are firmly associated with Complainant

Complainant advises that the MTV programming service first aired in the United

States in 1981. MTV is seen in 139 different territories worldwide and in over

365 million households.

Complainant submits that its MTV programming service is advertised worldwide

on television, in newspapers and magazines, and on billboards and other outdoor

advertising. In all advertisements, the MTV Marks are prominently shown.

The MTV Marks appear in off-channel advertising worldwide and on-air at the

beginning of all programs on the MTV channel. The MTV Marks are also seen on

the set of many programs as well as in connection with station identifiers.

In addition, the MTV Marks are the core element of on-air commercials for the

programming service. These commercials have been recognized by the advertising

industry for their innovation and excellence.

Complainant submits that the MTV Marks are also used in connection with programs

that MTV produces including, among others, "The MTV Video Music Awards,"

"MTV Movie Awards," "MTV Spring Break," and "MTV Unplugged."

These shows are aired worldwide, including in Japan.

5. Parties’ Contentions

A. Complainant

(i) The Complainant submits that the <mtvasia.net> domain name is identical

or confusingly similar to the Complainant’s MTV marks.

The only deviation is that Respondent has added the geographically descriptive

term "asia" as a suffix. Consumers are likely to believe that the

domain name <mtvasia.net> is related to Complainant’s MTV Asia programming

service or the <mtvasia.com> website operated by Complainant.

(ii) The Complainant submits that the Respondent has no rights or legitimate

interests in the domain name <mtvasia.net>.

(iii) 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. Respondent is using the name to divert

traffic to hardcore pornography websites thereby tarnishing the mark in violation

of UDRP 4(c)(iii). Respondent’s use of the domain name is not legitimate or

bona fide but was done to mislead consumers and tarnish the MTV marks.

(i) Identical or Confusingly Similar

The Complainant submits that the <mtvasia.net> domain name is identical

or confusingly similar to the Complainant’s MTV marks

Complainant submits that the only deviation is that Respondent has added the

geographically descriptive term "asia" as a suffix. Consumers are

likely to believe that the domain name <mtvasia.net> is related to Complainant’s

MTV Asia programming service or the <mtvasia.com> website operated by

Complainant.

Complainant submits that it has spent hundreds of millions of dollars over

the last 20 years in advertising and promoting its services and merchandise

under the MTV Marks

Complainant advises that it owns trademark registrations in over 100 countries

for the MTV Marks. At pages 5 and 6 of the Complaint, Complainant has provided

details of several of its U.S. Registrations, registered since at least as early

as 1984. The list of registrations includes the following:

MARK

REG.

NO.

DATE

OF REGISTRATION

GOODS/INT’L

CLASS

MTV

MUSIC TELEVISION (Stylized)

1,310,411

December

18, 1984

Cable

television broadcasting services in Int’l Class 38

MTV

MUSIC TELEVISION (Stylized)

1,400,277

July

8, 1986

Books,

posters, bumperstickers, calendars, decals in Int’l Class 16

MTV

MUSIC TELEVISION (Stylized)

1,580,650

January

30, 1990

Production

of tv programs; music shows; live concerts; tv news shows in Int’l Class

41

MTV

MUSIC TELEVISION

1,818,179

January

25, 1994

Cable

television broadcasting services; production of tv shows in Int’l Classes

38, 41

MTV

1,985,017

July

9, 1996

Video

recordings featuring music and television programming and sound recordings

featuring music in Int’l Class 9; Television broadcasting in Int’l Class

38; Production and presentation of TV news shows, sports events, fashion

shows and others in Int’l Class 41; disseminating information on news,

entertainment, sports, fashion etc. via the Internet in Int’l Class 42.

Complainant advises that these registrations are valid, subsisting and in full

force and effect. Complainant has attached as Exhibit B copies of or information

concerning Complainant’s U.S. trademark registrations for the MTV Marks.

Complainant advises that in 1995, Complainant launched the website <mtv.com>,

which is consistently ranked as the number one music content site among teens

13-17. In the year 2000, the average monthly audience was 7,708,363. This website

is available to any consumers in Antigua with access to the Internet. These

same consumers can access Complainant’s other websites including <mtvasia.com>,

which was launched on May 21, 1999.

Through MTV Networks Asia, known as MTV Asia, a joint venture of MTV Networks

and Universal Music, Complainant provides programming under the MTV Mark in

more than 130 million homes in Asia. Among the five programming services operated

by MTV Networks Asia is MTV Southeast Asia, which was launched on May 5, 1995.

The channel is available in 10 Asian countries including Indonesia, Malaysia,

Philippines, Singapore, Thailand, Hong Kong and Vietnam. This channel alone

reaches more than 20 million households. MTV is Asia’s most watched music channel

with more than 200 advertisers and 40 sponsors. Under the terms of the joint

venture, Complainant owns all rights in the MTV Asia mark. Complainant has attached

as Exhibit C to the Complaint a trademark License Agreement relating to MTV

MUSIC trademarks.

Complainant has registered or applied to register its MTV Marks in over 25

countries in Asia. A printout showing the status of these marks is attached

as Exhibit D to the Complaint.

Complainant submits that Complainant’s MTV Marks are famous and that their

fame existed long prior to Respondent’s registration of <mtvasia.net>.

Complainant has attached articles attached as Exhibit E to the Complaint. In

a December 13, 1999 article in The New York Times, MTV was named as one

of the 100 "most powerful corporate, media and product brands in the 20th

century."

Complainant advises that in proceedings before WIPO, panelists have repeatedly

recognized the fame of the MTV Marks. See, e.g., Viacom Int’l Inc. v. Bryan

Dulsky, WIPO Case No. D2000-0961 (noting

that Viacom’s MTV trademarks are famous); Viacom Int’l Inc. v. Sung Wook

Choi and M Production, WIPO Case No. D2000-1114

(noting that the MTV Marks are well known, enjoy an "extensive reputation"

and are famous).

(ii) Respondent has no Rights or Legitimate Interests in <mtvasia.net>

On September 9, 2001, Respondent registered <mtvasia.net>. As of that

date, Complainant had been using its MTV Marks in the U.S. for 20 years, had

obtained numerous federal trademark registrations for its marks in the U.S.,

had registered its marks worldwide and had been using its mark in Asia for over

5 years.

There has never been any relationship between Viacom and Respondent, and Respondent

has never been licensed or authorized to use the MTV mark in any manner, including

in or as part of a domain name.

Numerous facts exist here to show that Respondent can demonstrate no legitimate

interests in <mtvasia.net>. First, the domain name was registered after

Complainant had obtained numerous U.S. federal trademark registrations for its

MTV Marks, after the MTV Marks had been used worldwide, and after Complainant

had established an Internet presence available worldwide at <mtv.com>

and <mtvasia.com>. See Viacom Int’l Inc. v. mtvmp3.com, WIPO

Case No. D2001-0275; Guinness UDV North America v. Lewis, WIPO

Case No. D2001-0621; Chanel, Inc. v. BuyBeauty.com, WIPO

Case No. D2000-1126.

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 <mtvasia.net>. Under the circumstances, Respondent cannot

show any legitimate rights or interests in the names. See Guerlain S.A. v.

H.I. Investments, WIPO Case No. D2000-0494

(no rights or legitimate interest found where complainant has not licensed or

otherwise permitted respondent to use its trademark or to apply for a domain

name incorporating its trademark).

Respondent is not using the domain names 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 names.

When one types in the domain name <mtvasia.net> one is immediately diverted

to a hardcore pornography site at <www.asianshardcore.com>. See Exhibit

F. Once at that site, an Internet user cannot easily leave. Closing the page

only brings the user to other hardcore porn sites. See Exhibit G.

On November 27, 2001, Viacom sent a demand letter to Respondent by email and

first class mail asking that the domain name be transferred. See Exhibit H.

No response was received to that letter.

Respondent is using the name to divert traffic to hardcore pornography websites

thereby tarnishing the mark in violation of UDRP ¶4(c)(iii). See Exhibits F

and G. Respondent’s use of the domain name is not legitimate or bona fide but

was done to mislead consumers and tarnish the MTV marks. Under such circumstances,

no legitimate rights can be found. World Wrestling Foundation Entertainment,

Inc. v. Matthew Bessette, WIPO Case No.

D2000-0256 (no legitimate interest where domain names used in connection

with porn sites); Madonna Ciccone v. Dan Parisi, et al., WIPO

Case No. D2000-0847 (use of domain name for adult entertainment site does

not create legitimate rights where name obviously selected to trade on fame

of Complainant’s mark.)

There is no evidence to suggest that Respondent is now or has never been known

by the name MTV or MTV ASIA. While Respondent was given the opportunity to explain

why it adopted the domain name, it chose instead to ignore Complainant’s cease

and desist letter, giving rise to the inference that Respondent has no legitimate

rights.

(iii) Respondent Registered and Used <mtvasia.net> in Bad Faith

Complainant submits that it has satisfied the final element of the Policy

that the Respondent registered and used the domain name <mtvasia.net>

in bad faith.

Complainant submits that the issue of bad faith is supported by the fact that

Respondent is using the name to divert consumers to pornographic websites. See

Exhibits F and G. Panelists have held this to be conclusive evidence of bad

faith. Madonna Ciccone v. Dan Parisi, WIPO

Case No. D2000-0847; World Wrestling Federation Entertainment, Inc.,

v. Bessette, WIPO Case No. D2000-0256;

CCA Industries, Inc. v. Dailey, WIPO

Case No. D2000-0148; Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren,

WIPO Case No. D2000-0021.

Complainant further submits that other evidence supports a finding of bad faith.

First, Complainant submits that Respondent has taken Complainant’s trademark

MTV as the dominant part of its domain names shows bad faith. Chernow Communication,

Inc. v. Jonathan Kimball, WIPO Case No.

D2000-0119.

Second, Complainant advises that Respondent has failed to respond to Complainant’s

cease and desist letter. Panelists have found this to constitute evidence of

bad faith. Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc.

WIPO Case No. D2000-0090; NFL Properties,

Inc. et al. v. BBC Ab, WIPO Case No. D2000-0147;

Playboy Enterprises Int’l Inc. v. BEG Service KB, WIPO

Case No. D2001-0494. Respondent was given the opportunity to explain why

the domain name was taken. By failing to respond, Respondent in effect has admitted

that there was no bona fide reason for taking <mtvasia.net> other than

to profit from Complainant’s fame and reputation.

Third, Complainant submits that the domain name is so obviously connected with

the Complainant that its very taking by someone with no connection with the

Complainant suggests "opportunistic bad faith." See Novus Credit

Services Inc. v. Personal, WIPO Case No.

D2000-1158 and cases cited therein which have followed this reasoning. The

MTV mark is so famous that Respondent had to have known about it. As such the

registration of the mark as a domain name without any color of title or justification

is proof of bad faith on Respondent’s part. See Guinness UDV North America

v. Lewis, WIPO Case No. D2001-0621; Chanel,

Inc. v. Uraina Heyward, WIPO Case No.

D2000-1802.

Fourth, Complainant submits that Internet users are likely to believe that

the <mtvasia.net> connects to a website associated with or sponsored by

Complainant given Complainant’s use of <mtvasia.com>, MTV Asia and MTV.

Since Respondent has never been authorized by Complainant to use the MTV Marks,

the very fact that Respondent has registered <mtvasia.net> establishes

bad faith use and registration. See, e.g., Pharmacia & Upjohn

Company v. Moreonline, WIPO Case No. D2000-0134;

Heelquick, Inc. v. Michael Goldman et. al., NAF 92527 (registration of

domain name comprised of complainant’s mark found to be in bad faith since it

can mislead the public into thinking registrant owns the name). By using Complainant’s

mark as its domain name, Respondent is attempting to ride on the fame of Complainant’s

mark and use that fame to divert consumers to its websites for commercial advantage.

B. Respondent

The Respondent did not file a Reply or any evidence to demonstrate Respondent’s

rights to and legitimate interest in the domain name, examples of which are

set out in Paragraph 4 (c) of the Policy.

6. Discussion and Findings

In order for the Complainant to prevail and have the disputed domain name <mtvassia.net>

transferred to itself, Complainant must prove the following (Paragraph 4(a)

of the Policy):

(i) the domain name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights; and

(ii) the Respondent has no right or legitimate interest in respect of the domain

name; and

(iii) the domain name has been registered and is being used in bad faith.

The first element which the Complainant must prove is that the domain name

is identical or confusingly similar to the Complainant’s trademark or service

mark.

The MTV marks are very well known. In an article in the New York Times, Exhibit

E. MTV was named as one of the hundred "most powerful corporate, media

and product brands in the 20th Century." In earlier proceedings

before WIPO Panelists have recognized the extensive reputation of MTV marks.

Viacom Int’l Inc. v Bryan Dulsky, WIPO

Case No. D2000-0961.

The domain name <mtvasia.net> is confusingly similar to the Complainant’s

registered trademarks MTV. The domain name <mtvasia.net> is identical

to the Complainant’s trademark MTV with the addition of the geographical term

"asia". The first and inherently distinctive portion of the domain

name <mtvasia.net> is identical to Complainant’s trademark MTV. The Respondent

has associated the geographical term "asia" with the word MTV to create

a domain name which is confusingly similar with Complainant’s trademark MTV.

The second element which the Complainant is required to prove is that the Respondent

has no right or legitimate interests in respect of the domain name in dispute.

The Complainant has established that the trademarks MTV, MTV design and MTV

ASIA were in wide use throughout America and Asia before the registration of

the domain name in dispute <mtvasia.net>. The Complainant’s uncontested

evidence is that the Respondent has not been authorized by the Complainant to

use any of the Complainant’s trademarks as part of a domain name or otherwise.

The Respondent did not respond to the Complainant’s cease and desist letter

and did not file a Response submitting proof of rights or a legitimate interest

in respect of the domain name. The Complainant has proven that the Respondent

has no right or legitimate interest in respect of the domain name <mtvasia.net>.

The third element which the Complainant is required to prove is that the disputed

domain name has been registered and is being used in bad faith.

The disputed domain name <mtvasia.net> was registered many years after

the MTV marks had become renowned in America and Asia. By using the domain name

in dispute the Respondent has attempted to attract internet users to Respondent’s

website and other on-line locations by creating a likelihood of confusion with

the Complainant’s well-known marks as to source. The confusion leads to a hit

on the Respondent’s web site or other on-line locations. Further the subject

matter on the Respondent’s web site and other on-line locations involving pornography

is damaging to the Complainant’s goodwill in its business and trademarks. Madonna

Ciccone v Dan Parisi, WIPO Case No. D2000-0847;

Ingersoll-Rand Co. v Frank Gully, d/b/a/ Advcomren, WIPO

Case No. D2000-0021.

By using the domain name <mtvasia.net>, Respondent intentionally attempts

to attract for financial gain Internet users to the Respondents’ websites and

other on-line locations, by creating a likelihood of confusion with the Complainant's

trademarks as to the source, sponsorship, affiliation, or endorsement of the

Respondent’s web sites and/or the goods or services offered therein.

7. Summary of Findings

a) The domain name in dispute is confusingly similar to the Complainant’s trademark

MTV.

b) The Respondent has no right or legitimate interest in respect of the disputed

domain name. The disputed domain name promotes and suggests a connection or

relationship of the Respondent with the Complainant, which does not exist.

c) The domain name has been registered and is being used in bad faith by the

Respondent. The Respondent is using the confusingly similar domain name in dispute

to attract business to the Respondent’s website and associated pornographic

sites.

8. Decision

In the Complaint, the Complainant requested that in accordance with Paragraph

4 .i of the Policy, the Panel issues a decision that the disputed domain name

be transferred to Complainant. The Complainant having proved each of the three

elements set out in Paragraph 4 (a)(i), (ii) and (iii) of the Policy is entitled

to the remedy requested. The Panel requires that the domain name <mtvasia.net>

be transferred to Viacom International Inc.

Ross Carson

Sole Panelist

Dated: March 4, 2002

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