Viacom International Inc. v. Mr. Mladshi; MTVALBUMS – Mega Top Video Albums

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Viacom International Inc. v. MTVALBUMS – Mega Top Video Albums

/ Peter Mladshi

Case No. D2002-0196

1. The Parties

The Complainant is Viacom International Inc., of 1515 Broadway, New York, New

York 10036, United States of America, represented by Barbara A. Solomon Esq.

and Joseph R. Molko Esq. of Fross Zelnick Lehrman & Zissu of New York, United

States of America.

The Respondent is MVTALBUMS - Mega Top Video Albums / Peter Mladshi, of Podvojskogo

st. 29/680, St. Petersburg SP 191119, Russian Federation.

2. The Domain Names and Registrar

The disputed domain names are <mtvalbums.com> and <mtvcharts.com>.

The Registrar of the domain name <mtvalbums.com> is BulkRegister.com

of Baltimore, Maryland, USA and the Registrar of the domain name <mtvcharts.com>

is Go Daddy Software, Inc. of Scottsdale, Arizona, United States of America.

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute

Resolution Policy ("the Policy") adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules

for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October

24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO

Arbitration and Mediation Center ("the Center").

The Complaint was received by email on February 27, 2002, and in hard copy

on March 4, 2001. The Complaint was acknowledged on March 5, 2002, and that

day registration details were sought from the Registrars.

On March 6, 2002, Go Daddy Software, Inc. confirmed that the disputed domain

name <mtvcharts.com> is registered with it in the name of Peter Mladshi

(also named as the Technical, Administrative and Billing Contact) at the above

address; that the Policy applies to that disputed domain name and that the language

of the Registration Agreement is English.

On March 7, 2002, BulkRegister.com confirmed that the disputed domain name

<mtvalbums.com> is registered with it in the name of "MTVALBUMS –

Mega Top Video Albums" at the above address, that the Administrative and

Billing Contacts are:

"Mr. MTV Albums < mailto:contact@mtvalbums.com>

Organization

The Moon 88

Galax, Galaxy 8888

VI

Phone- 088 888888

Fax-",

that the Policy applies to that domain name and that the language of the registration

agreement is English.

On March 11, 2002, the Center formally dispatched copies of the Complaint by

courier (with enclosures) to the Respondent at the address mentioned above and

on March 8, 2002, by email (without attachments). The Center included with that

material a letter dated March 8, 2002, containing notification of the commencement

of this administrative proceeding, with copies (of the Complaint without attachments)

to the Complainant, the Registrars and ICANN.

The last day specified by the Center for a Response was March 31, 2002. No

Response was filed within the time limited by the Rules. On April 2, 2002, the

Center formally notified the Respondent of its failure to file a Response. On

April 3, 2002, a Response (which did not comply with the formal requirements

of the Rules) was filed by email. Receipt of the belated Response was acknowledged

on April 4, 2002. Although filed few days late, the Panel admits the Response.

The Complainant elected to have the case decided by a single-member Administrative

Panel ("the Panel") and on April 8, 2002, the Center appointed

Alan L. Limbury as panelist, Mr. Limbury having submitted a Statement of Acceptance

and Declaration of Impartiality and Independence. That day the Center transmitted

the case file to the Panel and notified the parties of the projected decision

date of April 22, 2002.

Rule 3(c) provides that a complaint may relate to more than one domain name,

provided that the domain names are registered by the same domain name holder.

The Panel is satisfied that the disputed domain names are registered by the

same domain name holder. Accordingly the Panel is satisfied that the Complaint

was filed in accordance with the requirements of the Rules and Supplemental

Rules.

The Panel is also satisfied that payment was properly made; the Complaint complies

with the formal requirements; the Center discharged its responsibility under

paragraph 2(a) of the Rules to employ reasonably available means calculated

to achieve actual notice to the Respondent of the Complaint; the Response was

filed within the extended time but was not in the form specified in the Rules.

The Panel was properly constituted.

The language of the proceedings was English, being the language of both registration

agreements.

4. Factual Background (undisputed facts)

Complainant owns trademark registrations in over 100 countries for the trademark

MTV and variations thereof. Through its wholly owned subsidiary MTV Networks,

Complainant provides television programming services, including one known as

MTV, a non-stop service featuring music-related programming. This was first

aired in the United States in 1981, and is now seen in 163 different territories

worldwide and in over 370 million households. Complainant has spent hundreds

of millions of dollars over the last 20 years in advertising and promoting services

and merchandise under the MTV marks.

In 1995, Complainant launched the website <mtv.com> which is consistently

ranked as the number one music content site among teens 13-17. During 1999,

<mtv.com> averaged a monthly audience of 429,000 individuals. This website

is available around the world, including in Russia.

Within the <mtv.com> web site, Complainant operates a page known as "MTV

Charts" located at the URL http://www.mtv.com/charts. This page is also

accessed by clicking on the "Charts" tab at the <mtv.com> home

page. At the MTV Charts page, visitors can access various charts displaying

sales information for record albums and singles. The MTV Charts page also features

charts prepared by and concerning MTV, including charts displaying the most

popular videos airing on MTV and listings of music videos currently being aired

on MTV. The MTV Charts page also provides – through links embedded in the listings

in the charts themselves – the ability to listen to songs, view music videos

and download shared music files. Complainant has operated a MTV Charts page

– in various formats and at different URLs – in connection with its <mtv.com>

web site since at least November 1998.

Over 75 sound recordings have been issued under the MTV mark and their sales

worldwide exceed 25 million copies.

The MTV mark has been used in connection with television programming services

in Russia since September 26, 1998, when MTV Russia was launched. MTV Russia

is seen in over 20 million households in cities in Russia and Kazakhstan including

St. Petersburg (where Respondent resides). Complainant, through its wholly owned

division MTV Networks International, has an ownership interest in MTV Russia.

MTV Networks has licensed the use of the MTV marks for use in the Russian Federation

and retains full ownership over the marks.

When the <mtvalbums.com> domain name was registered on October 27, 2000,

Complainant had been using its MTV marks for almost 20 years in the U.S. and

two years in Russia, had obtained numerous federal trademark registrations for

its marks in the U.S. and owned five registrations in Russia for the MTV mark

or marks that include MTV and eight pending applications. The earliest registration

issued in September, 1998. The domain name <mtvcharts.com> was registered

on June 18, 2001.

There has never been any relationship between Complainant and Respondent and

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

manner, including in a domain name.

The <mtvalbums.com> domain name connects to a website that lists albums

that have been recently released. The website also contains advertisements.

The site links to various third party sites on which are stored music files.

The site also contains various banner ads. On January 15, 2002. a banner ad

appeared for Playstation.

When Complainant originally became aware of this matter in May 2001, the registrant

was listed as "Mr. MTV Albums" with an address of "The Moon."

The only real address was for the billing contact, Name Zero, in California.

Complainant contacted Name Zero, which was able to contact the registrant who

provided a real name, Kalin Ivanovitch, a/k/a Kalin Ivanov, and an address in

St. Peterburg, Russia.

Complainant wrote to Mr. Ivanov. No response was received. However, changes

were made to the registration record. Thus, as of January 3, 2002, the owner

of the domain name was listed as <www.mtvalbums.com> while the address

remained the same. The WHOIS data also contained a new email address for the

administrative contact <webmaster@mtvalbums.com>. Complainant sent another

letter, dated January 10, 2002, to the registrant via email. Subsequently the

name of the registrant was changed to "MTVALBUMS – Mega Top Video Albums",

still with the same address.

Throughout this period, it appears as though the owner of the domain name was

using the URL <mtvalbums.com> in connection with a website devoted

to music. Over the course of time, however, the appearance of that website altered.

By January 8, 2002, the website prominently displayed the MTV logo and by January

15, 2002, a disclaimer had appeared. In an email dated January 14, 2002, an

individual identifying himself as the "legal adviser" to <MTVAlbums.com>

stated that his company had deleted the MTV logo from the site and included

a disclaimer.

As of February 27, 2002, the date this Complaint was filed, the <mtvalbums.com>

web site featured content identical to that featured on January 15, 2002, including

banner ads and links to sites containing shared music files.

Beginning on or about February 5, 2002, when visitors sought to exit the <mtvalbums.com>

web site, a new window would appear on the screen taking the user to a web site

located at the URL <mtvcharts.com>. This web site is highly similar in

appearance and style to the <mtvalbums.com> web site and provides precisely

the same service– access to shared music files over the Internet. In addition,

the <mtvcharts.com> web site features a logo highly similar to the MTV

logo.

5. Parties’ Contentions

A. Complainant

There is no question that a single party owns both disputed domain names and

is using them as part of an integrated service for providing access to shared

audio files over the Internet:

- the same address in St. Petersburg, Russia is provided for the registrant

of each of the disputed domain names;

- both web sites provide the same service in the same manner – linking to

sites offering access to shared audio files.

- both web sites are not only highly similar in appearance, but also feature

the same banner ads and make use of the same graphical features.

- users entering the <mtvalbums.com> web site are repeatedly confronted

by links to the <mtvcharts.com> site, and vice versa.

- when users exit the <mtvalbums.com> web site, a window featuring

the <mtvcharts.com>web site automatically appears on the

screen.

Complainant’s MTV marks are famous and their fame existed long prior to Respondent’s

registration of the disputed domain names. In an article in the August 6, 2001,

issue of Business Week that ranked the 100 most valuable brands in the

world, MTV ranked 40th with an estimated brand value of $6.6 billion.

The disputed domain names are identical or confusingly similar to the MTV marks.

They incorporate in whole Complainant’s famous MTV mark. Respondent has added

the generic terms "albums" and "charts". The addition of

a generic term to a famous mark such as MTV creates a domain name that is confusingly

similar to the trademark. Moreover, the addition of these common and generic

terms is actually likely to create confusion since Complainant has produced

and sold albums, and has operated a "MTV Charts" page within <mtv.com>,

including charts promulgated by MTV itself, since at least 1998.

Further, because the domain name <mtvalbums.com> refers to albums, consumers

are likely to believe that it refers to a website that lists sound recordings

that have been featured or even endorsed by MTV. Similarly, because the domain

name <mtvcharts.com> refers to charts, consumers are likely to believe

that it refers to a web site featuring charts promulgated by or somehow endorsed

by MTV. The disputed domain names engender an overall impression of web sites

sponsored by the owner of the famous MTV trademark.

Respondent has no rights or legitimate interests in the disputed domain names,

which were registered after Complainant had obtained numerous registrations

for its MTV marks, after the marks had been used worldwide, after the marks

had been registered in Russia, and after Complainant had been extensively using

its marks, including in Russia.

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 a domain name which incorporates in whole Complainant's MTV mark.

The disputed domain names suggest that Complainant is or may be associated

with the registrant of the domain names or may be authorizing or sponsoring

the web sites attached to the domain names.

It is obvious that the adoption of the acronym "Mega Top Video Albums"

or the name "Mr. MTV Albums" was done to try to assert a legitimate

interest when none exists.

The fact that Respondent is using the domain names to direct traffic to an

Internet site that provides information about music and albums and includes

other commercial advertising does not provide Respondent with any legitimate

interests in the domain names. As explained in Ciccone v. Parisi, WIPO

D2000-0847, "use which intentionally trades on the fame of another

can not constitute a ‘bona fide’ offering of goods or services". Here,

Respondent took Complainant’s famous trademark MTV as its domain names in order

to create confusion and to drive traffic to its sites for its commercial benefit.

Even if Respondent had a legitimate interest in providing information about

albums or recordings, which is the subject of the material on the web sites,

this does not give Respondent the right to use the MTV marks.

Where, as here, the MTV marks are venerable and distinctive and where, as here,

Respondent was on constructive if not actual notice of the MTV marks, it is

not reasonably possible for Respondent to demonstrate any legitimate interest

in the domain names.

Respondent registered and used the disputed domain names in bad faith because

Respondent knowingly adopted domain names that could be used only to cause confusion

and mislead consumers. By using Complainant’s mark as its domain names, Respondent

is attempting to create an association with Complainant and to usurp Complainant’s

goodwill. The domain names are so obviously connected with the Complainant that

the very use of the MTV mark by someone with no connection with the Complainant

suggests "opportunistic bad faith." The MTV mark is so famous that

Respondent must have known about it.

Respondent recognized the fame of the MTV mark when it registered the domain

names and used the MTV logo on its web sites. Respondent took advantage of the

fame of Complainant’s mark by registering domain names confusingly similar to

the MTV mark. This was obviously done in order to attract Internet users to

Respondent’s web sites with the view to maximizing Respondent’s own commercial

gain. The overall evidence and the inferences derived from the evidence clearly

show bad faith registration and use. Weighing most against Respondent is its

use of the MTV mark as the dominant part of its domain names. Based on the evidence,

it is clear that Respondent was aware of Complainant’s rights in the MTV mark

before it adopted the domain names. The fact that the Respondent used the MTV

logo shows that Respondent was aware of Complainant’s rights. The fact that

Respondent inserted a disclaimer on one of its web sites makes it clear that

Respondent was aware that the MTV mark is associated exclusively with Complainant.

B. The Respondent

The domain name <mtvalbums.com> is an abbreviation of Mega Top Video

Albums, clearly visible on all our webpages. <mtvalbums.com> is based

on its links to third party sites as none of the music files are stored on <mtvalbums.com>

servers, with the only one activity – to be an advertising list of all websites

that offer music albums for downloading.

In reply to the letter sent by Complainant seeking amicably to resolve the

problem concerning the "MTV" mark on <mtvalbums.com> and after

careful examination of the disputed matter, we have made all the needed corrections

and removed all the items that could be falsely associated with MTV Networks:

- we wrote the full website name "Mega Top Video Albums" on more

places in the website as well as in the title and on the top of the main page.

- we changed the background "M" of the Logo of our website – to

be not falsely associated with MTV Networks at first view.

- our visitors can easily find our main page as well as in our Disclaimer

and Privacy Policy that "This site is not associated with MTV Networks

in any way."

Complainant was informed of the above changes and we considered that the problem

was settled.

We did not agree to a gratuitous transfer of all our rights in the domain <mtvalbums.com>

to Complainant because we have invested a lot of funds in this activity.

We have temporarily ceased using the domain name <mtvalbums.com> and

we put an enter web page for visitors to redirect them to the domain <maxalbums.com>

pending the decision in this case.

With reference to the domain <mtvcharts.com> the first time we have received

a notification that MTVN has a claim on it was in the Center’s letter dated

April 2, 2002. We did not receive any notification from the Complainant, which

is contrary to the Policy.

We regret that we have failed to comply with the deadline for submission of

a Response because we haven’t received the Notification of Complaint and Commencement

of Administrative Proceeding.

Attached are recent copies of the main pages of http://www.MTVALBUMS.com and

http://www.MTVCHARTS.com.

6. Discussion and Findings

Procedure

For the reasons advanced by Complainant and set out above, the Panel finds

that the disputed domain names are registered by the same domain name holder

(whoever that may be) and that, accordingly, pursuant to Rule 3(a), the Complaint

may properly relate to them both.

Substantive issues

Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on

the basis of the statements and documents submitted and in accordance with the

Policy, the Rules and any rules and principles of law that it deems applicable.

To qualify for cancellation or transfer, a Complainant must prove each element

of paragraph 4(a) of the Policy, namely that:

(i) the disputed domain names are identical or confusingly similar to a

trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of

the domain names; and

(iii) the disputed domain names have been registered and are being used

in bad faith.

Identity or confusing similarity

Essential or virtual identity is sufficient for the purposes of the Policy:

see The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc.

(WIPO Case No. D2000-0113), Toyota

Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises

Ltd. (WIPO Case No. D2000-0802);

Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO

Case No. D2000-0102) and Blue Sky Software Corp. v. Digital Sierra Inc.

(WIPO Case No. D2000-0165).

Applying this test, the Panel finds that neither of the disputed domain names

is identical to the Complainant’s mark MTV nor to any of its variants.

The test of confusing similarity under the Policy is confined to a comparison

of the disputed domain name and the trademark alone, independent of the other

marketing and use factors usually considered in trademark infringement or unfair

competition cases: BWT Brands, Inc and British American Tobacco (Brands),

Inc v. NABR (WIPO Case No. D2001-1480);

Koninklijke Philips Electronics N.V. v. In Seo Kim (WIPO

Case No. D2001-1195); Energy Source Inc. v. Your Energy Source (NAF

Case No. FA101000096364); Vivendi Universal v. Mr. Jay David Sallen and GO247.COM,

Inc. (WIPO Case No. D2001-1121) and

the cases there cited.

In Microsoft Corporation v. Microsof.com aka Tarek Ahmed (WIPO

Case No. D2000-0548) contributing factors to the likelihood of confusion

were held to be the visual similarity between the domain name and the complainant’s

mark and the mark being strong and immediately recognizable.

Complainant has established that its mark MTV is famous and immediately recognizable.

Given Complainant’s use of that mark in connection with recorded music, Respondent’s

addition of the word "albums" to the mark MTV in the domain name <mtvalbums.com>

strengthens the false and hence confusing association with Complainant conveyed

by Respondent’s use of the MTV mark. The Panel finds this domain name to be

confusingly similar to Complainant’s mark MTV.

For the same reason, together with Complainant’s own prior and widespread use

of the web page "MTV Charts" accessed through its <mtv.com>

website, the Panel finds the domain name <mtvcharts.com> to be confusingly

similar to Complainant’s mark MTV.

The Complainant has established this element.

Illegitimacy

Respondent does not challenge the fame of Complainant’s mark MTV nor Complainant’s

assertion that there has never existed any relationship under which Respondent

has been authorized to use Complainant’s mark in any way. These circumstances

are sufficient to constitute a prima facie showing by Complainant of

absence of rights or legitimate interest in the disputed domain names on the

part of Respondent. The evidentiary burden therefore shifts to Respondent to

show by concrete evidence that it does have rights or legitimate interests in

those names: Do The Hustle, LLC v. Tropic Web (WIPO

Case No. D2000-0624) and the cases there cited.

The only explanation of Respondent remotely touching this issue is its claim

that <mtvalbums.com> is an abbreviation of Mega Top Video Albums. Those

words appeared as part of the registrant’s name "MTVALBUMS – Mega Top Video

Albums" only after Complainant had complained of the use of its trademark

in that domain name. Previously, the registrant was recorded as "Mr. MTV

Albums" which remains the name of the Administrative and Billing Contacts,

with the manifestly spurious address already set out on page 2 of this decision.

There is no evidence before the Panel that any real person is known as "Mr.

MTV Albums" nor that Mega Top Video Albums is an entity or business name

known to the law of the Russian Federation or of any other country.

Nor has Respondent denied Complainant’s assertion that the adoption of the

acronym "Mega Top Video Albums" or the name Mr. MTV Albums was done

to try to assert a legitimate interest when none exists.

Respondent does not claim to have been unaware of Complainant’s mark before

it registered the disputed domain names and the Panel finds Respondent did know

of Complainant’s famous mark before registering the disputed domain names. This

alone makes it implausible in the extreme that Respondent could demonstrate

a legitimate interest: Warner Lambert Export Limited v. Mr Darren Darcy

(WIPO Case No. D2000-0453). Further, use

which intentionally trades on the fame of another cannot constitute a ‘bona

fide’ offering of goods or services: Madonna Ciccone, p/k/a Madonna v. Dan

Parisi and "Madonna.com" (WIPO

Case No. D2000-0847).

Under these circumstances the Panel finds that Respondent has not demonstrated

that it has any rights or legitimate interests in the domain name <mtvalbums.com>

.

Respondent has made no attempt to demonstrate legitimacy with respect to the

domain name <mtvcharts.com>. It asserts that it had no notice of any claim

by Complainant regarding this domain name until it was notified by the Center

of its default in filing a Response. Respondent claims not to have received

the Notification of Complaint and Commencement of Administrative Proceeding.

The Complaint clearly concerns both domain names and was sent by the Center

to all known addresses of Respondent. It ill behoves a Respondent who has provided

an obviously false address, to claim that it is thereby disadvantaged. That

is why the Panel may proceed to a decision, even in the absence of actual notice

to a Respondent, once the Panel is satisfied that the Center has discharged

its responsibility under Rule 2(a) "to employ reasonably available means

calculated to achieve actual notice to Respondent".

Complainant has established this element of its case.

Bad faith registration and use

In SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport (NAF case

FA94956) a finding of bad faith was made where the respondent "knew or

should have known" of the registration and use of the trade mark prior

to registering the domain name. Likewise Marriott International, Inc. v.

John Marriot (NAF case FA94737); Canada Inc. v. Sandro Ursino (eResolution

case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com

(NAF case FA95037). This is not a case in which it is necessary to consider

constructive knowledge because Respondent does not deny actual prior knowledge

of Complainant’s famous mark and the Panel has found such knowledge. On this

footing alone the Panel finds the disputed domain names were registered in bad

faith.

The Panel also finds that Respondent has used the disputed domain names in

order to attract Internauts to Respondent’s own web site, for commercial gain,

by creating a likelihood of confusion with Complainant’s mark as to the source,

sponsorship, affiliation or endorsement of Respondent’s web site. The changes

effected by Respondent to the web site neither address nor remove the confusion

created by the domain names themselves. This is evidence of both bad faith use

and bad faith registration: Policy 4(b)(iv).

Complainant has established this element of its case.

7. Decision

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs

that the disputed domain names <mtvalbums.com> and <mtvcharts.com>

be transferred to Complainant.

Alan L. Limbury

Sole Panelist

Dated: April 16, 2002

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