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Viacom International Inc. v. Torontoseeker [2005] GENDND 306 (19 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Viacom International Inc. v. Torontoseeker

Case No. D2005-0232

1. The Parties

The Complainant is Viacom International Inc., New York, New York, United States of America, represented by Gowling Lafleur Henderson, LLP, Canada.

The Respondent is Torontoseeker, Toronto, Ontario, Canada, represented by Joshua Agho, Canada.

2. The Domain Name and Registrar

The disputed domain name <mtvdesi.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2005. On March 3, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On the same date, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2005. The Response was filed with the Center on March 31, 2005.

The Center appointed Daniel J. Gervais as the sole panelist in this matter on April 7, 2005. 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

The Complainant owns multiple trademark registrations for the mark MTV and associated designs, associated, inter alia, with television services, including MTV Networks, a division of the Complainant. The Complainant operates websites in various markets and languages, including “www.mtvchinese.com”, “www.mtvindia.com”, “www.mtvjapan.com” and “www.mtvasia.com”.

“Desi” is a generic term for people of East Indian descent.

On December 13, 2004, the Complainant announced that it would launch the “MTV Desi” television channel. The next day, the Respondent, who is not associated with the Complainant, registered the domain name. Initially, the domain name resolved to a web page offered sex enhancement products. After receiving a cease-and-desist letter from the Complainant’s representatives, the website indicated that it could be an acronym for My Truck Van Deals Events Sales Insurance. The Respondent did not offer the domain name for sale but indicated that it was willing to entertain offers.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the domain name is confusingly similar with the Complainant’s mark MTV, in which the Complainant has rights, as evidenced by its numerous registrations in various countries, including Canada.

The Respondent is not making any legitimate use of the domain name. It is not known by that name, nor has it made a bona fide offering of goods or services.

The Respondent registered and is using the domain name in bad faith. The timing of the registration, one day after the press conference, cannot be a coincidence. It is a sign that the Respondent intended to divert Internet users or free ride on the Complainant’s goodwill. Using a well-known mark in a domain name to then offer adult content is another sign of the Respondent’s bad faith, as is his willingness to sell the domain name for a price far in excess of the out-of-pocket costs.

B. Respondent

The Respondent asserts that domain name is not identical or confusingly similar to any trademarks in which the Complainant has rights because the domain name is entirely unrelated to the Complainant.

The Complainant does not have any trademarks pending on “mtvdesi”.

Monster Trucks and Vans is the Acronym for “mtv”, and “desi” regers to the Respondent’s representative, who is of East Indian descent.

The Respondent has legitimate interest to the domain name because it was the Respondent who thought of it first. The Complainant has not provided any evidence that the domain name was registered as a result of the press conference.

The Respondent’s representative asserts that ever since he was 8 years old, he has been in love with monster trucks and vans. He thought of the domain and registered it for the sole purpose of fulfilling one of his life-long passions.

The domain name was registered and is being used in good faith. The Complainant’s claim is completely bogus. After the Respondent registered the domain name, it was simply parked with the Registrar while preparations for its use were being made. The Respondent had no intention of selling it as it was registered for his own “personal” use, even though he could “use the money”.

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1); and

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.2); and

3. The domain name has been registered and is being used in bad faith (see below, section 6.3).

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the 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. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

6.1 Is the domain name Identical or Confusingly Similar to a Trademark in which Complainant has Rights?

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As to the first question, the record confirms that the Complainant has used the mark MTV for several years prior to the registration of the domain name, and that the Complainant succeeded in obtaining several registrations of said mark. The Panel finds that the Complainant has rights in the mark MTV.

As to the second question, the Panel finds that the domain name is confusingly similar to these marks. The Complainant operates a “family of marks” incorporating the letters “mtv”. The concept of a family of marks is well-known in Canadian trademark law--which is relevant owing in part to the Respondent’s location. (See, e.g., McDonald’s Corp. v. Yogi Yogurt Ltd. (1982), 66 C.P.R. (2d) 101.) In addition, the Complainant’s mark is well-known, and may benefit from a higher degree of protection, inter alia under Article 6bis of the Paris Convention and Articles 16(2) and (3) of the TRIPS Agreement

Because “desi” is (as represented by both parties in this case) denotes people of a certain ethnic background, its use is precisely in conflict with the family of local/regional marks composed of “mtv” followed by that country of region’s identifier used by the Complainant. Therein lies the likelihood of confusion. See Deutsche Telekom AG v. Ginjupalli Krishna Kishore, WIPO Case No. D2003-0391; and, with respect to the MTV mark specifically, Viacom International Inc. v. Erwin Tan, WIPO Case No. D2001-1440 (<mtv-girl.com>); Viacom International Inc. v. Emperor Sedusa, WIPO Case No. D2001-1438 (<mtvasia.net>); and Viacom International Inc. v. Sung Wook Choi and M Productions, WIPO Case No. D2000-1114 (<mtvkorea.net>).

The Panel finds for the Complainant on the first element of the Policy.

6.2 Does the Respondent Have Rights or Legitimate Interests in the domain name ?

The Complainants submits that the Respondent has no rights or legitimate interests in the domain name based on Complainant's prior use of MTV mark. The Respondent, disputes this contention.

According to Paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a 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.”

There are no elements showing that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. Not was any evidence submitted that a website would be launched at any point. The Respondent makes a simple assertion to that effect. In parallel, the evidence submitted by the Complainant shows that, initially, it was used to offer sexual enhancement products. Since then, as is stated by the Respondent himself, the domain name is “parked”.

The Panel finds that the Respondent has no rights or legitimate interests in the domain name.

6.3 Was the domain name Registered and Used In Bad Faith?

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website 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.

There is evidence of the situation described in Paragraph (b)(iv) and some evidence of the situation contemplated in Paragraph (b)(i). The relevant facts are mentioned above.

This case hinges on the credibility of the assertions presented by the parties. The Respondent claims that his registering of the domain name is linked to monster trucks and vans, although the website stated that it could refer to My Truck Van deals etc. (i.e., “my” instead of “monster”). After researching the Internet on several search engines, the Panel was unable to find, and the Respondent did not submit, any site using “mtv” as an abbreviation for Monster Trucks and Vans. The Panel similarly had trouble locating information on monster vans.

Against the backdrop of this dearth of supporting evidence, one may find the coincidence in dates between the Complainant’s announcement of the MTV Desi Channel and the registration of the domain name surprising. See Viacom International Inc. v. Bryan Dulsky, WIPO Case No. D2000-0961; SMS Demag AG v. Seung Gon, Kim, WIPO Case No. D2000-1434; and Clifford Chance LLP and Pünder GmbH v. CPIC Inc., WIPO Case No. D2000-1603.)

Apart from the well-known nature of the Complainant’s marks (which the Respondent does not deny), the domain name is composed of the Complainant’s mark to which is added the term “desi”, which evokes precisely the services offered by the Complainant and associated with its marks. It is reasonable to conclude that only someone who was familiar with the mark and what it stands for would have gone through the trouble of registering the domain name, especially one day after the press conference announcing the new channel. The Respondent does not deny knowledge of the press conference, simply that he does not “concur” with the Complainant’s assertion that the press conference and the registration of the domain name are related.

The Panel concludes that the Respondent registered the domain name in bad faith and is using either to try to sell it to the Complainant or to sell unrelated services, such as “adult” content (see Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199; and Viacom International Inc. v. Emperor Sedusa, supra).

The Panel finds for the Complainant on this third element of the test.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <mtvdesi.com> be transferred to the Complainant.

Daniel J. Gervais
Sole Panelist

Dated: April 19, 2005