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Lilly ICOS LLC v. Sachin Tailor [2005] GENDND 625 (16 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Viacom International Inc., and MTV Networks Europe v. Web Master

Case No. D2005-0321

1. The Parties

The Complainants are Viacom International Inc., and MTV Networks Europe, both of New York, New York, United States of America; represented by Simmons & Simmons, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Web Master, General Delivery, Georgetown Grand Cayman KT, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <mtvbase.com> is registered with Address Creation.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2005. On March 30, 2005, the Center transmitted by email to Address Creation a request for registrar verification in connection with the domain name at issue. On April 28, 2005, Address Creation 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 April 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2005.

The Center appointed Ian Blackshaw as the sole panelist in this matter on June 3, 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 Complainants are Viacom International Inc., a company incorporated under the laws of Delaware, United States of America, the owner of the MTV BASE trademark registration and goodwill in the MTV BASE name, the subject of the present Complaint, and MTV Networks Europe, a partnership organized and existing under the laws of Delaware, United States of America, the trading entity of Viacom International Inc. in the United Kingdom of Great Britain and Northern Ireland and Europe, and the owner of part of the goodwill in the MTV BASE name.

The Complainants carry on a wide range of businesses under the MTV trademark and different permutations of this trademark, including the trademark MTV BASE, inter alia, in the provision of communication and entertainment services, throughout the world. In particular, the Complainants operate cable and satellite television channels transmitting music and programs under the name MTV in numerous countries around the world, including the United States of America, the United Kingdom, Ireland and a number of other European countries.

MTV enjoys a level of popular success worldwide, which is virtually unparalleled in cable television history. MTV is also recognized as the leader in the music industry and has received numerous global awards and recognition of its achievements.

The Second Complainant has been operating a television channel under the name MTV BASE in the United Kingdom since July 1, 1999. The MTV BASE channel has also recently been launched throughout Africa. The MTV BASE channel features music videos from popular artists, including Beyoncé Knowles, 50 Cent, Ciara and Ludacris, and currently seen in approximately 10.4 million households worldwide. Since the Second Complainant’s launch of the MTV BASE channel, several million pounds have been spent on advertising and marketing this channel in the United Kingdom alone. The target market for this channel is young adults.

The Complainants have had a presence on the Internet since 1994. In 1995, the First Complainant launched the website “www.mtv.com”. Copies of printouts of pages from this website have been provided to the Panel. During 2004, “www.mtv.com” averaged a monthly audience in excess of 13 million unique individuals. This website offers for sale a variety of MTV branded goods including clothing, DVDs, CDs and other products related to the Complainants’ music television channels.

MTVBASE was registered as a word mark in the UK on June 10, 1999, under UK Trade Mark No. 2199860 in Classes 38 and 41 in respect of communications services and education and entertainment services. And the Complainants have a substantial reputation and goodwill in this trademark.

5. Parties’ Contentions

A. Complainant

The Complainants make the following contentions:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), (b)(ix)(1))

(1)The trademark MTV BASE is registered in the UK, and the First Complainant filed for this mark on June 10, 1999, almost 5 years prior to the registration of and the acquisition by the Respondent of the Domain Name at issue.

Furthermore, on April 16, 1999, MTVN Online L.P. (a company within the First Complainant’s group) registered the domain name <mtvbase.co.uk>. A copy of a printout from the WHOIS database for the domain name <mtvbase.co.uk> has been provided to the Panel.

(2)The Domain Name at issue is confusingly similar to trademarks in which the Complainants have rights. These trademarks are numerous and a schedule containing details of some of these trademarks has been provided to the Panel. In particular, the Domain Name is identical to the distinctive element of Community Trade Mark Registration No.1518463 being the word mark MTV BASE HIP HOP REVIEW. This mark was registered in Classes 9, 25, 38, 41 and 42 in respect of a wide range of goods and services, including electrical and scientific apparatus, clothing, communications services, education and entertainment services and miscellaneous services, on April 9, 2001.

(3)The Domain Name at issue is also identical to the distinctive element of the Complainants’ UK trade mark registration No. 2366792 for the word mark MTV BASE PRESENTS: BEATS, RHYMES & LIFE. This mark was registered in Classes 9 and 41 in respect of electrical and scientific apparatus and educational and entertainment services, on December 10, 2004 (but applied for on June 25, 2004). The Complainants also own registered Community Trade Marks nos. 1546159 and 1546233 for the word and device mark MTV MUSIC TELEVISION BASE in respect of Classes 9, 16, 25, 38, 41 and 42 and registered on March 8, 2000. Additionally, the Complainants have rights in Community Trade Mark Application No. 3207545 for the word mark MTV BASE LOUNGE. This application covers Classes 9, 25 and 41. There have been no oppositions filed against this trademark, since it was published on August 16, 2004, and it is likely that registration of the trademark is imminent. It is also contended that trade marks which have not been registered can, in any event, be protected under the Policy, as demonstrated in Bennett Coleman & Co. Ltd v. Long Distance Telephone Company, and Bennett Coleman & Co Ltd v. Steven S Lalwani (economictimes.com/the times of India.com), WIPO Case Nos D2000-0014 and D2000-0015.

2. The Respondent has no rights or legitimate interests in respect of the domain name; (Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2))

The Complainants make the following contentions:

(1) The Respondent is not making use of, nor making demonstrable preparations for use of, the Domain Name at issue in connection with a bona fide offering of goods or services within the meaning of Paragraph 4(c)(i) of the Policy. Further, there is no evidence that the Respondent is commonly known by the Domain Name or that it is making legitimate non-commercial or fair use of the Domain Name.

(2) Prior to becoming registered in the Respondent’s name, the Domain Name at issue was registered in the name of 260.com, a US corporation based at Indiana, USA. A copy of a printout of a WHOIS database search on December 17, 2004, has been provided to the Panel. The website that 260.com operated at the Domain Name at this time was little more than a host page with links to websites offering identical and similar goods and services to those offered by the Complainants. Copies of printouts of pages from the website operating at the Domain Name on December 17, 2004, have been provided to the Panel. The Complainants’ lawyers wrote to 260.com to notify it of the Complainants’ rights in the Domain Name and to request the transfer of the name to the Complainants. A copy of the letter sent to 260.com on December 20, 2004, has been provided to the Panel. No response was received to this letter or to a follow up email sent to 260.com on January 6, 2005; again a copy has been provided to the Panel.

Whilst preparing to file this Complaint, the Complainants’ lawyers subsequently undertook a new WHOIS search on March 8, 2005, and discovered that the Respondent had superceded 260.com as the registered owner of the Domain Name. It appears that this change of registered proprietor took place on March 2, 2005, evidence of which has been provided to the Panel. The Complainants’ lawyers approached the Respondent by email on March 8, 2005, using the address given in the WHOIS register and attaching the earlier letter sent to 260.com. This email was returned as undeliverable. The website operating at the Domain Name has not changed since the Domain Name was transferred from 260.com to the Respondent. Copies of printouts from the website operating at the Domain Name at issue as at March 8, 2005, have been provided to the Panel. The Respondent is using the Domain Name commercially by diverting consumers and making commercial gain by using the Complainants’ well-known and reputable trademark in connection with identical and similar goods and services. The Complainants contend that the fact that the Domain Name is being used in this misleading way is evidence that the Respondent has no legitimate interest in the Domain Name.

3. The domain name was registered and is being used in bad faith;

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Complainants make the following contentions:

(1) The Complainants contend, by reference to paragraph 4(b)(ii) of the Policy, that the Domain Name at issue was registered in order to prevent the owner of the MTV BASE trade mark from reflecting the mark in a corresponding Domain Name and that the Respondent has engaged in a pattern of such conduct. The Complainants draw the Panel’s attention to Scripture Union International Council v. scriptureunion, WIPO Case No. D2004-0577, which involved the Respondent. According to the Panelist in that case, the complainant had “adduced considerable evidence that the Respondent is a serial cybersquatter” and that this “evidence is overwhelming and has not been responded to by the Respondent”. It is contended that this establishes that the Respondent has engaged in a pattern of bad faith registrations and that the present case, concerning the trade mark MTV BASE, is a further example of this conduct.

Furthermore, the Complainants note that the domain name registrants “Administrator Domain” and “Modern Limited – Cayman Web Development”, each of which has been cited as respondent in a number of WIPO UDRP cases, have the same contact details as the Respondent. The Complainants submit that there is a strong likelihood that these registrants are connected to the Respondent. WIPO Case Nos. D2003-0919, D2004-0545, D2004-0932 and D2004-0946, are just some of the numerous cases in which these registrants were involved as respondents to similar complaints about illegitimate registration and/or use of domain names relating to famous trademarks. In each of the previous decisions, it was ordered that the Domain Name in dispute be transferred to the complainant. Copies of these cases have been provided to the Panel.

(2) By virtue of the reputation of the Complainants and the widespread use of the MTV and MTV BASE trademarks, it is inconceivable that the Respondent acquired the Domain Name at issue without knowledge of the Complainant’s rights in and to the MTV BASE name.

(3) Further or alternatively, the Complainants contend, by reference to paragraph 4(b)(iii) of the Policy, that the Respondent registered the Domain Name at issue primarily for the purpose of disrupting the business of the Complainants.

(4) Further or alternatively, the Complainants contend, by reference to paragraph 4(b)(iv), that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line locations, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of its website or locations, or of a product or service on its website or locations. In support of this, the Complainants rely on the facts set out above relating to the contents of the website accessible at the Domain Name.

(5) Indeed, many of the keywords on the Respondent’s website are the names of popular artists featured on MTV BASE, such as Beyoncé, 50 Cent and Ludacris. This is clearly an attempt to divert consumers from websites operated by MTV, and, in particular, targets the young consumers who watch the Complainants’ music television channels and wish to access the Complainants’ websites. Furthermore, the use of the trademark MTV as a keyword, along with the references to satellite television, music downloads and music videos, are evident attempts by the Respondent to confuse consumers.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions.

6. Discussion and Findings

To qualify for cancellation or transfer, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is 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 domain name; and

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

In accordance with 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.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) 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 as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous cases in which the respondent failed to file a Response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936. The failure by the Respondent to dispute the Complainant’s allegations allows the inference to be drawn by the Panel that they are true.

Nevertheless, the Panel must not decide in the complainant’s favor solely based on the respondent’s default (Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is established case law that where a domain name incorporates a complainant’s registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The Domain Name at issue incorporates without any modification the trademark MTVBASE, which is owned and commercially promoted, used and exploited by the Complainants in and for the purposes of their business. This, apart from anything else, is a clear misuse and infringement on the part of the Respondent of the trademark MTVBASE and also a breach of the Policy.

In view of this, the Panel finds that the Domain Name at issue registered by the Respondent is identical or confusingly similar to the trademark MTVBASE in which the Complainants have satisfied the Panel that they have well-established and valuable rights.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s 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;

- Whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- Whether the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the Domain Name at issue.

In particular, no evidence has been adduced that the Respondent has been using or has made any demonstrable preparations to use the Domain Name at issue in connection with a bona fide offering of goods or services; nor has been commonly known by the Domain Name; nor is making a legitimate non-commercial or fair use of the Domain Name; nor has the Respondent been authorized or licensed by the Complainants to use the trademark MTVBASE as part of the Domain Name at issue.

Neither can the Respondent claim that it was unaware of the Complainants and their business activities (see below), which are world wide, well known and well established, nor its MTVBASE trademark, which has been registered, in many countries, including the United Kingdom of Great Britain and Northern Ireland, such registration having been completed almost 5 years prior to the registration of and the acquisition by the Respondent of the Domain Name at issue.

Furthermore, the adoption by the Respondent of a domain name identical to the Complainants’ trademark inevitably leads to the diversion of the Complainants’ consumers to the Respondent’s website (see further on this point below) and the consequential tarnishing of the Complainants’ well-known and valuable trademarks and corresponding goodwill. Indeed, many of the keywords on the Respondent’s website are the names of popular artists featured on MTV BASE such as Beyoncé, 50 Cent and Ludacris. The Panel agrees with the Complainants’ contention that, in the absence of any evidence to the contrary of which none is forthcoming, this is an attempt by the Respondent to divert consumers from websites operated by the Complainants, in particular, targeting young consumers who watch the Complainants’ music television channels and wish to access the Complainants’ websites. In other words, the Respondent is trading for commercial gain on the good name and well earned reputation of the Complainants’ business and trademark, by unfairly attracting to its own business and activities the Complainants’ goodwill in their business and in the mark MTVBASE, without any right or legal justification for doing so.

Thus, the Panel concludes that the Respondent has no rights to or legitimate interests in the domain name in issue.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.”

By registering and using the Domain Name at issue incorporating the well known and widely used trademark, MTVBASE, the Respondent is misleading consumers and Internet users into thinking that it is in some way connected, sponsored or affiliated with the Complainants and its well known and well established business; or that the Respondent’s activities are approved or endorsed by the Complainants, any and all of which is not, in fact, the case.

The Respondent is clearly trading on the Complainants’ goodwill and reputation in its trademark and business, which the Complainants have built up by expending time and money over the years. Such conduct, without any explanations by the Respondent to the contrary, of which none are forthcoming, constitutes bad faith. See the case of eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633, where it was stated that:

“The Domain Name consists of the EBAY trademark plus the addition of the country name Korea. Because the Domain Name incorporates the identical EBAY trademark, a consumer or user of the Internet viewing a website located at the “www.ebaykorea.com” domain address would be likely to assume that the website or operator is somehow sponsored by or affiliated with eBay, when it is not.”

Also, the failure by the Respondent to answer the Complainants’ email of March 8, 2005, and its attachments (referred to above), or the Complaint and participate in the present proceedings, is, in the view of the Panel, further evidence of bad faith on the part of the Respondent. If the Respondent had any justification for registering and using the Domain Name at issue in the first place, it is reasonable to expect that the Respondent would have taken this opportunity to put forward an answer in defense of its actions. The Panel can only conclude from the Respondent’s silence, having been duly notified of the Complaint, that the Respondent admits the Complainants’ contentions and has acted in breach of and contrary to the Complainants’ rights and interests in the present case.

Furthermore, this inference appears to be corroborated by the fact that the domain name registrants “Administrator Domain” and “Modern Limited – Cayman Web Development”, each of which has been cited as a respondent in a number of WIPO UDRP cases (some of which have been specifically referred to above), in which these registrants were respondents to complaints, similar to the present one, concerning the unauthorized registration and use of domain names incorporating famous trademarks, have the same contact details as the Respondent, raising a possible inference that these registrants are connected to the Respondent in some way. Again, this tends to suggest an established pattern of bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the Domain Name at issue in bad faith.

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 <mtvbase.com> be transferred to the Complainants.

Ian Blackshaw
Sole Panelist

Dated: June 16, 2005