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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viacom International Inc. v Sung Wook Choi and M Production
Case No. D2000-1114
1. The Parties
The Complainant is Viacom International Inc. of 1515 Broadway, New York, NY 10036, USA.
The Respondents are Sung Wook Choi of B1, Winner Building, 107-9 Banpo-dong, Seocho-gu, Seoul 137-041, Korea and M Production of the same address.
2. The Domain Names and Registrar
The domain names which this dispute relates to are mtvkorea.com and mtvkorea.net. The Registrar for both these domain names is Network Solutions.
3. Procedural History
3.1 The complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on 24 October 1999 ("Policy") and in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy also approved by ICANN on 24 October 1999 ("Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of 1 December 1999 ("Supplemental Rules").
3.2 The complaint was received by the WIPO Arbitration and Mediation Center ("Centre") by email on 24 August 2000 and by courier on 25 August 2000.
3.3 The Centre sent a request for Registrar Verification to Network Solutions on 31 August 2000 by email. The Registrar replied to the Centre’s request by email on 10 September 2000 verifying:
(a) that it had received a copy of the complaint from the Complainant;
(b) that Network Solutions was the Registrar for the domain names in dispute;
(c) that the Respondents were the current registrants of the domain names in dispute;
(d) the Respondents' contact details;
(e) that the Policy was applicable in relation to the disputed domain name; and
(f) that the disputed domain names both had an "Active" status.
3.4 The Centre sent its Notification of Complaint and Commencement of Administrative Proceeding to the Respondent on 13 September 2000.
3.5 The Respondent sent an email in reply to the Centre on 2 October 2000.
3.6 The Centre sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent on 24 October 2000 which formally appointed Philip N Argy as the sole panelist.
3.7 The Centre sent by email a Transmission of Case File to the Panel, Complainant and Respondent on 24 October 2000. The hard copy was sent on 25 October 2000 and received by the Panel on 30 October 2000.
4. Factual Background
The following information was asserted as fact in the Complaint and remains uncontested.
4.1 Activities of the Complainant
Viacom International Inc. operates the television programming services MTV: Music Television ("MTV"). The services include the provision of primarily music-related programming including music videos, interviews, documentaries, entertainment information and news.
MTV has been televised since 1981 and is now seen in over 300 million households and 87 territories worldwide including in the USA and South Korea. MTV services have been available in South Korea since 1995 and can currently be seen by 1.6 million households in Korea. MTV has been the subject of extensive coverage in the press in South Korea and the USA in the past five years. Since 1987, the Complainant has spent hundreds of millions of dollars promoting to advertise and promote its services and merchandise under the MTV marks.
4.2 The Complainant’s mark
The Complainant has trade mark registrations for the mark "MTV" in the USA, Korea and very many other countries. It also has trade mark registrations for various other marks which contain "MTV" such as ‘MTV Video Music Awards’, ‘MTV Online’ and ‘MTV Unplugged’.
The Complainant has been the registered proprietor of the mtv.com domain since 1995 and has been connected with the mtv.co.kr and mtvkorea.co.kr domains.
4.3 Activities of the Respondent
The following information is based on the assertions in the Response and remains uncontested.
Sung Wook Choi is a music video director and multimedia art director in Korea. M Production is described by Sung Wook Choi as his "business partner" and "business affiliate". It is not clear whether M Production has any independent legal existence. However, the respondent claims to have personally registered both the domain names in dispute and all the contact details for each of the Respondents are substantially identical. From the facts it appears that Sung Wook Choi is the beneficial registrant of both domain names.
The Respondent claims that the mtvkorea.com website is used to introduce and provide information about Multi Technics of Visual in Korea, apparently a business name the Respondent claims to use or have rights to. This claim is contested by the Complainant.
The Respondent registered mtvkorea.com and mtvkorea.net in 1999.
5. Parties’ Contentions
A. The Complainant’s contentions in the Complaint
5.1 The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 The Complainant says that the domain names in dispute are substantially identical or confusingly similar to its registered marks for MTV and the domain name in dispute incorporates the whole of the Complainant’s registered mark together with a geographical identifier.
5.3 The Complainant says that the Respondent has no rights or legitimate interests in the domain names in dispute. In particular the Complainant submits that Sung Wook Choi has no rights in the MTV mark and doubts that the Respondent has used the name "Multi-Technics of Visual in Korea" in connection with their business.
5.4 The Complainant asserts that the Respondent has registered and is using the domain names in dispute in bad faith. In support of this allegation the Complainant refers to:
(a) the high degree of renown of the MTV mark both in Korea and internationally at the time the domain names were registered by the Respondents;
(b) its investigations which it claims show that the Sung Wook Choi is engaged in the production of music videos;
(c) the posting of a notice on the Respondents’ websites to avoid possible misunderstanding and confusion; and
(d) the use, by the Respondent, of a counter on its website to record the number of visitors.
B. The Respondents’ contentions in response
5.5 In relation to the allegation that the domain name is substantially identical to the MTV mark the Respondents say that the Complainant uses different domains in relation to the Korean market including mtvkoreaonline, mtv.co.kr and mtvkorea.co.kr and that the Complainant generally chooses to register domains indicating the geographical location through the use of different Top Level Domains. Further, the Respondent says this is in accordance with the general practice of big companies.
5.6 In relation to the allegation that the Respondent has no rights or legitimate interest in the domain names the Respondent says:
(a) it is entitled by having registered the domain name on a first-come, first-served basis; and
(b) ‘mtvkorea.com’ stands for "Multi Technics of Visual in Korea" - it being implicit that the Respondent claims to use or be known by this name.
5.7 In relation to the allegation that the domain names were registered in bad faith the Respondent says:
"1. I never use mtv brand name power.
2. I never do damage to Viacom used by mtvkorea.com.
3. I never make profits used by mtv brand name.
4. Finally I’m not a domain hunter, you can search ‘whois’. I’m working in music video and multimedia art section. I never sell my domain."
6. Discussion and Panel Findings
6.1 Paragraph 15(a) of the Rules directs the Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
6.2 The onus is on the Complainant, under paragraph 4(a) of the Policy, to prove:
(a) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and used in bad faith.
6.3 Domain name identical or confusingly similar to Complainant’s marks
The mtvkorea.com and mtvkorea.net domain names both incorporate the whole of the Complainant’s well known MTV trade mark. The only difference between the domain names and the Complainant’s mark is the addition of the "korea.com" and "korea.net" suffixes respectively. The Panel considers that these suffixes are generic and that they do not effectively distinguish the Respondents’ domain names. This is consistent with this and other Panels earlier decisions that common geographic qualifiers can rarely be relied upon to differentiate if the other elements of the domain name comprise a mark or marks in which another party has rights.
Given the extensive reputation that the Complainant’s marks enjoy both in Korea and internationally the Panel finds that the domain names registered by the Respondents are confusingly similar to the Complainant’s MTV mark.
Although not expressly argued by the Complainant, it seems to the Panel that the Complainant also has common law rights in mtvkorea.co.kr and mtvkoreaonline.co.kr which, according to the Respondent, the Complainant uses for its business in Korea. If the descriptive and TLD elements are ignored, both of those domains resolve to ‘mtvkorea’, which is also the resolution of both of the domain names in dispute. That to the Panel’s mind just increases the likelihood of the domain names in dispute being confused with the Complainant’s marks.
6.4 Respondent has no rights or legitimate interests in Domain Name
Paragraph 4(c) of the Policy specifies some circumstances which will suffice to demonstrate a Respondent’s legitimate interest in a domain name for the purposes of Paragraph 4(a)(ii):
(a) before any notice to you 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
(b) you (as an individual business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(c) you 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 trade mark or service mark at issue.
The Respondents may not rely on the ‘first-come, first-served’ principle to establish rights in the disputed domain names if the Complainant is otherwise successful in making out its complaint.
The Respondents have relied on their implicit assertion that they are entitled to use the domain names because one can discern some acronymous connection with the "Multi-Technics of Visual in Korea" name. The Complainant has called into question existence of any entity with this name and doubts that the Respondents have in fact used the name. It has also stated that its searches failed to reveal the existence of any entity with the name "Multi-Technics of Visual in Korea" or use of the name. The Respondents have had an opportunity to respond to the Complainant’s assertions and have failed to provide any evidence of their entitlement to the name. Although the onus is on the Complainant to establish that the Respondents have no rights or legitimate interests in the domain names in dispute, it is open to the Panel to draw an inference from the Respondent’s silence on this issue.
Accordingly, on the evidence the Panel has before it, the Panel finds that the Respondent does not have any right or legitimate interest in the domain names in dispute.
6.5 Domain name has been registered and is being used in bad faith
Paragraph 4(b) of the Policy sets forth some circumstances which, without limitation, if found to be present by the Panel, are evidence of the registration and use of the name in bad faith. These circumstances relevantly include a situation where:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location."
The Panel notes that:
(a) the Respondent has asserted to being a music video director and producer;
(b) the Respondent has asserted that the websites found in the disputed domains introduce and provide information about "Multi-Technics of Visual in Korea", apparently a commercial enterprise of the Respondents; and
(c) the websites do in fact relate to music and musical instrument.
The Panel accepts the Complainant’s assertion that the MTV mark of the Complainant was well-known in Korea and internationally at the time the domain names in dispute were registered. In this regard the Panel notes the Respondent’s later admission of the "global fame" of the MTV mark. (The Panel notes that it must necessarily rely on an English translation of a letter written in Korean by the Respondent where the translation has been made by an unknown person, is not certified and was furnished by the Complainant. Accordingly, the weight which may be given to this evidence is less than it might otherwise be.)
In all the circumstances the Panel finds that the Respondents took advantage of the fame of the Complainant’s mark by registering a domain name confusingly similar to the Complainant’s mark. The Panel finds further that the Respondents did so to attract Internet users to their website with a view to maximising their own commercial gain and custom.
Accordingly, it is not necessary for the Panel to consider whether the Respondents acquired the domain primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant.
The Complainant has succeeded in proving the Respondents’ bad faith when they registered and used the domain names mtvkorea.com and mtvkorea.net.
Language of the proceedings and communications
6.6 The Panel notes the Respondents’ objections to the conduct of these proceedings in English and the request for communications in English due to their limited understanding of English and the potential unfairness of having to defend their rights in a foreign language.
6.7 The Panel also notes that the Respondents chose to avail themselves of Registrars in English-speaking jurisdictions and chose to enter contracts governing the use of their domain name registrations in the English language. The agreements entered into between the Respondents and the Registrar, Network Solutions, incorporate the Policy by reference.
6.8 Paragraph 1 of the Policy stipulates that proceedings under Paragraph 4 of the Policy will be conducted according to the Rules.
6.9 Paragraph 11 of the Rules states that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
6.10 Paragraph 2(d) of the Rules provides that:
"Communications shall be made in the language prescribed in Paragraph 11."
6.11 The Panel has no reason to believe that the Parties agreed to conduct the proceedings in a language other than English nor that the language of the Registration Agreement was a language other than English. Also of interest is that the asserted entitlement to the domain names in dispute is based on the English words "Multi-Technics of Visual in Korea"
6.12 Accordingly, the Panel does not consider that there has been any denial of natural justice to the Respondents.
The Panel has found that all of the requirements of Paragraph 4(a) of the Policy have been proven by the Complainant. Accordingly, and for the purposes of Paragraph 3(c) of the Policy, the Panel orders that the domain names mtvkorea.com and mtvkorea.net be transferred by Network Solutions to the Complainant.
Philip N. Argy
Dated: November 20, 2000