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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Viacom International Inc. v. Pablo, Palermao / Moniker Privacy Services

Case No. D2008-1179

 

1. The Parties

The Complainant is Viacom International Inc., New York, United States of America, represented by White O’Connor Fink & Brenner LLP, United States of America.

The Respondent is Pablo, Palermao, San Isidro, Peru/ Moniker Privacy Services, of United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <teenick.com> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2008. On August 1, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On August 6, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response naming the Respondent as Pablo, Palermao and providing the contact details. In response to a Notification of Registrant Change by the Center, the Complainant filed an amendment to the Complaint on August 13, 2008. The Center verified that the Complaint together with the amendment to 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 August 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2008.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on September 19, 2008. 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 facts below are taken from the Complaint. The Complainant is in the business of children’s television, among other activities. It operates the children’s cable television channel, Nickelodeon Television. Nickelodeon Television’s programming reaches 287 million households in 162 territories worldwide, via 28 channels, 22 branded program blocks, and two broadband services across Africa, Asia and the Pacific Rim, CIS/Baltic Republics, Europe, Latin America, and the United States of America. In the United States of America, Nickelodeon Television is the most-watched television network by children has been the number one rated basic media network for twelve consecutive years.

The Complainant is the owner of numerous trademarks and service marks (hereafter, marks) registered at the United States Patent and Trademark Office (USPTO) and elsewhere, for the marks TEENICK and NICKELODEON, along with variants of these marks comprising or incorporating the element NICK (the NICK marks). The Complainant has used the mark NICKELODEON since March 1979, in connection with the children’s cable television channel Nickelodeon Television. It has used certain of its marks, both domestically and internationally, in connection with goods and services such as toys, websites, consumer products, records, publishing, awards shows, animated series, feature films, video game machines, game cartridges for computer video games, wireless game software, board games, handheld units for playing video games, downloadable games, online retail store services featuring games and playthings, online newsletters, online entertainment information, online interactive computer games, and the production of game shows, game events, and sports events. Trademark registrations submitted in documentary evidence include:

TEENICK, Registration No. 3164754, 2001, International Class 41;

NICKELODEON, Registration No. 2222947, 1979, International Class 38, Registration Nos. 1907159, 2028590, and 3026958, International Classes 28, 41, and 42, dated 1992, 1995 and 1991, respectively;

NICK, Registration No. 3044795, 1983, International Class 41, services providing information in the field of entertainment and education rendered via computer by means of a global computer network (the mark being recognised as shorthand for Nickelodeon Television);

NICK AT NITE (1984), NICK JR. (1987), NICKTOONS (1992) (being variants of the NICK mark);

NICKELODEON RUGRATS, Registration No. 2146514, 1994, International Class 28;

NICK JR.COM, Registration No. 2155268, 1997, International Class 41;

NICKELODEON GAS GAMES AND SPORTS FOR KIDS, Registration No. 2616566, 1999, International Class 41;

NICKELODEON ROCKET POWER, Registration No. 2592465, International Class 9 (first use 2001, intent-to-use application 1999).

The Complainant has also registered a number of marks that incorporate the element NICK with the European Union’s Office for Harmonization in the Internal Market (Trade Marks and Designs), including the marks NICKELODEON, NICK JR., NICK AT NITE, NICKELODEON ROCKET POWER, and NICKELODEON REPLAY. The filing dates of the applications for these registrations range from January 1996 to February 17, 2000, and therefore predate the inception of the disputed domain name on April 18, 2003.

The Complainant has operated a website related to Nickelodeon Television at “www.nick.com” since 1996. This website has given prominence to Teenick television information and provides a Teenick website at “www.nick.com/all_nick/specials/teenick”. The website is in turn linked to shopping facilities at “www.shop.nickjr.com”, and to games, video and other Nick-related sites.

No facts are available about the Respondent other than those provided in the disputed domain name registration. The domain name appears to have been registered on April 18, 2003.

 

5. Parties’ Contentions

A. Complainant

The Complainant explains in some detail that it initially named Moniker Privacy Services as the Respondent owing to difficulties in obtaining disclosure of the true registrant.

The Complainant contends and submits documentary evidence that it is the owner of numerous trademark registrations for the word “Teenick” and other Nick-related marks including those detailed in section 4 above. It contends that the NICK marks are famous in many parts of the world and that Nickelodeon Television, from which the marks are derived, has enjoyed top rating for twelve consecutive years.

The Complainant contends that the disputed domain name is identical to the mark TEENICK, and is identical in significant part to the NICK marks, adding only the descriptive term “teen”. The Complainant cites Viacom Int’l v. TVdot.net, Inc., WIPO Case No. D2000-1253 (although the domain names at issue were not identical to the complainant’s marks, a finding of similarity could not be avoided by adding a common or generic term to the complainant’s mark). Should the Respondent argue that TEENICK’s core business relates to television programming, and not to games, and therefore there is no likelihood of confusion, then the Panel is referred to Adaptec, Inc. v. Sure Source, WIPO Case No. D2000-1488.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is not aware of any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. It is not aware of any evidence that the Respondent has been commonly known by the domain name. The Respondent is making an illegitimate, commercial, non fair use of the domain name with the intent of commercial gain, by misleadingly diverting consumers from the Complainant to the Respondent and by tarnishing the Complainant’s marks. The fact that the Respondent is offering goods and services through the domain name does not constitute a bona fide offering of goods or services since he is seeking unfairly to profit from confusion with the Complainant’s marks.

The Complainant further contends that the disputed domain name was registered in bad faith on the following grounds, without limitation.

The domain name was registered primarily for the purpose of selling, renting, or otherwise transferring to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs of registration. It was registered anonymously, its purported use is a sham, and it has no legitimate business purpose.

The Complainant is blocked from reflecting its mark in the form of the disputed domain name.

The domain name attracts Internet users for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and of any services provided thereon.

The website of the disputed domain name provides only links to other websites, in the guise of offering games, free games, kids games, TV shows, arcade games, TV show games, cartoons, game cheats and videos, all being goods and services that compete with those promoted by the Complainant. Screen captures are submitted in evidence. None of these goods and services is actually provided by the Respondent’s website, but only by links. By contrast, the Complainant offers many of the same goods and services, made available through authorized channels, at the Teenick and “www.nick.com” websites and under the TEENICK and NICK marks, the dates of first use for which all predate the inception of the website associated with the disputed domain name.

Thus, the Respondent’s website is a link farm, providing users with links to websites that are directly competitive with the goods and services offered by the Complainant. The Complainant cites Société Air France v. FP Transitions Pty Ltd, WIPO Case No. D2007-0988 (domain parking or the operation of a link farm in connection with the unauthorized use of a widely known trademark is a clear indication of a lack of bona fides) and The Wal-Mart Stores, Inc. v. Modern Limited-Cayman Web Dev., Domain Administrator, WIPO Case No. D2005-0322 (linking to websites of the Complainant’s competitors demonstrates both a bad faith intent to disrupt the business of a competitor, and the intent to attract Internet users to the domain name at issue by creating a likelihood of confusion with the Complainant’s mark).

The Complainant requests the transfer to it of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Procedural

The Complainant initially nominated Moniker Privacy Services as the Respondent, in part because it was unable to obtain the name of the true registrant. Moniker Online Services, LLC, the Registrar of the disputed domain name, in reply to the Center’s request, divulged the name and contact details provided to it in the domain name registration (that is to say, of “Pablo, Palermao”). The Center has provided the information to the Complainant, and the Complainant has submitted an amendment adding “Pablo, Palermao” as Respondent. The Complaint has been sent to the Respondent “Pablo, Palermao” at the contact details provided and it is not necessary to proceed formally against Moniker Privacy Services, although presumably for abundance of caution Moniker Privacy Services has been copied by the Center on the Complaint and notification sent to the Respondent “Pablo, Palermao” on August 13, 2008. The Panel is any event satisfied that Pablo, Palermao is the proper Respondent in the circumstances of this case. See e.g. Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070.

It is noted that the ICANN Registrar Accreditation Agreement (2001) at paragraph 3.7.7.1 requires that “the Registered Name Holder shall provide to Registrar accurate and reliable contact details and promptly correct and update them ...”. Paragraph 2 of the Rules states that “it shall be the Provider’s responsibility to employ reasonably available means calculated to achieve actual notice [of the Complaint] to Respondent”, and specifies measures that should be taken, which essentially are to contact such physical and electronic addresses as are lodged in the registrar’s Whois database.

As noted, it would appear from record that the Complaint was transferred to the address provided by the Respondent “Pablo, Palermao” (with a copy also to Moniker Privacy Services), and that the fax and courier copies may have been rejected by the addressee. The Center can do no better than to communicate to the Respondent’s addresses on record. The words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service. The Panel is satisfied that the Center has exercised the utmost care and has at the least fulfilled its responsibility under paragraph 2 of the Rules.

Paragraph 4(a) of the Policy states that the Respondent is required:

“to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

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

The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

The Complainant has provided documentary evidence of its ownership of and rights in the registered mark TEENICK, with an in-commerce date of March 4, 2001. The mark, No. 3164754, is registered at the USPTO.

The disputed domain name is <teenick.com>. The gTLD suffix “.com” is generally disregarded in the determination of confusing similarity in the context of domain names. There is no technical distinction between upper and lower case in domain name addresses. The disputed domain name effectively comprises “teenick” which is identical to the Complainant’s registered mark TEENICK.

Although it is not necessary to proceed further under paragraph 4(a)(i) of the Policy, it is noted that the Complainant has cast the net wider by claiming that the disputed domain name infringes the NICK marks generally. The disputed domain name comprises the word NICK, which standing alone is a registered mark of the Complainant with an in-use date of 1983, overlapped by the word “teen”. The word “teen” may have an origin in numbers but now has an independent dictionary meaning embracing the concept of a youngster or teenager. It has generally been recognised in UDRP decisions that the addition of descriptive words, phrases or letters to a well known mark is not usually distinguishing and does not usually detract from confusing similarity. The Panel finds that the essential component “teenick” of the disputed domain name is in effect a merger of “teen” and the Complainant’s mark NICK, and that having regard to the field of use of the domain name, there is confusing similarity.

The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Since this requires the proving of a negative, conventionally the Complainant makes out a prima facie case that the Respondent may be able to refute in accordance with paragraph 4(c) of the Policy.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is not aware of any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. It is not aware of any evidence that the Respondent has been commonly known by the disputed domain name. The Complainant says that the Respondent is not making a legitimate, non-commercial or fair use of the disputed domain name without intent for commercial gain to mislead users or to tarnish the Complainant’s marks. The Respondent’s offering of goods or services does not constitute a bona fide use.

The Complainant having made out a prima facie case to the Panel’s satisfaction that the Respondent does not have rights or legitimate interests in the disputed domain name, it is for the Respondent to refute this, either in the terms of paragraph 4(c) of the Policy, or otherwise. He has made no reply to the Complaint.

The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name in the terms of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) 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 Complaint traverses all four of the above clauses. The Respondent evidently has set up a website corresponding to a domain name comprising one of the Complainant’s widely known marks exactly, and having a confusing similarity to one or more of the Complainant’s other marks. The function of the website is clear from the screen prints submitted in evidence. It is to entice viewers into clicking on links that will send them to other websites offering goods, services or advertisements. The reason for offering this facility is unstated by the Respondent but the model upon which it is highly likely to be based is plain. It is to derive a revenue stream by the device known as pay-per-click, or click-through, whereby owners of the target links pay money to the Respondent in return for the referral of prospective customers to them.

The Respondent has offered no explanation for his activities and the only reasonable explanation to this Panel is a commercial operation deriving income. This activity presumably depends on attracting Internet users, either directly (such as by the user wrongly guessing the Complainant’s Internet address and choosing the Respondent’s address) or through search engines, but is founded upon the exploitation of the Complainant’s registered marks and the Complainant’s undoubted fame and popularity. At least a proportion of Internet users arriving at the Respondent’s website are likely to be confused into thinking it is endorsed by or legitimately associated with the Complainant, which it is not.

The Respondent’s activities as found above are anticipated by paragraph 4(b)(iv) of the Policy and accordingly the Panel finds bad faith registration and use proven within the meaning of paragraph 4(a)(iii) of the Policy.

 

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 <teenick.com> be transferred to the Complainant.

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Dr. Clive N.A. Trotman
Sole Panelist

Dated: October 3, 2008