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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Viacom International, Inc. (“Viacom”) v. na, Max Crossan and Max Fret

Case No. D2008-2003

1. The Parties

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

The Respondents are na, Max Crossan and Max Fret of London, United Kingdom of Great Britain and Northern Ireland, and New York, United States respectively.

2. The Domain Names and Registrar

The disputed domain names <allsp.com> and <allstreamingprograms.com> are registered with WebNIC.cc and GoDaddy.com, Inc. respectively.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2008 against MODERN OUTLOOK SDN BHD and Max Fret. On December 31, 2008, the Center transmitted by email to WebNIC.cc and GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On December 31, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent Max Fret, is listed as the registrant of the disputed domain name <allstreamingprograms.com> and providing the contact details. On January 5, 2009, WebNIC.cc transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <allsp.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 8, 2009 providing the registrant and contact information disclosed by the Registrar, WebNIC.cc and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 14, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondents of the Complaint, and the proceedings commenced on January 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2009. The Response was filed with the Center on February 9, 2009, signed by the Respondent Max Fret.

The Center appointed John Swinson as the sole panelist in this matter on February 17, 2009. 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

“South Park” is a popular animated television show, produced in the United States. It was created by Matt Stone and Trey Parker and appears on the Comedy Central television network. The television show first aired in 1997, and has recently completed its twelfth season.

The Complainant owns an interest in several United States registered trade marks related to the South Park television series, including registered trade mark numbers 2222409 and 2494578 for SOUTH PARK, which have been registered from 1999 and 2001 respectively. (The Complainant itself is not the sole owner of these trade marks – the registered owner is COMEDY PARTNERS COMPOSED OF VIACOM INTERNATIONAL INC., AND VIACOM HEARTY HA! HA!, LLC.)

The website operating from disputed domain name <allsp.com> has the following comment:

“Unfortuantely [sic] a complaint initiated by Viacom is in progress against our domain ALLSP.com. To outline the complaint apparently ALLSP.com & AllStreamingPrograms.com are confusingly similar to Viacom’s South Park trademarks. We do not have the funds to hire a legal team to argue against Viacoms lawyers so it seems likely that our domain could be handed over to Viacom. Due to this I would like to make sure that our users know that the site can be accessed in future via the option below:

A redirect through our friends at deltavid (We recommend you bookmark this link): http://allsp.deltavid.com”

The website automatically redirects, to the website referred to in the above paragraph. This redirected page lists South Park episodes available for streaming. The heading of this website reads “All SP” or “All Streaming Programs”. There is third party advertising on this website, and depictions of some South Park characters.

The same website also contains the following disclaimer:

“South Park is a registered trademark of Viacom International Inc. and its’ related companies. All related videos, clips, images etc. are copyrighted and owned by their respective owners.

“ALLSP.com” (ALL Streaming Programs) is a streaming video indexing site for external media and is in no way associated with or authorized by Viacom or the Creators of South Park, Matt Stone and Trey Parker.”

The website operating from the disputed domain name <allstreamingprograms.com> contains the following statement:

“We have been sent a letter by viacom saying that our domain “ALLSP” is infringing on their trademark “SOUTH PARK”

I know this is completely ridiculous as ALLSP sounds nothing like SOUTH PARK, however I would like to inform everyone that you can now access us through ALLSTREAMINGPROGRAMS.com in the event that our domain is suspended.

IF ALLSP.com is NOT loading please check ALLSTREAMINGPROGRAMS.com

South Park is a registered trademark of Viacom International Inc. and its’ related companies. All related videos, clips, images etc. are copyrighted and owned by their respective owners.

“ALLSP.com” (ALL Streaming Programs) is a streaming video indexing site for external media and is in no way associated with or authorized by Viacom or the Creators of South Park, Matt Stone and Trey Parker.”

There is a link on this website to the <allsp.com> website.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

The Respondents Max Fret and Max Crossan are acting in concert with respect to both disputed domain names, as the names are the alter egos of one another and operate together to infringe on the Complainant’s rights. The claims against both disputed domain names should be resolved in a single proceeding.

The disputed domain name <allstreamingprograms.com> was created by the Respondent Fret to circumvent UDRP proceedings, by redirecting users to an alternative website if the disputed domain name <allsp.com> was suspended. This is stated to be the purpose on a forum and on the <allsreamingprograms.com> website.

The websites operating from the disputed domain names contain identical content, and the <allstreamingprograms.com> homepage links directly to <allsp.com>. They are also operated on the same domain servers.

The Respondent Fret is the true owner of both disputed domain names. He was the owner of <allsp.com> at the time it was created, and up until the time the Complainant gave notice of its intent to file the Complaint. The Respondent Fret transferred the <allsp.com> domain name to the Respondent Crossan in order to delay and avoid UDRP proceedings.

The Complainant is the owner of United States trade mark registrations for SOUTH PARK trade marks, including Registration No. 2222409 (registered on February 9, 1999) and Registration No. 2494578 (registered on October 2, 2001). The Complainant has used the SOUTH PARK trade marks continuously since their dates of first use. The trade marks are used in relation to a television series, which is also available on DVD and via free legal streaming from the South Park official website “www.southparkstudios.com”.

The SOUTH PARK trade marks and the website of “www.southparkstudios.com” are inherently distinctive and are subject to immediate protection without proof of secondary meaning.

The Respondents are using the <allsp.com> domain name illegally to distribute unauthorized and infringing copies of episodes of South Park to the public, without the Complainant’s consent and in violation of the SOUTH PARK trade marks and the Complainant’s copyrights in the episodes and characters. The Respondents are also using this domain name to divert users away from the official South Park website, where customers can legally purchase legitimate goods and services related to South Park.

The disputed domain name <allsp.com> is intended to deceive the public into believing that the website is authorized by the Complainant to stream episodes of South Park. The title bar of the website reads “South Park – Watch Episodes Online FREE”. Also, an “SP” or “South Park” image appears immediately to the left of the domain name in the address bar.

Also on the <allsp.com> website is an option to advertise on the website, or make a monetary donation to the website through PayPal. Copyrighted pictures of South Park characters appear on these pages, as does other South Park content such as “The Making of South Park”. Another page on the <allsp.com> website states that “Allsp.com (all South Park) is part of the AdBrite advertising network”.

It is clear that the <allstreamingprograms.com> website is the alter ego of <allsp.com> (and vice versa). The domain names are closely connected and act in concert to infringe the SOUTH PARK marks.

The disputed domain names are designed to attract the public by evoking SOUTH PARK trade marks with the commonly used shorthand “SP”. A considerable segment of the public recognizes the shorthand “SP” to mean South Park. Numerous fan sites for the television series refer to “SP” rather than South Park”. This term has acquired a secondary meaning because of its association with the SOUTH PARK marks and is entitled to protection.

The disputed domain names are directly connected and confusingly similar to the SOUTH PARK marks, and are likely to cause confusion among the public and Internet users, including in relation to the authorization and participation of the Complainant in the Respondent’s activities. When viewed in context (including the use of similar images and the title bar) there is confusing similarity. Confusing similarity also arises because the goods and services at issue are identical, the trade channels of both parties goods and services are identical and the SOUTH PARK marks are unquestionably famous.

The Complainant is not aware of any evidence of the Respondents’ use of or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The Respondents have not been commonly known by the domain names. The Respondents are making an illegitimate, commercial, non-fair use of the disputed domain names, with the intention of making a commercial gain, to misleadingly divert consumers away from the legal purchase of the services associated with the SOUTH PARK marks, and to tarnish those marks.

Both disputed domain names sell advertisements to third parties for a fee which constitutes commercial use, regardless of whether the Respondents actually have made a profit from such an enterprise.

Any disclaimer on the websites concerning the alleged non-commercial or non-profit use of the disputed domain names does not dispel this fact. The <allsp.com> domain name accepts donations and provides numerous links to websites such as “www.dailymotion.com” and “www.youtube.com” which are directly competitive with the goods and services offered by the Complainant.

The Respondents have demonstrated an intent to use, have used and continue to use the disputed domain names in bad faith by: engaging in the unauthorized distribution of the Complainant’s copyright content in the South Park series, registering the disputed domain names primarily for the purpose of disrupting the Complainant’s business, using the disputed domain names intentionally to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the SOUTH PARK marks, using the domain names to divert Internet users from the official South Park website and acting in concert to commit “cyberflight” by transferring the disputed domain name registration of <allsp.com> to several privacy services and ultimately to the Respondent Crossan. Bad faith can also be shown by the Respondents’ conduct in altering the design and format of the <allsp.com> homepage in an attempt to avoid trade mark implications, after receiving the Complainant’s Complaint, and operating an illegal “link farm” to websites that are directly competitive with the goods and services offered by the Complainant. Finally, using proxy registration services to avoid disclosure of the real party in interest is bad faith.

The Respondents’ bad faith is compounded by the fact that the Respondents are open infringers of the SOUTH PARK trade marks. The Respondent Fret is the true registrant in another pending UDRP proceeding commenced by the Complainant with respect to the same trade marks.

B. Respondent

The Respondent Max Fret makes the following contentions:

The <allstreamingprograms.com> domain name was created in the event that a misunderstanding caused the <allsp.com> domain name to become suspended or otherwise ran into issues. It was not created to circumvent laws.

The disputed domain names do not infringe any of the Complainant’s SOUTH PARK marks.

The websites operating from the disputed domain names are not designed to deceive the public into believing they are authorized sites. The websites do not contain the words “official” or “Authorized”. The website from <allsp.com> outlines its status as a streaming video indexing site and does not try to trick website users into believing the Respondent is associated or sponsored by the Complainant.

The Complainant’s Complaint states that the content on the websites violates their copyright, but does not indicate how the disputed domain names violate their rights.

The initials “SP” can mean many things on the Internet and throughout the world, and in the disputed domain name <allsp.com>, it stands for “Streaming Programs”. “SP” was chosen because it is easier to use shorter abbreviations.

The websites were designed to provide streaming videos from sites like “youtube” free of charge. The sites do not contain any content, but merely an index of available links on the Internet. The owners of the <allsp.com> website have always intended to include other streaming programs on the website, but have not yet done so. The advertising services and other monetary services on the websites were used to counter hosting costs and maintenance.

The disclaimer on the website states that no content is actually hosted on the website, and the author is not responsible for the content hosted on other websites (which are linked). The disclaimer further states that ALLSP does not upload or encourage the uploading of copyright protected material, and describes the website as a “fan” site. It also notes that SOUTH PARK is a registered trade mark of Comedy Central, and videos and images are copyrighted and owned by third parties.

The Complainant and Comedy Central sent an email on July 23, 2007, encouraging the owner of <allsp.com> to join an affiliate program. This offer was rejected so that there would not be any confusion between official South Park sources and the disputed domain names.

The use of the disputed domain names are not tarnishing the SOUTH PARK trade marks. These websites provide episodes for free without any editing, and are consistently maintained to a favourable quality.

The disputed domain names should stay with the registered owner, and the websites can be deactivated until all legitimate violations of the Complainant’s rights and trade marks are removed from the content on the websites.

6. Discussion and Findings

To succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the domain names registered by the Respondents are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondents have no rights or legitimate interests with respect to the domain names; and

(iii) the domain names have been registered and is being used in bad faith.

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights, and the disputed domain name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant relies on its registered trade mark rights in SOUTH PARK. The Complainant also refers to a secondary meaning in the term SOUTH PARK, which has been established from years of continuous use. The Panel accepts that the Complainant has trade mark rights in SOUTH PARK.

However in the Panel’s view, neither of the disputed domain names are confusingly similar to the Complainant’s SOUTH PARK trade marks.

The Complainant states that “SP” is commonly accepted as an abbreviation for SOUTH PARK, and has acquired a secondary meaning. The Panel is not convinced by this argument. An Internet search of “SP” provides varied results, including “Salt and Pepper”, “Suppressive Person” or “Service Provider”. In Australia, for example, the term “SP” commonly means “starting price bookmaker”. It is also possible that the Respondents chose to incorporate SP in the disputed domain name <allsp.com> as a reference to “Streaming Programs”.

In support of its argument, the Complainant refers to South Park websites which use the abbreviation “SP”. However by its own admission, none of these websites are operated by the Complainant, and some of these websites are “infringing” websites. The Complainant has provided no evidence that as owner of the SOUTH PARK franchise, it has endorsed or encouraged use of “SP” as an abbreviation for South Park.

The Complainant cites previous cases where confusing similarity was found in circumstances where abbreviations were incorporated into a domain name. However those cases involved widely accepted abbreviations, such as “street” and “st”, or where the distinctive element of the mark was incorporated in the domain name, while the generic term was dropped.

In the Panel’s view, the majority of the public and even those familiar with the South Park series, would not necessarily think of “South Park” when asked what the letters “SP” stand for. The addition of the word “all” carries no connotation or association with South Park, and therefore further reduces any chance of confusing similarity. In addition, looking at the <allsp.com> domain name as a whole, an ordinary person is just as likely to think that it is a made up word with no clear meaning.

If the <allsp.com> domain name is not confusingly similar to the Complainant’s trade marks, it naturally follows that the <allstreamingprograms.com> domain name is also not confusingly similar. This domain name consists of three ordinary words which bear no resemblance to the SOUTH PARK trade marks.

Finally, the Complainant states that the disputed domain names are confusingly similar when considered in the context of the websites. It has been accepted in previous decisions that the appearance or content of a website is irrelevant in determining whether there is confusing similarity in this context. See for example, Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698. This position is also confirmed in the Overview of WIPO Panel Views.

It appears to the Panel that the Complainant’s principle issue with the Respondents may be the content appearing on the websites, rather than the registration of the disputed domain names. The UDRP was designed to resolve clear cases of cyber squatting, but not to provide a mechanism for the resolution of disputes concerning content per se. Although website content may be relevant under the Policy in relation to assessing bad faith, a complainant would still need to satisfy the threshold requirement of right in a mark to which the disputed domain name is identical or confusingly similar. The present dispute appears to be more in the nature of a copyright and/or trade mark dispute, and this is not the appropriate forum to decide such issues.

The Panel wishes to stress that it makes no comment whether the Respondents’ use of the website (providing links to other websites which contain the Complainant’s copyright material) is legal or illegal, either at law or under the Policy. It is not necessary to discuss this issue as the first element has not been established, and such factors are not relevant to consideration of the first element.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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John Swinson
Sole Panelist

Dated: March 2, 2009