Viacom International Inc. v Domain Admin, Hong Kong Domain

WIPO Case No. D2024-3267

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Viacom International Inc. v. Domain Admin, Hong Kong Domain

Case No. D2024-3267

1. The Parties

The Complainant is Viacom International Inc., United States of America (“United States”), represented by

Paramount Global, United States.

The Respondent is Domain Admin, Hong Kong Domain, Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <spongebobsquarepants.com> is registered with Internet Domain Service BS

Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2024.

On August 9, 2024, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the disputed domain name. On August 12, 2024, the Registrar transmitted by email to the

Center its verification response disclosing registrant and contact information for the disputed domain name

which differed from the named Respondent and contact information in the Complaint. The Center sent an

email communication to the Complainant on [August 16, 2024 providing the registrant and contact

information disclosed by the Registrar.. The Complainant filed an amended Complaint on August 16, 2024.

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 and 4, the Center formally notified the Respondent of the

Complaint, and the proceedings commenced on August 19, 2024. In accordance with the Rules, paragraph

5, the due date for Response was September 8, 2024. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on September 11, 2024.

The Center appointed Ugur G. Yalçiner as the sole panelist in this matter on September 17, 2024. The

Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant is a wholly owned subsidiary of the global media company, Paramount Global, which

provides entertainment content, services, and related branded products for consumers in targeted

demographics attractive to advertisers, content distributors, and retailers. It owns and operates the world-

renowned Nickelodeon family of television programming services, which is one of the most globally

recognized and widely distributed multimedia entertainment brands for kids and family.

The Complainant is the owner and producer of the popular animated children’s television series, Spongebob

Squarepants, which has reigned as one of the most-watched animated series for 22 consecutive years, while

generating several spin-off series, three feature films that grossed over USD 250 million, a Tony® Award-

winning Broadway musical, a comic book series, original music, video games, theme park rides and theme

hotels, and related clothing, toys, other merchandise and collectibles. Spongebob Squarepants has seen in

more than 180 countries and translated in over 30 languages.

The Complainant is the owner of SPONGEBOB and SPONGEBOB SQUAREPANTS trademark registrations

in various jurisdictions, some of which are listed below:

- United States trademark registration SPONGEBOB SQUAREPANTS with registration No. 2355702

registered on June 6, 2000, in class 41;

- United States trademark registration SPONGEBOB with registration No. 2897977 registered on October

26, 2004, in class 25;

- European Union trademark registration SPONGEBOB SQUAREPANTS with registration No. 001360486

registered on January 16, 2001, in classes 9, 16, 25, 28, and 41; and

- Hong Kong (where the Respondent reportedly resides) trademark registration SPONGEBOB

SQUAREPANTS with registration No. 200208080 registered on January 17 2002, in class 41.

The Complainant also owns the domain name <spongebobshop.com>, which was registered on May 3, 2006

and the domain name <spongebob.com>, which was registered on June 21, 1999. The Complainant’s

domain names are redirected to the Complainant’s official website at <nick.com>.

The disputed domain name was registered on July 18, 2001, at the time of filing the Complaint, it resolved to

a pay-per-click (“PPC”) parking page, displaying third parties’ sponsored links, that include “Nickelodeon

SpongeBob”, “Game Games” and “Cartoon TV” and etc., and indicating “The domain

spongebobsquarepants.com may be for sale. Click here to inquire about this domain”

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer

of the disputed domain name.

The Complainant alleges that it owns and uses various trademarks incorporating SPONGEBOB

SQUAREPANTS and SPONGEBOB, the trademarks are the subject of registrations and pending

applications in the United States Patent and Trademark Office and in several other jurisdictions around the

world, it is the owner and producer of the SPONGEBOB SQUAREPANTS, that is a popular animated

children’s television series (“Series”), its long and prominent use of its SPONGEBOB trademarks for and in

connection with its Series, products and services, the SPONGEBOB trademarks have acquired worldwide

recognition as identifying exclusively the entertainment, products and services of the Complainant.

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The Complainant contends that the Respondent registered the disputed domain name in 2014 and beginning

as early as August 2023 and continuing to date, the disputed domain name resolves to a landing page

containing sponsored hyperlinks to third party websites which may offer unauthorized content and/or goods

featuring Complainant’s SPONGEBOB trademarks, it is also indicated that the disputed domain name may

be purchased for a price of USD 5,951.

The Complainant asserts that it wrote to the Respondent at its privacy protected email address requesting,

among other things, that Respondent deactivate the infringing website, transfer the disputed domain name to

the Complainant, and cease use of the SPONGEBOB trademark, however the Respondent did not reply to

the Complainant’s letter.

The Complainant contends that given the fame of the Complainant’s SPONGEBOB trademark and the fact

that the disputed domain name incorporates the identical SPONGEBOB SQUAREPANTS trademark in its

entirety, as well as the fact that the infringing website displays links to third party websites that may offer

identical goods and services as those provided by the Complainant, there can be no doubt that the disputed

domain name is likely to confuse consumers into believing that the disputed domain name is affiliated with or

endorsed by the Complainant.

The Complainant asserts that it is not affiliated in any way with the Respondent, nor has the Complainant

authorized the Respondent to use its SPONGEBOB trademarks or any domain name incorporating the

SPONGEBOB trademarks or any other mark confusingly similar thereto, the Respondent has not been

commonly known by the disputed domain name, the Respondent cannot demonstrate a bona fide offering of

goods or services or a non-commercial or fair use of the disputed domain name, instead, the disputed

domain name incorporates the Complainant’s identical SPONGEBOB SQUAREPANTS trademark in its

entirety and resolves to the infringing website, where third-party paid advertisements are displayed, it is clear

that the Respondent is capitalizing on the confusing similarity to pass itself off as emanating from and/or

associated with the Complainant, given the prior and exclusive rights owned by the Complainant in its

SPONGEBOB trademarks and the lack of legitimate use, and in fact, disreputable commercial activities

carried out by the Respondent under the disputed domain name, the Respondent can have no rights or

legitimate interests in the disputed domain name.

The Complainant alleges the Respondent was aware of the Complainant’s rights, it registered the disputed

domain name with the specific intent to cause consumer confusion and to trade upon the goodwill associated

with the SPONGEBOB trademarks and prevent the Complainant from registering and using the disputed

domain name, the Respondent uses the disputed domain name to resolve to the infringing website, which

resolves to a landing page having links to third party websites, and to generate revenue through third-party

paid advertisements, the Respondent registered and uses the disputed domain name to free ride on the vast

goodwill associated with the Complainant’s famous SPONGEBOB trademarks and divert internet traffic

intended for the Complainant’s SPONGEBOB websites, such use constitutes bad faith use and registration

on the part of the Respondent.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements

are present:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and
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(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or

threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between

the Complainant’s trademark and the disputed domain names. WIPO Overview of WIPO Panel Views on

Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1. The Panel is satisfied that the Complainant is the owner of the

trademarks SPONGEBOB and SPONGEBOB SQUAREPANTS registered in several jurisdictions.

The disputed domain name entirely incorporates the Complainant’s trademark SPONGEBOB

SQUAREPANTS, without any addition. As numerous prior UDRP panels have held, the fact that a domain

name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing

similarity. In accordance with section 1.11.2 of the WIPO Overview 3.0, the practice of disregarding the

generic Top-Level Domain (“gTLD”) in determining identity or confusing similarity is applied irrespective of

the particular TLD, thus addition of gTLD “.com” to the disputed domain name does not impact the identity or

confusing similarity. Disregarding the gTLD “.com”, the Panel notes that the disputed domain name is

identical to the Complainant’s trademark.

In the light of the above, the Panel finds that the disputed domain name is identical to the Complainant’s

registered trademarks and that the requirements in paragraph 4(a)(i) of the Policy are fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate

rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized

that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task

of “proving a negative”, requiring information that is often primarily within the knowledge or control of the

respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or

legitimate interests, the burden of production on this element shifts to the respondent to come forward with

relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of

proof always remains on the complainant). If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section

2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case

that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has

not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the

Policy or otherwise.

The Panel notes that the Respondent does not have any registered trademarks or trade names and no

license or authorization of any other kind has been given to the Respondent by the Complainant to use its

registered trademark.

The Panel also notes that there is no evidence of the Respondent’s demonstrable preparations to use the

disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide

offering of goods or services. Rather, the disputed domain name resolves to a PPC parking page which

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contains third parties’ sponsored links through the listed keywords related to the trademarks and business

field of the Complainant according to the Complainant’s assertion and the Exhibit F of the Complaint. When

the website to which the disputed domain name resolves, is checked, it is seen that there is a statement

“The domain spongebobsquarepants.com may be for sale. Click here to inquire about this domain” on the

website and when it is clicked, it redirects to a third party’s website that has been selling domain names and

it is offered to sell the disputed domain name within the range of USD 5,175 and USD 6,883. The Panel

points that hosting a PPC parking page with links that compete with or capitalize on the reputation and

goodwill of the Complainant’s trademark and from which the Respondent most probably derives commercial

revenue neither represent a bona fide offering nor constitute rights or legitimate interests to the Respondent

in the disputed domain name in the circumstances of this case.

Furthermore, UDRP panels have found that domain names identical to a complainant’s trademark carry a

high risk of implied affiliation. Here, noting the disputed domain name is identical to the Complainant’s

trademark, there is a high risk of implied affiliation and such composition cannot constitute fair use as it

effectively impersonates or suggests sponsorship or endorsement by the Complainant.WIPO Overview 3.0,

section 2.5.1.

As a result, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain

name, and the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled by the Complainant.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy

establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall

be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel is satisfied with the relevant evidence filed by the Complainant showing that it

owns trademark rights for SPONGEBOB and SPONGEBOB SQUAREPANTS, which have been registered

and used prior to the registration of the disputed domain name and the Panel confirms the Complainant’s

trademarks SPONGEBOB and SPONGEBOB SQUAREPANTS are well known around the world.

The Panel is of the opinion that it is implausible for the Respondent to be unaware of the Complainant and its

well known trademark when the disputed domain name was registered, and the Respondent’s aim of the

registration was to take an unfair advantage of the Complainant’s trademark. As the disputed domain name

wholly incorporates the Complainant’s well-known trademark SPONGEBOB SQUAREPANTS, that gives an

impression that the disputed domain name is owned and used by the Complainant. Several UDRP panels

have held that the mere registration of a domain name that is identical or confusingly similar to a famous or

widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.

WIPO Overview 3.0, section 3.1.4.

As stated above the disputed domain name resolves to a parking page which contains third parties’

sponsored links through the listed keywords related to the trademarks and business field of the Complainant

and there is a statement that the disputed domain name may be for sale. The Panel is in the opinion that

the object of registering the disputed domain name consisting of the Complainant’s trademark was to

mislead the Internet users and allowing the PPC links related to the field of the Complainant in the website to

which the disputed domain name resolves for commercial gain . It has been established in numerous

UDRP decisions that such conduct constitutes bad faith of the Respondent set out at paragraph 4(b)(iv) of

the Policy.

The Complainant alleges that it had sent a cease-and-desist letter to the Respondent on June 13, 2024

before filing the Complaint, but the Respondent has not responded to that letter. Referring to the Panel’s

consideration in Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,

WIPO Case No. D2002-0787, and considering the reasons above, the Panel is of the opinion that the failure

to reply to the Complainant’s letter and to the Complaint further supports in the circumstances of this case

the Panel’s finding of bad faith.

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Having considered all the facts in this case, the Panel finds that the Complainant has sustained its burden of

proof in showing that the disputed domain name was registered and being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel

orders that the disputed domain name <spongebobsquarepants.com> be transferred to the Complainant.

/Ugur G. Yalçiner/

Ugur G. Yalçiner

Sole Panelist

Date: September 26, 2024