Fox Media LLC v. William Smith
Claim Number: FA2011001920442
Complainant is Fox Media LLC (“Complainant”), represented by Brian J Winterfeldt of Winterfeldt IP Group, PLLC, District of Columbia, United States. Respondent is William Smith (“Respondent”), Arizona, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bentoboxent.us>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 12, 2020; the Forum received payment on November 12, 2020.
On November 12, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <bentoboxent.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bentoboxent.us. Also on November 16, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 14, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the world’s leading and largest entertainment and media companies, including as a major television network, among other businesses. Bento Box Entertainment (BBE) is a multiple Emmy® award-winning entertainment content and technology company that is a wholly-owned subsidiary of Complainant. Complainant has rights in the BENTO BOX mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,059,729, registered October 11, 2016). Respondent’s <bentoboxent.us> is identical or confusingly similar to Complainant’s BENTO BOX mark as it fully incorporates Complainant’s mark and merely adds the descriptive abbreviation “ent” and the “.US” ccTLD extension.
Respondent lacks rights or legitimate interests in the <bentoboxent.us> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the BENTO BOX mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as the disputed domain name resolves to a parked page containing sponsored pay-per-click links to third-party content. Furthermore, Respondent uses the disputed domain name to send emails impersonating Complainant’s personnel in furtherance of a phishing scheme.
Respondent registered or uses the <bentoboxent.us> domain name in bad faith. Respondent uses the disputed domain name to disrupt Complainant’s business by carrying out fraudulent phishing activity. Additionally, Respondent had actual knowledge of Complainant’s rights to the BENTO BOX mark prior to registering the disputed domain name by virtue of the famous nature of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response to this proceeding. The Panel notes that the <bentoboxent.us> domain name was registered on September 22, 2020.
Paragraph 15(a) of the Rules instructs this 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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, Inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant asserts rights in the BENTO BOX mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,059,729, registered October 11, 2016). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has demonstrated rights in the BENTO BOX mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <bentoboxent.us> is identical or confusingly similar to Complainant’s BENTO BOX mark as it fully incorporates Complainant’s mark and merely adds the descriptive abbreviation “ent” and the “.us” ccTLD extension. The addition of a descriptive term and a ccTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Tropar Mfg. Co. v. TSB, FA 127701 (Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
There is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, the Panel concludes that Respondent has failed Policy ¶ 4(c)(i).
Complainant contends Respondent lacks rights or legitimate interests in the <bentoboxent.us> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the BENTO BOX mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS information for the disputed domain name lists the registrant as “William Smith,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the BENTO BOX mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(iii).
Complainant argues that Respondent fails to use the <bentoboxent.us> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use, as the disputed domain name resolves to a parked page containing sponsored pay-per-click links to third-party content. Using a confusingly similar domain name to host pay-per-click hyperlinks and advertisements may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Here, Complainant provides screenshots of Respondent’s resolving webpage and highlights the sponsored pay-per-click links to third-party content. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv).
Complainant further argues that Respondent fails to use the <bentoboxent.us> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to send emails impersonating Complainant’s personnel in furtherance of a phishing scheme. Using a confusingly similar domain name to pass off as a complainant in furtherance of a phishing scheme may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See Emerson Electric Co. v. Adilcon Rocha, FA 17359639 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”). Here, Complainant provides screenshots of an email from Respondent in which Respondent passes off as an employee of Complainant in order to conduct phishing attacks targeting individuals potentially seeking employment with BBE. Complainant argues the email addresses are being used to impersonate BBE recruiting and hiring managers who conduct outreach to individuals looking to gain employment with BBE, set up ostensible interviews, and ultimately seek sensitive personal information and/or money from the targets for Respondent’s commercial gain. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv).
Thus, Complainant has also satisfied Policy ¶¶ 4(a)(ii).
Complainant contends that Respondent registered or uses the <bentoboxent.us> domain name in bad faith as Respondent uses the disputed domain name, containing Complainant’s identical mark, to disrupt Complainant’s business by carrying out fraudulent phishing activity. Using a confusingly similar domain name to pass off as a complainant in furtherance of a phishing scheme can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Here, Complainant argues that Respondent is disrupting Complainant’s business through Respondent’s use of the disputed domain name to carry out fraudulent phishing activity. Complainant further argues that the fraudulent email phishing scheme is intended to induce ostensible candidates for positions with BBE to provide personal information and potentially sensitive financial information to Respondent. Therefore, the Panel finds that Respondent registered or uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Therefore, Complainant has also satisfied Policy ¶ 4(a)(iii)
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bentoboxent.us> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: December 28, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page