Claim Number: FA0112000102962
Complainant is Twentieth Century Fox Film Corporation, Beverly Hills, CA, USA (“Complainant”). Respondent is Patricia Benstein, Adelaide, AUSTRALIA (“Respondent”).
The domain name at issue is <foxstudios.biz>, registered with Tucows, 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.
M. KELLY TILLERY, ESQUIRE, as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on December 14, 2001; the Forum received a hard copy of the Complaint on December 26, 2001.
On January 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 28, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on January 22, 2002.
On February 8, 2002, pursuant to STOP Rule 6(b), the Forum appointed M. KELLY TILLERY, ESQUIRE as the single Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it is one of the world’s leading entertainment and media companies which provides a wide variety of entertainment services and products, including but not limited to, the production, distribution and promotion of theatrical motion picture films and television programming as well as the sale of video and audio tapes and discs and affiliated merchandise and the exploitation and distribution of programming on television, cable and via satellite delivery.
Complainant contends that it owns a number of trademarks registered in the United States, Australia, Mexico and Canada, including but not limited to the following:
MARK COUNTRY REGISTRATION# REGISTRATION DATE
Fox Studios United States 214,0779 3/3/98
Fox Studios Mexico 567,518 3/13/97
Fox Studios Australia 761,739 5/11/98
Complainant also contends that it has an application for “Fox Studios” pending in Canada (Application No. 837,984). Complainant contends that it owns a number of other registrations and has a number of other applications pending for a variety of Fox Studios-related trademarks which marks include the words “Fox Studios” followed by additional words such as “Baja”, “Australia”, and/or “Production Services.”
Complainant further contends that in 1997, it established a movie studio/theme park in Sydney, Australia which has become known as “Fox Studios”, though formally known as “Fox Studios Australia.” Complainant contends that it has expanded its operations by establishing a third movie studio/theme park known formally as “Fox Studios Baja” in Baja, Mexico but popularly known as “Fox Studios.”
Complainant contends that it owns the domain name <foxstudios.com> as well as the domain name <foxstudios.com.au>.
Complainant contends that it is cognizant of the need for it to coexist with other entities and individuals legitimately utilizing the words “Fox” or “Studios” separately for legitimate business interests but contends that Respondent has no such legitimate business interest here. Complainant contends that Respondent has not registered any trademark for “Fox Studios” with any trademark registry anywhere in the world, she is not a licensee of Complainant or affiliated in any way with Complainant, her surname is not “Fox” nor has she at any point been “commonly known by Fox Studios.”
Complainant further contends that Respondent registered the domain in bad faith to “intentionally attempt to attract for commercial gain, Internet users to her website or other online location by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location of the product or service on Respondent’s website or location. Complainant contends that the domain name in question <foxstudios.biz> is identical to its trademarks and that potential visitors to its site will be confused by Respondent’s site.
Complainant contends that as Respondent is located in Australia, she was very likely aware of Fox Studios Australia and registered the domain name in question to intentionally cause consumer confusion with Fox Studios’ mark and create a false sense of source, sponsorship, affiliation or endorsement with Fox Studios.
Although Respondent recognizes that Complainant owns a number of registered trademarks, Respondent contends that Complainant does not have any right to a domain name which contains a single word “foxstudios.”
Respondent further contends that she was under the impression, which she now realizes is false, that she would be notified in the event that her pre-application for the domain name infringed anyone’s intellectual property rights and questions whether Complainant did what was required of it to protect its rights.
Respondent contends that Complainant did not protect its own intellectual property rights by registering <foxstudios.biz> and concludes that Complainant was apparently not interested in registering the name <foxstudios.biz>. Respondent contends that Complainant utilizes a number of other domain names including fox.com, foxfilm.de, <fox.ch>, <fox.co.uk>, <fox.be>, <fox.es>, <foxbaja.com>, <foxlatina.com> and/or <foxasia.com> and that Complainant is often known by the domain name <fox.com>. Respondent further contends that a significant amount of domain names exist which contain the word “fox” or “fox studios” that do not belong to Complainant including <foxstudios.net>, <foxstudios.au.com>, <foxstudios.org>, <fox.com.au>, <fox.au.com>, <fox.org>, <fox.co.nz>, <fox.net.au>, <fox.net>, <fox.info>., <fox.biz>, and <foxstudios.net.au>.
Respondent contends that it would be unfair if it had to relinquish its domain name to Complainant when at least thirteen (13) other domain names are allowed to exist independently of Complainant.
Respondent further contends that it is not true that “Fox Studios” is always associated with Complainant for a Yahoo search often turns up numerous entities which are unrelated to Complainant.
Respondent contends that it intended to use the domain name to create a website address for her planned dance studios. Respondent contends that she planned to establish a dance studio after semi-retirement and knew that she would at least have to wait another year before she could tackle the project.
Respondent contends that she did not register the domain name in bad faith because if she had registered in order to sell it she would have done so immediately after obtaining it and she has not. Respondent contends that Internet users will not be confused by her domain name for it would be difficult for anyone to confuse a local dance studio in Adelaide, Australia with a multi-national corporation.
(1) Complainant has met its burden to prove by a preponderance of the competent, credible and admissible evidence that the domain name at issue is identical to trademarks in which Complainant has rights.
(2) Complainant has met its burden to prove by a preponderance of the competent, credible and admissible evidence that Respondent has no rights or legitimate interests in respect of the domain name at issue.
(3) Complainant has not met its burden to prove by a preponderance of the competent, credible and admissible evidence that the domain name at issue has been registered or is being used in bad faith.
Paragraph 15(a) of the STOP 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 STOP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical 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.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which Complainant asserts rights.
This record contains ample evidence that Complainant owns several registered trademarks for “Fox Studios” (word mark) and has been using that mark for a significant amount of time prior to Respondent’s registration of the domain name in question. In addition, those registered marks are identical to the domain name in question. Respondent denies neither of these points. Under these circumstances, Complainant has met its burden to prove by a preponderance of the competent, credible and admissible evidence that the domain name at issue is identical to trademarks in which Complainant has rights.
Complainant has alleged and Respondent has not denied, that Respondent has no registered trademark for Fox Studios, that she is not a licensee or in any way affiliated with Complainant, that her surname is not “Fox” and that at no point has she ever been commonly known by the name “Fox” or “Fox Studios.”
Respondent has alleged that it registered the domain name in order to get a website address for her planned dance studios and that she planned to establish a dance studio after semi-retirement but has presented no evidence whatsoever in support thereof other than her own one, brief and bold statements. On this Record, this Panel is compelled to find that such unsupported, self-serving allegations alone are insufficient to establish that Respondent has rights or legitimate interests in respect to the domain name at issue.
Under these circumstances, Complainant has met its burden to prove by a preponderance of the competent, credible and admissible evidence that Respondent has no rights or legitimate interests in respect to the domain name at issue.
Complainant contends that Respondent has registered the domain name in question in bad faith but has presented no evidence in support of said contention. Complainant simply argues that the domain name in question is confusingly similar to its marks and that the use of <foxstudios.biz> will create “initial interest confusion” for Internet users as well as dilution of Fox’s famous marks and that since Respondent is located in Australia she was very likely aware of Fox Studios Australia and registered the domain name to cause consumer confusion. While neither are necessarily unreasonable conclusions, they do not constitute evidence of Respondent’s registration in bad faith and this Panel is bound to decide the matter on the evidence.
Complainant does not argue or submit evidence that the domain name “is being used in bad faith.” In fact, the parties seem to agree that it does not seem to be “in use” yet at all, like many registered domain names.
Unfortunately, Respondent has not explained why she chose the particular name “foxstudios” and registered it except to say that it was for use in connection with a planned “dance studio.” The Record is barren in this regard. While this Panel appreciates that without discovery or substantive position taken by Respondent, it is often difficult for a Complainant to present evidence of registration and/or use in bad faith, it is still Complainant’s burden to do so under the STOP Policy. Under these circumstances and in light of the clear requirement that Complainant prove that the domain name at issue has been registered or is being used in bad faith, this Panel cannot conclude Complainant has met its burden to prove the third element required in order to succeed in its quest to have the domain name transferred.
Under these circumstances, Complainant has not met its burden to prove by a preponderance of the competent, credible and admissible evidence that the domain name at issue has been registered or is being used in bad faith.
Complainant’s Complaint is hereby dismissed. Subsequent challenges under the STOP Policy shall be permitted.
M. KELLY TILLERY, ESQUIRE, PANELIST
Dated: February 27, 2002
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 Respondent claims that Complainant’s mark is not really “identical” because it is two words instead of one is without merit since domain names cannot and do not include blank spaces between letters as can be done in other media. Similarly, Respondent’s claims that (1) Complainant does not meet the first requirement of STOP Policy 4(a) because it is also known by other versions of its mark and /or that it owns other different domain names, (2) that Complainant has no rights because it did not register the domain name in question first and (3) that it would be “unfair” for her to be denied her domain name when there are others that should be equally objectionable to Complainant are without merit No prevision of the STOP Policy or even general trademark laws supports such arguments.