Twentieth Century Fox Film Corporation v.
Michele Dinoia
Claim Number: FA0212000135643
PARTIES
Complainant
is Twentieth Century Fox Film
Corporation, Beverly Hills, CA (“Complainant”), represented by Vivian L. Polak, of LeBoeuf, Lamb, Greene & MacRae, LLP. Respondent is Michele
Dinoia, Pineto, Italy (“Respondent”), represented by Avvocato Valerio
Donnini.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <foxmoviechannel.com>,
registered with The Registry At Info
Avenue d/b/a Ia Registry.
PANEL
The
undersigned certify that they have acted independently and impartially, and to
the best of their knowledge have no known conflict in serving as Panelists in
this proceeding.
The
Panelists are: Richard DiSalle (Chair),
James P. Buchele and Clive Elliott.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 5, 2002; the Forum received a hard copy of the
Complaint on December 9, 2002.
On
December 11, 2002, The Registry At Info
Avenue d/b/a Ia Registry confirmed by e‑mail to the Forum that the
domain name <foxmoviechannel.com> is registered with The Registry At Info Avenue d/b/a Ia Registry
and that the Respondent is the current registrant of the name. The
Registry At Info Avenue d/b/a Ia Registry has verified that Respondent
is bound by the The Registry At Info
Avenue d/b/a Ia Registry registration agreement and has thereby agreed
to resolve domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
December 11, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 6, 2003 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@foxmoviechannel.com by e-mail.
A
timely Response was received and determined to be complete on January 6, 2003.
Complainant
filed a timely Additional Submission on January 6, 2003.
Respondent
filed a timely Additional Submission on January 13, 2003.
On January 7, 2003, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Richard
DiSalle (Chair), James P. Buchele and Clive Elliott as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
FOX MOVIE
CHANNEL is an internationally-recognized, distinctive trademark of Complainant
Twentieth Century Fox Film Corporation ("Fox"). Fox holds the following United States
trademark registrations for its FOX MOVIE CHANNEL mark:
FOX MOVIE
CHANNEL, International Class 41, Reg. No. 2578468.
FOX MOVIE CHANNEL, International Class
38, Reg. No. 2617849.
Since at least
as early as 1915, Fox and its predecessors in interest have continually used
the trademark and service mark "FOX," and other marks in which the
mark "FOX," or a word or mark derived from or similar to the
"FOX" mark, is the predominant feature (hereinafter collectively
referred to as the "Fox Marks"), in connection with a wide variety of
entertainment services and products including, but not limited to, the
production, distribution, promotion and sale of theatrical motion picture films
and television programming, video and audio tapes and discs, as well as the
exploitation and further distribution of motion pictures and other programming
on television, cable and via satellite delivery.
Fox currently
owns over 2,400 United States registrations and applications for trademarks and
service marks containing or consisting of the Fox Marks. Worldwide, Fox
currently owns over 3,050 registrations and applications for trademarks and
service marks consisting of or containing the Fox Marks.
The authorized
website for Fox Movie Channel is <thefoxmoviechannel.com>. The primary purpose of this website is to
disseminate information to the public about programming available through the
Fox Movie Channel. It also features
articles on related topics, such as interviews with actors starring in the
movies airing on the channel. In
addition, the website features links to related sites such as "Fox Movie
Channel News." The website offers
links to the official websites of other Fox related companies, such as Fox Home
Entertainment.
Complainant
alleges that Respondent Michele Dinoia is a notorious cybersquatter, and that
his infringing registrations of <kidsrus.com>, <wwwfootlocker.com>,
and <anheuserbusch.com> have all been transferred to their rightful
trademark owners through UDRP proceedings.
See Geoffrey, Inc. v. no aka Michele Dinoia, FA 104089 (Nat. Arb.
Forum Feb. 25, 2002) (transferring <kidsrus.com>), Venator Group Retail
Inc v. Michele Dinoia d/b/a SZK.com, FA 101506 (Nat. Arb. Forum Dec. 10, 2001)
(transferring <wwwfootlocker.com>), Anheuser‑Busch, Inc. v. Michele
Dinoia, FA 114465 (Nat. Arb. Forum July 15,
2002) (transferring <anheuserbusch.com>).
B.
Respondent
The Respondent claims that Complainant’s assertions regarding the holding of U.S. trademark
registrations for the mark FOX MOVIE CHANNEL are incomplete. The
registrations of Complainant’s marks took place on June, 11 2002, for Reg. No.
2578468 and on September 10, 2002, for Reg. No. 2617849; the Respondent
registered the contested domain name months earlier, on August 7,
2001. Therefore, the Complainant had no
trademark rights in the words “fox movie channel” at the time the Respondent
registered the domain name, because no such mark existed.
Respondent
claims that he has rights or legitimate interests in respect of the domain
name, and that he is not a cybersquatter.
He says his business is, among others, to register numerous generic
names, and to resell or to use them for websites. Respondent claims that selling a domain name is not per se prohibited;
it is prohibited only if there is trademark infringement and lack of legitimate
interest, and that the panel in Todito S.a v. Dinoia, D2002-0620
(WIPO Aug. 26, 2002) (<hechos.com>) acknowledged that the Respondent’s
activity is legitimate.
Respondent
further argues that the domain name should not be considered as having been
registered and being used in bad faith.
Indeed, he says the domain name was registered in good faith and that he
was not aware of the existence of the television channel named Fox Movie
Channel.
Finally,
Respondent says that Complainant has not proved that he was aware of the mark
or that he was aware of the existence of a television channel named Fox Movie
Channel and that Complainant has produced no evidence that its television
channel is known in Italy, where the Respondent is resident. Respondent says there is no evidence that
the Complainant’s mark is well known outside the United States.
C.
Complainant’s Additional Submission
In its Additional
Submission, Complainant states that in Italy alone, Fox owns 11 registered
trademarks that incorporate its FOX house mark, with an additional pending
application in process. In the European
Union, Fox owns 18 community trademark registrations that incorporate its FOX
house mark, with 3 additional pending applications in process.
Complainant
offers the Declaration of Robert B. Carrasco to show that Fox Movie Channel
motion picture content has been broadcast on the European continent pursuant to
licenses from Fox since as early as March 1999. Pursuant to these license agreements, the Fox Movie Channel
marks, which began use in early 2000, appeared in the screen images and in the
film credits in the programming broadcast to Europe and which was accessible by
viewers in Italy.
Complainant also
argues that Respondent's attempt to hide behind the <hechos.com> panel
ruling concerning his registration of a single generic Spanish word as a
second-level domain does not support his domain name registration practice
because the domain name is not generic.
Finally,
Complainant contends that Respondent’s website links to other websites that
offer motion picture and other entertainment services, as well as numerous
websites that offer adult and teen pornography.
D. Respondent’s
Additional Submission
In his Additional
Submission, Respondent argues that the declaration of Mr. Carrasco is not
evidence that the Fox Movie Channel was widely known in Italy. He states that the license agreements to
broadcast content owned by the Complainant include French and Spanish
companies, not Italian companies, and that the Fox Movie Channel was not
directed to an Italian audience; in fact, he says that (without any real
evidence to support the assertion) the mark in question is totally unknown in
Italy.
FINDINGS
Having reviewed all of the submissions,
we find that:
(1)
the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered and is being used in bad faith.
Identical or Confusingly
Similar
Complainant
holds trademark registrations with the United States Patent and Trademark
Office for the FOX MOVIE CHANNEL mark (Reg. Nos. 2,578,468 and 2,617,849). Complainant has continually used the FOX
mark and similar variations of the mark since 1915 to denote a variety of
entertainment services and products.
Complainant is involved in the motion picture industry and television
industry and uses the FOX related marks to denote its services within each
industry.
Fox
Movie Channel is Hollywood’s first and only studio-based movie network, and
airs movies from its “Fox library” of movies, including such hits as Titanic,
as well as programming that focuses on how a particular film was made. Fox Movie Channel reaches nearly 19 million
households in the United States.
Complainant
promotes its Fox Movie Channel at a website found at
<thefoxmovie-channel.com>. This
website features information about programming available through the Fox Movie
Channel as well as articles on such topics as interviews with actors staring in
Complainant’s films. The
<thefoxmoviechannel.com> website received approximately 13,659,000
visitors in the year 2002. Therefore,
the FOX MOVIE CHANNEL mark carries a significant amount of goodwill.
Respondent’s
<foxmoviechannel.com> domain name is identical to the FOX MOVIE
CHANNEL mark because the absence of spaces in the domain name is irrelevant in
a Policy ¶ 4(a)(i) analysis. The
top-level domain “.com” is negligible because top-level domains are a required
feature of every domain name.
Therefore, Respondent’s <foxmoviechannel.com> domain name is identical to Complainant’s
mark under Policy ¶ 4(a)(i). See
Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan.
7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as
spaces are impermissible in domain names and a generic top-level domain such as
‘.com’ or ‘.net’ is required in domain names”); see also Visit Am., Inc. v. Visit Am., FA 95093
(Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the
Internet address and does not add source identity significance).
In
its Additional Submission, Complainant addresses Respondent’s claim that the
subject domain name predates Complainant’s interest in the FOX MOVIE CHANNEL
mark. Even if we accepted that
argument, Complainant’s rights in the FOX trademark and various related marks
are well established with over 85 years of commercial use.
Rights and Legitimate
Interests
It
is clear that Respondent uses the domain name to re-direct Internet traffic to
a revenue generating search engine, “SearchPort,” is not a use in connection
with a bona fide offering of goods or services. Respondent uses the domain name to direct those searching for
Complainant by its FOX MOVIE CHANNEL mark directly to the “SearchPort” movie
page. The resulting webpage of the
subject domain name contains links to the websites <howtocopydvds.com>
and <jump.sex.com>, which Complainant would prefer not to be associated
with. Respondent’s actions unfairly
trade off the goodwill and commercial value of the FOX MOVIE CHANNEL mark, and
his behavior warrants a finding that neither Policy ¶¶ 4(c)(i) nor (iii) serve
to assist Respondent in establishing rights or legitimate interests in the
subject domain name. See MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to profit using the
Complainant’s mark by redirecting Internet traffic to its own website); see
also State Farm Mut. Auto. Ins. Co.
v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that
“unauthorized providing of information and services under a mark owned by a
third party cannot be said to be the bona fide offering of goods or services”).
Respondent
is not a licensee authorized to use the FOX MOVIE CHANNEL mark and no evidence
exists that suggests Respondent has ever been known by the mark. Therefore, Respondent has no rights or
legitimate interests in the domain name under Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000)
(finding that no person besides Complainant could claim a right or a legitimate
interest with respect to the domain name <nike-shoes.com>). Complainant’s Additional Submission supports
this finding.
Registration and Use in Bad Faith
Complainant
argues that Respondent’s commercial use of the subject domain name to increase
Internet traffic at the search engine website “SearchPort” is bad faith under
Policy ¶ 4(b)(iv) and we agree.
Respondent’s use of the subject domain name results in consumer
confusion as to Complainant’s affiliation with the resulting search engine
website. See State Farm Mut. Auto. Ins. Co. v. Northway,
FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent
registered the domain name <statefarmnews.com> in bad faith because
Respondent intended to use Complainant’s marks to attract the public to the web
site without permission from Complainant); see also G.D. Searle &
Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see
also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if Respondent profits from its diversionary use of Complainant's
mark when the domain name resolves to commercial websites and Respondent fails
to contest the Complaint, it may be concluded that Respondent is using the
domain name in bad faith pursuant to Policy 4(b)(iv)).
Respondent
was involved in prior domain name disputes, including disputes regarding the
domain names <anheuserbusch.com> and <kidsrus.com>. In these prior disputes Respondent infringed
on the ANHEUSER-BUSCH mark and the KIDS “R” US mark. Respondent was found to have had constructive knowledge of the
marks it infringed upon in the aforementioned cases. Based on the strength of the FOX MOVIE CHANNEL mark and
Respondent’s infringing behavior, we find that Respondent purposefully
registered the subject domain name to trade off of the goodwill associated with
the FOX MOVIE CHANNEL mark.
The
Panel concludes that Respondent was aware of Complainant’s interests in the FOX
MOVIE CHANNEL mark, and registered and used the subject domain name in bad
faith. See Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that
"[w]here an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
DECISION
The Registry at Info Avenue is directed
to transfer the registration to <foxmoviechannel.com> from Michele
Dinoia to Twentieth Century Fox Film Corporation.
Richard DiSalle, Chair
James P. Buchele, Panelist
Clive Elliott, Panelist
Dated: February 3, 2003
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