Twentieth Century Fox Film Corporation v. PPA Media Services / Ryan G Foo
Claim Number: FA1210001467717
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C., USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <foxsports2.com>, registered with Internet.bs Corp.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 17, 2012; the National Arbitration Forum received payment October 17, 2012.
On October 21, 2012, Internet.bs Corp confirmed by e-mail to the National Arbitration Forum that the <foxsports2.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. verified that Respondent is bound by the Internet.bs Corp. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 2012, 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@foxsports2.com. Also on October 22, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name 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 ICANN Policy, ICANN Rules, the National Arbitration 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.
i. Respondent is not commonly known by the disputed domain name as nothing in the WHOIS information demonstrates that Respondent is known by the disputed domain name. Further, Respondent has not been authorized to use the FOX marks.
ii. Respondent is using the disputed domain name to resolve to a website featuring various third-party hyperlinks to Complainant’s competitors in the television industry and other commercial websites for commercial gain.
i. Respondent’s cybersquatting activities have been the subject of at least 12 adverse UDRP decisions in which Respondent was ordered to transfer domain names to the respective complainant. See Woot, Inc. v. PPA Media Servs. / Foo, FA 1454856 (Nat. Arb. Forum Sept. 10, 2012); see also Getty Images (US), Inc. v. PPA Media Servs. / Foo, FA 1443660 (Nat. Arb. Forum Jul. 2, 2012); see also Euromarket Designs, Inc. d/b/a Crate & Barrel v. PPA Media Servs. / Foo, FA 1440326 (Nat. Arb. Forum May 28, 2012). Specifically, these prior panels have held that Respondent developed a pattern of bad faith domain name registrations, which should also be found here.
ii. Respondent’s registration and use of the disputed domain name constitutes bad faith under Policy ¶ 4(b)(iii) because Respondent is disrupting Complainant’s business by using the disputed domain name for a website featuring sponsored link advertisements for competing services and products.
iii. Respondent’s bad faith is also evident under Policy ¶ 4(b)(iv) as Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its FOX marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website and/or the products and services advertised therein.
iv. Respondent had knowledge of Complainant’s FOX and FOX SPORTS marks prior to registering the disputed domain name in bad faith.
Complainant established rights in the mark contained within the dispute domain name.
Respondent’s disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant to 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 and is being used in bad faith.
Given 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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 (Nat. Arb. 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 that it is one of the world’s leading and largest entertainment and media companies. Complainant notes that it offers a wide array of television related services and products including those offered under the FOX SPORTS mark that Complainant has used since September of 1978. Further, Complainant argues that it owns numerous trademark registrations with the USPTO for the FOX (e.g., Reg. No. 1,840,919 registered June 21, 1994) and FOX SPORTS marks (e.g., Reg. No. 1,932,252 registered Oct. 31, 1995). The Panel finds that Complainant established that it has rights in the FOX SPORTS mark under Policy ¶ 4(a)(i) through its trademark holdings with the USPTO, irrespective of Respondent’s location outside the U.S. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Further, Complainant argues that Respondent registered the <foxsports2.com> domain name August 24, 2006, and that it is confusingly similar to Complainant’s FOX SPORTS mark. Complainant notes that the disputed domain name features the entire FOX SPORTS mark in addition to the number “2” and the gTLD “.com.” Complainant argues that both of the added features in the domain name do not sufficiently distinguish the disputed domain name from the FOX SPORTS mark. The Panel notes that the disputed domain name also removes the space that is present within Complainant’s FOX SPORTS mark. These changes do not distinguish the domain name from Complainant’s mark; the Panel finds that Respondent’s <foxsports2.com> domain name is confusingly similar to Complainant’s FOX SPORTS mark under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the disputed domain name as nothing in the WHOIS information demonstrates that Respondent is known by the disputed domain name. Further, Complainant asserts that Respondent has not been authorized to use the FOX marks. The Panel notes that the WHOIS information for the <foxsports2.com> domain name identifies “PPA Media Services / Ryan G Foo” as the registrant. The Panel finds that Complainant has shown that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant also argues that Respondent is using the disputed domain name to resolve to a website featuring various third-party hyperlinks to Complainant’s competitors in the television industry and other commercial websites for commercial gain. The Panel notes that Respondent’s resolving website features various third-party links for such things as “Watch Live on FOX Soccer,” “Watch Live Baseball,” “Sports TV Live,” and many others. See Complainant’s Annex 10. Complainant argues that Respondent receives advertising or other compensation from the linked-to websites and products. The Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant also urges that Respondent registered and used the disputed domain name in bad faith. Complainant argues that Respondent’s cybersquatting activities have been the subject of at least 12 adverse UDRP decisions in which Respondent has been ordered to transfer domain names to the respective complainant. See Woot, Inc. v. PPA Media Servs. / Foo, FA 1454856 (Nat. Arb. Forum Sept. 10, 2012); see also Getty Images (US), Inc. v. PPA Media Servs. / Foo, FA 1443660 (Nat. Arb. Forum Jul. 2, 2012); see also Euromarket Designs, Inc. d/b/a Crate & Barrel v. PPA Media Servs. / Foo, FA 1440326 (Nat. Arb. Forum May 28, 2012). Specifically, Complainant argues that these prior panels held that Respondent developed a pattern of bad faith domain name registrations, which should also be found here. The Panel accepts Complainant’s argument and finds that Respondent registered the <foxsports2.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii) as part of a pattern of bad faith domain name registrations. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Further, Complainant argues that Respondent’s registration and use of the disputed domain name constitutes bad faith under Policy ¶ 4(b)(iii) because Respondent is disrupting Complainant’s business by using the disputed domain name for a website featured sponsored link advertisements for competing services. As noted above, Complainant’s Annex 10 contains a screenshot of the resolving website that the Panel finds contains numerous third-party links to competing sports-related entertainment products. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under a Policy ¶ 4(b)(iii) analysis. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant also asserts that Respondent’s bad faith is also evident under Policy ¶ 4(b)(iv), as Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its FOX marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website and/or the products and services advertised therein. Complainant has argued that Respondent is using the FOX SPORTS mark in order to increase commercial profits by receiving click-through or advertising revenue via the disputed domain name. The Panel finds that Respondent registered and is using the disputed domain name in bad faith under a Policy ¶ 4(b)(iv) analysis as well. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Lastly, Complainant argues that Respondent knew of Complainant’s FOX and FOX SPORTS marks prior to registering the disputed domain name in bad faith. Complainant notes its longstanding use of the FOX SPORTS mark, the use of the entire mark in the domain name, and Respondent’s history of cybersquatting as evidence of Respondent’s knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name. The Panel disregards Complainant's arguments concerning constructive knowledge because Panels generally find that constructive knowledge is not enough evidence to support findings of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and concludes that finding such knowledge it is appropriate to find as well that Respondent registered the <foxsports2.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <foxsports2.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 11, 2012.
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