Twentieth Century Fox Film Corporation v. PPA Media Services / Ryan G Foo
Claim Number: FA1303001490506
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 <foxsportsnet.com>, registered with Internet.bs Corp.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 19, 2013; the National Arbitration Forum received payment on March 19, 2013.
On March 24, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <foxsportsnet.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 2013 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@foxsportsnet.com. Also on March 26, 2013, 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 April 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has 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.
A. Complainant
Complainant contends as follows:
Complainant is one of the world’s leading and largest entertainment and media companies. Fox is a television network and major film studio, among other businesses. For many decades, Fox has produced and distributed some of the highest-grossing and internationally well-known film and television properties of all time.
Complainant owns numerous United States Patent and Trademark Office (“USPTO”) trademark registrations for the FOX mark (e.g., Reg. No. 1,840,919 registered June 21, 1994) and FOX SPORTS mark (e.g., Reg. No. 1,932,252 registered October 31, 1995).
The <foxsportsnet.com> domain name is confusingly similar to Complainant’s registered FOX SPORTS trademark.
Nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the disputed domain name. Respondent is not and never has been a licensee of Complainant or otherwise authorized by Complainant to use its marks. Respondent’s use of the <foxsportsnet.com> domain name for a commercial pay-per-click website featuring sponsored-link advertisements for directly competing websites and other commercial websites does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain.
Respondent acquired or registered the <foxsportsnet.com> domain name in December of 2011.
Respondent uses the disputed domain name for a pay-per-click website featuring sponsored-link advertisements for directly competing websites and other commercial websites such as DirecTV, Dish Network, and Comcast.
Respondent’s website displays search categories that use Complainant’s FOX SPORTS mark (“Fox Sports Net,” “Fox Sports Live Streaming,” “Fox Sports TV”) and other search categories including a search category in Complainant’s field of business (“Football Live TV”).
Respondent’s search categories connect to web pages featuring sponsored-link advertisements for directly competing websites (e.g., third-party websites claiming to offer Fox’s television programming or sports programming) and other commercial websites.
Respondent receives “click-through” commissions when Internet users click on the sponsored-link ads featured on its website.
Respondent’s bad faith registration and use of trademark-related domain names has been the subject of numerous additional adverse UDRP proceedings, the vast majority of which involved Respondent’s use of the disputed domain names for pay-per-click websites.
Respondent disrupts Complainant’s business by using the disputed domain name for a website featuring sponsored-link advertisements for directly competing services.
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 and FOX SPORTS marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website and/or the products and services advertised therein.
Respondent registered the <foxsportsnet.com> domain name in bad faith with knowledge of Complainant’s rights in the FOX and FOX SPORTS marks.
Respondent selected and registered a domain name that differs from Complainant’s FOX SPORTS mark by the addition of the term “net,” which recalls Complainant’s affiliate Fox Sports Network (formerly known as Fox Sports Net).
Respondent’s website directly refers to Complainant’s marks. In a prior UDRP decision involving the <foxsports2.com> domain name, the panel specifically held that Respondent registered that domain name in bad faith and with knowledge of Complainant’s rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO trademark registrations for the FOX SPORTS mark.
Complainant acquired rights in its FOX SPORTS mark prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark in any capacity.
Respondent uses the at-issue domain name for a pay-per-click website featuring sponsored-link advertisements for directly competing websites as well as other commercial websites.
Respondent’s bad faith registration and use of trademark-related domain names has been the subject of numerous additional adverse UDRP proceedings
Respondent’s bad faith registration and use of trademark-related domain names has been the subject of numerous adverse UDRP proceedings
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 and is being used in bad faith.
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(e), 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 (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.”).
Respondent’s at-issue domain name is confusingly similar to a mark in which Complainant has rights.
Complainant’s trademark registrations confer rights to Complainant under Policy ¶ 4(a)(i), even though Respondent appears to operate in Chile. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); 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).
The <foxsportsnet.com> domain name is confusingly similar to Complainant’s FOX SPORTS trademark because it contains Complainant’s mark in its entirety, only adding the insignificant descriptive term “net,” and the non-distinguishing generic top-level domain name “.com.” The addition of the term “net” to Complainant’s FOX SPORTS mark in forming the at-issue domain name heightens the confusing similarity of the domain name because the term directly relates to Complainant’s affiliated company, Fox Sports Networks, formerly known as Fox Sports Net. Neither the addition of the descriptive term nor the top-level domain name distinguishes the at-issue domain name from Complainant’s mark. Likewise the elimination of the space in Complainant’s mark is immaterial under the Policy. Therefore, the at-issue domain name and Complainant’s trademark are confusingly similar under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Respondent lacks either rights or legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark(s) in any capacity and as discussed below there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at‑issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
WHOIS information lists “PPA Media Services / Ryan G Foo” as the registrant of the at-issue domain name and there is no evidence that tends to show that Respondent is commonly known by the at‑issue domain name. Therefore, the Panel finds that Respondent is not commonly known by the < foxsportsnet.com > domain name for the purpose of 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).
Respondent uses the <foxsportsnet.com> domain name for a pay-per-click website featuring sponsored-links to directly competing websites and other commercial websites such as DirecTV, Dish Network, and Comcast. Respondent’s use of the at-issue domain name to address such a website is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use of the domain 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)).
In light of the uncontroverted evidence, Complainant satisfies its burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) bad faith circumstances are present from which the Panel may conclude that Respondent acted in bad faith under Policy ¶ 4(a)(iii).
First, given Respondent’s history of having multiple domain names transferred in prior UDRP proceedings include proceedings which were also filed by the instant Complainant, the Panel finds that Respondent registered and used the <foxsportsnet.com> domain name as part of its pattern of bad faith registrations pursuant to Policy ¶ 4(b)(ii). See Twentieth Century Fox Film Corp. v. PPA Media Servs. / Ryan G Foo, FA 1467717 (Nat. Arb. Forum Dec. 11, 2012) (finding bad faith inter alia because Respondent’s activity demonstrates a pattern of registering domain names adverse to the rights of trademark holders). 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).
Second, using the confusingly similar <foxsportsnet.com> domain name for a website featuring pay–per-click links to services directly competing with Complainant shows that Respondent is attempting to disrupt Complainant’s business by redirecting Internet users to Respondent’s <foxsportsnet.com> website. These circumstances demonstrate that Respondent has registered and used the <foxsportsnet.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Third, Respondent uses the domain name to intentionally attract, for commercial gain, Internet users to its <foxsportsnet.com> website by creating a likelihood of confusion between the domain name and Complainant’s trademark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website and/or the products and services referenced thereby. Respondent improperly uses Complainant’s FOX SPORTS mark in order to drive Internet traffic to the revenue generating click-through links on Respondent’s <foxsportsnet.com> website. Therefore, the Panel finds that Respondent has registered and used the <foxsportsnet.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Finally, in Twentieth Century Fox Film Corp. v. PPA Media Servs. / Ryan G Foo, FA1467717 cited above, the panel announced that Respondent registered the <foxsports2.com> domain name with knowledge of Complainant’s rights in the FOX SPORTS mark. Respondent’s prior knowledge of Complainant’s trademarks was, and is, clear given the notoriety of Complainant’s trademarks and the manner in which Respondent uses the confusingly similar domain name. Indeed, Respondent selected and registered a domain name that essentially differs from Complainant’s FOX SPORTS mark only by the addition of the term “net,” a term which recalls Fox Sports Network. Registering a domain name that one knows is confusingly similar to a trademark of another indicates bad faith registration and use under Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also 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).").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <foxsportsnet.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 30, 2013
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