national arbitration forum

 

DECISION

 

Twentieth Century Fox Film Corporation v. Brando Bronzino

Claim Number: FA1304001494970

PARTIES

Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA.  Respondent is Brando Bronzino (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <21stcenturyfox.us>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2013; the National Arbitration Forum received a hard copy on April 19, 2013.

 

On April 16, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <21stcenturyfox.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 Disputed Resolution Policy (the “Policy”).

 

On April 22, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 13, 2013 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On May 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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) Rules for the U.S. Department of Commerce’s usTLD Disputed Resolution Policy "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 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

BACKGROUND FACTS

A.      Fox and its Products and Services

 

1.                  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.  Fox was founded in 1935 as a result of the merger of Fox Film Corporation and Twentieth Century Pictures, and today is a subsidiary of News Corporation, an international media conglomerate.  Fox’s services and products are offered directly and via its affiliated companies that include Fox Filmed Entertainment, Twentieth Century Fox Television, Twentieth Century Fox Home Entertainment, Twentieth Television, FOX Broadcasting Company, Fox Cable Networks, FOX News Channel, Fox Television Stations, and Fox Television Studios (collectively, “Fox”).

 

2.                  Fox owns the FOX Marks, and its rights date back to 1915 for the mark FOX and 1935 for the mark 20TH CENTURY FOX.  Fox also owns hundreds of additional FOX-formative trademarks.

 

3.                  Over the years, the commercial success of the FOX Marks has been tremendous. Fox has sold many billions of dollars worth of products and services under the FOX Marks.  Fox has also extensively and widely advertised and promoted its products and services under the FOX Marks for many years.  Fox spends tens of millions of dollars every year to advertise and promote its products and services under the FOX Marks.

 

4.                  Fox produces, acquires, and distributes movies throughout the world under a variety of arrangements.  Every year, Fox places numerous movies into general release in the United States and/or internationally, and Fox’s movies enjoy tremendous commercial success worldwide.  For example, Fox’s movies in 2012 included Life of Pi, Star Wars: The Phantom Menace 3D, Ice Age: Continental Drift, and Parental Guidance.  Fox’s movies in 2011 included  Rio, X-men: First Class, Rise of the Planet of the Apes, Diary of a Wimpy Kid, Mr. Popper’s Penguins, and Glee: 3D Concert Movie.  Fox’s movies in 2010 included Avatar, Ice Age: Dawn of the Dinosaurs, and Alvin and the Chipmunks: The Squeakquel. 

 

5.                  Fox’s movies begin with an animation of its famous and federally registered mark 20TH CENTURY FOX set to a musical score (the “FOX Fanfare”).  Fox has used the FOX Fanfare to introduce its movies for many decades, and the FOX Fanfare is instantly recognizable worldwide as identifying a FOX production.  The FOX Fanfare can be viewed on Fox’s website at http://www.foxstudios.com/.

 

6.                  In addition to its movie offerings, Fox offers a wide array of television-related services and products.  Specifically, Fox owns and operates television stations; owns and operates a television network; produces and distributes television programming for its own network, other networks, and cable channels; owns and operates numerous cable television channels; and distributes content (television programs and movies) via various outlets.  These activities are discussed in further detail below.

 

7.                  Fox owns and operates broadcast television stations, specifically, 27 full-power stations including stations located in nine of the top ten largest markets (which include New York, Los Angeles, and Chicago). 

 

8.                  Fox owns and operates the FOX network, which has approximately 200 affiliated stations (including stations owned by Fox) that carry FOX programming in all time periods in which it is offered.  The FOX network reaches approximately 99% of all U.S. television households. 

 

9.                  Fox regularly delivers prime-time programming and Saturday late-night programming to its affiliates each week.  Fox’s prime-time programming features numerous popular series such as Glee, The Simpsons, Family Guy, Fringe, New Girl, and Raising Hope; reality series such as American Idol and So You Think You Can Dance; and various movies and specials.  Fox’s prime-time line-up is enormously popular and well-received. 

 

10.              In addition to Fox’s network television offerings, Fox also has a substantial presence on cable television.  Fox Cable Networks is one of the media industry’s largest and most diverse programming groups with 43 domestic programming services reaching more than 550,000,000 subscribing television homes.  Fox Cable Networks’ channels include FX, National Geographic Channel, Fox Movie Channel, and NatGeo WILD, as well as numerous sports channels.

 

11.              Fox owns a motion picture and television library (the “Fox Library”) consisting of varying rights to several thousand previously released movies and television programs.  Movies in the Fox Library include many successful and well-known titles, including many of the top 30 domestic box office grossing films of all time, such as Avatar, Titanic (together with Paramount Pictures Corporation), Star Wars, Star Wars Episode I: The Phantom Menace, Star Wars Episode III: Revenge of the Sith, Star Wars Episode II: Attack of the Clones, Star Wars Episode VI: Return of the Jedi, and Independence Day.  The television programming in the Fox Library includes current programming such as Family Guy, The Simpsons, and How I Met Your Mother, as well as classic series such as The Mary Tyler Moore Show, M*A*S*H, Hill Street Blues, and Ally McBeal

 

12.              Fox distributes its movies, television, and other programming, as well as films and programming produced by other producers, in the United States, Canada, and international markets in all home-media formats, including the sale and rental of DVDs.  Fox releases or re-releases thousands of produced and acquired titles annually.

 

13.              Fox licenses its movies, television, and other programming in the United States, Canada, and international markets to various television venues including subscription pay, pay-per-view, and video-on-demand, as well as other venues such as electronic sell-through services over the Internet.  

 

14.              Fox has for many years extensively promoted its services and products on the Internet, and operates an extensive network of websites under its FOX Marks.  For example, Fox maintains websites at the domain names FOX.COM, FOXMOVIES.COM, and FOXSTUDIOS.COM. 

 

15.              By virtue of the inherent strength of the FOX Marks as applied to Fox’s services and products, and Fox’s extensive use and promotion of the FOX Marks for many years, the FOX Marks have long been famous.

 

B.      Fox’s Trademark Holdings

       

16.              Fox owns numerous U.S. trademark registrations for the FOX Marks, including the following representative examples:

 

a.            Registration No. 1,924,143 for the FOX mark in block letters, first used March 31, 1915, issued October 3, 1995, covering the production and distribution of motion picture films, television programs, video tapes, video cassettes, and videodiscs, all on a variety of entertainment, news, and educational subjects; production and distribution of pre-recorded audio materials featuring spoken words and music, in International Class 41.

 

b.            Registration No. 2,318,595 for the mark FOX in block letters, first used June 12, 1995, issued February 15, 2000, covering on-line services in the field of entertainment relating to sports entertainment, motion picture film, television, video, and children’s entertainment via a global communications network, in International Class 41.

 

c.            Registration No. 1,011,919 for the mark 20TH CENTURY FOX (shown below), first used October 8, 1935, filed July 5, 1973, issued May 27, 1975, covering motion picture films in International Class 9.

[redacted]

 

d.            Registration No. 1,256,722 for the mark 20TH CENTURY FOX (shown below), first used January 1982, filed September 27, 1982, issued November 8, 1983, covering cinematographic films, video tapes, prerecorded video cassettes, and video discs in International Class 9, and the production and distribution of motion picture films, television programs, pre-recorded videocassettes, and videodiscs in International Class 41.

 

[redacted]

 

17.              Fox’s trademark rights in its FOX Marks well predate Respondent’s registration of the Domain Name. 

 

C.      Respondent’s Infringing Activities and Bad-Faith Acts

 

18.              Respondent registered the Domain Name in February 2013, long after Fox began using its FOX Marks, long after Fox registered its FOX Marks in the U.S. (and elsewhere), and long after Fox’s FOX Marks became famous.

 

19.              There is no question that Respondent had knowledge of Fox’s FOX Marks when he registered the Domain Name because he uses the Domain Name for a website featuring an unauthorized version of Fox’s famous FOX Fanfare that features an animation of Fox’s 20TH CENTURY FOX mark.  Respondent’s video is virtually identical to Fox’s famous FOX Fanfare with the exception of changing 20TH to 21ST―the same change Respondent made in the Domain Name, as shown in the screen shot below.

 

[redacted]

 

20.              In addition to his registration of the disputed Domain Name, Respondent has also registered additional infringing domain names comprised of Fox’s FOX Marks, specifically,  21STCENTURYFOX.NET, 21STCENTURYFOX.ME, 21STCENTURYFOX.MOBI, 21STCENTURYFOXFILMCOMPANY.COM, 21STCENTURYFILMCORPORATION.COM, and 21STCENTURYFOXSTUDIOS.COM.  Respondent uses these domain names for pay-per-click websites that feature (a) sponsored-link advertisements for directly competing websites in the movie industry and/or various commercial websites, (b) advertisements for GoDaddy.com’s services, and (c) offers to sell the Domain Names via the message “Would you like to buy this domain?” that links to GoDaddy.com’s web page regarding its domain-name brokerage services for the particular Domain Name.  Fox has filed a separate complaint against these domain names under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) concurrently with its filing of this Complaint. 

THE DOMAIN NAME IS CONFUSINGLY SIMILAR

TO COMPLAINANT’S MARKS

21.              The domain name 21STCENTURYFOX.US is confusingly similar to Fox’s famous and registered FOX Marks.  First, it contains the FOX mark in its entirety and combines it with terms that relate to Fox’s business and the non-distinguishing TLD “.US.”  Second, the Domain Name is also confusingly similar to Fox’s mark 20TH CENTURY FOX because it merely substitutes “20TH” with the immediately sequential numerical term “21ST.”  Panels deciding cases under the usDRP and similar domain-name dispute policies such as the Uniform Domain Name Dispute Resolution Policy (“UDRP”) have consistently held that a domain name comprised of a mark and/or terms relating to the complainant’s business is confusingly similar to the mark at issue, and that TLDs like .US are inconsequential when analyzing confusing similarity.[1]  Further, substituting a sequential numerical term and/or combining Fox’s FOX Marks with terms that directly relate to Fox’s business does not distinguish the Domain Names from Fox’s FOX Marks.  Indeed, the addition of terms that relate to Fox’s business heightens the confusing similarity of the Domain Name.  See, e.g., Google v. Rekruta (NAF FA1212001473942) (finding the domain name <g00gle-play.com> confusingly similar to complainant’s GOOGLE mark because respondent merely substituted the Os with zeros, and holding “the addition of the term ‘play’ in the domain name actually increases the confusing similarity of the disputed domain name, because Complainant’s ‘Google Play’ store is used by Complainant to provide its services.”); Twentieth Century Fox Film Corporation v. Leverett Consulting (NAF FA0410000338370) (finding the domain name <foxsportsfootball.com> confusingly similar to Complainant’s FOX SPORTS mark); Twentieth Century Fox Film Corporation v. foxinteractivemedia-inc.com (WIPO D2009-1475) (finding the domain name <foxinteractivemedia-inc.com> confusingly similar to Complainant’s FOX and FOX INTERACTIVE marks despite the addition of descriptive terms and the gTLD .com); BASF v. MostDomains.com (NAF FA0208000117331) (finding the domain name <basfcorp.com> confusingly similar to complainant’s BASF mark and holding that because complainant operates under the BASF Corporation name, the domain name “reflects an actual circumstance that increases the possibility Internet users will be confused.  Given the uniqueness and fame of the BASF mark, any consumer finding a domain address consisting of the BASF mark in its entirety would expect the website to be sponsored by, or affiliated with Complainant.”); Pioneer Hi-Bred v.  Johnston (NAF FA0809001223949) (finding the domain name <pioneerseedco.com> among others confusingly similar to complainant’s PIONEER mark because “seed” and “co,” an abbreviation of “company,” describe complainant’s business).

 

RESPONDENT HAS NO RIGHTS OR LEGITIMATE

INTEREST IN THE DOMAIN NAME

22.              Respondent has no rights or legitimate interest in the Domain Name for the following reasons.

23.              First, Respondent’s registration and use of the Domain Name for a website that falsely impersonates Fox by featuring a version of Fox’s famous FOX Fanfare does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name under the usDRP.  Rather, Respondent’s activities constitute passing off, in that Respondent is trying to pass itself off as Fox.  Such passing-off activities have been consistently held to demonstrate a lack of legitimate interest in disputed domain names.  See, e.g., Bridgestone Brands v. Alexander / Tornado (NAF FA1101001367353) (“Complainant indicates that Respondent’s disputed domain name [<firestonecreditcard.org>] resolves to a website that prominently features Complainant’s FIRESTONE mark and logos and purports to provide information about Complainant’s credit card services.  The Panel finds that Respondent is attempting to pass itself off as Complainant and that use of a confusingly similar domain name for such a purpose is not 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).”); Fossil v. Constramat (NAF FA0802001153564) (“Respondent is passing itself off as Complainant, and is using Complainant’s mark to exploit Complainant’s customers’ and potential customers’ assumptions that a website at <fosil.net> is affiliated with Complainant, when in fact it is owned by Respondent with no affiliation with Complainant.  The Panel finds that this use of the <fosil.net> domain name 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 name pursuant to Policy ¶4(c)(iii).”); Edible Communities v. Thoreau (NAF FA0803001158554) (“Respondent’s use of the disputed domain name [<theedibleaustin.com>] to pass itself off as Complainant shows that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(c)(i) as well as Policy ¶4(c)(iii).”); Digg v. Digg (NAF FA0808001220833) (holding respondent’s use of the domain name <digg-inc.com> to attempt to pass itself off as complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use).

24.              Second, Respondent’s use of altered versions of Fox’s 20TH CENTURY FOX mark and Fox’s FOX Fanfare on his website associated with the Domain Name constitutes additional evidence that Respondent lacks a legitimate interest in the Domain Name.  See, e.g., Nortel Networks v. Cross (NAF FA0405000271182) (holding respondent’s use of complainant’s NORTEL mark in the domain name and its use of the NORTEL design mark on its website “eliminate the possibility that Respondent could rely on the provisions of Policy ¶¶4(c)(i) and (iii) to evidence its rights or legitimate interests in the disputed domain name.”).

25.              Third, Respondent does not own and is not the beneficiary of a trademark or service mark that is identical to the Domain Name. 

26.              Finally, Respondent is not and has not been commonly known by the Domain Name.  Nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the Domain Names.  Further, Fox has not authorized Respondent to use its FOX Marks.  See, e.g., Twentieth Century Fox Film Corporation v. Leverett Consulting (NAF FA0410000338370) (holding respondent did not establish rights or legitimate interests in the disputed domain names because there was no proof in the record that respondent was known by the domain names and because Complainant did not authorize or license respondent to use its FOX SPORTS RADIO and FOX SPORTS marks); Twentieth Century Fox Film Corporation v. PPA Media (NAF FA1210001467717) (“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).”).

RESPONDENT’S BAD FAITH UNDER SECTION 4(B) OF THE usDRP

27.              Respondent’s registration and use of the Domain Name squarely meets the grounds of bad faith outlined in the usDRP, as well as additional grounds of bad faith.

28.              First, Respondent’s registration and use of the Domain Name constitute bad faith under Section 4(b)(iv) of the usDRP because Respondent uses the Domain Name to intentionally attract Internet users to his website by creating a likelihood of confusion with Fox and its famous and federally registered FOX Marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website and/or Respondent’s activities.  Regardless of whether Respondent attempts to profit from his website directly or indirectly (for example, in the form of gathering information on Fox’s customers), Respondent’s registration and use of the confusingly similar Domain Name benefits Respondent to the detriment of Fox, and thus constitutes bad faith.  See, e.g., SAIC v. Summerfield (NAF FA0807001218154) (holding respondent’s use of the domain name <saic-usa.com> for a website that copies complainant’s website constitutes bad faith under Section 4(b)(iv) because “Respondent is misappropriating the goodwill associated with Complainant’s business, and specifically the SAIC mark.  Complainant alleges, and the Panel agrees, that this creates a likelihood of confusion as to the source of Respondent’s <saic-usa.com> domain name and corresponding website.  The Panel presumes that Respondent is attempting to commercially benefit from this confusion.”); Yahoo! v. Pham (NAF FA0204000109699) (holding “Respondent’s registration of the <yahoonail.com> domain name for the purpose that it would benefit from the Complainant’s mark is evidence of bad faith pursuant to Policy ¶4(b)(iv).”).

29.              Second, Respondent’s use of altered versions of Fox’s 20TH CENTURY FOX mark and Fox’s FOX Fanfare on his website associated with the Domain Name constitutes an independent ground of bad faith under UDRP precedent.  Many UDRP Panels have held that unauthorized copying of the complainant’s logos constitutes an independent ground of bad faith.  See, e.g., Yahoo! v. Andersson (NAF FA0403000250001) (holding respondent’s copying of the distinctive features of complainant’s logo on his website constituted bad faith); Caterpillar v. Comercio e Importaciones EIRL (NAF FA0104000097083) (holding respondent’s use of complainant’s logo on its website “is indicative of an attempt to mislead potential customers into believing that Respondent is associated with or authorized by Caterpillar.”); Nortel Networks v.  Cross (NAF FA0405000271182) (holding respondent created the false impression of having some association with complainant by appropriating complainant’s logo on its website).

30.              Third, Respondent’s use of altered versions of Fox’s 20TH CENTURY FOX mark and Fox’s FOX Fanfare on his website associated with the Domain Name also constitutes passing off in bad faith.  See, e.g., Johnson Financial Group v. Janssen (NAF FA0311000214465) (holding “Respondent’s attempt to pass itself off as Complainant by copying graphics and text from Complainant’s website demonstrates Respondent’s bad faith registration and use of the <johnsonsgroup.net> and <johnson-latin.com> domain names under Policy ¶4(a)(iii).”); Smiths Group v. Snooks (NAF FA1102001372112) (holding respondent’s use of the domain name <smithsdetections.com> to pass itself off as complainant is evidence of respondent’s bad faith under Section 4(a)(iii)).

31.              Fourth, Respondent’s registration and use of the Domain Name constitute bad faith under Section 4(b)(iii) of the usDRP because Respondent disrupts Fox’s business by misleadingly and falsely identifying Respondent’s website as Fox’s website through his use of altered versions of Fox’s 20TH CENTURY FOX mark and Fox’s FOX Fanfare.

32.              Fifth, Respondent’s registration and use of the Domain Name constitute bad faith under Section 4(b)(ii) of the usDRP because Respondent has a bad-faith pattern of registering trademark-related domain names, specifically, the Domain Name subject to this Complaint and the additional infringing domain names described above, namely, 21STCENTURYFOX.NET, 21STCENTURYFOX.ME, 21STCENTURYFOX.MOBI, 21STCENTURYFOXFILMCOMPANY.COM, 21STCENTURYFILMCORPORATION.COM, and 21STCENTURYFOXSTUDIOS.COM.  See, e.g., H-D v. Morris (NAF FA0212000137094) (finding a bad-faith pattern in respondent’s registration of multiple domain names comprised of complainant’s marks); Fidelity National Information Services v. Private Whois Service (NAF FA1104001381771) (holding respondent’s registration of four domain names incorporating complainant’s mark constitutes a bad-faith pattern under Section 4(b)(ii)).

33.              Finally, there is overwhelming evidence in this case that Respondent registered the Domain Name in bad faith with knowledge of Fox’s rights in its FOX Marks because (1) Fox has used its FOX Marks for many years, (2) Fox’s FOX Marks, and its FOX Fanfare, are famous, (3) Respondent has registered numerous domain names containing the FOX Marks, and (4) Respondent’s 21STCENTURYFOX.US domain name is used for a website displaying altered versions of Fox’s 20TH CENTURY FOX mark and Fox’s FOX Fanfare.  Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the UDRP.  See, e.g., Twentieth Century Fox Film Corporation v. Domains By Proxy, Inc./Samina Rahman (WIPO D2009-1121) (holding respondent registered the domain name <livefoxsports.info> in bad faith because it can be “concluded that Respondent knew of the existence of the Complainant’s trademark and its significance in the United States market.”); Twentieth Century Fox Film Corporation v. foxinteractivemedia-inc.com (WIPO D2009-1475) (holding respondent registered and used the domain name < foxinteractivemedia-inc.com> in bad faith because “Given the longstanding and widespread use of the FOX and FOX INTERATIVE marks, there can be little doubt that Respondent was aware of such marks” prior to its registration of the domain name); H-D Michigan v. Buell (NAF FA0711001106640) (“Respondent’s websites explicitly demonstrate Respondent’s knowledge of Complainant’s [HARLEY-DAVIDSON] marks and the products and services associated therewith.  Such knowledge is additional evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶4(a)(iii).”).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

DISCUSSION

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 the following three elements to obtain an order transferring or cancelling a domain name:

 

(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.

 

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.”).

 

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.

 

Identical and/or Confusingly Similar

Complainant Twentieth Century Fox Film Corporation claims it is one of the world’s leading and largest entertainment media companies. Complainant is a television network and major film studio, among other businesses. Complainant owns trademark registrations with the United States Patent & Trademark Office (“USPTO”) for the FOX mark (e.g., Reg. No. 1,924,143, registered October 3, 1995), and for the 20TH CENTURY FOX mark (e.g.., Reg. No. 1,011,919, registered May 27, 1975). Complainant’s registration of the FOX and the 20TH CENTURY FOX marks with the USPTO sufficiently proves its rights in the marks under Policy ¶4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶4(a)(i).”).

 

Complainant claims Respondent’s domain name is confusingly similar to Complainant’s marks. Respondent’s domain name contains the FOX mark in its entirety and combines it with terms relating to Complainant’s business. Respondent substitutes “20TH” with the immediately sequential numerical term “21ST” in Respondent’s 20TH CENTURY FOX mark. When Complainant began using the 20th Century mark, it was avant-garde.  Now the phrase “how 20th century!” suggests something historically quaint.  Around the turn of the century, there was some speculation in the press Complainant might even change its mark to update the fact we are in a new century.  Against this backdrop, Respondent’s substitution of numbers in a domain name clearly does not differentiate Respondent’s domain name from Complainant’s mark under Policy ¶4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Complainant next asserts that Respondent adds the country-code top-level domain (“ccTLD”) “.us.” The addition of a ccTLD must be disregarded in a Policy ¶4(a)(i) analysis. See Lockheed Martin Corp. v. Roberson, FA 323762 (Nat. Arb. Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark). The Panel notes that Respondent removes the spaces in Complainant’s 20TH CENTURY FOX mark. The removal of spaces in a mark does not differentiate Respondent’s domain name from Complainant’s mark and it is therefore confusingly similar to the 20TH CENTURY FOX mark pursuant to 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 does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶4(a)(i).”). Respondent’s <21stcenturyfox.us> domain name is confusingly similar to Complainant’s 20TH CENTURY FOX mark pursuant to Policy ¶4(a)(i).

 

The Panel finds Policy ¶4(a)(i) satisfied.  

 

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).  Then the burden shifts to Respondent to show it has 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.”).

 

Policy ¶4(c) provides four elements a respondent may use to demonstrate it has rights: (i) a respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; (ii) a respondent is making a bona fide offering of goods and services; (iii) a respondent is commonly known by the disputed domain name; or (iv) a respondent is making a legitimate noncommercial or fair use of the disputed domain name.

 

Complainant claims Respondent does not own any trademarks that are identical to the disputed domain name, nor is it the beneficiary of any such trademark. No evidence exists on the record to demonstrate Respondent owns any service marks or trademarks which reflect the <21stcenturyfox.us> domain name. Therefore, Respondent does not possess rights or legitimate interests pursuant to Policy ¶4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name).

 

Complainant claims Respondent is not, and has not been, commonly known by the domain name. Nothing in Respondent’s WHOIS information or the record demonstrates Respondent is commonly known by the disputed domain name. The WHOIS information identifies “Brando Bronzino” as the registrant.  Based upon this information, it seems obvious Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(iii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under UDRP ¶4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant claims Respondent’s registration and use of the domain name for a website falsely impersonating Complainant by featuring a version of Complainant’s famous FOX fanfare does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under the usDRP. Respondent’s disputed domain name resolves to a website featuring a well-known “21ST CENTURY FOX” display. The Panel must admit the digital modifications were quite good.  But it appears Respondent is trying to pass itself off as Complainant at the resolving website, even if it is not for any obvious financial gain. Respondent’s attempt to pass itself off as Complainant is not a Policy ¶4(c)(ii) bona fide offering of goods and services or a Policy ¶4(c)(iv) legitimate noncommercial or fair use of the disputed domain name. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to UDRP ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to UDRP ¶4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).

 

The Panel finds Policy ¶4(a)(ii) satisfied.  

 

Registration or Use in Bad Faith

Complainant claims Respondent has a bad-faith pattern of registering trademark-related domain names. Complainant asserts that Respondent has registered the trademark-related domain names <21stcenturyfox.net>, <21stcenturyfox.me>, <21stcenturyfox.mobi>, <21stcenturyfoxfilmcompany.com>, <21stcenturyfilmcorporation.com>, and <21stcenturyfoxstudios.com>. Without a doubt, Respondent has been quite busy (and not in a good way).  It certainly appears Respondent has infringed on Complainant’s mark.  However, Complainant has not been prevented from reflecting its mark in a domain name, an element required by the Policy.

 

Complainant claims Respondent disrupts Complainant’s business by misleadingly and falsely identifying Respondent’s website as Complainant’s website through his use of altered versions of Complainant’s 20TH CENTURY FOX mark and Complainant’s FOX fanfare. Respondent’s disputed domain name does resolve to a website featuring a “21ST CENTURY FOX” display and Complainant’s famous musical score.  This would seem to disrupt Complainant’s business by competing with Complainant for Internet traffic. Respondent’s competing use of the disputed domain name shows bad faith use and registration of the domain name pursuant to Policy ¶4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶4(b)(iii) by redirecting Internet users to the respondent’s competing website).

 

Complainant claims Respondent’s registration and use of the domain name constitutes bad faith because Respondent uses the domain name to intentionally attract Internet users to his website by creating a likelihood of confusion with Complainant and its famous and federally registered FOX marks as to the source, sponsorships, affiliation, and/or endorsement of Respondent’s website and/or Respondent’s activities. Whether or not Respondent attempts to profit from its website, Respondent’s registration and use of the confusingly similar domain name benefits Respondent to the detriment of Complainant. Respondent’s use of the disputed domain name attracts Internet users away from Complainant’s website, showing bad faith use and registration under Policy ¶4(b)(iv). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).

 

Complainant claims Respondent’s use of altered versions of Complainant’s 20TH CENTURY FOX mark and Complainant’s FOX fanfare on his website constitutes passing off in bad faith, even if no money is changing hands. Respondent’s disputed domain name resolves to a website featuring a “21ST CENTURY FOX” display and Complainant’s FOX fanfare musical score. Respondent’s attempt to pass itself off as Complainant evidences bad faith use and registration of the domain name under Policy ¶4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).

 

Complainant claims Respondent registered the domain name in bad faith with knowledge of Complainant’s rights in its FOX marks. Complainant has used its FOX marks for many years, its marks are famous, and Respondent’s disputed domain name is used for a website displaying altered versions of Complainant’s 20TH CENTURY FOX mark and FOX fanfare. Under these facts, Respondent must have known about Complainant’s marks.  Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).

 

The Panel finds Policy ¶4(a)(iii) satisfied.  

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered the <21stcenturyfox.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: May 31, 2013

 

 



[1]  Complainant has cited cases decided under the UDRP because of the similarity of the UDRP to the usDRP and because this citation practice has been employed by Panels deciding cases under the usDRP.  See, e.g., U-Haul v. eHost Master (NAF FA0301000140625).

 

 

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