Twentieth Century Fox Film Corporation v. Meridha enterprise / Md. Meraz Hossain
Claim Number: FA1306001504724
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Wasington, D.C., USA. Respondent is Meridha enterprise / Md. Meraz Hossain (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue issue <foxsportslivestream-tv.com>, registered with PDR Ltd. d/b/a Publicdomainregistry.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2013; the National Arbitration Forum received payment on June 13, 2013.
On June 14, 2013, PDR Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <foxsportslivestream-tv.com> domain name is registered with PDR Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a Publicdomainregistry.com 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 June 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 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@foxsportslivestream-tv.com. Also on June 18, 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 July 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 uses the FOX SPORTS mark to broadcast an array of professional sporting events on cable television and through online services. Complainant has protected its rights in the FOX SPORTS mark through United States Patent & Trademark Office (“USPTO”) trademark registrations. See Reg. No. 3,001,994 registered on Sept. 27, 2005; Reg. No. 1,932,252 registered on Oct. 31, 1995.
· Respondent’s <foxsportslivestream-tv.com> domain name is confusingly similar to the FOX SPORTS mark. Respondent adds a hyphen, a generic top-level domain (“gTLD”), the generic term “tv,” and the descriptive term “livestream” to the distinct FOX SPORTS mark.
· Respondent is not now, nor has it ever been, commonly known by the <foxsportslivestream-tv.com> domain name. Respondent is not a licensee or authorized user of the FOX SPORTS mark. Respondent’s WHOIS information does not suggest a name related to the domain name.
· Respondent uses the <foxsportslivestream-tv.com> domain name to promote competing hyperlinks, competing sports streaming services, online casinos, and other gambling websites.
· Respondent requires Internet users to install software that purports to be used to stream sporting events. Evidence shows that this software is a virus that maliciously attacks the installer’s electronic device.
· Respondent’s use of the domain name to promote its own competing sports streaming business is tantamount to an attempt to disrupt Complainant’s business.
· Respondent has sought to attract Internet users to the domain name’s content pages by creating the commercial impression that Complainant is affiliated with the content on the disputed domain name.
· Respondent’s offering of malicious software under the guise of providing legitimate streaming services is evidence of bad faith.
· Respondent had knowledge of Complainant’s marks prior to registering the domain name. This is obvious from Respondent’s keen decision to promote the exact types of sports programs (e.g., National Football League games) as Complainant provides.
B. Respondent
Respondent failed to submit a Response in this proceeding
Complainant holds trademark rights for the FOX SPORTS mark. Respondent’s domain name is confusingly similar to Complainant’s FOX SPORTS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <foxsportslivestream-tv.com> domain name, and that Respondent registered and uses the 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 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.”).
Complainant uses the FOX SPORTS mark to broadcast an array of professional sporting events on cable television and through online services. Complainant asserts that it has protected its rights in the FOX SPORTS mark through USPTO trademark registrations. See Reg. No. 3,001,994 registered on Sept. 27, 2005; Reg. No. 1,932,252 registered on Oct. 31, 1995. These USPTO registrations are satisfactory showings of Complainant’s rights, regardless of where Respondent truly resides. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant next argues that Respondent’s <foxsportslivestream-tv.com> domain name is confusingly similar to the FOX SPORTS mark. Respondent adds a hyphen, the gTLD “.com,” the generic term “tv,” and the descriptive term “livestream” to the distinct FOX SPORTS mark. The disputed domain name also omits the space between words in Complainant’s mark. The Panel agrees the gTLD, hyphen, and elimination of spacing are all irrelevant here. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); 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)). The Panel further agreea that the generic term “tv” compounds the confusing similarity of the domain because the FOX SPORTS mark is used in part for television broadcasts. See Victoria’s Secret v. Plum Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001) (“The mere addition of the generic term “tv” does not reduce the likelihood of confusion under Policy 4(a)(i).”). The Panel also agrees that the descriptive term “livestream” enhances confusing similarity because Complainant provides live streams of sporting events through its FOX SPORTS online services. 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). The Panel concludes that Respondent’s <foxsportslivestream-tv.com> domain name is confusingly similar to the FOX SPORTS mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent has never been commonly known by the <foxsportslivestream-tv.com> domain name. Complainant states that Respondent is not a licensee or authorized user of the FOX SPORTS mark. Complainant claims that Respondent’s WHOIS information does not suggest a name related to the domain name. The WHOIS information lists “Meridha enterprise / Md. Meraz Hossain” as the registrant. The Panel agrees that the record contains no grounds for finding that Respondent is commonly known by the <foxsportslivestream-tv.com> domain name under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant also claims that Respondent uses the <foxsportslivestream-tv.com> domain name to promote competing hyperlinks, competing sports streaming services, online casinos, and other gambling websites. The <foxsportslivestream-tv.com> domain name resolves to a website that provides a poorly written overview of various gambling websites, and an option to download software for sports streaming. The Panel agrees that the use of this domain name to promote a directly competing broadcasting service, along with reviews of gambling establishments, proves that Respondent has failed to make a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interest where the respondent used the disputed domain name to redirect Internet users to an online casino); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Complainant contends that Respondent requires Internet users to install software that purports to be used to stream sporting events. Complainant argues that evidence shows that this software is a virus that maliciously attacks the installer’s electronic device. The Panel concludes that there is nothing bona fide, within the meaning of Policy ¶ 4(c)(i), in tricking an Internet user into downloading dangerous and destructive malware onto his electronic device, and the Panel further agrees that Policy ¶ 4(c)(iii) provides no room for allowing malicious software. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s use of the domain name to promote its own competing sports streaming business is tantamount to an attempt to disrupt Complainant’s business. The Panel notes that Respondent encourages Internet users to “DOWNLOAD ONLINE TV SOFTWARE AND ENJOY” while providing Internet users with a hyperlink to a file download. In Puckett, Individually v. Miller, the panel found that the use of a disputed domain name to promote a directly competing service was evidence of Policy ¶ 4(b)(iii) bad faith. See D2000-0297 (WIPO June 12, 2000). The Panel agrees that Respondent’s hosting of these competing video streams demonstrates registration and use of the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant claims that Respondent has sought to attract Internet users to the domain name’s content pages by creating the commercial impression that Complainant is affiliated with the content on the disputed domain name. The Panel again notes that Respondent purports to offer “NFL on FOX” if the Internet user downloads the alleged streaming software. The Panel agrees that Respondent’s appropriation of Complainant’s marks to further Respondent’s own business ventures on the <foxsportslivestream-tv.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Complainant argues that Respondent’s offering of malicious software under the guise of providing legitimate streaming services is evidence of bad faith. The Panel notes that there appears to be a discussion board conversation in which an Internet user is distraught that Respondent’s free file downloads resulted in a virus infection on the user’s electronic device. The Panel finds that Policy ¶ 4(a)(iii) most certainly prohibits a scheme to propagate malicious software as an act of bad faith use and registration. The Panel further agrees that Respondent has engaged in such a scheme. See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”).
Complainant finally contends that Respondent had knowledge of Complainant’s mark prior to registering the domain name. Complainant contends that this is obvious from Respondent’s decision to promote the exact types of sports programs (e.g., National Football League games) as Complainant provides. The Panel notes that Respondent explicitly claims to offer FOX services. The Panel conclude that the record provides a basis for finding that Respondent registered and used the domain names with actual knowledge of Complainant’s marks in an act of Policy ¶ 4(a)(iii) bad faith. 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Complainant has satisfied 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 <foxsportslivestream-tv.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 16, 2013
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