Twentieth Century Fox Film Corporation v. M Khelifi
Claim Number: FA1310001522888
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is M Khelifi (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <foxsportsitalia.tv>, registered with Name.com LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace, Q.C., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 4, 2013; the National Arbitration Forum received payment on October 4, 2013.
On October 4, 2013, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <foxsportsitalia.tv> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.com LLC 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 October 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 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@foxsportsitalia.tv. Also on October 7, 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.
A timely Response was received and determined to be complete on October 7, 2013.
On October 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace, Q.C., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits:
· Respondent registered the disputed domain name with the primary intention to sell it for consideration in excess of documented out-of-pocket expenses. This is evidenced by Respondent’s offer to sell both on the resolving website and in an email to Complainant.
· Respondent’s use of the <foxsportsitalia.tv> domain name to operate a pay-per-click site featuring advertisements for directly competing services constitutes a disruption of Complainant’s business.
· Respondent registered the <foxsportsitalia.tv> domain name to intentionally attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s FOX SPORTS mark and FOX SPORTS ITALIA mark and operating a pay-per-click website.
· Respondent had knowledge of Complainant’s FOX SPORTS mark and FOX SPORTS ITALIA mark prior to registering the <foxsportsitalia.tv> domain name because the marks have achieved fame and publicity, the timing of Respondent’s registration occurred soon after Complainant’s services in Italy received substantial publicity, and Respondent contacted Complainant on the same date it registered the disputed domain name.
B. Respondent
Respondent submits:
1. Complainant has rights in the FOXSPORTSITALIA and other FOX marks. The Disputed Domain Name is confusingly similar to Complainant’s marks.
2. Respondent has no rights or legitimate interests in the Disputed Domain Name.
3. Respondent has registered and is using 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 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.
Complainant owns registrations for the FOX SPORTS mark with United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,932,252 registered October 31, 1995). Past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds Complainant’s registration with the USPTO gives Complainant rights in the FOX SPORTS mark pursuant to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <foxsportsitalia.tv> domain name is confusingly similar to Complainant’s FOX SPORTS mark. The disputed domain name contains Complainant’s FOX SPORTS mark and adds the geographic term “italia.” The Panel notes that the disputed domain name includes the suffix “.tv,” which represents the country-code top-level domain (“ccTLD”) for the country of Tuvalu. The addition of a ccTLD is irrelevant for the purposes of Policy ¶ 4(a)(i) analysis. See Acorn Media Group, inc. v. Magen, FA 1401194 (Nat. Arb. Forum Sept. 9, 2011) (stating that the addition of the ccTLD “.tv” has no effect on the confusing similarity analysis). Therefore, the Panel finds the <foxsportsitalia.tv> domain name is confusingly similar to Complainant’s FOX SPORTS mark under 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 it does have 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 has established the prima facie case and Respondent has not me the burden to show he does have rights or legitimate interests. Complainant contends that Respondent does not own any rights or legitimate interests in the <foxsportsitalia.tv> domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use either its FOX SPORTS more or FOX SPORTS ITALIA mark in any way. The WHOIS record for the disputed domain name lists “M Kehlifi” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent was commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Here, Respondent was not authorized to use the either the FOX SPORTS mark or the FOX SPORTS ITALIA mark, and neither the WHOIS information nor other evidence on record indicates otherwise, The Panel finds Respondent is not commonly known by the <foxsportsitalia.tv> domain name under Policy ¶ 4(c)(ii).
Complainant states that Respondent uses the <foxsportsitalia.tv> domain name to operate a pay-per-click website featuring advertisements for directly competing websites as well as other non-competing websites. Past Panels have found that operating a pay-per-click website featuring services that compete with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services). The Panel finds Respondent’s use of the <foxsportsitalia.tv> domain name featuring directly competing pay-per-click advertisements does not constitute 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).
Complainant asserts that Respondent has made offers to sell the <foxsportsitalia.tv> domain name. Past panels have found that a respondent who displays a willingness to sell a disputed domain name suggests that the respondent does not have any rights or legitimate interests in the disputed domain name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). Respondent’s willingness to sell the <foxsportsitalia.tv> domain name is further evidence Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
As noted, the burden shifted to Respondent and Respondent has not met that burden. Complainant succeeds on this element.
Complainant contends that Respondent registered and is using the <foxsportsitalia.tv> domain name in bad faith. Complainant claims Respondent registered the disputed domain name with the primary intention of selling it for consideration in excess of documented out-of-pocket expenses. Complainant notes that this is evidenced by Respondent’s offer to sell both on the resolving website and in an email to Complainant, which the Panel notes states “I am pleased to inform you that the domain name <foxsportsitalia.tv> is for sale on Sedo. ” Past panels have found bad faith under Policy ¶ 4(b)(i) where there is evidence that respondent has made an offer to sell a domain name because of the value of the trademark incorporated into the domain name. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). The Panel finds Respondent’s offers to sell the <foxsportsitalia.tv> domain name constitute bad faith under Policy ¶ 4(b)(i).
Complainant claims Respondent’s use of the <foxsportsitalia.tv> domain name to operate a pay-per-click site featuring advertisements for directly competing services, including links for “Live Soccer TV,” “Watch Live Sports Free,” and other similar links, constitutes a disruption of Complainant’s business. Past panels have found that displaying competing hyperlinks on a disputed domain name constitutes competition with the complainant, which thereby constitutes a disruption to a complainant’s business. 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)). Respondent’s use of the <foxsportsitalia.tv> domain name to displaying competing hyperlinks constitutes a disruption to Complainant’s business in violation of Policy ¶ 4(b)(iii).
Complainant asserts that Respondent registered the <foxsportsitalia.tv> domain name to intentionally attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s FOX SPORTS mark and FOX SPORTS ITALIA mark and operating a pay-per-click website. Past panels have found that the conduct described constitutes bad faith registration and use under 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.’”). Respondent’s attempt to attract and mislead Internet users for its own commercial gain by operating a pay-per-click website constitutes bad faith registration and use under Policy ¶ 4(b)(iv).
Lastly, Complainant claims Respondent had knowledge of Complainant’s FOX SPORTS mark and FOX SPORTS ITALIA mark prior to registering the <foxsportsitalia.tv> domain name because the marks have achieved fame and publicity; the timing of Respondent’s registration occurred soon after Complainant’s services in Italy received substantial publicity; and Respondent contacted Complainant on the same date it registered the disputed domain name. Constructive notice is generally regarded as insufficient to support a finding of bad faith. The preponderance of evidence here, however, without explanation from Respondent, is sufficient to establish on balance that at the time he registered the disputed domain name, Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also 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”).
Complainant succeeds on this element as well.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <foxsportsitalia.tv> domain name be TRANSFERRED from Respondent to Complainant.
Anne M. Wallace, Q.C., Panelist
Dated: October 29, 2013
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