Twentieth Century Fox Film Corporation v. DISH Network LLC
Claim Number: FA1010001350483
Complainant is Twentieth Century Fox Film Corporation ("Complainant"), represented by George P. Pelletier of Cantor Colburn LLP, Connecticut, USA. Respondent is DISH Network LLC ("Respondent"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <foxshakedowndish.com>, <weofferedfoxafairdeal.com>, <foxrefused.com>, and <jointhefightagainstfox.com>, registered with GoDaddy.com, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.
Hon. Carolyn M. Johnson (Ret.); Hon. Bruce E. Meyerson (Ret.); and Jeffrey M. Samuels.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2010; the National Arbitration Forum received payment on October 5, 2010.
On October 5, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <foxshakedowndish.com>, <weofferedfoxafairdeal.com>, <foxrefused.com>, and <jointhefightagainstfox.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 6, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 2010 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@foxshakedowndish.com, postmaster@weofferedfoxafairdeal.com, postmaster@foxrefused.com, and postmaster@jointhefightagainstfox.com. Also on October 6, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 27, 2010.
Complainant’s Additional Submission was received on November 1, 2010 in compliance with Supplemental Rule 7. Respondent submitted an Additional Submission which was received timely under Supplemental Rule 7 on November 5, 2010.
On November 8, 2010, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Hon. Carolyn M. Johnson (Ret.), the Hon. Bruce E. Meyerson (Ret.) and Jeffrey M. Samuels as Panelists.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the world’s leading entertainment and media companies and holds numerous U.S. trademark registrations for the FOX mark. According to the Complainant, the domain names in dispute are confusingly similar to Complainant’s FOX mark because they fully incorporate the mark and add generic or descriptive terms.
Complainant contends that the domain names “are a clear attempt to trade off of the valuable goodwill Complainant has established in its FOX mark.” Complainant asserts that the Respondent is using the domain names to promote its business and commercial position in its current negotiations with Complainant regarding distribution of television programming on Respondent’s satellite television service. Complainant believes that Respondent is using the websites to leverage its position in negotiations with Complainant.
Complainant argues that Respondent is commercially benefiting from the use of the domain names because the websites promote Respondent’s business and further that Respondent is using the domain names in bad faith by creating a likelihood of confusion with Complainant and its FOX mark.
B. Respondent
Respondent delivers broadcast satellite television products and services to customers throughout the United States and owns registered trademarks for DISH, DISH NETWORK and related trademarks.
Respondent acknowledges that it is engaged in a contract dispute with Complainant. In October 2010 Complainant terminated Respondent’s right to carry networks and channels owned by Complainant.
According to Respondent the domain names in dispute are not confusingly similar to Complainant’s trademarks because the domain names “include other words that clearly distinguish them from Fox’s trademarks and make it clear that these are not domain names that are identified with Complainant.” Respondent contends that it has a legitimate interest in the domain names because they provide information about the contract dispute between the parties and thus they are the “epitome of fair use and free speech.”
Respondent asserts that Internet users that arrive at any of the websites could not reasonably believe that the sites were endorsed or sponsored by Complainant.
C. Additional Submissions
The parties’ Additional Submissions substantially restate and expand upon arguments made in their initial submissions.
The domain names in dispute are not confusingly similar to a trademark in which the Complainant has rights.
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.
A majority of the Panel finds that the dispute domain names are not identical or confusingly similar to Complainant’s marks.
Of all of the ICANN elements, the issue of confusing similarity “implicates issues of trademark law to the greatest extent.” Robert A. Badgley, Domain Names Disputes § 6.07 (2002). Thus, the Panel begins by looking for guidance to court decisions under the Anticybersquatting Consumer Protection Act (the “ACPA”), 15 U.S.C. § 1125(d) which creates civil liability for a party who registers a domain name which, among other things, is confusing similar to a “famous mark.” Under the ACPA, to determine whether there is a likelihood of confusion between a domain name and a trademark, courts compare the plaintiff’s mark with the name of the website. Ringcentral, Inc. v. Quimby, 711 F.Supp.2d 1048, 1060 (N.D. Cal. 2010). If the name of the website at issue “itself makes clear that it is not affiliated with the plaintiff’s mark, there can be no likelihood of confusion.” Id.
Thus, courts have held that the following domain names do not create a likelihood of confusion with the trademark owner’s rights: <taubmansucks.com>, Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir. 2003); <ballysucks.com>, Bally Total Fitness Holding Corp. v. Faber, 29 F.Supp.2d 1161 (C.D.Cal. 1998).
ICANN panels, albeit with some exceptions, e.g., Baylor Univ. v. Sysadmin Admin, FA 1153718 (Nat. Arb. Forum Apr. 11, 2008) (finding that the domain name <ihatebaylor> was confusingly similar to the BAYLOR mark), have applied these principles. For example, in Citigroup, Inc. v. Allman, FA 1066738 (Nat. Arb. Forum Oct. 16, 2007), the Panel found that domain names incorporating the word “rip-off” with the complainant’s mark did not create a confusing similarity. The panel reasoned that under U.S. trademark law it is permissible to combine a mark with a critical terms to express criticism of the mark’s owner and “in particular because there is no likelihood of confusion.” Id. In Royal Bank of Scotland Group plc v. natwestfraud.com, D2001-0212 (WIPO June 18, 2001), the panel found that the domain name <natwestfraud.com> was not confusingly similar to the complainant’s NATWEST mark.
Applying the foregoing principles, a majority of the Panel
concludes that the domain names in dispute are not confusingly similar to
Complainant’s mark because a user of the Internet could not reasonably conclude
that the domain names are affiliated with the Complainant. A majority of the Panel finds that the use of the term FOX
in the domain names is part of a phrase that does not emphasize the term FOX
and demonstrably reflects some dispute with FOX. This is not a case where FOX
is the only distinctive element of the domain name and all the rest of the
terms are merely descriptive or generic.
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) as the disputed domain names are not confusingly similar to the mark, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having failed to establish a necessary element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <foxshakedowndish.com>, <weofferedfoxafairdeal.com>, <foxrefused.com>, and <jointhefightagainstfox.com> domain names REMAIN WITH Respondent.
Bruce E. Meyerson and Jeffrey M. Samuels, Panelists
Dated: November 22, 2010
DISSENT
I respectfully dissent. The majority finds that the Complainant did not satisfy the elements of ICANN Policy ¶ 4(a)(i). I would find that the disputed domain names are confusingly similar to a mark in which the Complainant established that it has exclusive rights; that Respondent has shown no right or license to use Complainant’s protected FOX mark; and that Respondent is opportunistically preying upon the goodwill and/or notoriety of the FOX mark for Respondent’s own commercial gain.
Hon. Carolyn Marks Johnson, Panelist
Dates: November 22, 2010
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