Twentieth Century Fox Film Corporation v. Edmunds Gaidis
Claim Number: FA1406001563816
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Edmunds Gaidis (“Respondent”), Latvia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <foxplay.us>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2014; the National Arbitration Forum received payment on June 10, 2014.
On June 15, 2014, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <foxplay.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 2014 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@foxplay.us. Also on June 16, 2014, 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 15, 2014, 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 Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a. Complainant uses the FOX mark in connection with its massive media, entertainment, television, sports, and distribution services. Roughly 99% of all households in the United States have at least one television channel operating under the FOX mark. Complainant has registered its FOX mark with various trademark registrars, including the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 142,943 registered Oct. 19, 1998) and the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,924,143 registered Oct. 3, 1995).
b. The <foxplay.us> domain name is confusingly similar to Complainant’s mark in that it affixed the country-code top-level domain (“ccTLD”) “.us” and the generic term “play.”
c. Respondent is not commonly known by the <foxplay.us> domain name. Respondent makes no bona fide offering because the <foxplay.us> domain name is used to host links that merely send users to FOX-related television and entertainment websites without Complainant’s consent.
d. Further, Respondent is offering to sell off this domain name which also constitutes bad faith.
e. Respondent has a pattern of bad faith registration against Complainant. In Twentieth Century Fox Film Corporation v. Edmunds Gaidis, FA 1550005 (Nat. Arb. Forum May 2, 2014), a prior UDRP panel held the <playfox.net> domain name was confusingly similar to the FOX mark, and that Respondent’s registration was in bad faith. Respondent has also been subject to four other UDRP decisions. See NETDO Establishment v. Gaidis, (WIPOD2010-1641) (transferring the domain name <setlistfm.com>); Google v. Gaidis, (WIPO DRO2008-0020) (transferring the domain name <igoogle.ro>); Bet365 v. Gaidis, (WIPO DFR2010-0020) (transferring the domain name <bet365.fr>); Symbol Technologies v. Gaidis, (WIPO DFR2009-0014) (transferring the domain name <symbol.fr>).
f. Respondent is disrupting Complainant’s business by allowing advertisements to competing programs to appear on the domain name’s website. There is a likelihood of confusion here because Internet users may associate the website with Complainant, and thus Respondent can accrue advertising revenue when users click on the domain name’s links.
g. Respondent has had actual knowledge of Complainant’s interest in the FOX mark prior to domain name registration.
h. The domain name was registered on July 24, 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the FOX mark. Respondent’s domain name is confusingly similar to Complainant’s FOX mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <foxplay.us> 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 or is being used in bad faith.
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.
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 mark in connection with its media, entertainment, television, sports, and distribution services. Complainant claims roughly 99% of all households in the United States have at least one television channel operating under the FOX mark. Complainant has registered its FOX mark with various trademark registrars, including the OHIM (Reg. No. 142,943 registered Oct. 19, 1998) and the USPTO (e.g., Reg. No. 1,924,143 registered Oct. 3, 1995). These registrations with OHIM and the USPTO are enough to establish its trademark rights under Policy ¶ 4(a)(i). See State Farm Mutual Auto. Ins. Co. v. Hildegard Gruener, FA 1521506 (Nat. Arb. Forum Oct. 22, 2013) (Finding complainant has rights in the STATE FARM mark through its various registrations with the USPTO and OHIM).
Complainant further claims this <foxplay.us> domain name is confusingly similar to Complainant’s mark in that it affixed the ccTLD “.us” and the generic term “play.” The Panel agrees the domain name is confusingly similar under Policy ¶ 4(a)(i) because neither a ccTLD nor a generic phrase such as “play” distinguishes the domain name from Complainant’s mark within the meaning of Policy ¶ 4(a)(i). See, e.g., Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to a Policy ¶ 4(a)(i) analysis”).
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 states Respondent is not commonly known by the <foxplay.us> domain name. Complainant claims it has never authorized Respondent to use the FOX mark in Internet domain names. The WHOIS information contains the name “Edmund Gaidis” as the registrant of record for this disputed domain name. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), on a record similar to this, the panel found no basis to find the respondent was commonly known by the domain name in dispute. Thus the Panel agrees Respondent is not known as <foxplay.us> pursuant to Policy ¶ 4(c)(iii).
Complainant argues Respondent makes no bona fide offering because the <foxplay.us> domain name is used to host links that merely send users to FOX-related television and entertainment websites without Complainant’s consent. The content of the websites appears to be little more than advertising related to FOX-backed television shows and entertainment services. As such, the Panel agrees there is no basis for finding a Policy ¶ 4(c)(ii) bona fide offering, or Policy ¶ 4(c)(iv) legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims Respondent seeks to sell this domain name. The record indicates that there is a website asking for contact information from buyers interested in this domain name. The Panel agrees the solicitation for the sale of this domain name establishes bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Further, Complainant argues Respondent has a pattern of bad faith registration against Complainant. In Twentieth Century Fox Film Corporation v. Edmunds Gaidis, FA 1550005 (Nat. Arb. Forum May 2, 2014), a prior UDRP panel held the <playfox.net> domain name was confusingly similar to the FOX mark, and that Respondent’s registration was in bad faith. Respondent has also been subject to four other UDRP decisions. NETDO Establishment v. Gaidis, (WIPOD2010-1641) (transferring the domain name <setlistfm.com>); Google v. Gaidis, (WIPO DRO2008-0020) (transferring the domain name <igoogle.ro>); Bet365 v. Gaidis, (WIPO DFR2010-0020) (transferring the domain name <bet365.fr>); Symbol Technologies v. Gaidis, (WIPO DFR2009-0014) (transferring the domain name <symbol.fr>). The Panel finds that the foregoing establishes a pattern of bad faith registration under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant suggests there is a likelihood of confusion because Internet users may associate the resolving website with Complainant, and thus Respondent can accrue advertising revenue when users click on the links on the resolving website. The Panel agrees there is a likelihood of confusion and an intent to profit and thus there is evidence of Policy ¶ 4(b)(iv) bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Finally, Complainant states Respondent would have had actual knowledge of Complainant’s FOX mark prior to the domain name registration. Due to the notoriety of Complainant's mark, the Panel finds that Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that 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 Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <foxplay.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 16, 2014
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