Twentieth Century Fox Film Corporation v. Domain Admin / whoisprotection.biz
Claim Number: FA1408001575082
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Domain Admin / whoisprotection.biz (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <foxtvcanliizle.com>, registered with FBS Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2014; the National Arbitration Forum received payment on August 14, 2014. The Complaint was submitted in both English and Turkish.
On August 15, 2014, FBS Inc. confirmed by e-mail to the National Arbitration Forum that the <foxtvcanliizle.com> domain name is registered with FBS Inc. and that Respondent is the current registrant of the name. FBS Inc. has verified that Respondent is bound by the FBS 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 August 22, 2014, the Forum served the Turkish Complaint and all Annexes, including a Turkish Written Notice of the Complaint, setting a deadline of September 11, 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@foxtvcanliizle.com. Also on August 22, 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 September 16, 2014, 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) 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.
Pursuant to Rule 11(a), the Panel determines the language requirement has been satisfied through the Turkish language Complaint and Commencement Notification, and, absent a Response, determines the remainder of the proceedings may be conducted in English.
Complainant requests the domain name be transferred from Respondent to Complainant.
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 Twenty-First Century Fox, Inc., an international media conglomerate. Fox’s services and products are offered directly and via its affiliated companies that include Fox Filmed Entertainment, FOX Broadcasting Company, Fox Cable Networks, FOX News Channel, Fox Television Stations, Twentieth Century Fox Television, Twentieth Century Fox Home Entertainment, Twentieth Television, and Fox Television Studios (collectively, “Fox”).
2. Fox owns the FOX trademark and trade name, and its rights in the FOX mark date back to 1915. Fox also owns hundreds of FOX-formative trademarks including, for example, FOX TV (discussed in further detail below), as well as FOX FILM, and 20TH CENTURY FOX, among others.
3. Over the years, the commercial success of the FOX mark has been tremendous. Fox has sold many billions of dollars worth of products and services under the FOX mark. Fox has also extensively and widely advertised and promoted its products and services under the FOX mark for decades. Fox spends tens of millions of dollars every year to advertise and promote its products and services under the FOX mark.
4. 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.
5. Fox owns and operates broadcast television stations, specifically, 28 full-power stations including stations located in nine of the top ten largest markets (which include New York, Los Angeles, and Chicago).
6. 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.
7. In Europe, Fox operates 94 channels that reach close to 180,000,000 subscribers. Fox’s online business in Europe is likewise highly popular, with more than 10,000,000 unique users every month accessing Fox’s content online. Fox’s channels in Europe also produce more than 200 hours of programming each year. Fox’s primary offices in Europe are located in London, Madrid, Rome, and Switzerland. Fox also has branch offices located in Istanbul in Turkey, as well as in Amsterdam, Athens, Bucharest, Budapest, Copenhagen, Hamburg, Lisbon, Munich, Oslo, Paris, Sofia, and Warsaw.
8. Fox regularly delivers prime-time programming to its affiliates each week, including numerous enormously popular and well-received series such as Glee and The Simpsons, and various movies and specials.
9. 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.
10. Fox has for many years extensively promoted and/or offered its services and products on the Internet, including its television programming, via many websites including, for example, its FOX.COM, FOXMOVIES.COM, and FOXSTUDIOS.COM websites.
11. By virtue of the inherent strength of the FOX mark as applied to Fox’s services and products, and Fox’s extensive use and promotion of the FOX mark for more than 90 years, the FOX mark has long been famous.
B. Fox and its FOX TV Mark
12. Fox owns the FOX TV mark, which Fox has used for many years to identify its broadcast channel and extensive television programming services in Turkey.
13. The commercial success of the FOX TV mark has been significant. Fox has sold many millions of dollars worth of products and services under the FOX TV mark. Fox has also extensively and widely advertised and promoted its products and services under the FOX TV mark for many years, and spends significant amounts of money every year to advertise and promote its products and services under the FOX TV mark.
14. Fox’s website that promotes and/or offers its FOX and FOX TV services in Turkey is located at the domain name FOX.COM.TR, which Fox registered in 2006 and has used for its website for many years.
C. Complainant’s Trademark Holdings
15. Complainant owns numerous trademark registrations for the FOX mark, including the following representative registrations from U.S. and from Turkey, where Respondent is apparently located:
a. U.S. Registration No. 1,924,143 for the FOX mark, first used March 31, 1915, issued October 3, 1995, covering services in International Class 41 (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).
b. U.S. Registration No. 1,840,919 for the FOX mark in block letters, first used March 7, 1986, issued June 21, 1994, covering services in International Class 38 (television and cable broadcasting services).
c. U.S. Registration No. 2,318,595 for the mark FOX, first used June 12, 1995, issued February 15, 2000, covering services in International Class 41 (providing online services in the field of entertainment relating to sports entertainment, motion picture film, television, video, and children’s entertainment via a global communications network).
d. Turkish Registration No. 2001 22759 for the FOX mark, filed November 5, 2001, issued March 17, 2003, covering television broadcasting services and online entertainment services.
16. Complainant owns Turkish Registration No. 2009 10398 for the FOX TV mark, filed March 4, 2009, issued January 19, 2010, covering television broadcasting services in International Class 38, and television programming and online information services in International Class 41.
17. Complainant’s trademark rights in its Marks well predate Respondent’s registration of the Domain Name.
D. Respondent’s Infringing Activities and Bad-Faith Acts
18. Respondent registered the Domain Name long after Complainant began using its Marks, many years after Complainant registered its Marks in the U.S. and/or Turkey and elsewhere, and long after Complainant’s Marks became famous.
19. The Domain Name is comprised of Complainant’s FOX TV mark in its entirety and the term “canli izle,” which means “live” in Turkish.
20. Respondent uses the Domain Name for a directly competing, commercial website featuring (a) content regarding Complainant’s FOX TV channel and Complainant’s television programs aired on its FOX TV channel, including photographs and videos, some of which appeared to be copied from Complainant, (b) Complainant’s FOX Logo, and (c) numerous pay-per-click advertisements, including ads for competing services such as videos. Respondent undoubtedly receives commissions when Internet users click on the advertisements displayed on its website.
I. THE DOMAIN NAME IS CONFUSINGLY SIMILAR
TO COMPLAINANT’S MARKS
21. The domain name FOXTVCANLIIZLE.COM is confusingly similar to Complainant’s Marks because it contains Complainant’s Marks in their entirety (FOX and FOX TV) and the generic or descriptive terms “TV” and/or “canli izle,” which is “live” in Turkish. UDRP Panels have consistently held that domain names comprised of a mark and generic or descriptive terms are confusingly similar to the mark at issue. See, e.g., Twentieth Century Fox Film Corporation v. Rahman (WIPO D2009-1121) (finding the domain name <foxsportslive.info> confusingly similar to Complainant’s FOX SPORTS mark); Twentieth Century Fox Film Corporation v. Above.com Domain Privacy (NAF FA1307001509035) (finding the domain names <foxsportslive.com>, <foxsportsplus.com>, <foxsportsnw.com>, <foxsportst.com>, and <wwwfoxsportsla.com> confusingly similar to Complainant’s FOX SPORTS mark because the addition of generic terms and removal of spacing does not distinguish the domain names from Complainant’s mark); Twentieth Century Fox Film Corporation v. Leverett Consulting (NAF FA0410000338370) (finding the domain name <foxsportsfootball.com> confusingly similar to Complainant’s FOX SPORTS mark).
22. Further, the addition of the generic or descriptive terms “TV” and/or “live” (translated to Turkish as “canli izle”) to Complainant’s Marks makes clear that the Domain Name relates to Complainant and its services offered under its FOX and FOX TV marks, particularly Complainant’s television-related services. UDRP Panels have consistently held that the addition of terms relating to the complainant’s business is not sufficient to distinguish the domain name from the complainant’s mark, and many UDRP Panels have held that such domain names in fact heighten the confusingly similarity of the domain name to the mark at issue. See, e.g., Twentieth Century Fox Film Corporation v. Meridha enterprise (NAF FA1306001504724) (“. . . the generic term ‘tv’ compounds the confusing similarity of the domain [<foxsportslivestream-tv.com] because the FOX SPORTS mark is used in part for television broadcasts. . . . 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.”); Twentieth Century Fox Film Corporation v. PPA Media Services (NAF FA1303001490506) (“The <foxsportsnet.com> domain name is confusingly similar to Complainant’s FOX SPORTS trademark and holding “The addition of the term ‘net’ to Complainant’s FOX SPORTS mark in forming the at-issue domain name heightens the confusing similarity of the domain name because the term directly relates to Complainant’s affiliated company, Fox Sports Networks, formerly known as Fox Sports Net.”).
23. Finally, UDRP Panels have consistently held that the omission of spaces between terms in a mark, and the addition of gTLDs such as “.com,” are irrelevant to confusing similarity analysis. See, e.g., H-D Michigan v. Martin (NAF FA0909001286735) (“The Panel finds that the omission of spacing and the addition of a gTLD are irrelevant in distinguishing a disputed domain name from an established mark.”).
II. RESPONDENT HAS NO LEGITIMATE INTEREST IN THE
DOMAIN NAME
24. Respondent clearly has no rights or legitimate interest in the Domain Name for the following reasons.
25. First, Respondent’s registration and use of the confusingly similar Domain Name for a website from which Respondent commercially benefits does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name. UDRP Panels have consistently found no legitimate interest in the use of trademark-related domain names for pay-per-click websites and/or similar websites featuring revenue-generating links advertisements, including in prior UDRP cases involving Complainant’s marks. See, e.g., Twentieth Century Fox Film Corporation v. PPA Media Services (NAF FA1210001467717) (respondent’s use of the domain name <foxsports2.com> for a website featuring advertising links does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use); Twentieth Century Fox Film Corporation v. PPA Media Services (NAF FA1303001490506) (respondent’s use of the domain name <foxsportsnet.com> for a pay-per-click website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use).
26. Second, Respondent’s registration and use of Domain Name for a directly competing website featuring content regarding Complainant’s FOX TV channel and Complainant’s series aired on its FOX TV channel constitutes additional evidence that Respondent’s activities do not constitute a bona fide offering of goods or services or a legitimate noncommercial fair use. UDRP Panels have consistently held that use of a trademark-related domain name for competing services does not demonstrate any legitimate interest under the UDRP. See Twentieth Century Fox Film Corporation v. oranges arecool XD (NAF FA1405001558045) (“Respondent previously used the <americanhorrorstorybrasil.com> and <ahsbrazil.com> domain names to resolve to a website that directly competed with Complainant’s own online offering of the same services, namely content regarding Complainant’s AMERICAN HORROR STORY series, including photographs and videos, some of which appear to be copied from Complainant. Respondent presumably collected pay-per-click fees. . . . Respondent’s prior use of the <americanhorrorstorybrasil.com> and <ahsbrazil.com> domain names to redirect Internet users to a website offering content directly related to and competing with Complainant’s business represents neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a noncommercial or fair use under Policy ¶4(c)(iii).”); see also, e.g., Yahoo! v. Chinayahoo.com (NAF FA0402000236538) (“The use of a domain name confusingly similar to a mark to offer the same or similar services as those offered under the mark in competition with Complainant’s services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a non-commercial or fair use pursuant to Policy ¶4(c)(iii).”); Yahoo! v. Manage Technical (NAF FA0402000238649) (“Under the Policy, a domain name that is confusingly similar to a third-party’s registered mark and that is used to host content relating to the services provided under the third-party’s mark does not confer rights or legitimate interests in the name to a Respondent.”).
27. Third, Respondent’s unauthorized use of Complainant’s FOX Logo on its website constitutes passing off and further evidence that Respondent lacks any legitimate interest in the Domain Name. See, e.g., Paul Frank v. LiYong Yong (NAF FA1401001538923) (“Respondent’s use of the PAUL FRANK mark and Julius the Monkey logo constitute passing off, further demonstrating Respondent’s lack of rights and legitimate interests pursuant to Policy ¶4(a)(ii).”).
28. Fourth, Respondent is not and was not commonly known by the Domain Name. Nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the Domain Name. Further, Complainant has not authorized Respondent to use its Marks. See, e.g., Twentieth Century Fox Film Corporation v. Above.com Domain Privacy (NAF FA1307001509035) (“. . . absent Complainant’s consent to use the FOX mark, and considering the WHOIS information for the domain names’ registrant, Respondent could not be known by the domain names under Policy ¶4(c)(ii).”); Twentieth Century Fox Film Corporation v. PPA Media Services (NAF FA1210001467717) (“WHOIS information lists ‘PPA Media Services / Ryan G Foo’ as the registrant of the at-issue domain name and there is no evidence that tends to show that Respondent is commonly known by the at‑issue domain name. Therefore, the Panel finds that Respondent is not commonly known by the <foxsportsnet.com > domain name for the purpose of Policy ¶4(c)(ii).”).
29. Finally, Respondent’s use of the names “Fox TV Canli izle” on its website does not demonstrate any legitimate interest of Respondent in the Domain Name for several reasons. Initially, like the Domain Name, Respondent’s use of this name opportunistically takes advantage of Complainant’s goodwill and reputation. Moreover, Respondent cannot justify its misappropriation of a trademark in a domain name by relying on concurrent infringing use of that same mark in a trade name. See, e.g., H-D v. Bingham (NAF FA0902001248203) (“. . . [Respondent] did not choose a domain name that was unique, self-standing and independent of any third-party trademark rights. Choosing such a domain name would have required that the Respondent invest time and money to develop some goodwill and reputation in his chosen business name and the associated domain name, and perhaps register appropriate trademark rights to secure them. Instead, he chose the Domain Names which, due to its confusing similarity with the Complainant’s HARLEY-DAVIDSON trademark, opportunistically took advantage of the Complainant’s goodwill and reputation.”); CyBerCorp Holdings v. Allman (NAF FA0403000244090) (“Respondent’s choice of a business name and domain name incorporating the Complainant’s trademark was made primarily because of the notoriety of Complainant’s mark and/or with complete disregard Complainant’s trademark rights. Naming oneself with another’s trademark does not legitimatize the use of the name in a domain name. Therefore, Respondent cannot claim rights in the domain name pursuant to Policy ¶4(c)(ii).”).
III. RESPONDENT’S BAD FAITH UNDER UDRP ¶4(B)
30. Respondent’s registration and use of the Domain Name squarely meet the grounds of bad faith outlined in the UDRP, as well as additional grounds of bad faith defined in previous UDRP decisions.
31. First, Respondent’s registration and use of Domain Name constitute bad faith under UDRP ¶4(b)(iv) because Respondent uses the Domain Name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its Marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent, the website associated with the Domain Name, and/or Respondent’s activities. See, e.g., Twentieth Century Fox Film Corporation v. oranges arecool XD (NAF FA1405001558045) (“. . . Respondent’s use of the disputed domain names [e.g., <americanhorrorstorybrasil.com>, <gleedaily.com>] to provide links to Complainant’s competitors and offer products and services associated with Complainant, likely for click through revenue, is bad faith registration and use under Policy ¶4(b)(iv).”); Twentieth Century Fox Film Corporation v. PPA Media (NAF FA1303001490506) (“Respondent improperly uses Complainant’s FOX SPORTS mark in order to drive Internet traffic to the revenue generating click-through links on Respondent’s <foxsportsnet.com> website. Therefore, the Panel finds that Respondent has registered and used the <foxsportsnet.com> domain name in bad faith pursuant to Policy ¶4(b)(iv).”); Dow Jones v. HDTV (NAF FA1404001553157) (“. . . Respondent is using the disputed domain name to attract Internet users to a competing service for which it commercially gains, bad faith under Policy ¶4(b)(iv).”); H-D v. Pirie (NAF FA1401001540525) (“. . . Respondent registered and is using the <harleydavidsonmotorcycleclub.com> domain name in bad faith under Policy ¶4(b)(iv) because Respondent is using the disputed domain name to operate a competing motorcycle-related service as well as other unrelated services.”).
32. Second, Respondent’s unauthorized use of Complainant’s FOX Logo on its website further demonstrate Respondent’s intention of causing a likelihood of confusion as to the source, sponsorship, affiliation, and/or endorsement of Respondent, its website, and/or its activities, and constitute additional evidence of Respondent’s bad faith under UDRP ¶4(b)(iv) as well as an independent ground of bad faith under prior UDRP decisions. See, e.g., Paul Frank v. LiYong Yong (NAF FA1401001538923) (“Respondent’s repeated and conspicuous use of Complainant’s Julius the Monkey logo is further evidence of bad faith under Policy ¶4(a)(iii)as it allows Respondent to falsely pass off as being associated with or sponsored by Complainant.”).
33. Third, Respondent’s registration and use of Domain Name constitute bad faith under UDRP ¶4(b)(iii) of the UDRP because Respondent disrupts Complainant’s business by using the Domain Name for a website offering and/or advertising directly competing services. See, e.g., Twentieth Century Fox Film Corporation v. oranges arecool XD (NAF FA1405001558045) (“Respondent’s registration and use of the disputed domain names [e.g., <americanhorrorstorybrasil.com>, <gleedaily.com>] disrupts Complainant’s business by using the domain names for competing websites. The registration of domain names that are confusingly similar to a complainant’s marks for the purpose of linking to the websites displaying competing content is bad faith registration and use under Policy ¶4(b)(iii).”); Dow Jones v. HDTV (NAF FA1404001553157) (“Respondent’s use of the <wallstreetjournal.tv> domain name disrupts Complainant’s business by using the domain name for a website advertising directly competing news services. . . . the Panel finds that Respondent is disrupting Complainant’s business, showing bad faith use and registration of the <wallstreetjournal.tv> domain name under Policy ¶4(b)(iii).”); H-D v. Kastelnik (NAF FA0601000622012) (“Respondent’s use of Complainant’s HD mark in the <sandiegohd.com> domain name to promote competing motorcycles evidences Respondent’s use of the disputed domain name for the purpose of disrupting Complainant’s business. Such use by Respondent constitutes bad faith under Policy ¶4(b)(iii).”).
34. Finally, there is overwhelming evidence in this case that Respondent registered the Domain Name in bad faith with knowledge of Complainant and its Marks, including (a) the fame of Complainant’s Marks, (b) Respondent’s registration of the Domain Name containing Complainant’s Marks and generic or descriptive terms that relate directly to Complainant’s services offered under its Marks, and (c) Respondent’s use of the Domain Name to offer and/or advertise directly competing services. 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. Above.com Domain Privacy (NAF FA1307001509035) (“...the Panel finds that, due to the fame of Complainant’s [FOX SPORTS] mark, 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).”); Twentieth Century Fox Film Corporation v. Carter (NAF FA1307001509782) (“. . . by registering the disputed domain names with knowledge of Complainant’s rights in the mark, Respondent demonstrates bad faith under Policy ¶4(a)(iii).”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling or transferring 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 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.”).
The FOX TV mark has been used for television broadcasting for many years. Complainant registered the mark with the Turkish Patent Institute (“TPI”) (Reg. No. 2009–10,398 registered Jan. 19, 2010). This registration presents credible and substantial evidence of Complainant’s Policy ¶4(a)(i) rights in the FOX TV mark. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶4(a)(i).”). Complainant has also registered the FOX trademark with the United States Patent & Trademark Office (see, for example, Registration #1,840,919 dated June 21, 1994). Complainant has adequately proved its rights in the FOX TV mark under Policy ¶4(a)(i).
Complainant claims the <foxtvcanliizle.com> domain name is confusingly similar to the FOX TV mark. Neither the generic top-level domain “.com” nor the deletion of spacing adequately differentiates the disputed domain name from Complainant’s mark because all domain names require a ccTLD or gTLD. Spaces are not valid characters in a domain name so they must be ignored. The phrase “canli izle” is Turkish for “live,” which is descriptive of Complainant’s television business. The disputed domain name merely tags a generic phrase and gTLD to the otherwise protected FOX TV mark. This evidence shows there is a confusing similarity between Complainant’s mark and the disputed domain name under Policy ¶4(a)(i). See, e.g., Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶4(a)(i)).
The Panel finds Policy ¶4(a)(i) satisfied.
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.”).
Complainant claims Respondent is not commonly known by the <foxtvcanliizle.com> domain name because the WHOIS information and all other available evidence show Respondent is “Domain Admin / whoisprotection.biz.” It seems to be evident Respondent is not commonly known by the <foxtvcanliizle.com> domain name under Policy ¶4(c)(ii). 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant further claims the actual use of this <foxtvcanliizle.com> domain name is not legitimate because the domain name is used for a streaming website showing unauthorized copies of Complainant’s broadcasts. This constitutes an unauthorized appropriation of Complainant’s marks and programming. This use is not a Policy ¶4(c)(i) bona fide offering of goods or services, or Policy ¶4(c)(iii) legitimate noncommercial or fair use. See Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
Finally, Respondent registered the disputed domain name using a privacy service. This means title for the domain name is held by a third party nominee. The identity of the beneficiary (the real party in interest that determines the content on the domain name’s web site) is never publicly associated with the content of the web site. This means Respondent cannot get any rights in the domain name because Respondent has not publicly associated itself with the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant essentially claims Respondent is disrupting the FOX TV enterprise by using the <foxtvcanliizle.com> domain name to promote illegitimately obtained copies of Complainant’s materials. Without any rebutting evidence, it seems clear Respondent has violated Policy ¶4(b)(iii) by using this domain name to promote these various video streams. See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use); G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶4(b)(iii).”).
Complainant claims Respondent is profiting from the likelihood Internet users may believe they have arrived at a Turkish affiliate of Complainant, when the viewer is seeing pirated (at best) or counterfeited (at worst) content. Respondent is using the FOX TV mark to increase views of Respondent’s questionably obtained content in violation of Policy ¶4(b)(iv). See, e.g., Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
Complainant claims Respondent registered this domain name knowing of Complainant’s rights in FOX TV, particularly since Complainant’s own logos and trademarks are prominently displayed on the <foxtvcanliizle.com> website. The presence of the FOX and FOX TV marks on the domain name’s website provide clear evidence Respondent knew of Complainant’s rights when registering this domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Finally, Respondent registered the disputed domain name using a privacy service. This raises the rebuttable presumption of bad faith in the commercial context. Respondent has done nothing to rebut that presumption. That alone is sufficient grounds to find bad faith registration and use of the disputed domain name.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <foxtvcanliizle.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, September 23, 2014
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