Twentieth Century Fox Film Corporation v. ZEKI GALER
Claim Number: FA1408001576747
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is ZEKI GALER (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <foxhaberadana.com>, registered with eNom, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 25, 2014; the National Arbitration Forum received payment on August 25, 2014.
On August 26, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <foxhaberadana.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 26, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 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@foxhaberadana.com. Also on August 26, 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 Darryl C. Wilson 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
a. Complainant claims it uses the FOX mark to promote its news, sports, entertainment television and stream broadcast enterprises. Complainant claims the <foxhaberadana.com> domain name is confusingly similar to the FOX mark.
b. Complainant asserts that nothing in the record suggests Respondent’s rights are protected under Policy ¶ 4(c).
c. Complainant further argues that Respondent has registered and used the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Twentieth Century Fox Film Corporation of Los Angeles, CA, USA, is the owner of domestic and international registrations for the mark FOX and variations related thereto, such as FOX NEWS, known collectively as the FOX family of marks. Complainant has continuously used the mark since at least 1994 in connection with broadcasts/film production goods and services including news programming. Complainant’s international registrations include registration of the FOX mark in Turkey where “Haber” is the Turkish term for “news”. Complainant is the owner of the Turkish registration for the mark FOX HABER.
Respondent is ZEKI GALER of Adana, Turkey. Respondent’s registrar’s address is noted as Kirkland, WA, USA. Respondent registered the disputed domain on or about February 24, 2014.
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 claims it uses the FOX mark in connection with its large-scale television and entertainment operations. The Panel notes that the FOX mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,924,143, registered Oct. 3, 1995), and FOX HABER is registered with the Turkish trademark authority (e.g., Reg. No. 2009–28,495 registered May 5, 2010). The Panel finds that the FOX USPTO registration and FOX HABER Turkish registration is sufficient evidence of Policy ¶ 4(a)(i) rights for this proceeding. 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 claims the <foxhaberadana.com> domain name is confusingly similar to the FOX HABER mark. In particular, Complainant claims the term “Adana” is merely a city in Turkey. The Panel finds that neither the geographic term nor the generic top-level domain (“gTLD”) “.com” negate Policy ¶ 4(a)(i) confusing similarity. See, e.g., Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012) (finding that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that the addition of generic and descriptive terms fails to negate confusing similarity).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant claims that Respondent is not commonly known by the <foxhaberadana.com> domain name. The Panel notes that the WHOIS information lists “ZEKI GALER” as the registrant of record for the disputed domain name. The Panel finds that the record is devoid of any support necessary to conclude Respondent is commonly known by the disputed domain name as required by Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that the <foxhaberadana.com> domain name is used to house pay-per-click advertising content. The Panel notes that the domain name resolves to a website dedicated to hyperlink advertisements and competing news content. The Panel finds that using the FOX HABER mark to promote a competing and independent news source is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant claims Respondent’s conduct in posting competing news material is a commercial disruption. The Panel again notes Respondent’s use of the confusingly similar domain name to promote its own news websites and finds Respondent’s behavior falls within Policy ¶ 4(b)(iii)’s scope of bad faith commercial disruption. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant further contends that the use of this <foxhaberadana.com> domain name to promote the same type of content Internet users would find under the FOX HABER mark—news and information—showcases a likelihood for confusion. The Panel finds that Respondent’s use of the domain name for a competing news website falls within the Policy ¶ 4(b)(iv) definition of bad faith through a likelihood of confusion. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <foxhaberadana.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 6, 2014
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