Twentieth Century Fox Film Corporation v. fox movies
Claim Number: FA1409001580717
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is fox movies (“Respondent”), Iraq.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fox-movies.com> and <fox-movies.net>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 19, 2014; the National Arbitration Forum received payment on September 19, 2014.
On September 20, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <fox-movies.com> and <fox-movies.net> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 September 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 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@fox-movies.com, postmaster@fox-movies.net. Also on September 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 October 20, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) 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 names be transferred from Respondent to Complainant.
Complainant
1. Complainant is one of the world’s leading and largest entertainment and media companies. Complainant has marketed and promoted its products and services under the FOX mark for decades spending tens of millions of dollars every year.
2. Complainant has rights in the FOX and FOX MOVIES marks through its registrations with the United States Patent and Trademark Office (“USPTO”) as well as with the European Union’s Office for Harmonization in the Internal Market (“OHIM”).
a. FOX (e.g., Reg. No. 1,924,143 registered October 3, 1995).
b. FOX MOVIES (Reg. No. 009,256,249 registered December 6, 2010).
3. Complainant owns the FOXMOVIES.COM domain name, which it registered in 1996 and has used since as early as 1997.
4. Respondent’s <fox-movies.com> and <fox-movies.net> domain names are confusingly similar to Complainant’s registered FOX and FOX MOVIES trademarks.
5. Respondent has no rights or legitimate interests in the <fox-movies.com> and <fox-movies.net> domain names.
a. Respondent is not commonly known by the disputed domain names.
b. Respondent uses the disputed domain names to display pay-per-click links that compete with Complainant and earn revenue for Respondent.
c. Respondent is attempting to pass itself off as Complainant by using Complainant’s Fox Movies Premium Logo on its resolving website.
6. Respondent registered and is using the <fox-movies.com> and <fox-movies.net> domain names in bad faith.
a. Respondent uses the disputed domain names to offer competing content, resulting in a disturbance in Complainant’s legitimate business.
b. Respondent uses the disputed domain names to intentionally attract Internet users by creating a likelihood of confusion with Complainant’s marks and Respondent’s resolving website.
c. Respondent had actual knowledge of complainant and Complainant’s registered marks, when Respondent registered the disputed domain names.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 contends that it is one of the world’s leading and largest entertainment and media companies. Complainant states that it has marketed and promoted its products and services under the FOX mark for decades spending tens of millions of dollars every year. Complainant provides evidence that it has rights in the FOX and FOX MOVIES marks through its registrations of the FOX mark with the USPTO (e.g., Reg. No. 1,924,143 registered October 3, 1995) and registrations with OHIM for the FOX MOVIES mark (Reg. No. 009,256,249 registered December 6, 2010). Complainant additionally contends that it owns the FOXMOVIES.COM domain name, which it registered in 1996 and has used since at least as early as 1997. Based on prior panel decisions, the Panel concludes that Complainant’ s registrations for its FOX Marks constitute evidence of Complainant’s rights under the UDRP, regardless of Respondent’ s location. See Twentieth Century Fox Film Corporation v. PPA Media Services, FA1467717 (Nat. Arb. Forum) (“The Panel finds that Complainant established that it has rights in the FOX SPORTS mark under Policy ¶ 4(a)(i) through its trademark holdings with the USPTO, irrespective of Respondent’ s location outside the U.S.” ); see also Twentieth Century Fox Film Corporation v. Above.com Domain Privacy, FA1509035) (“. . . Complainant’s Policy ¶ 4(a)(i) rights in the [FOX SPORTS] mark are sufficiently shown by its USPTO registration, regardless of where Respondent is located.”).
Complainant argues that Respondent’s <fox-movies.com> and <fox-movies.net> domain names are identical to Complainant’s FOX and FOX MOVIES marks. Complainant argues that Respondent’s disputed domain names contain Complainant’s entire FOX MOVIES mark with the addition of a hyphen and either the generic top-level domain (“gTLD”) “.com” or “.net.” Prior UDRP panels have continuously found that these variations do not differentiate a disputed domain name from a given mark. See H-D v. Zhang Jia Jing, (FA1533417) (“UDRP panels have consistently held that both hyphens (whether omitted or added) and gTLD such as ‘.com’ are irrelevant to confusing similarity analysis. Accordingly, Respondent’s addition of a hyphen and a gTLD is inconsequential to a Policy ¶ 4(a)(i) determination.”). The Panel concludes that Respondent’s <fox-movies.com> and <fox-movies.net> domain names are identical to Complainant’s FOX MOVIES mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 contends that Respondent has no rights or legitimate interests in the <fox-movies.com> and <fox-movies.net> domain names under Policy ¶ 4(c)(ii). Complainant alleges that Complainant has never authorized or licensed Respondent with the rights to use any of Complainant’s FOX marks. Additionally, Complainant points out that Respondent’s WHOIS information for the disputed domain names demonstrates that Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain names lists registrant as “fox movies.” Respondent has not submitted a Response to this Complaint. Past UDRP panels have asserted that despite listing a registrant in the WHOIS information as one that appears to be related to the disputed domain name, a respondent is not commonly known by a disputed domain name where there is no other evidence on the record to indicate a true association. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name). The Panel therefore concludes that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the disputed domain name to trade on the goodwill associated with Complainant’s marks. Respondent uses the disputed domain names to directly compete with Complainant by offering online movie-viewing services, including Complainant’s movies offered under its FOX or FOX MOVIES marks. Complainant provides evidence in its exhibits that Respondent displays Complainant’s Fox Movies Premium logo as well as various advertisements and options for media streaming. Past panels have concluded that this type of use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. See, Yahoo! v. Chinayahoo.com, (FA236538) (“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).”). The Panel concludes that Respondent has no rights or legitimate interests in the <fox-movies.com> and <fox-movies.net> domain names.
Complainant states that Respondent’s unauthorized use of Complainant’s Fox Movies Premium logo on the resolving website, along with Respondent’s other uses of Complainant’s marks and the use of the name “fox movies” in the WHOIS information, indicates Respondent’s intent to pass itself off as Complainant. Past panels have concluded that attempting to appear as a complainant for the purpose of confusing Internet users does not amount to rights or legitimate interests in a given mark. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). The Panel finds Respondent’s use of the domain names is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)
Complainant has proven this element.
Complainant asserts that Respondent registered and is using the <fox-movies.com> and <fox-movies.net> domain names in bad faith under Policy ¶ 4(b)(iii). In so arguing, Complainant claims that Respondent’s use of the disputed domain name disrupts Complaint’s business by offering and advertising products and services that directly compete with Complainant. Respondent’s disputed domain names display movies and media streaming features. The panel in Twentieth Century Fox Film Corporation v. oranges arecool XD, (FA 1558045) stated, “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).” The Panel finds similarly and concludes that Respondent’s use of the disputed domain names to display competing content is evidence of bad faith use and registration under Policy ¶ 4(b)(iii).
Complainant additionally claims that Respondent registered and is using the disputed domain names to attract Internet users to its website and confuse them as to Complainant’s affiliation with the resolving website, resulting in commercial profit. Complainant provides evidence in its exhibits of the videos, advertisements and promotions displayed on Respondent’s resolving website. The panel in Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) found bad faith where the respondent's use of the domain name resolved to a website where similar services were offered to Internet users and was likely to confuse the user into believing that the complainant was the source of or was sponsoring the services offered at the site. The Panel concludes that Respondent’s resolving websites compete with Complainant’s official business, and concludes that Respondent registered and is using the disputed domain names to attract and confuse Internet users for commercial gain in bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the FOX MOVIES mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names 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 has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <fox-movies.com> and <fox-movies.net> domain names be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: October 21, 2014
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