Twentieth Century Fox Film Corporation v. Domain Admin / PrivacyProtect.org / Denis Ferulev
Claim Number: FA1512001652313
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 / PrivacyProtect.org / Denis Ferulev (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <familyguy.biz> and <fg24.biz>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com and Bizcn.com, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 15, 2015; the Forum received payment on December 15, 2015.
On December 16, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <familyguy.biz> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. 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 December 16, 2015, Bizcn.com, Inc. confirmed by e-mail to the Forum that the <fg24.biz> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.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 December 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2016 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@familyguy.biz, postmaster@fg24.biz. Also on December 22, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 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 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.
A. Complainant
Complainant made the following contentions.
Complainant has registered the FAMILY GUY trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,314,755, registered Feb. 1, 2000). The mark is used in connection with the promotion and production of the animated television series “Family Guy,” in addition to use for purposes of selling DVDs, toys, figures, clothing, and other forms of merchandise. The <familyguy.biz> domain name is identical to the FAMILY GUY mark because the domain name differs from the mark only in the inclusion of the top-level domain “.biz” and the elimination of the space between the words “family” and “guy.” The <fg24.biz> domain name is identical to the FAMILY GUY mark because the domain name contains the acronym for Complainant’s FAMILY GUY mark, along with the number “24” and the top-level domain “.biz.”
Respondent has no rights or legitimate interests. Respondent is not commonly known as either of the disputed domain names, nor is Respondent a licensee of Complainant. Further, the domain names resolve to a webpage that sells illegal drugs, which is not a bona fide offering or a legitimate noncommercial or fair use.
Respondent has engaged in bad faith registration and use. By registering multiple domain names subject to this proceeding, Respondent has displayed bad faith under Policy ¶ 4(b)(ii). The act of using the domain names to sell illegal drugs disrupts Complainant’s business in bad faith under Policy ¶ 4(b)(iii), and also consists of generic bad faith under Policy ¶ 4(a)(iii). In creating a likelihood of confusion for commercial profit, Respondent has displayed bad faith under Policy ¶ 4(b)(iv). Lastly, due to the fame of Complainant’s FAMILY GUY trademark, Respondent registered the domain names with actual knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged among other activities in the promotion and production and sale of the animated television series “Family Guy” and related DVDs, toys, figures, clothing, and other forms of merchandise.
2. Complainant has registered the FAMILY GUY trademark with the USPTO (e.g., Reg. No. 2,314,755, registered Feb. 1, 2000).
3. Respondent registered the <familyguy.biz> domain name on September 7, 2015 and the <fg24.biz> domain name on October 8, 2015.
4. Both domain names resolve to a website promoting the sale of illegal drugs.
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(f), 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 first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant contends that it has obtained trademark rights for purposes of this UDRP proceeding by means of its registration of the FAMILY GUY trademark with the USPTO (e.g., Reg. No. 2,314,755, registered Feb. 1, 2000). The mark is used in connection with the promotion and production of the animated television series “Family Guy,” in addition to use for purposes of selling DVDs, toys, figures, clothing, and other forms of merchandise. The Panel finds that registration of a mark with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s FAMILY GUY mark. Complainant also argues that the <familyguy.biz> domain name is identical to the FAMILY GUY mark. Complainant notes that the only difference between the domain name and the mark is the inclusion of the top-level domain “.biz” and the elimination of the space between the words “family” and “guy.” The Panel notes that the elimination of spacing and the inclusion of a top-level domain have regularly been found as irrelevant to Policy ¶ 4(a)(i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). With regard to the top-level domain, some panels have even begun to find domains such as “.biz” to enhance the possibility of a confusing similarity, likening it to a generic or descriptive term. See DD IP Holder LLC v Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) (“because there is a reference to food and restaurants inherent in the new gTLD ‘.menu’, the combination of the ‘dunkin’ element with the ‘.menu’ gTLD extension adds further to the confusing character of the domain in issue in the present case.”). On either basis, the Panel finds that the familyguy.biz> domain name is identical to the FAMILY GUY mark under Policy ¶ 4(a)(i).
Complainant further submits that the <fg24.biz> domain name is confusingly similar to the FAMILY GUY mark. Complainant notes that the domain name contains the recognised acronym for its FAMILY GUY mark, along with the number “24” and the top-level domain “.biz.” As noted above, “.biz” is either irrelevant to a confusing similarity analysis or it may enhance any potential confusing similarity. Additionally, prior panels have established a confusing similarity where the domain name contained an abbreviation of the complainant’s trademark along with an added number. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated). See also in this regard the analogous and persuasive decision cited by Complainant, Twentieth Century Fox Film Corporation v. oranges arecool XD (NAF FA1405001558045), regarding a domain name comprised of complainant’s mark in its entirety (AMERICAN HORROR STORY) and a second related domain name comprised of an abbreviation of the same mark (AHS), where the panel held that both domain names were confusingly similar to complainant’s mark. The Panel observed: “Respondent’s <americanhorrorstorybrasil.com> and <ahsbrazil.com> domain names are confusingly similar to Complainant’s AMERICAN HORROR STORY mark under Policy ¶ 4(a)(i). Respondent’s <americanhorrorstorybrasil.com> domain name eliminates the spaces between the words in Complainant’s mark and adds the geographic term ‘Brasil.’ Additionally, Respondent’s <ahsbrazil.com> domain name features the abbreviation of Complainant’s AMERICAN HORROR STORY mark and also adds the geographic term ‘Brazil.’ . . . Respondent’s use of the acronym AHS does not defeat a claim of confusing similarity of the <ahsbrazil.com> domain name with Complainant’s AMERICAN HORROR STORY mark.” Therefore, the Panel finds that the <fg24.biz> domain name is confusingly similar to the FAMILY GUY mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
It is now well established 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s FAMILY GUY mark and to use it in its domain names, in one case identically and in the other using an acronym and adding the number 24;
(b) Respondent has then used the domain names to resolve to a website where illegal drugs are sold;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant submits that Respondent is not commonly known as the <familyguy.biz> and<fg24.biz> domain names, nor is Respondent in possession of licensing rights that would allow him to use the FAMILY GUY mark in domain names. The Panel notes that “Denis Ferulev” is listed as the registrant of record for the <fg24.biz> domain name, and “Domain Admin” is listed as the registrant of record for the <familyguy.biz> domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain names or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(e) Complainant argues that Respondent’s use of the disputed domain names fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this submission, Complainant adds that the domain names are being used to run a website that sells illegal drugs. The Panel notes Complainant’s Exhibits 2-3, which display screenshots of the web pages that resolve from each of the disputed domain names. When confronted with the use of a domain name for illegal purposes, prior panels have found that such use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). As the Panel finds that Respondent is likewise using the domain names for an illegal purpose, it declines to recognize that Respondent has rights under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
Complainant argues that Respondent has engaged in bad faith registration and use. As for bad faith registration, Complainant claims that because Respondent has registered multiple domain names subjected to this proceeding, bad faith under Policy ¶ 4(b)(ii) is present, as Respondent has engaged in a pattern of bad faith registrations intended at depriving Complainant of the opportunity to reflect its FAMILY GUY mark in domain names. In the past, panels have established Policy ¶ 4(b)(ii) bad faith where the respondent had registered multiple domain names. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)). Thus, the Panel here finds bad faith under Policy ¶ 4(b)(ii).
Complainant also submits that Respondent has engaged in bad faith under Policy ¶ 4(b)(iii) by disrupting Complainant’s business. The Panel again notes Complainant’s Exhibits 2-3, which display screenshots of the web pages resolving from the disputed domain names. The Panel also notes that previous panels have in many but not all cases reserved bad faith disruption for cases where the respondent’s domain name somehow competed with the business of the complainant. See Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001) (rejecting the Mission KwaSizabantu approach and holding that “a respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner”). However Mission KwaSizabantu v. Rost expanded the definition of “competing” to “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). D2000-0279 (WIPO June 7, 2000). Therefore, as the Panel finds that Respondent’s behavior disrupts Complainant’s business because it interferes with Complainant’s use of its trademarks for its own business purposes, it finds bad faith under Policy ¶ 4(b)(iii).
Complainant further argues that Respondent has engaged in bad faith under Policy ¶ 4(b)(iv) by attempting to profit commercially from a likelihood of confusion. Complainant believes that Internet users who view either of the web pages resolving from the disputed domain names will believe those web pages are sponsored by or affiliated with Complainant. Complainant adds that Respondent is presumably profiting from this behavior. It is well-established that, where a likelihood of confusion for commercial gain is present, so too is bad faith under Policy ¶ 4(b)(iv). 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). Thus, as the Panel finds that a likelihood of confusion is present, and that Respondent is commercially profiting, it finds bad faith under Policy ¶ 4(b)(iv).
Also, Complainant argues that generic bad faith under Policy ¶ 4(a)(iii) exists because the domain names resolve to a webpage that attempts to sell illegal drugs. Again, the Panel notes Complainant’s Exhibits 2-3, which show screenshots of the resolving web pages. Prior panels have found bad faith where the domain names were used for an illegal purpose. See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding bad faith because it would be illegal for the respondent to use the domain name <mnlottery.com> without government approval). As the Panel finds that Respondent is using the domain name for illegal purpose, it finds bad faith under the Policy.
Lastly, Complainant contends that in light of the fame and notoriety of its FAMILY GUY trademark, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel notes that arguments of bad faith based on constructive notice are not regularly successful. The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the FAMILY GUY mark and its acronym and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <familyguy.biz> and <fg24.biz> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 19, 2016
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