Twentieth Century Fox Film Corporation v. Private Registrant / Digital Privacy Corporation
Claim Number: FA1603001665003
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Private Registrant / Digital Privacy Corporation (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <foxnews.com.co>, registered with 101domain, 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on March 10, 2016; the Forum received payment on March 10, 2016.
On March 11, 2016, 101domain, Inc. confirmed by e-mail to the Forum that the <foxnews.com.co> domain name is registered with 101domain, Inc. and that Respondent is the current registrant of the name. 101domain, Inc. has verified that Respondent is bound by the 101domain, 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 March 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 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@foxnews.com.co. Also on March 14, 2016, 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.
A timely Response was received and determined to be complete on April 4, 2016.
Complainant filed a timely Additional Submission on April 11, 2016.
Respondent filed a timely Additional Submission on April 18, 2016.
On April 11, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the FOX NEWS mark in connection with its television, radio, and online news broadcasting. Complainant has registered the mark with the United States Patent and Trademark Office (“USPTO”), including Registration No. 2,697,433, registered March 18, 2003, covering services in International Class 41 (entertainment services in the nature of television news programming), which demonstrates its rights in the mark. Respondent’s <foxnews.com.co> domain name (the “Domain Name”) is identical to the FOX NEWS mark as it incorporates the mark in its entirety and only adds the generic top-level domain (“gTLD") “.com” and the country code top-level domain (“ccTLD”) for Colombia, “.co.”
Respondent has no rights or legitimate interests in the Domain Name. Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <foxnews.com.co> domain name. Rather, Respondent is using the Domain Name for a website that offers news services in direct competition with those offered by Complainant, and he is attempting to pass off that website as belonging to Complainant. Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use its FOX MARK in the Domain Name, or otherwise.
Respondent registered and is using the Domain Name in bad faith, in that he is attempting to attract Internet users to his site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website resolving from it. He is also, as a competitor of Complainant, using the Domain Name to disrupt Complainant’s business. He is attempting to pass off his website as the website of Complainant, and this is further evidence of bad faith. Respondent has a bad-faith pattern of registering domain names containing Complainant’s FOX NEWS mark, as evidenced by prior UDRP and court decisions. Respondent’s bad faith registration and use of the Domain Name is further evidenced by his attempt to sell, rent or otherwise transfer it for valuable consideration in excess of his documented out-of-pocket expenses. Finally, in light of the fame and notoriety of Complainant's FOX NEWS mark, it is inconceivable that Respondent could have registered the Domain Name without constructive or actual knowledge of Complainant's rights in the FOX NEWS mark.
B. Respondent
Respondent does not argue Policy ¶ 4(a)(i).
The real party in interest as Respondent in this case is Paul Horner. He is a political satirist, writer and stand-up comedian, an internet news satirist. His website at <foxnews.com.co> is a parody website. On it he publishes articles that would be ridiculous for the real FOX NEWS to publish, e.g., Ted Cruz is the Zodiak Killer. Those articles are intended to mock Complainant, using parody. Respondent believes that FOX NEWS is evil and his website mocks it with parody. His use of the Domain Name is a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). His website has a disclaimer at the bottom of every page.
Respondent did not attempt to sell the Domain Name on a domain-name marketplace. Sedo unilaterally listed the Domain Name for sale, and Respondent affirmatively acted to get that listing removed. He does not want to sell the Domain Name but desires instead to use it.
Respondent’s prior UDRP disputes have no bearing on this case and do not provide evidence of a pattern of domain name misuse under Policy ¶ 4(b)(ii).
C. Complainant’s Additional Submission
Complainant reiterates its prior allegations and in addition asserts that Respondent’s fair use/parody defense fails because the Domain Name itself does not constitute parody on its face. It does not communicate that while it relates to FOX NEWS it is not FOX NEWS. The parody/fair use claim only applies to the content of the website, not the Domain Name. Respondent is using a confusingly similar domain name to drive traffic to his website by creating initial interest confusion. He does not acquire rights or legitimate interests in the Domain Name by doing this.
Respondent’s fair use/parody defense fails also because his website is commercial in nature, soliciting donations and pay-per-click commissions. His own Exhibit 8 submitted with his Response expressly solicits advertisers (“Looking to advertise? Contact us!”).
Respondent’s use of his website to publish “fake” news does not lessen the competing nature of his activities.
After filing its Complaint in this matter, Complainant discovered that Respondent registered and is using the domain name <foxnews.com.hk> for a similar website. His bad faith pattern is also demonstrated by his use of the domain names <abcnews.com.co>, <cbsnews.com.co> and <nbcnews.com.co> to post the identical articles on these websites as those posted on his website resolving from the Domain Name in this case. This shows that he is using multiple brands to drive traffic to his websites, and completely undermines his claim that his website content specifically parodies Complainant’s news services.
Respondent’s disclaimer does not legitimize his use of the Domain Name to attract internet traffic to his website.
D. Respondent’s Additional Submission
Respondent reiterates and amplifies his earlier assertions that the content of his website is parody of Complainant, by publishing articles that Complainant would never publish and including other material that generates humor at Complainant’s expense.
Respondent defends his use of advertising on his website on the basis that both Complainant’s website and other parody websites contain advertising, and also on the basis that it is necessary for Respondent to advertise on his website to meet the expenses of maintaining the site and defray his living expenses.
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.
The Panel makes the findings and determinations set forth below with respect to the Domain Name.
Complainant uses the FOX NEWS mark in connection with its television, radio, and online news broadcasting. It registered the mark with the USPTO (Reg. No. 2,697,433, registered March 18, 2003), which demonstrates its rights in the mark. See, Exhibit 8 to Complaint. A valid USPTO registration is sufficient to establish rights in a trademark. See, Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Complainant has demonstrated rights in the FOX NEWS mark under Policy ¶ 4(a)(i).
The Respondent’s <foxnews.com.co> domain name is identical to the FOX NEWS mark, as it incorporates the mark in its entirety and only adds the gTLD “.com,” and the ccTLD for Colombia, “.co.” The addition of top-level domains are irrelevant in evaluating whether a disputed domain name is identical to a trademark. See, Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Forum Nov. 16, 2009) (holding that even after the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark.”). Respondent’s <foxnews.com.co> domain name is identical to Complainant’s FOX NEWS mark within the meaning of Policy ¶ 4(a)(i).
If a complainant makes a prima facie case that the respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden shifts to respondent to show that it does. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interest in the 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 (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.”).
Respondent asserts that he is using the Domain Name to parody or satirize Complainant’s news broadcast services and for this reason is making fair use of it within the meaning of Policy ¶ 4(c)(iii). The problem with this is that the parody/satire does not appear from the Domain Name itself—it only becomes evident after the Internet user accesses Respondent’s website. The clear weight of authority holds that in order for a domain name to be protected by the fair use doctrine it must itself convey (i) that it relates to the trademark owner, and (ii) that it is not owned or sponsored by the trademark owner. This Domain Name clearly conveys the first of these elements but fails utterly to convey the second. Indeed, it clearly implies that it IS owned or sponsored by Complainant. In People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001), the court held that the domain name <peta.org> was not a parody of the PETA trademark because, “Looking at [defendant’s] domain name alone, there is no suggestion of a parody. The domain name peta.org simply copies PETA’s Mark, conveying the message that it is related to PETA. The domain name does not convey the second, contradictory message needed to establish a parody—a message that the domain name is not related to PETA but that it is a parody of PETA.” The court also held that the defendant’s website content was irrelevant because “an internet user would not realize that they were not on an official PETA website until after they had used PETA’s Mark to access the web page.” See also Chicago Tribune v. Manager Domain/WUITAS, D2013-1775 (WIPO December 12, 2013), where the panel rejected the respondent’s parody/fair use defense because it “would apply only to the content of Respondent’s website, not to Respondent’s use of the Domain Name [tehchicagotribune.com] because the Domain Name itself is not a communicative message.” That panel held that the respondent had no legitimate interest arising out of “using a confusingly similar domain name and creating initial interest confusion” to “drive traffic to its website.”
In this case, Respondent’s Domain Name conveys that his website is about FOX NEWS but it must also convey that it is not FOX NEWS’ website. In both his Response and Additional Submission, Respondent emphasizes that no one looking at his website itself could mistake it for FOX NEWS’ website, and in this he is correct. This misses the point, however, because in evaluating a fair use defense the Panel looks not at the content of the website but at the form and content of the Domain Name. This Domain Name uses Complainant’s mark in such a way as to make an Internet user looking at it believe that the website to which it will resolve, if accessed, is owned or sponsored by Complainant. This is where Respondent’s fair use defense fails.
Another problem with Respondent’s claim of fair use is that his website is not limited to parody or satire, but instead has a commercial element to it. It does offer pay-per-click advertisements (Exhibit A to Complainant’s Additional Submission), and a block of text at the bottom of at least one page of the website contains the following note, “Looking to advertise? Contact us!” See Exhibit 12 to Complaint and Exhibit 8 to Response.
Based upon the foregoing, the Panel concludes that Respondent has failed to show that he has any rights or legitimate interests in respect of the Domain Name.
Complainant contends that Respondent registered and uses the Domain Name primarily for the purpose of disrupting the business of Complainant, who is a competitor within the meaning of Policy ¶ 4(b)(iii). Respondent may not, strictly speaking, compete directly with Complainant since he does not publish articles which are offered as genuine and serious. Nevertheless, he does publish articles in the nature of news articles which are formatted and structured to look like genuine news articles. Further, the Domain Name is identical to Complainant’s Mark. Taking these factors together with the fact that the content of Respondent’s website mocks and disparages Complainant, it is not unreasonable to conclude that Respondent’s activities constitute a substantial commercial disruption of Complainant’s business and are thus within the scope of Policy ¶ 4(b)(iii). Other panels have found that where a respondent has purported to divert a complainant’s consumers by using a domain name confusingly similar to the complainant’s mark, such use constitutes bad faith disruption under Policy ¶ 4(b)(iii). See Twentieth Century Fox Film Corporation v. GALER, FA 1408001576747 (Forum October 6, 2014) (“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) scope of bad faith commercial disruption.”); see also Yahoo v. N/A, FA 1308001517435 (Forum September 27, 2013) (“Complainant claims that Respondent is using the <fa-yahoo.com> domain name to resolve to a website offering directly competing search and news services. Complainant asserts that although Respondent may not be a competitor of Complainant, the fact that Respondent’s activities are in opposition to Complainant is sufficient to define Respondent as a competitor under the UDRP . . . . The Panel finds that Respondent is disrupting complainant’s legitimate business, proving bad faith use and registration under Policy ¶ 4(b)(iii)”). For the reasons set forth above, the Panel finds that this Respondent registered and is using the Domain Name primarily for the purpose of disrupting the business of Complainant, who is a competitor of Respondent.
Complainant alleges and Respondent admits in his Additional Submission that Respondent’s website solicits and publishes advertising as a means of raising money to pay the expenses of the website and to fund his living expenses, “so the Respondent has more time to mock Fox news, . . . .” (Respondent Additional Submission, p. 1.) The fact that Respondent is using the website for commercial gain, and is using the Domain Name to attract internet users to it, is further evidence of his registration and use of the Domain Name in bad faith, within the meaning of Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Complainant contends that in light of the fame and notoriety of Complainant's FOX NEWS mark, it is inconceivable that Respondent could have registered the <foxnews.com.co> domain name without actual or constructive knowledge of Complainant's rights in the mark. Any arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel does agree with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the FOX NEWS mark prior to registering the Domain Name. Indeed, given that his intent was to mock and parody the FOX NEWS services, he had to have had actual knowledge of the mark in order to accomplish his purposes. Registering a domain name that incorporates the mark of another with full knowledge of the rights of the owner of that mark is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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).
For the foregoing reasons, the Panel finds that Respondent registered and is using the Domain Name in bad faith.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <foxnews.com.co> domain name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: April 19, 2016
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