Twentieth Century Fox Film Corporation v. Akesse Benedict / Tour Guiding and Travel Services
Claim Number: FA1704001729245
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Akesse Benedict / Tour Guiding and Travel Services (“Respondent”), Ghana.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fox-channel.com>, registered with Wild West Domains, LLC.
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 Forum electronically on April 27, 2017; the Forum received payment on April 27, 2017.
On April 28, 2017, Wild West Domains, LLC confirmed by e-mail to the Forum that the <fox-channel.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 May 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 2017 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-channel.com. Also on May 2, 2017, 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 proper response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 30, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is engaged in the television and film industry. On or in connection with its offerings, Complainant has registered several FOX-formative marks with the United States Patent and Trademark Office (“USPTO”), including the FOX NEWS CHANNEL mark (Reg. No. 2,154,239, registered Apr. 28, 1998; Reg. No. 2,172,925, registered July 14, 1998), demonstrating rights in the mark under Policy ¶ 4(a)(i). Respondent’s <fox-channel.com> is confusingly similar to the FOX NEWS CHANNEL mark because it merely replaces the central term “NEWS” with a hyphen, and appends the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in or to <fox-channel.com>. Nothing in Respondent’s WHOIS information or the available record demonstrates Respondent as commonly known by the domain name. Furthermore, Respondent’s use of the domain name for a website featuring pay-per-click advertisements and competing news services evinces a lack of bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered and used <fox-channel.com> in bad faith. Respondent’s competitive use of the domain name constitutes bad faith under Policy ¶ 4(b)(iii), and while Respondent presumably profits from Internet user confusion through the inclusion of pay-per-click links, Respondent has engaged in Policy ¶ 4(b)(iv) bad faith. Lastly, Respondent’s actual knowledge of Complainant’s FOX NEWS CHANNEL mark and its rights in the mark is clear from the domain name registered and use of the domain name to offer directly competitive services.
B. Respondent
Respondent consents to the transfer of the domain name , stating “[w]ith regards to case FA Number: FA1704001729245, I would like to simply transfer domain to Fox News as I seized [sic] using the domain and tempted cancelling it immediately I was notified months ago. I'm not disputing ownership and I'm ready to comply to the whatever they want for a smooth transfer.”
Preliminary Issue: Consent to Transfer
Respondent consents to transfer <fox-channel.com> to Complainant. The Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the disputed domain name to Complainant, the Panel will forego the traditional UDRP analysis and order an immediate transfer of the domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
The Respondent having consented to the transfer of the <fox-channel.com> domain name, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <fox-channel.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: May 31, 2017
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