Twentieth Century Fox Film Corporation v. Hai Nguyen / BoB
Claim Number: FA1409001580660
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Hai Nguyen / BoB (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moviesfox.com>, registered with GoDaddy.com, 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.
James A. Carmody, Esq., 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 22, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <moviesfox.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 September 23, 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@moviesfox.com. Also on September 23, 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.
If applicable, enter date Additional Submission was received here – otherwise delete this point. If Additional Submission does not comply with Supplemental Rule 7, please address here.
On October 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
Respondent’s domain name, <moviesfox.com>, the domain name at issue, is confusingly similar to Complainant’s FOX mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the FOX mark via trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,924,143 registered Mar. 31, 1915), and Complainant uses the FOX mark for a television network and major film studio. One of the domain names Complainant relies on is <foxmovies.com>, which Complainant has used since 1997 and which relates to Complainant’s “Fox Movies” channel. The <moviesfox.com> domain name is confusingly similar to the FOX mark, as the only relevant difference is the inclusion of the descriptive term “movies,” which is insufficient to negate confusion.
Respondent lacks rights in the <moviesfox.com> domain name. Nothing in the WHOIS information or larger record demonstrates that Respondent is commonly known by the name. Complainant has not authorized Respondent’s use of the mark. Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. The <moviesfox.com> domain name resolves to website featuring commercial content regarding Complainant’s FOX movies, and the movies of Complainant’s competitors.
Respondent is in violation of Policy ¶¶ 4(b)(iii) and (iv), as well as Policy ¶ 4(a)(iii). Respondent resolves the disputed domain name to promote content of Complainant and content of Complainant’s competitors, which disrupts Complainant’s business. Further, Respondent generates revenue from this domain name that misleads users into associating Complainant with the domain name. Lastly, Respondent had actual knowledge of Complainant’s rights in the mark at the time the disputed domain name was registered.
Respondent did not submit a formal response. However, the Panel notes that the FORUM was included on an e-mail from Respondent indicating that Respondent was willing to transfer this <moviesfox.com> domain name. However, the proposed transfer is made conditional on some form of compensation. Accordingly, the Panel determined this not to be a Response and to go forward as a default proceeding. The disputed domain name was registered July 1, 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 uses the FOX mark for a television network and major film studio and owns the FOX mark via trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,924,143 registered Mar. 31, 1915). Complainant’s registrations of the FOX mark with the USPTO sufficiently evidence rights in the mark regardless of Respondent’s location, and therefore the Panel finds the initial requirement of Policy ¶ 4(a)(i) satisfied. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The <moviesfox.com> domain name is confusingly similar to the FOX mark, as the only relevant difference is the inclusion of the descriptive term “movies. One of the domain names Complainant uses in commerce is <foxmovies.com>, which Complainant has used since 1997, and relates to Complainant’s “Fox Movies” channel. Accordingly, the addition of the term “movies” is insufficient to negate confusion given the relation to the FOX mark. Prior panels have determined that a domain name is confusingly similar to a mark where the name incorporates the mark in full, and merely adds a descriptive or generic term as well as a generic top-level domain (“gTLD”). 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). Accordingly, the Panel finds the <moviesfox.com> domain name confusingly similar to the FOX mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent lacks rights in the <moviesfox.com> domain name. Nothing in the WHOIS information or larger record demonstrates that Respondent is commonly known by the name. The appearance of the “movies fox” name on the resolving page does not sufficiently demonstrate that the respondent is commonly known by the disputed domain name. Further, Complainant has not authorized Respondent’s use of the mark. The available record, which is void of a response indicating otherwise, does not show that Respondent is commonly known by the <moviesfox.com> name. See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (“[O]ther than Respondent’s infringing use of the ULTIMATE ELECTRONICS mark on its web page and in its domain name . . . there is no evidence that Respondent is commonly known by the <ultimateelectronics.net> domain name pursuant to Policy ¶ 4(c)(ii), or that there is any other entity besides Complainant authorized to trade as ULTIMATE ELECTRONICS.”).
Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. The <moviesfox.com> domain name resolves to website featuring commercial content regarding Complainant’s FOX movies, and the movies of Complainant’s competitors. Respondent’s use of the <moviesfox.com> domain name to promote commercial content in competition with Complainant amounts to neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s bad faith is demonstrated by Respondent’s use of the disputed domain name to promote content of Complainant and content of Complainant’s competitors, which disrupts Complainant’s business. The disputed domain name resolves to a website offering the movies for sale and streaming. The Panel concludes that Respondent is disrupting Complainant’s own operations relating to the dissemination of movies, and therefore finds evidence of bad faith use and registration. 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).”).
In addition, Respondent has violated Policy ¶ 4(b)(iv) as Respondent generates revenue from this <moviesfox.com> domain name that misleads users into associating Complainant with the domain name. In Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000), the panel found that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant. Here, Respondent has attempted to mislead Internet users into associating the disputed domain name and contents with Complainant for commercial gain, and the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith.
Lastly, Respondent had actual knowledge of Complainant’s rights in the mark at the time the disputed domain name was registered. Prior panels have determined that actual knowledge may be inferred from the circumstances, and have considered such evidence as the fame of the mark and use of the domain name to reach an inference of actual knowledge. For example, in Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014), the panel wrote, “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.” See also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). The Panel finds the instant circumstances indicate that Respondent did in fact know of Complainant at the time of registration, and therefore finds additional evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <moviesfox.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 17, 2014
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