Twentieth Century Fox Film Corporation v. Tanapol Somsiam
Claim Number: FA1409001580678
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is Tanapol Somsiam (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hd-foxmovie.com>, registered with Name.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.
Ho Hyun Nahm, 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 19, 2014, Name.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <hd-foxmovie.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.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 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@hd-foxmovie.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.
On October 20, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, 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
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). See Complainant’s Exhibit 7.
3. Complainant owns the FOXMOVIES.COM domain name, which it registered in 1996 and has used since at least as early as 1997.
4. Respondent’s <hd-foxmovie.com> domain name is confusingly similar to Complainant’s famous and registered FOX and FOX MOVIES marks.
5. Respondent has no rights or legitimate interests in the <hd-foxmovie.com> domain name.
a. Respondent has never been licensed or authorized by Complainant to use the FOX marks. Respondent’s WHOIS information for the disputed domain name demonstrates that Respondent is not commonly known by the disputed domain name.
b. Respondent uses the disputed domain name to trade on the goodwill associated with Complainant’s marks.
i. Respondent uses the disputed domain name to directly compete with Complainant by offering online movie-viewing services, including Complainant’s movies offered under its FOX or FOX MOVIES mark.
ii. Respondent also displays pay-per-click advertisements from which it presumably receives compensation.
6. Respondent registered and is using the <hd-foxmovie.com> domain name in bad faith.
a. Respondent’s use of the disputed domain name disrupts Complaint’s business by offering and advertising products and services that directly compete with Complainant.
b. Respondent registered and is using the disputed domain name to intentionally attract Internet users to its website and confuse them as to Complainant’s affiliation with the resolving website, thereby commercially profiting.
c. Respondent had actual knowledge of Complainant and Complainant’s marks when Respondent registered the disputed domain name.
B. Respondent
1. Respondent failed to submit a Response in this proceeding. Respondent registered the <hd-foxmovie.com> domain name on June 27, 2014.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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 with the USPTO as well as with OHIM. The Panel notes Complainant’s Exhibit 7 to see that Respondent owns registrations with 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 here 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 next asserts that Respondent’s <hd-foxmovie.com> domain name is confusingly similar to Complainant’s famous and registered FOX and FOX MOVIES marks. Complainant argues that Respondent’s <hd-foxmovie.com> domain name features Complainant’s FOX mark in its entirety, and merely eliminates the letter “s” from Complainant’s FOX MOVIES mark and adds the abbreviation “HD” standing for “high-definition.” The Panel notes that prior UDRP panels have consistently held that domain names comprised of a mark and generic or descriptive terms are confusingly similar to the mark at issue. See, Twentieth Century Fox Film Corporation v. Rahman, (WIPO D2009-1121) (finding the domain name <foxsportslive.info> confusingly similar to Complainant’s FOX SPORTS mark). Panels have further concluded that the omission of spaces between terms in a mark, hyphens, and the addition of a generic top-level domain (“gTLD”) such as “.com” is insufficient to differentiate a domain name from a given mark. See, H-D Michigan v. Martin, (FA1286735) (“The Panel finds that the omission of spacing and the addition of a gTLD are irrelevant in distinguishing a disputed domain name from an established mark.”); see also 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.). The Panel thus concludes that Respondent’s <hd-foxmovie.com> domain name is confusingly similar to Complainant’s FOX and FOXMOVIES marks.
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 next contends that Respondent has no rights or legitimate interests in the <hd-foxmovie.com> domain name under Policy ¶ 4(c)(ii). Complainant argues that Respondent has never been licensed or authorized by Complainant to use the FOX marks. Additionally, Complainant points out that Respondent’s WHOIS information for the disputed domain name demonstrates that Respondent is not commonly known by the disputed domain name. The Panel notes the WHOIS information for the disputed domain name to see that the registrant is listed as “Tanapol Somsiam.” The Panel is also reminded that Respondent has not submitted a Response to this Complaint, further indicating Respondent’s lack of rights or legitimate interests. See Twentieth Century Fox Film Corporation v. PPA Media Services, (FA1467717) (“WHOIS information lists ‘PPA Media Services / Ryan G Foo’ as the registrant of the at-issue domain name and there is no evidence that tends to show that Respondent is commonly known by the at‑issue domain name. Therefore, the Panel finds that Respondent is not commonly known by the <foxsportsnet.com > domain name for the purpose of Policy ¶ 4(c)(ii).”) The Panel therefore concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent uses the disputed domain name to trade on the goodwill associated with Complainant’s marks. Complainant explains that Respondent uses the disputed domain name to directly compete with Complainant by offering online movie-viewing services, including Complainant’s movies offered under its FOX or FOX MOVIES marks. Complainant notes that Respondent also displays pay-per-click advertisements from which it presumably receives compensation. The Panel notes Complainant’s Exhibit 8 to see Respondent’s resolving website displaying a message stating, “we guarantee that watching movies online is 100%, then you will stop by and see bored with the other sites.” The Panel also sees that Respondent’s resolving website displays advertisements, movie clips, and promotions for various movies. Prior panels have often 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 thus concludes that Respondent has no rights or legitimate interests in the <hd-foxmovie.com> domain name.
Complainant asserts that Respondent registered and is using the <hd-foxmovie.com> domain name 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. See Complainant’s Exhibit 8 to see Respondent’s display of 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 immediate Panel finds similarly, and concludes that Respondent’s use of the disputed domain name to display competing content is a strong indication of bad faith use and registration under Policy ¶ 4(b)(iii).
Complainant additionally claims that Respondent registered and is using the disputed domain name to attract Internet users to its website and confuse them as to Complainant’s affiliation with the resolving website, resulting in commercial profit. The Panel again notes Complainant’s Exhibit 8 to see the videos, advertisements and promotions displayed on Respondent’s resolving website. The panel in H-D v. Pirie (FA 1540525) stated, “. . . Respondent registered and is using the <harleydavidsonmotorcycleclub.com> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent is using the disputed domain name to operate a competing motorcycle-related service as well as other unrelated services.” As the Panel concludes that Respondent’s resolving website competes with Complainant’s official business, the Panel concludes that Respondent registered and is using the disputed domain name to attract and confuse Internet users for commercial gain in bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's FOX marks, it is inconceivable that Respondent could have registered the <hd-foxmovie.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, 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 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hd-foxmovie.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: October 27, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page