Twentieth Century Fox Film Corporation v. Dani Ramdani / Fox / Ester B. Brainerd / RelocationNetworking / Augustine Lam / Jagonya Murah
Claim Number: FA1612001707105
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Dani Ramdani / Fox / Ester B. Brainerd / RelocationNetworking / Augustine Lam / Jagonya Murah (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <foxstreamtv.net>, registered with NetEarth One Inc. d/b/a NetEarth; <foxstream.club>, registered with NameCheap, Inc.; and <foxstream.live>, registered with eNom, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 12, 2016; the Forum received payment on December 12, 2016.
On December 13, 2016, NetEarth One Inc. d/b/a NetEarth confirmed by e-mail to the Forum that the <foxstreamtv.net> domain name is registered with NetEarth One Inc. d/b/a NetEarth and that Respondent is the current registrant of the name. NetEarth One Inc. d/b/a NetEarth has verified that Respondent is bound by the NetEarth One Inc. d/b/a NetEarth 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 13, 2016, NameCheap, Inc. confirmed by e-mail to the Forum that the <foxstream.club> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On December 13, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <foxstream.live> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On December 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 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@foxstream.live, postmaster@foxstream.club, and postmaster@foxstreamtv.net. Also on December 15, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 is one of the world’s leading and largest entertainment and media companies. Complainant has registered the FOX mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,924,143, registered Oct. 3, 1995). Respondent’s <foxstream.live>, <foxstream.club>, and <foxstreamtv.net> are confusingly similar to the FOX mark as the mark is included in each domain name entirely while the terms “stream” and “tv” are added, along with the following generic top-level domains (“gTLDs”): “.live,” “.club,” “.net.”
Respondent has no rights or legitimate interests in the domain names. Respondent is not commonly known by the terms of the domain names, and Complainant has not authorized Respondent to use its FOX mark in any context. Further, Respondent is not using the domain names in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent uses the domain names to pass itself off as Complainant offering directly competing sports programming services, and utilizing Complainant’s FOX SPORTS logo.
Respondent registered and used the domain names in bad faith for the following reasons: a pattern has been established pursuant to Policy ¶ 4(b)(ii), Respondent’s passing off behavior implicates both Policy ¶¶ 4(b)(iii) and (iv), and Respondent registered and subsequently used the domain names with actual knowledge of the FOX mark and Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit an official Response in this proceeding. However, Respondent did send email correspondence on several occasions. The Respondent initially indicated that the domain(s) would be deactivated and deleted. Upon finding that indication was not enough to end the case the Respondent emailed a request asking how to transfer the name(s) to the Complainant.
Complainant is Twentieth Century Fox Film Corporation of Los Angeles, CA, USA. Complainant is the owner of numerous registrations for the mark FOX and related marks, constituting the family of FOX marks, which it has been using continuously since at least as early as 1993 in connection with its production and distribution of motion picture films, television programs, videodiscs and various other entertainment programming services.
Respondent is Dani Ramdani / Fox / Ester B. Brainerd / RelocationNetworking / Augustine Lam / Jagonya Murah with addresses reflecting Australia, Indonesia, and NC, USA. Respondent’s registrar’s addresses are located in the USA and UK. The Panel notes that <foxstream.live> was registered on or about May 24, 2016; <foxstream.club> was registered on or about August 17, 2016; and <foxstreamtv.net> was registered on or about August 20, 2016.
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 (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.”).
Preliminary Issue: Multiple Respondents
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” In the instant proceedings, Complainant has alleged that the entities, which control the domain names at issue, are effectively controlled by the same person and/or entity, which is operating under several aliases. Complainant contends that the domain names all resolve to identical websites advertising and/or offering directly competing sports programming. Complainant has provided screenshot evidence in support of that assertion. The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled.
Preliminary Issue: Consent to Transfer
The Forum was copied on documentation submitted from Respondent to Complainant, which is identified in this proceeding as “Correspondence – Respondent.” In these documents, Respondent reflects the desire to transfer the disputed domain name(s) to Complainant. The Panel notes that it is under no obligation to acknowledge such documents, nonetheless, the Panel does recognize the correspondence and finds it helpful in resolving the present dispute. Under the present circumstances, where Respondent has not contested the transfer of the disputed domain name, but instead agrees to transfer the domain name in question to Complainant, the Panel finds it unnecessary to apply the traditional UDRP analysis and instead orders an immediate transfer of the <foxstream.live>, <foxstream.club>, and <foxstreamtv.net> domain names. 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 (Nat Arb. 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.”).
Respondent consents to transfer. Immediate transfer of the domain name ordered.
Respondent consents to transfer. Immediate transfer of the domain name ordered.
Respondent consents to transfer. Immediate transfer of the domain name ordered.
As the Respondent has consented to transfer the domain names, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <foxstream.live>, <foxstream.club>, and <foxstreamtv.net> domain names be immediately TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 30, 2017
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