Twentieth Century Fox Film Corporation v. Hugh Hysell / HHC Marketing
Claim Number: FA1703001724018
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Hugh Hysell / HHC Marketing (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mrsdoubtfiremusical.com>, <mrsdoubtfirebroadway.com>, <doubtfiremusical.com>, <doubtfirethemusical.com>, <doubtfirebroadway.com>, and <revengeofthenerdsthemusical.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 27, 2017; the Forum received payment on March 27, 2017.
On March 28, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mrsdoubtfiremusical.com>, <mrsdoubtfirebroadway.com>, <doubtfiremusical.com>, <doubtfirethemusical.com>, <doubtfirebroadway.com>, and <revengeofthenerdsthemusical.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 March 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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@mrsdoubtfiremusical.com, postmaster@mrsdoubtfirebroadway.com, postmaster@doubtfiremusical.com, postmaster@doubtfirethemusical.com, postmaster@doubtfirebroadway.com, and postmaster@revengeofthenerdsthemusical.com. Also on March 30, 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 response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is one of the world’s leading and largest entertainment and media companies; it is a major film studio and television network, among other businesses. For many decades, it has produced and distributed some of the highest-grossing and internationally well-known film and television properties of all time. Complainant has for many years extensively promoted and/or offered its services and products on the Internet, including its movies and television network and programming services, via many websites.
Its online network includes, and has included for many years, numerous domain names corresponding to its movie titles that it registers and uses as part of its multi-million dollar advertising and promotions for its movies. In particular, Complainant owns the domain name <MRSDOUBTFIREDVD.COM>, which it registered in 1999; and the domain names <REVENGEOFTHENERDSDVD.COM> <REVENGEOFTHENERDSMOVIE.COM> and <REVENGEOFTHENERDS2007.COM,> which it registered in 2000, 2004 and 2006, respectively.
Complainant’s states that its rights in the MRS. DOUBTFIRE and REVENGE OF THE NERDS marks are based on its common-law rights acquired through the substantial and continuous use of those marks for many years and the significant commercial success of Complainant’s movies offered under those marks. In addition, the mark MRS DOUBTFIRE was registered in the European Community in 2003, and the mark REVENGE OF THE NERDS was registered in the United States in 2008.
According to Complainant, the disputed domain names are confusingly similar to its marks because they incorporate the marks (or a dominant portion thereof) and merely include the generic top-level domain (“gTLD”) “.com” and entertainment-related terms like “musical” or “Broadway” and the article “the.”
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the domain names. Further, Respondent has used the domain names to resolve to pay-per-click websites including entertainment-related websites that compete with Complainant, as well as a general offer for sale. This does not constitute a bona fide offering of goods or services or any legitimate noncommercial or fair use.
Further, says Complainant, Respondent registered and is using the domain names in bad faith. First, Respondent’s general offer for sale on the resolving websites demonstrates bad faith under Policy ¶ 4(b)(i). Second, Respondent’s registration of six domain names incorporating Complainant’s marks constitutes bad faith under Policy ¶ 4(b)(ii). Third, since entertainment-related advertisements appear on the resolving websites, disruption of Complainant’s legitimate business is demonstrated pursuant to Policy ¶ 4(b)(iii). Fourth, the inclusion of pay-per-click hyperlinks that compete with Complainant constitutes bad faith use under the language of Policy ¶ 4(b)(iv). Fifth, Respondent had actual knowledge when registering and using the domain names given the fame of Complainant’s marks and Respondent’s registration of multiple domain names containing the marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the marks MRS DOUBTFIRE and THE REVENGE OF THE NERDS with rights dating back, respectively, to at least 2003 and 2008, and uses them to market movies and related entertainment products and services.
The registration dates for the disputed domain names are:
<mrsdoubtfiremusical.com>........................................................ November 8, 2012;
<mrsdoubtfirebroadway.com>.................................................... November 8, 2012;
<doubtfiremusical.com>................................................................ November 8, 2012;
<doubtfirethemusical.com>.......................................................... February 17, 2011;
<doubtfirebroadway.com>................................................... November 8, 2012; and
<revengeofthenerdsthemusical.com>....................................... February 17, 2011.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain names resolve to websites that offer entertainment that competes with Complainant’s offers, and that offer to sell the domain name.
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.”).
The disputed domain names are confusingly similar to Complainant’s marks because they incorporate the marks (or a dominant portion thereof) and merely include the gTLD “.com” and entertainment-related terms like “musical” or “Broadway” and the article “the.” First, including “.com” has been deemed irrelevant in Policy ¶ 4(a)(i) analyses. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Second, adding “the” has not been considered distinguishing. See John Fairfax Publ’ns Pty Ltd. v. Pro-Life Domains Not for Sale, FA 213460 (Forum Jan. 6, 2004) (“The addition of the article ‘the’ does not significantly distinguish the domain name from the mark for purposes of Policy ¶ 4(a)(i).”). Third, the Panel notes that punctuation and spacing have also been deemed irrelevant alterations to marks. See Dawson v. Doctor, FA 521036 (Forum Sept. 1, 2005) (finding that the <drgem.com> domain name was identical to Complainant’s DR. GEM mark because “…the domain name fully incorporates the mark and merely removes the period after the abbreviation “DR.”); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Fourth, adding generic/descriptive terms does not avoid a finding of confusing similarity. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). Here, the terms in the disputed domain names are connected to Complainant’s entertainment offerings. Thus the Panel finds that Respondent’s use of the REVENGE OF THE NERDS and MRS. DOUBTFIRE marks in the disputed domain names create confusing similarity under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Complainant to use its marks. The Panel notes that the WHOIS information—along with all other information in the record—demonstrates that Respondent is not commonly known by the disputed domain names. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006), where the panel looked to the totality of information in the record. Here, the WHOIS lists “Hugh Hysell / HHC Marketing” as registrant of the disputed domain names, and Respondent has not submitted any information to support its rights. Therefore, the Panel finds that Complainant has succeeded under Policy ¶ 4(c)(ii).
Further, Respondent has used the disputed domain names to resolve to pay-per-click websites including entertainment-related websites that compete with Complainant, as well as a general offer for sale. The Panel notes that the resolving website includes links such as: “Wicked Tickets,” “Free Online Movies,” and “Las Vegas Show Tickets.” Arranging websites with competing links may not evince rights for a respondent. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
The Panel notes the message on each resolving page, “Would you like to buy this domain?”. Such offers for sale are further evidence of a lack of rights. See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”).
Accordingly, the Panel finds that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s marks. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed firstly, as already noted, Respondent has offered the disputed domain names for sale. Such a general offer for sale on the resolving websites demonstrates bad faith under Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). The Panel finds that this is sufficient grounds to find that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(i).
Secondly, since entertainment-related advertisements appear on the resolving websites (e.g., “Wicked Tickets,” “Free Online Movies,” and “Las Vegas Show Tickets”), disruption of Complainant’s legitimate business is demonstrated pursuant to Policy ¶ 4(b)(iii). See State Farm Mutual Automobile Insurance Company v. Niang, huai, FA1412001594788 (Forum Jan. 16, 2015) (“The at-issue domain name’s website includes advertisements for third parties, some which may sell insurance and banking services similar to those offered by Complainant. Using the at-issue domain name to display competing advertisements disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii)). Accordingly, the Panel finds that bad faith disruption is present under Policy ¶ 4(b)(iii).
Thirdly, the inclusion of pay-per-click hyperlinks that compete with Complainant constitute bad faith under the language of Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Here, the Panel finds that Respondent presumably commercially benefits from the inclusion of competitive pay-per-click links, and that such use constitutes bad faith use under Policy ¶ 4(b)(iv).
Fourthly, Respondent’s registration of six domain names incorporating Complainant’s marks constitutes bad faith under Policy ¶ 4(b)(ii). Panels have found bad faith under this prong where fewer domain names were registered containing a complainant’s mark. See Radisson Hotels Internation, Inc. v. Yue Mei Wang / Wang Yue Mei aka Pei Jun Gan / Gan Pei Jun / Jun Yu He / He Jun Yu / Denliyan, FA1504001615349 (Forum June 1, 2015) (“The Panel agrees that Respondent’s registration of the <radissonbluplazachongqing.com>, <radissonbluchongqingshapingba.com>, <radissonplazahoteltianjin.com>, and <radissonbluhotelshanghai.com> domain names, which all infringe on Complainant’s mark, constitutes bad faith under Policy ¶ 4(b)(ii).”). The Panel finds that Respondent’s registrations satisfy the requirements of Policy ¶ 4(b)(ii) and constitute a pattern of bad faith registration and use.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mrsdoubtfiremusical.com>, <mrsdoubtfirebroadway.com>, <doubtfiremusical.com>, <doubtfirethemusical.com>, <doubtfirebroadway.com>, and <revengeofthenerdsthemusical.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: April 21, 2017
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