Twentieth Century Fox Film Corporation v. Domain Admin ContactID 2463137 / Domain Admin ContactID 2463150 / FBS INC / Whoisprotection biz
Claim Number: FA1707001740914
Complainant is Twentieth Century Fox Film Corporation ("Complainant"), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Domain Admin ContactID 2463137 / Domain Admin ContactID 2463150 / FBS INC / Whoisprotection biz ("Respondent"), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <foxtvmagazin.com> and <foxmagazin.com>, registered with FBS 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.
David E. Sorkin as Panelist.
Complainant submitted an English language Complaint to the Forum electronically on July 20, 2017, and a Turkish translation thereof on July 24, 2017; the Forum received payment on July 20, 2017.
On July 24, 2017, FBS Inc. confirmed by email to the Forum that the <foxtvmagazin.com> and <foxmagazin.com> domain names are registered with FBS Inc. and identified the current registrant of the names as Serdal Kara, Antalya, Turkey. FBS Inc. has verified that the registrant is bound by the FBS 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 July 25, 2017, the Forum served the English and Turkish Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@foxtvmagazin.com, postmaster@foxmagazin.com. Also on July 25, 2017, the Written Notice of the Complaint, notifying Respondent of the email 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 August 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Together with its parent corporation and related companies, Complainant is an international media conglomerate and one of the world's largest entertainment and media companies. Complainant's rights in the FOX trademark and trade name date back to 1915. Complainant owns hundreds of FOX-formative trademarks, including FOX TV, and owns trademark registrations for these marks in the United States, Turkey, and elsewhere. Complainant's television channels in Europe reach close to 180 million subscribers. Complainant operates a branch office in Istanbul, Turkey, as well as other offices throughout Europe. Complainant uses its FOX and FOX TV marks to identify its broadcast channel and television programming services and website in Turkey.
Respondent registered the disputed domain names <foxtvmagazin.com> and <foxmagazin.com> in October 2016, and uses them for commercial websites that offer directly competing news services and display pay-per-click advertisements. Complainant states that Respondent is not commonly known by the domain names, and has not been authorized by Complainant to use its marks. On these grounds Complainant contends that the disputed domain names are confusingly similar to Complainant's FOX and FOX TV marks; that Respondent has no rights or legitimate interests in the disputed domain names; and that the domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used 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(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 Panel notes that the Registration Agreement is written in Turkish, thereby making that the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Turkish language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English. See, e.g., Glen Raven, Inc. v. Mustafa Yaman / Yaman Branda, FA 1695155 (Forum Nov. 2, 2016).
Each of the disputed domain names <foxtvmagazin.com> and <foxmagazin.com> combines Complainant's FOX or FOX TV mark with the generic term "magazin" (Turkish for "magazine") and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain names and Complainant's marks. See, e.g., Twentieth Century Fox Film Corp. v. Domain Admin / whoisprotection.biz, FA 1575082 (Forum Sept. 23, 2014) (finding <foxtvcanliizle.com> confusingly similar to FOX, where "canli izle" is Turkish for "live"); Disney Enterprises, Inc. v. Skylab Interactive, Inc., FA 1220435 (Forum Sept. 24, 2008) (finding <disneychannelmagazine.com> confusingly similar to THE DISNEY CHANNEL). The Panel therefore considers each of the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain names incorporate Complainant's marks without authorization, and Respondent is using the domain names for commercial websites that use Complainant's marks to promote directly competing services. Such use does not give rise to rights or legitimate interests. See, e.g., Micron Technology, Inc. v. Faisal Ismail, FA 1727524 (Forum May 17, 2017). Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of each of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and have been used in bad faith. Under paragraph 4(b)(iii) of the Policy,
bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's registration of domain names that combine Complainant's well-known marks with a generic or related term, together with the use of those domain names to promote directly competing services and display advertisements, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. See, e.g., Home Depot Product Authority, LLC v. John M McCarthy Sr, FA 1737592 (Forum July 27, 2017). Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <foxtvmagazin.com> and <foxmagazin.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 23, 2017
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