Twentieth Century Fox Film Corporation v. Ian
Claim Number: FA1802001772894
Complainant is Twentieth Century Fox Film Corporation ("Complainant"), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Ian ("Respondent"), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <foxgroup-okta.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 a Complaint to the Forum electronically on February 21, 2018; the Forum received payment on February 21, 2018.
On February 23, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by email to the Forum that the <foxgroup-okta.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2018 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@foxgroup-okta.com. Also on February 27, 2018, 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 March 21, 2018, 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
Complainant is a leading entertainment and media company founded in 1935. Complainant's products and services are offered via a group of affiliated companies that include Fox Entertainment Group, FOX News Channel, FOX Broadcasting Company, and others. Complainant and its affiliated companies and predecessors in interest have used FOX and related marks in connection with this business for more than a century, and have sold many billions of dollars' worth of products and services under the FOX mark. Complainant owns numerous U.S. trademark registrations for FOX and related marks. Complainant asserts that the FOX mark has become famous as a result of longstanding use and promotion. Complainant operates a password-protected website for its employees through its cloud-computing vendor Okta, using the domain name <fox.okta.com>.
Respondent registered the disputed domain name <foxgroup-okta.com> through a privacy registration service in February 2018. The domain name resolves to a website that is virtually identical to Complainant's password-protected Okta site, including copies of Complainant's trademark and logos, along with a login form. Complainant alleges that the site is designed to fraudulently obtain the login credentials of Complainant's employees. Complainant states that Respondent is not commonly known by the disputed domain name, and that Complainant has not authorized Respondent to use its mark. Complainant contends on these grounds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is 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 disputed domain name <foxgroup-okta.com> incorporates Complainant's famous FOX mark, adding the generic term "group"; "okta," the name of Complainant's cloud-computing vendor; and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Capital One Financial Corp. v. Domain Admin / Whois Privacy Corp., FA 1659663 (Forum Mar. 7, 2016) (finding <clientpoint-capitalone.com> confusingly similar to CAPITAL ONE); Robert Half International Inc. v. Mark Schacht, FA 1622554 (Forum July 8, 2015) (finding <roberthalfgroup.com> confusingly similar to ROBERT HALF); Fox Group Legal v. Saeid Yomtobian, FA 95839 (Forum Dec. 18, 2000) (finding <foxchannel.com> confusingly similar to FOX). The Panel considers the disputed domain name 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 name incorporates Complainant's mark without authorization, and its sole apparent use has been for a website that is virtually identical to Complainant's password-protected employee website and presumably is being used as part of a fraudulent phishing scheme. Such use obviously does not give rise to rights or legitimate interests under the Policy. See, e.g., Twentieth Century Fox Film Corp. v. Twentieth Century Fox Film Corp., FA 1469553 (Forum Dec. 26, 2012) (finding lack of rights or legitimate interests in use of domain name for website impersonating complainant).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, 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 the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being 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 and use of a domain names obviously intended to create confusion with Complainant, likely as part of a fraudulent phishing scheme, is indicative of bad faith under these provisions of the Policy. See, e.g., Capital One Financial Corp. v. Domain Admin / Whois Privacy Corp., supra (finding bad faith registration and use under similar circumstances); Twentieth Century Fox Film Corp. v. Twentieth Century Fox Film Corp., supra (same). The Panel finds that the disputed domain name was registered and is 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 <foxgroup-okta.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 26, 2018
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