Twentieth Century Fox Film Corporation v. Real WebHoster
Claim Number: FA1803001778996
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Real WebHoster (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <21stcenturyfoxgroup.com>, registered with NameCheap, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2018; the Forum received payment on March 26, 2018.
On March 27, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <21stcenturyfoxgroup.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2018 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@21stcenturyfoxgroup.com. Also on March 28, 2018, 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, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, Twentieth Century Fox Film Corporation, is one of the world’s leading and largest entertainment and media companies, which has produced and distributed some of the highest-grossing and internationally well-known film and television properties of all time. Complainant owns numerous registrations for its FOX and 21ST CENTURY FOX marks, including with the United States Patent and Trademark Office (“USPTO”) (e.g. FOX—Reg. No. 1,924,143, registered Oct. 3, 1995); (21ST CENTURY FOX—Reg. No. 4,660,331, registered Dec. 23, 2014). Respondent’s <21stcenturyfoxgroup.com> domain name is confusingly similar to the 21ST CENTURY FOX mark as the mark is wholly incorporated into the domain name before Respondent adds the term “group” and the “.com” generic top-level domain (“gTLD”). Likewise, Respondent’s <21stcenturyfoxgroup.com> domain name is confusingly similar to Complainant’s FOX mark as it wholly incorporates the mark with the phrase “21st century” which directly relates to Complainant’s business and its name 21st Century Fox.
Respondent has no rights or legitimate interests in the disputed domain name. Further, Respondent is not commonly known by the domain name at issue based on the WHOIS information of record, and due to Respondent’s lack of authorization from Complainant to use its mark. Respondent does not use the at issue domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent is falsely impersonating and passing off as Complainant. Respondent registered and used the at issue domain name in bad faith as the domain name disrupts Complainant’s business since Respondent is passing itself off as Complainant. Further, Respondent’s bad faith is evidenced by using the domain name for commercial gain. Respondent also had knowledge of Complainant’s rights to its mark prior to registering the domain name at issue
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <21stcenturyfoxgroup.com> 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.”).
Complainant claims rights to its FOX and 21ST CENTURY FOX marks through numerous registrations with the USPTO (e.g. FOX—Reg. No. 1,924,143, registered Oct. 3, 1995); (21ST CENTURY FOX—Reg. No. 4,660,331, registered Dec. 23, 2014). Registration of a mark with the USPTO is sufficient to demonstrate rights to said mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Accordingly, the Panel finds Complainant has rights in the FOX and 21ST CENTURY FOX marks per Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <21stcenturyfoxgroup.com> domain name is confusingly similar to its FOX and 21ST CENTURY FOX marks. A domain name can be found confusingly similar where it incorporates an entire mark, adds descriptive terms, and adds a gTLD. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Here, Complainant avers, the disputed domain name either incorporates the entire FOX mark and adds the terms “groups” and “21st century,” which relate to Complainant’s company names (Fox Entertainment Group, 21st Century Fox); or it incorporates the 21ST CENTURY FOX mark, adds the descriptive term “group” and the “.com” gTLD. The Panel finds Respondent’s disputed domain name is confusingly similar to its FOX and 21ST CENTURY FOX marks.
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues Respondent has no rights or legitimate interests in the <21stcenturyfoxgroup.com> domain name. Further, Complainant maintains, Respondent is not commonly known by the domain name at issue. Panels will find a respondent is not commonly known by a domain name based on the WHOIS information of record, and due to the respondent’s lack of authorization from a complainant to use its mark. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org>, and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, the WHOIS information of record names “Real WebHoster” as the registrant of the <21stcenturyfoxgroup.com> domain name. Complainant never granted authorization to Respondent for the use of its FOX or 21ST CENTURY FOX marks. The Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent is not using the <21stcenturyfoxgroup.com> domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use as, instead, Respondent passes off as Complainant. Use of a disputed domain name to pass itself off as a complainant does not evince a finding of rights and legitimate interests pursuant to Policy ¶¶ 4(c)(i) & (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name “resolves to a website that Respondent has designed to mimic Complainant’s own in an attempt to pass itself off as Complainant”). Complainant provides screenshot evidence of Respondent’s wholesale copying of Complainant’s website design and content. The Panel finds Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant has proved this element.
Complainant argues Respondent registered and used the <21stcenturyfoxgroup.com> domain name in bad faith as the domain name disrupts Complainant’s business. Bad faith disruption per Policy ¶ 4(b)(iii) can be found where a respondent is not directly competing with a complainant, but their use of the disputed domain name still disrupts said complainant’s business. See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Complainant avers Respondent (1) is impersonating and passing off as Complainant, (2) is using the domain name for false advertising, and (3) is interfering with Complainant’s ability to control the use of its federally registered FOX marks. The Panel finds Respondent registered and used the domain name in bad faith, disrupting Complainant’s business.
Complainant contends Respondent registered and used the <21stcenturyfoxgroup.com> domain name in bad faith as the domain name is used for commercial gain. Per Policy ¶ 4(b)(iv), bad faith may be found where a domain name is used to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with a complainant’s famous marks for a respondent’s benefit. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here, Complainant indicates Respondent is falsely impersonating and passing off as Complainant while using the disputed domain name to intentionally attract Internet users via Respondent’s wholesale copying of Complainant’s own website, for Respondent’s presumed for commercial gain. The Panel finds Respondent registered and used the domain name at issue in bad faith per Policy ¶ 4(b)(iv).
Complainant asserts Respondent registered the <21stcenturyfoxgroup.com> domain name with knowledge of Complainant’s rights in the FOX mark. Constructive knowledge is insufficient to support a finding of bad faith; however, actual knowledge is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii) based on the respondent’s use of the disputed domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Complainant indicates Complainant’s FOX mark is famous, and Respondent’s use of the disputed domain is to falsely impersonate Complainant and wholly reproduce Complainant’s own webpage demonstrates Respondent’s actual knowledge of Complainant’s rights in the FOX and 21ST CENTURY FOX marks. The Panel finds Respondent’s use of the domain name supports a finding of actual knowledge—bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <21stcenturyfoxgroup.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: April 24, 2018
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