Twentieth Century Fox Film Corporation and FX Networks, LLC v. Rajakumar Pondicherry / Mike Scott
Claim Number: FA1808001804441
Complainant is Twentieth Century Fox Film Corporation and FX Networks, LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Rajakumar Pondicherry / Mike Scott (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fxnetworks-activate-code.com>, <fxnetworkactivate.com>, <fxnetwork-activate.com>, and <fxnetworks-com-activate-roku.com>, registered with Gandi SAS.
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.
M. Kelly Tillery, Esquire as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 31, 2018; the Forum received payment on August 31, 2018.
On September 6, 2018, Gandi SAS confirmed by e-mail to the Forum that the <fxnetworks-activate-code.com>, <fxnetworkactivate.com>, <fxnetwork-activate.com>, and <fxnetworks-com-activate-roku.com> domain names are registered with Gandi SAS and that Respondent is the current registrant of the names. Gandi SAS has verified that Respondent is bound by the Gandi SAS 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 September 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 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@fxnetworks-activate-code.com, postmaster@fxnetworkactivate.com, postmaster@fxnetwork-activate.com, postmaster@fxnetworks-com-activate-roku.com. Also on September 7, 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.
A timely Response was received and determined to be complete on September 27, 2018.
On October 2, 2018 an Additional Submission was received.
On October 1, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed M. Kelly Tillery, Esquire 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.
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. For many decades, Complainant has produced and distributed some of the highest-grossing and internationally well-known film and television properties of all time. Complainant has rights in the FX (e.g. Reg. No. 1,881,611, registered Feb. 28, 1995) and FXNETWORKS (e.g. Reg. No. 4,195,124, registered Aug. 21, 2012) marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”). Respondent’s <fxnetworks-activate-code.com>, <fxnetworkactivate.com>, <fxnetwork-activate.com>, and <fxnetworks-com-activate-roku.com> domain names are confusingly similar to Complainant’s FXNETWORKS mark as they contain the entire mark (or a version of the mark omitting the letter “s” on the end) and add a combination of hyphens, generic terms, the “.com” generic top-level domain (“gTLD”), and in one instance the third-party mark “roku.”
Respondent has no rights or legitimate interests in the infringing domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the marks for any purpose. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the <fxnetworks-activate-code.com>, <fxnetworkactivate.com>, and <fxnetworks-com-activate-roku.com> domain names to pass off as Complainant and offer services in direct competition with those offered by Complainant. Further, Respondent uses the <fxnetwork-activate.com> domain name to host a parked webpage, analogous to passively holding the domain name. See Compl. Ex. 13.
Respondent registered and uses the <fxnetworks-activate-code.com>, <fxnetworkactivate.com>, <fxnetwork-activate.com>, and <fxnetworks-com-activate-roku.com> domain names in bad faith. Respondent’s registration of four (4) domain names using Complainant’s marks constitutes a pattern of bad faith registration. Further, Respondent’s use of the domain names disrupts Complainant’s business by attempting to pass off as Complainant to intentionally attract, for commercial gain, Internet users to its websites where it offers competing services to those offered by Complainant. Additionally, Respondent passively holds the <fxnetwork-activate.com> domain name. Finally, given the fame of Complainant’s marks, the registration of multiple infringing domain names, and the use of Complainant’s marks on the infringing domains, Respondent clearly registered the domain names with actual knowledge of Complainant’s rights in the FX and FXNETWORKS marks.
B. Respondent
Respondent acknowledges and does not dispute that Complainant has rights in the FX and FXNETWORKS marks.
Respondent is not in competition with Complainant. Complainant is engaged in the business of creating, marketing and distribution of video content, whereas Respondent operates an I.T. firm and is engaged in the business of troubleshooting computers, peripherals, and consumer electronic devices of many different brands. Further, Respondent’s use of the domain names constitutes nominative fair use.
The Panel may note that Respondent registered the domain names on the following dates: <fxnetworks-activate-code.com> (February 21, 2018), <fxnetworkactivate.com> (February 21, 2018), <fxnetwork-activate.com> (February 21, 2018), and <fxnetworks-com-activate-roku.com> (March 5, 2018).
1) Complainants have met their burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondents’ Domain Names are confusingly similar to a Trademark in which Complainants have rights.
2) Complainants have met their burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondents have no rights or legitimate interest in respect of the Domain Names.
3) Complainants have met their burden to prove by a preponderance of the relevant, admissible evidence that Respondents’ Domain Names have been 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.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two (2) Complainants in this matter: Twentieth Century Fox Film Corporation, a Delaware corporation, and its affiliated company FX Networks, LLC, a Delaware limited liability company. Complainant claims that FX Networks is an affiliate of Twentieth Century Fox Film Corporation, thus both have rights and interests in the infringing domain names.
Previous panels have interpreted the Forum Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel finds that evidence is sufficient to establish a sufficient nexus or link between the Complainants, and treats them as a single entity. The Panel finds that both are proper party Complainants under the Rules.
Preliminary Issue: Multiple Respondents
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. 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.”
Complainant alleges that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, operating under several aliases. 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.” Complainant contends that the listed registrants are closely related and commonly own and control of the domain names. Specifically, Mr. Scott (registrant of the <fxnetworks-com-activate-roku.com> domain name) is the CEO of NetPros, the company identified in his email address raj@netpros.us that also uses Mr. Pondicherry’s (registrant of the other three domain names) first name Raj, and Mr. Pondicherry is the CTO of NetPros. See Compl. Ex. 1. Further, the resolving webpages for all of the domain names are strikingly similar in terms of the content provides on the domains.
The Panel finds sufficient evidence demonstrating that the listed entities are jointly controlled. The Panel, under the Forum’s Supplemental Rule 4(c), also determines that all four domain names are commonly owned.
The Panel finds that both are proper party Respondents under the Rules.
Complainant claims rights in the FX (e.g. Reg. No. 1,881,611, registered Feb. 28, 1995) and FXNETWORKS (e.g. Reg. No. 4,195,124, registered Aug. 21, 2012) marks through its registration of the marks with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). In addition, Respondents does not deny that Complainants have rights. Accordingly, the Panel finds that Complainant has established rights in the FX and FXNETWORKS marks for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <fxnetworks-activate-code.com>, <fxnetworkactivate.com>, <fxnetwork-activate.com>, and <fxnetworks-com-activate-roku.com> domain names are confusingly similar to Complainant’s marks as they contain the entire mark (or a version of the mark omitting the letter “s” on the end) and add a combination of hyphens, generic terms, the “.com” generic top-level domain gTLD, and in one instance the third-party mark “roku.” Similar minor changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”); see also Panera, LLC and Pumpernickel Associates, LLC v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation, FA 1760812 (Forum Jan. 8, 2018) (confusing similarity where the domain name included the complainants mark, plus the addition of the third-party mark WORKDAY, which belonged to a provider of salary and other services used by Complainant; holding however “that “workday” is a dictionary term which can be treated as generic and of lessor distinctive value when joined with Complainant’s trademark”). The Panel therefore finds that the infringing domain names are confusingly similar to the FXNETWORKS mark under Policy ¶4(a)(i).
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) (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 contends that Respondent has no rights or legitimate interests in the <fxnetworks-activate-code.com>, <fxnetworkactivate.com>, <fxnetwork-activate.com>, and <fxnetworks-com-activate-roku.com> domain names. Relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Rajakumar Pondicherry” as the registrant for the <fxnetworks-activate-code.com>, <fxnetworkactivate.com>, and <fxnetwork-activate.com> domain names, and “Mike Scott” as the registrant for the <fxnetworks-com-activate-roku.com> domain name. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the FX or FXNETWORKS marks. This is evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to its registration, and Complainant has not given Respondent permission to use the marks in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the infringing domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the <fxnetworks-activate-code.com>, <fxnetworkactivate.com>, and <fxnetworks-com-activate-roku.com> domain names to pass off as Complainant and offer services in direct competition with those offered by Complainant. Using a confusingly similar domain name to pass off as a complainant and offer competitive services generally fails to establish a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides screenshots of the resolving webpages associated with the three domain names, all of which display the FX mark and purport to offer video streaming services in competition with the services offered by Complainant. As such, the Panel finds that Respondent uses the domain names to pass off as Complainant and offer competing services, failing to use the <fxnetworks-activate-code.com>, <fxnetworkactivate.com>, and <fxnetworks-com-activate-roku.com> domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Further, Complainant contends that Respondent uses the <fxnetwork-activate.com> domain name to host a parked webpage, analogous to passively holding the domain name. Failure to make active use of a confusingly similar domain name can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the webpage associated with this domain name, which displays the message “It is currently being parked by the owner.” Accordingly, the Panel finds that Respondent fails to actively use the <fxnetwork-activate.com> domain name, failing to confer rights and legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii).
Complainant alleges that Respondent’s registration of four (4) domain names using Complainant’s marks constitutes a pattern of bad faith registration. The registration of multiple confusingly similar domain names incorporating a complainant’s mark can demonstrate bad faith registration. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Accordingly, the Panel agrees that Respondent’s registration of four domain names containing Complainant’s marks provides evidence of bad faith under Policy ¶ 4(b)(ii).
Additionally, Complainant argues that Respondent registered and uses the <fxnetworks-activate-code.com>, <fxnetworkactivate.com>, and <fxnetworks-com-activate-roku.com> domain names in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing services. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As noted above, Complainant provides screenshots of the resolving webpages associated with the three domain names, all of which display the FX mark and purport to offer video streaming services in competition with the services offered by Complainant. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant claims that Respondent passively holds the <fxnetwork-activate.com> domain name. Inactively holding a confusingly similar domain name can evince bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant’s provided screenshot of the webpage associated with this domain name shows that the webpage displays the message “It is currently being parked by the owner.” See Compl. Ex. 13. As such, the Panel agrees that Respondent fails to make a substantive use of the resolving webpage in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the FX and FXNETWORKS marks at the time of registering the infringing domain names. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that given the fame of Complainant’s marks, the registration of multiple infringing domain names, and the use of Complainant’s marks on the infringing domains, Respondent clearly registered the domain names with actual knowledge of Complainant’s rights in the FX and FXNETWORKS marks. The Panel agrees with Complainant and find that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fxnetworks-activate-code.com>, <fxnetworkactivate.com>, <fxnetwork-activate.com>, and <fxnetworks-com-activate-roku.com> domain names be TRANSFERRED from Respondents to Complainants.
M. Kelly Tillery, Esquire, Panelist
Dated: October 15, 2018
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