Fox Media LLC v. REDACTED FOR PRIVACY et al.
Claim Number: FA2106001950151
Complainant: Fox Media LLC of Los Angeles, California, United States of America.
Complainant Representative: Winterfeldt IP Group PLLC of Washington, District of Columbia, United States of America.
Respondent: Withheld for Privacy Purposes of Reykjavik, Capital Region, International, IS.
Respondent Representative:
REGISTRIES and REGISTRARS
Registries: Minds + Machines Group Limited
Registrars: NameCheap, Inc.;
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 Examiner in this proceeding.
Bart Van Besien, as Examiner.
Complainant submitted: June 10, 2021
Commencement: June 11, 2021
Default Date: June 28, 2021
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The Complainant submitted evidence that it is the registered owner of the following trademarks (and service marks) (hereafter: the “FOX NEWS Trademark”(s)):
- U.S. service mark registration n. 2.697.433 “FOX NEWS”, registered on March 18, 2003, for the following service(s): “Entertainment services in the nature of television news programming”;
- U.S. service mark registration n. 2.697.434 “FOX NEWS”, registered on March 18, 2003, for the following service(s): “Television broadcasting services”;
- U.S. service mark registration n. 2.697.436 “FOX NEWS”, registered on March 18, 2003, for the following service(s): “Entertainment services in the nature of television news programming”;
- U.S. service mark registration n. 2.708.769 “FOX NEWS”, registered on April 22, 2003, for the following service(s): “Television broadcasting services”;
- U.S. trademark registration n. 5.170.377 “FOX NEWS”, registered on March 28, 2017, for the following service(s): “Downloadable mobile software application for mobile communication devices for use in distribution of digital video, video files, video, and multimedia content; software for receiving, streaming, searching, accessing and reviewing audiovisual and multimedia content via the internet, mobile digital electronic devices, communications networks and wireless telecommunication networks”;
- U.S. trademark registration n. 5.185.099 “FOX NEWS”, registered on April 18, 2017, for the following service(s): “Downloadable mobile software application for mobile communication devices for use in distribution of digital video, video files, video, and multimedia content; software for receiving, streaming, searching, accessing and reviewing audiovisual and multimedia content via the internet, mobile digital electronic devices, communications networks and wireless telecommunication networks”;
- Icelandic trademark registration n. V0059255 “FOX NEWS channel”, registered on February 3, 2006, for Nice classifications 38 and 41;
- Icelandic trademark application n. V0120230 “FOX NEWS international”, filed on January 30, 2021, for Nice classifications 9, 38, and 41;
At least some of these FOX NEWS Trademarks are word marks.
The Complainant asserts to be one of the world’s leading and largest entertainment and media companies, whose businesses include the Fox Broadcasting Company, Fox Television Stations, Fox News Channel, Fox Business, FS1, FS2, Fox Deportes, and the Big Ten Network. The Complainant claims to have used the FOX NEWS Trademarks since 1993.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name is identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Determined: Finding for the Complainant
URS 1.2.6.1 (i) covers the domain name at issue in this case. The disputed domain name <foxnews.work> is identical to the Complainant’s Fox News Trademarks (some of which are word marks) with the addition of the suffix ‘.work’.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for the Complainant
The Complainant asserts that the Respondent has no legitimate right or interest to the domain name, because the Respondent has never been authorized by the Complainant to use the FOX NEWS Trademark(s) in any manner. Moreover, the Complainant asserts that the disputed domain name does not reflect the Respondent’s common name or organization name, and that it is not being used for a legitimate noncommercial or fair use nor a bona fide offering of goods or services, given that it is being used to unfairly imitate or compete with the Complainant by trading on the consumer recognition of and goodwill in the FOX NEWS Trademark(s) for the Respondent’s financial gain.
The Examiner notes that the Respondent did not file a response and therefore did not provide any evidence of any legitimate rights or interests in the disputed domain name. There is no evidence of any rights or legitimate interests of the Respondent in the disputed domain name. There is no evidence of any similar or identical trademarks owned by the Respondent. There is no indication of any authorization to use the Complainant’s FOX NEWS Trademark(s). There is no indication that the Respondent is otherwise related to the Complainant’s business. Although the disputed domain name is currently in use, this in itself does not suffice to determine that the Respondent has a legitimate right or interest to the domain name. On the contrary, the Complainant has provided screenshots of the website available via the disputed domain name, which show that the disputed domain name is being used for similar services to the services for which (some of) the FOX NEWS Trademarks are registered (e.g., news services, communications networks and wireless telecommunication networks).
[URS 1.2.6.3] The domain name was registered and is being used in bad faith.
Determined: Finding for the Complainant.
The Complainant asserts that the disputed domain name was registered long after the Complainant had established substantial rights in the FOX NEWS Trademark(s), and that the Respondent therefore must have had actual knowledge of the Complainant’s trademark rights at the time of registration. The Complainant has provided evidence that the disputed domain name contains news media content, which directly competes with the Complainant’s own news media content. The Complainant finds this to be disruptive to the Complainant’s business, as it redirects internet users seeking legitimate content provided by the Complainant or its authorized partners to the Respondent’s illegitimate site and content. Such use provides commercial opportunities for the Respondent to exploit web traffic which otherwise would and should be directed to the Complainant, and which undermines the marketplace for the Complainant’s legitimate news reporting and content licensing activities. In light of the above, the Complainant asserts that the Respondent is intentionally attempting to attract internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and news content on that website.
The Respondent did not file a response.
The Complainant has submitted evidence that it is the registered owner of the FOX NEWS Trademarks, which are registered for classes relating to news services. The Examiner notes that the disputed domain name is being used to provide news media content. The Examiner concludes that the Respondent registered and uses the domain name for the purpose of intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website, which is evidence of bad faith use and registration, in accordance with paragraph 1.2.6.3.d of the URS Procedure.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration: <foxnews.work>
Bart Van Besien, Examiner
Dated: June 30, 2021
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