Twentieth Century Fox Film Corporation v. Twentieth Century Fox Film Corporation
Claim Number: FA1211001469553
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C., USA. Respondent is Twentieth Century Fox Film Corporation (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <foxsportslatam.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he or she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2012; the National Arbitration Forum received payment on November 1, 2012.
On November 5, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <foxsportslatam.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 2012 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@foxsportslatam.com. Also on November 5, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
A. Fox and its Products and Services
13. One of the world’s leading and largest entertainment and media companies, Fox is a television network and major film studio, among other businesses. For many decades, Fox has produced and distributed some of the highest-grossing and internationally well-known film and television properties of all time. Fox was founded in 1935 as a result of the merger of Fox Film Corporation and Twentieth Century Pictures, and today is a subsidiary of News Corporation, an international media conglomerate. Fox’s services and products are offered directly and via its affiliated companies that include Fox Filmed Entertainment, FOX Broadcasting Company, Fox Cable Networks, FOX News Channel, Fox Television Stations, Twentieth Century Fox Television, Twentieth Century Fox Home Entertainment, Twentieth Television, and Fox Television Studios (collectively, “Fox”).
14. Fox owns the FOX trademark and trade name, and its rights in the FOX mark date back to 1915. Fox also owns hundreds of FOX-formative trademarks including, for example, FOX SPORTS (discussed in further detail below), FOX FILM, FOX NEWS, and 20TH CENTURY FOX, among others.
15. Over the years, the commercial success of the FOX mark has been tremendous. Fox has sold many billions of dollars worth of products and services under the FOX mark. Fox has also extensively and widely advertised and promoted its products and services under the FOX mark for decades. Fox spends tens of millions of dollars every year to advertise and promote its products and services under the FOX mark.
16. Fox offers a wide array of television-related services and products. Specifically, Fox owns and operates television stations; owns and operates a television network; produces and distributes television programming for its own network, other networks, and cable channels; owns and operates numerous cable television channels; and distributes content (television programs and movies) via various outlets. These activities are discussed in further detail below.
17. Fox owns and operates broadcast television stations, specifically, 27 full-power stations including stations located in nine of the top ten largest markets (which include New York, Los Angeles, and Chicago).
18. Fox owns and operates the FOX network, which has approximately 200 affiliated stations (including stations owned by Fox) that carry FOX programming in all time periods in which it is offered. The FOX network reaches approximately 99% of all U.S. television households.
19. Fox regularly delivers prime-time programming and Saturday late-night programming to its affiliates each week. Fox’s prime-time programming features numerous popular series such as Glee, The Simpsons, Family Guy, Fringe, New Girl, and Raising Hope; reality series such as American Idol and So You Think You Can Dance; and various movies and specials. Fox’s prime-time line-up is enormously popular and well-received.
20. In addition to Fox’s network television offerings, Fox also has a substantial presence on cable television. Fox Cable Networks is one of the media industry’s largest and most diverse programming groups with 43 domestic programming services reaching more than 550,000,000 subscribing television homes. Fox Cable Networks’ channels include FX, National Geographic Channel, Fox Movie Channel, and NatGeo WILD, as well as numerous sports channels described in detail below.
21. In addition to its television business, Fox produces, acquires, and distributes movies throughout the world under a variety of arrangements. During fiscal 2011, Fox placed many movies in general release in the United States, including Rio, and X-men: First Class, and Rise of the Planet of the Apes, Diary of a Wimpy Kid, Mr. Popper’s Penguins, Glee: 3D Concert Movie, In Time, and Alvin and the Chipmunks: Chipwrecked.
22. Fox has for many years extensively promoted its services and products on the Internet, including its television network and programming services, via many websites. For example, Fox maintains websites at the domain names FOX.COM, FOXMOVIES.COM, and FOXSTUDIOS.COM.
23. By virtue of the inherent strength of the FOX mark as applied to Fox’s services and products, and Fox’s extensive use and promotion of the FOX mark for more than 90 years, the FOX mark has long been famous.
B. Fox and its FOX SPORTS Mark
24. Fox owns the FOX SPORTS mark, which Fox has used since as early as September 1978 to identify its products and services.
25. Under the FOX SPORTS mark, Fox provides live coverage to its affiliated televisions stations of the National Football Conference of the National Football League (the “NFL”) and Major League Baseball (“MLB”), as well as live coverage of the premier racing series (the Sprint Cup series) of the National Association of Stock Car Auto Racing (“NASCAR”). Fox also provides coverage to its affiliated televisions stations of the Ultimate Fighting Championships (“UFC”), college sports including football, and soccer events. National sports programming, such as the NFL, MLB, and NASCAR programming, is obtained under license agreements with professional sports leagues or organizations.
26. Fox also provides sports programming on cable television under the FOX SPORTS mark via Fox Cable Networks’ channels, which include 19 regional cable sports networks referred to as FSN, SPEED, SPEED HD, Fox Soccer, Fox Deportes, the Big Ten Network and Big Ten Network HD (co-venture with the Big Ten Conference), and Fuel TV.
27. Fox’s FOX SPORTS programming is watched by many millions of viewers every week. In February 2011, Fox made history when the Super Bowl on FOX became the most- watched U.S. television program ever, with an average audience of 111,000,000 viewers.
28. The commercial success of the FOX SPORTS mark has been tremendous. Fox has sold many billions of dollars worth of products and services under the FOX SPORTS mark.
29. Fox has also extensively and widely advertised and promoted its products and services under the FOX SPORTS mark for decades. Fox spends many millions of dollars every year to advertise and promote its products and services under the FOX SPORTS mark.
30. By virtue of the inherent strength of the FOX SPORTS mark as applied to Fox’s services and products, and Fox’s extensive use and promotion of the FOX SPORTS mark for well over 30 years, the FOX SPORTS mark has become famous.
C. Fox’s FOX SPORTS Websites and Domain Names
31. Fox operates an extensive network of websites under its FOX SPORTS mark, and has done so for many years.
32. Fox’s main website for its FOX SPORTS services is located at the domain name FOXSPORTS.COM, which Fox registered in 1998 and has used since 1998 for its website. Fox’s FOXSPORTS.COM website offers numerous features including news, videos, and interactive features such as games and fantasy sports leagues. A WHOIS printout for the domain name FOXSPORTS.COM, a printout from the Archive.org website showing Fox’s use of the domain name in 1998.
33. Fox owns numerous domain names comprised of the FOX SPORTS mark that Fox uses to direct Internet users to its FOXSPORTS.COM website including, for example, the domain names FOXSPORTS-ARIZONA.COM, FOXSPORTS-CHICAGO.COM, FOXSPORTS-DETROIT.COM, FOXSPORTS-MIDWEST.COM, FOXSPORTS- NEWENGLAND.COM, FOXSPORTS-NORTHWEST.COM, FOXSPORTS-OHIO.COM, FOXSPORTS-PITTSBURGH.COM, FOXSPORTSBAYAREA.COM, FOXSPORTSCHICAGO.COM, FOXSPORTSCINCINNATI.COM, FOXSPORTSNEWENGLAND.COM, FOXSPORTSNEWMEXICO.COM, FOXSPORTSNEWYORK.COM, and FOXSPORTSNORTHWEST.COM.
34. In addition to its FOXSPORTS.COM website, Fox also operates numerous FOX SPORTS websites for different geographic regions. Fox’s regional websites are located at domain names such as FOXSPORTSARIZONA.COM, FOXSPORTSDETROIT.COM, FOXSPORTSFLORIDA.COM, FOXSPORTSHOUSTON.COM, FOXSPORTSNORTH.COM, FOXSPORTSOHIO.COM, FOXSPORTSSOUTHWEST.COM, FOXSPORTSSOUTH.COM, FOXSPORTSTENNESSEE.COM, and FOXSPORTSWEST.COM.
35. In addition to its use of domain names comprised of the FOX SPORTS mark and geographic terms, Fox also operates websites at domain names comprised of the FOX SPORTS mark and descriptive terms. For example, Fox operates a website at the domain name FOXSPORTSSHOP.COM that offers a wide array of officially licensed sports apparel and sports merchandise. In another example, Fox operates a website dedicated to its sports radio coverage at the domain name FOXSPORTSRADIO.COM.
36. As a result of Fox’s longstanding use of domain names comprised of the FOX SPORTS mark in numerous domain names for its FOX SPORTS network of websites, persons encountering domain names containing FOX SPORTS will believe that the corresponding website is Fox’s website.
D. Fox’s FOX SPORTS Services in Latin America
37. Under the FOX SPORTS mark, Fox offers and has long offered sports programming on television in Latin American countries, and has done for many years. Fox’s website dedicated to its Latin American FOX SPORTS programming is located at the domain name FOXSPORTSLA.COM, which is comprised of the FOX SPORTS mark and the letters LA, an abbreviation of Latin America. Fox registered the domain name FOXSPORTSLA.COM in 1999, and has used that domain name for its website dedicated to FOX SPORTS programming in Latin America since that date. Screen shots of the FOXSPORTSLA.COM website are attached as Exhibit 8. A WHOIS record for the domain name and a printout of from the Archive.org website showing Fox’s website in 1999 are attached as Exhibit 9.
E. Fox’s Trademark Holdings
38. Fox owns numerous U.S. trademark registrations for the FOX mark, including the following representative examples:
a. Registration No. 1,924,143 for the FOX mark in block letters, first used March
31, 1915, issued October 3, 1995, covering services in International Class 41 (production and distribution of motion picture films, television programs, video tapes, video cassettes, and videodiscs, all on a variety of entertainment, news, and educational subjects; production and distribution of pre-recorded audio materials featuring spoken words and music).
b. Registration No. 1,840,919 for the FOX mark in block letters, first used March 7,
1986, issued June 21, 1994, covering services in International Class 38 (television and cable broadcasting services).
c. Registration No. 2,318,595 for the mark FOX in block letters, first used June 12,
1995, issued February 15, 2000, covering services in International Class 41 (providing on-line services in the field of entertainment relating to sports entertainment, motion picture film, television, video, and children’s entertainment via a global communications network).
39. Fox owns numerous U.S. trademark registrations for the FOX SPORTS mark, including the following representative examples:
a. Registration No. 1,932,252 for the FOX SPORTS mark in block letters, first used September 18, 1978, issued October 31, 1995, covering services in International Class 38 (television and cable television broadcasting services).
b. Registration No. 2,033,557 for the FOX SPORTS mark in block letters, first used August 27, 1994, issued January 28, 1997, covering services in International Class 41 (entertainment services in the nature of production and distribution of television programs).
c. Registration No. 2,295,585 for the FOX SPORTS mark in block letters, first used February 29, 1996, issued November 30, 1999, covering services in International Class 41 (Providing on-line information in the field of sports via a global communications network).
d. Registration No. 3,001,994 for the mark FOX SPORTS and Design, first used January 31, 1999, issued September 27, 2005, covering services in International Class 41 (entertainment services in the nature of television programming; providing on-line information in the field of sports via the Internet).
40. Fox’s trademark rights in its FOX Marks well predate Respondent’s registration of the Domain Name.
E. Respondent’s Infringing Activities and Bad-Faith Acts
41. Respondent registered the Domain Name on July 5, 2012, long after Complainant began using its FOX Marks, many years after Complainant registered its FOX Marks in the U.S. (and elsewhere), and long after Complainant’s FOX Marks became famous.
42. There is no question that Respondent had knowledge of Complainant and its FOX Marks when it registered the Domain Name because Respondent falsely impersonated itself as Complainant by listing Complainant’s information on the WHOIS record for the Domain Name. Specifically, Respondent listed Complainant’s name, Complainant’s department “Intellectual Property Department,” Complainant’s mailing address, and Complainant’s telephone number on the WHOIS record for the Domain Name. Respondent undoubtedly copied this information from Complainant’s registration of the domain name FOXSPORTS.COM or any of Complainant’s numerous registrations that list such information. The only contact information of Respondent’s that is listed on the WHOIS record for the Domain Name is Respondent’s e- mail address.
43. Respondent uses the Domain Name to falsely impersonate itself as Complainant by framing Complainant’s FOXSPORTSLA.COM website. Specifically, the Domain Name is displayed in the address line of the browser, and a wholesale copy of Complainant’s website is displayed in the window of the browser, giving the appearance that the Domain Name identifies Fox’s website. The only change between Respondent’s website and Complainant’s website is Respondent’s solicitation to Internet users via its message “Contact us at info@foxsportslatam.com“ at the top of the website.
VI. THE DOMAIN NAME IS CONFUSINGLY SIMILAR TO COMPLAINANT’S MARKS
44. The Domain Name is confusingly similar to Complainant’s famous and federally registered FOX SPORTS mark because it contains Complainant’s mark in its entirety, the letters LATAM that are an abbreviation for the geographically descriptive term “Latin America,”1 and the non-distinguishing gTLD .COM. Likewise, the Domain Name is confusingly similar to Complainant’s famous and federally registered FOX mark because it contains Complainant’s mark in its entirety, the term SPORTS that identifies Complainant’s services, and the abbreviation LATAM for “Latin America,” which identifies the location of Complainant’s services. Combining Complainant’s mark with geographic and/or descriptive terms does not distinguish the Domain Name from Complainant’s FOX Marks. UDRP Panels have consistently held that the addition of geographic terms and/or descriptive terms does not distinguish a domain name from the mark at issue, and that gTLDs such as .COM are irrelevant to confusing similarity analysis. See, e.g., Twentieth Century Fox Film Corporation v. Domains By Proxy, Inc./Samina Rahman (WIPO D2009-1121) (finding the domain name <foxsportslive.info> confusingly similar to Complainant’s FOX SPORTS mark because the addition of the term “live” is insufficient to distinguish the domain name from Complainant’s mark); Twentieth Century Fox Film Corporation v. foxinteractivemedia-inc.com (WIPO D2009-1475) (finding the domain name <foxinteractivemedia-inc.com> confusingly similar to Complainant’s FOX and FOX INTERACTIVE marks despite the addition of descriptive terms and the gTLD .com); Mitsubishi v. Carless (NAF FA1001001301949) (finding the domain name <mitsubishichicago.com> confusingly similar to complainant’s MITSUBISHI mark because “the addition of a geographically descriptive term to a registered mark creates a confusing similarity between the disputed domain name and the registered mark.”); State Farm v. Lee (NAF FA0503000436815) (finding the domain name <statefarmusa.com> confusingly similar to complainant’s STATE FARM mark because the addition of the geographic term “USA” to complainant’s mark does not remove the domain name from the realm of confusing similarity).
45. Further, the addition of LATAM for “Latin America” to the FOX SPORTS mark, and the addition of LATAM and the descriptive term SPORTS to the FOX mark, makes clear that the Domain Name relates to Complainant and its services offered under its FOX SPORTS and FOX marks in Latin America. UDRP Panels have consistently held that the addition of geographic terms and/or terms relating to the complainant’s business is not sufficient to distinguish the domain name from the complainant’s mark, and many UDRP Panels have held that such domain names in fact heighten the confusingly similarity of the domain name to the mark at issue. See, e.g., Fox News Network v. Heihachi.net (WIPO D2009-1551) (finding the domain name <foxnewsamerica.com> is confusingly similar to marks in which complainant has rights and holding “the only difference between the Domain Name, on the one hand, and the marks FOX, FOX NEWS and the FOX group of marks, on the other, is the addition or substitution of the geographic term ‘america’ plus the addition of the ‘.com’ top level domain extension. These are insufficient to distinguish the Domain Name <foxnewsamerica.com> from the marks FOX, FOX NEWS and the FOX group of marks and indeed the geographic indication of ‘america’ shows an intent to ally the name to the FOX NEWS mark, which is used predominantly in North America.”); Bridgestone Firestone v. Lanier (NAF FA0706001025060) (finding the domain names <bridgestonetiresusa.com> and <firestonetiresusa.com> confusingly similar to complainant’s BRIDGESTONE and FIRESTONE marks, respectively, because such marks are the “. . . most dominant aspect of the domain names. ‘Tires’ is a common term descriptive of a large share of Complainant’s business and notoriety, and ‘usa,’ a well-known abbreviation of the United States of America, is suggestive of Complainant’s business operations in that location.”); Boeing v. H3A H3A (NAF FA0109000099669) (finding the domain name <boeing-usa.com> among others confusingly similar to complainant’s BOEING mark because “disputed domain names that add only a geographical location to Complainant’s mark create a perceived affiliation between the trademark owner and the domain names and this is likely to be confusing to Internet users.”); Bridgestone Firestone v. Lanier (NAF FA0706001025060) (finding the domain names <bridgestonetiresusa.com> and <firestonetiresusa.com> confusingly similar to complainant’s BRIDGESTONE and FIRESTONE marks in part because USA, “a well-known abbreviation of the United States of America, is suggestive of Complainant’s business operations in that location.”); Amazon.com v. A.R. Information & Publication (WIPO D2001-1392) (finding the domain name <thaiamazon.com> confusingly similar to complainant’s AMAZON mark and noting the domain name “might well be regarded by many internet users as a domain name associated with a part of the Complainant’s business devoted to Thai customers.”).
46. Finally, even if LATAM is viewed as a string of random letters (which it is not) rather than the geographic identifier intended by Respondent, the addition of random letters to Complainant’s FOX Marks renders the Domain Name confusingly similar to Complainant’s Marks. See, e.g., Yahoo! Inc. v. Yuan Zhe Quan (NAF FA0208000117877) (finding the domain names <cnyahoo.com> and <bryahoo.com> confusingly similar to the YAHOO! mark regardless of whether the letters “CN” and “BR” are viewed as random letters or geographic identifiers); National Westminster Bank v. natwestoisplc et al (NAF FA0810001231469) (finding the domain name <natwestoisplc.com> confusingly similar to complainant’s NATWEST mark despite respondent’s addition of the random letters O, I, and S and the abbreviation PLC).
VII. RESPONDENT HAS NO LEGITIMATE INTEREST IN THE DOMAIN NAME
47. Respondent clearly has no rights or legitimate interest in the Domain Name for the following reasons.
48. First, Respondent’s registration and use of the Domain Name in a manner that falsely impersonates Complainant, by using Complainant’s information for the WHOIS record and using the Domain Name for an unauthorized copy of Complainant’s FOXSPORTSLA.COM website that solicits Internet users to contact Respondent, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name under the UDRP. Rather, Respondent’s activities constitute passing off (in that Respondent is trying to pass itself off as Complainant). Passing off activities have been consistently held to demonstrate a lack of legitimate interest under Sections 4(b)(i) and 4(b)(iii) of the UDRP. See, e.g., News Holdings Limited v. Berger (WIPO D2009-1178) (finding no legitimate interest in the respondent’s use of the domain name <prnewscorp.com> to falsely associate himself with Complainant by listing Complainant’s address as his own, on the website associated with the disputed domain name and in a press release); News Australia Pty Limited and Twentieth Century Fox Film Corporation v. Kushner (NAF FA1205001446275) (holding respondent’s use of the domain name <newscorp-fox.com> to falsely hold himself out as employed by Complainant is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); SAIC v. Summerfield (NAF FA0807001218154) (“Respondent’s <saic-usa.com> domain name resolves to a website with a screen printout of Complainant’s website. Essentially what this means is that Respondent has taken an electronic picture of Complainant’s website and placed that picture on its own website. Respondent’s intentions in doing so are not clear from the record, but it is apparent that Respondent is misappropriating Complainant’s goodwill. As a result, the Panel concludes that Respondent’s use of the <saic-usa.com> domain name constitutes neither a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”); Digg v. Digg (NAF FA0808001220833) (holding respondent’s use of the domain name <digg-inc.com> to attempt to pass itself off as complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use).
49. Second, Respondent is not and was not commonly known by the Domain Name. Nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the Domain Name. As shown above, Respondent has used Complainant’s name and contact information on the WHOIS record. Further, Complainant has not authorized Respondent to use its FOX Marks. See, e.g., Twentieth Century Fox Film Corporation v. Leverett Consulting (NAF FA0410000338370) (holding respondent did not establish rights or legitimate interests in the disputed domain names because there was no proof in the record that respondent was known by the domain names and because Complainant did not authorize or license respondent to use its FOX SPORTS RADIO and FOX SPORTS marks); H-D Michigan v. Registrant (NAF FA0711001109413) (holding respondent had no rights or legitimate interests pursuant to Section 4(c)(ii) because the WHOIS information does not indicate respondent is commonly known by the disputed domain name and because complainant did not authorize respondent to use its mark).
VIII. RESPONDENT’S BAD FAITH UNDER SECTION 4(B) OF THE UDRP
50. Respondent’s registration and use of the Domain Name squarely meet the grounds of bad faith outlined in the UDRP, as well as additional grounds of bad faith defined in previous UDRP decisions.
51. First, Respondent’s registration and use of the Domain Name constitute bad faith under Section 4(b)(iv) because Respondent uses the Domain Name to intentionally attract Internet users by creating a likelihood of confusion with Complainant and its FOX Marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent and its activities. Regardless of whether Respondent attempts to profit from its use of the Domain Name directly or indirectly (for example, Respondent’s solicitation to Internet users to contact Respondent and/or in the form of gathering information on Complainant’s customers), Respondent’s registration and use of the confusingly similar Domain Name to falsely impersonate Complainant and trade on Complainant’s goodwill benefits Respondent to the detriment of Complainant, and thus constitutes bad faith. See, e.g., News Australia Pty Limited and Twentieth Century Fox Film Corporation v. Kushner (NAF FA1205001446275) (holding respondent’s use of the domain name to falsely hold himself out as employed by Complainant constitutes bad faith under Section 4(b)(iv)) because “Respondent registered and is using the disputed <newscorp-fox.com> domain name to create a likelihood of confusion among Internet users as to the possibility that Complainant is the source, sponsor, affiliate or endorser of Respondent and its activities conducted under the banner of the domain name.”); News Holdings Limited v. Berger (WIPO D2009-1178) (holding respondent’s use of the domain name <prnewscorp.com> “in a manner calculated to deceive Internet users” by using Complainant’s address as his own constitutes bad faith under Section 4(b)(iv)); SAIC v. Summerfield (NAF FA0807001218154) (holding respondent’s use of the domain name <saic-usa.com> for a website that copies complainant’s website constitutes bad faith under Section 4(b)(iv) because “Respondent is misappropriating the goodwill associated with Complainant’s business, and specifically the SAIC mark. Complainant alleges, and the Panel agrees, that this creates a likelihood of confusion as to the source of Respondent’s <saic-usa.com> domain name and corresponding website. The Panel presumes that Respondent is attempting to commercially benefit from this confusion.”); News Holdings Limited v. Kerry (WIPO D2006-1374) (holding respondent’s use of the domain name <newscorporation.org> constitutes bad faith under Section 4(b)(iv) because respondent’s registration is “deliberate and calculated to exploit the Complainant’s considerable reputation in its particular field of business for the Respondent’s own purposes and benefits.”); Jupiter Investment Management Group v. N/A (WIPO D2010-0260) (finding bad faith under Section 4(b)(iv) where respondent used the domain name <jupiteronlineuk.com> to impersonate complainant without an clear commercial purpose).
52. Second, Respondent’s use of the Domain Name for a wholesale copy of Complainant’s FOXSPORTSLA.COM website constitutes an independent ground of bad faith under UDRP precedent. Many UDRP Panels have held that unauthorized copying of the complainant’s logos constitutes an independent ground of bad faith under the UDRP. Here, Respondent has not only copied Complainant’s logos―it has copied Complainant’s entire website. See, e.g., Nortel Networks v. Cross (NAF FA0405000271182) (holding respondent created the false impression of having some association with complainant by appropriating complainant’s logo on its website); Caterpillar v. Comercio e Importaciones EIRL (NAF FA0104000097083) (holding respondent’s use of complainant’s logo on its website “is indicative of an attempt to mislead potential customers into believing that Respondent is associated with or authorized by Caterpillar.”).
53. Third, Respondent’s registration and use of the Domain Name constitute bad faith under Section 4(b)(iii) of the UDRP because Respondent disrupts Complainant’s business by (1) misleadingly and falsely identifying Respondent’s website as Complainant’s website, i.e., Respondent falsely impersonates Complainant and attempts to pass itself off as Complainant, (2) attracting Internet users and building mistaken confidence that the domain name FOXSPORTSLATAM.COM is the source for Complainant’s FOX SPORTS website for Latin America, and (3) interfering with Complainant’s ability to control the use of its federally registered FOX Marks. See, e.g., Smiths Group v. Snooks (NAF FA1102001372112) (holding respondent’s use of the domain name <smithsdetections.com> to fraudulently pass itself off as complainant is evidence of respondent’s bad faith under Section 4(a)(iii)); American International Group v. Busby (NAF FA0304000156251) (holding respondent’s use of the domain name <aig-ma.com> for a website that gives the “appearance of being associated or affiliated with Complainant’s business” thereby “perpetrat[ing] a fraud” constitutes bad faith); Johnson Financial Group v. Janssen (NAF FA0311000214465) (holding respondent’s attempt to pass itself off as complainant constitutes bad faith); Altavista v. Brunosousa (WIPO D2002-0109) (holding respondent’s use of the domain name <altavistasoftware.com> as “an instrument of commerce” to direct Internet users to complainant’s website constitutes bad faith because such us “will allow the Respondent to divert future users to competing web sites after having built up mistaken confidence in the source of the content”); Ameriquest v. Banks (WIPO D2003-0293) (holding respondent’s use of the domain name <wwwameriquestmortgage.com> to direct Internet users to complainant’s website constitutes bad faith because “This registration and use interferes with Complainant’s ability to control the use of its own trademarks on the Internet, including choosing whether and how domain names incorporating those trademarks resolve to particular web pages, and raises the specter that Respondent could at some future time cause the domain name to resolve to Respondent’s own website or to a competing website. It also creates a risk that Respondent could collect and use data about Internet users intending to access Complainant’s website.”).
54. Finally, there is overwhelming evidence in this case that Respondent knew of Complainant’s FOX Marks when it registered the Domain Name, including (1) Respondent’s use of Domain Name to falsely represent himself as Complainant in the WHOIS record for the Domain Name and by copying Complainant’s website, (2) the fame of Complainant’s FOX Marks, and (3) Complainant’s registrations of its Marks. By registering the Domain Name with knowledge of Complainant’s rights in its FOX Marks, Respondent acted in bad faith. Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the UDRP. See, e.g., News Australia Pty Limited and Twentieth Century Fox Film Corporation v. Kushner (NAF FA1205001446275) (holding respondent registered the domain name <newscorp-fox.com> in bad faith with knowledge of Complainant and Complainant’s rights in its marks based on the record, which established that respondent used the domain name <newscorp-fox.com> to falsely hold himself out as employed by Complainant); Twentieth Century Fox Film Corporation v. Domains By Proxy, Inc./Samina Rahman (WIPO D2009-1121) (holding respondent registered the domain name <livefoxsports.info> in bad faith because it can be “concluded that Respondent knew of the existence of the Complainant’s trademark and its significance in the United States market.”); Twentieth Century Fox Film Corporation v. foxinteractivemedia-inc.com (WIPO D2009-1475) (holding respondent registered and used the domain name < foxinteractivemedia-inc.com> in bad faith because “Given the longstanding and widespread use of the FOX and FOX INTERATIVE marks, there can be little doubt that Respondent was aware of such marks” prior to its registration of the domain name).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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(e), 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 (Nat. Arb. 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 Twentieth Century Fox Film Corporation contends it is one of the world’s leading and largest entertainment and media companies. Complainant is undoubtedly a television network and major film studio. Complainant has produced and distributed some of the larger-grossing and internationally known film and television properties of all time. Complainant owns the FOX trademark and hundreds of FOX-related trademarks, including FOX SPORTS. Complainant owns various trademark registrations with the USPTO for the FOX mark (e.g., Reg. No. 1,924,143, registered October 3, 1995) and the FOX SPORTS mark (e.g., Reg. No. 1,932,252, registered October 31, 1995). The Panel finds Complainant’s registration of the various trademarks with the USPTO adequately establishes Complainant’s rights in the FOX and FOX SPORTS marks under Policy ¶4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)).
Complainant claims Respondent’s <foxsportslatam.com> domain name is confusingly similar to Complainant’s FOX SPORTS mark because it contains Complainant’s mark in its entirety and merely adds the letters “LATAM,” which are an abbreviation for the geographically descriptive term “Latin America.” The Panel finds the addition of a geographic term does not adequately distinguish Respondent’s disputed domain name from Complainant’s FOX SPORTS mark under Policy ¶4(a)(i). See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Respondent’s disputed domain name has removed the space between “FOX” and “SPORTS” in Complainant’s FOX SPORTS mark. Respondent has added the non-distinguishing gTLD “.com” to the end of its disputed domain name. The removal of spaces and the addition of a gTLD does not eliminate confusing similarity between Respondent’s <foxsportslatam.com> and Complainant’s FOX SPORTS mark under Policy ¶4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)). The Panel finds Respondent’s <foxsportslatam.com> domain name is confusing similar to Complainant’s FOX SPORTS mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues Respondent is not commonly known by the disputed domain name even though the WHOIS information identifies “Twentieth Century Fox Film Corporation” as the registrant. Complainant claims Respondent has falsely used Complainant’s name and contact information on the WHOIS record. Complainant further claims it has not authorized Respondent to use its FOX marks. Respondent has not submitted any evidence to the contrary. Although the WHOIS information identifies “Twentieth Century Fox Film Corporation” as the registrant of the disputed domain name, the Panel finds Respondent is impersonating Complainant, using Complainant’s information on the WHOIS record and is not commonly known by the disputed domain name under Policy ¶4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. 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).
Complainant claims Respondent uses the domain name to impersonate Complainant to solicit Internet users into contacting Respondent. Complainant further argues Respondent’s use of Complainant’s information on the WHOIS record and use of the disputed domain name as an unauthorized copy of Complainant’s <FOXSPORTSLA.COM> web content shows Respondent is trying to pass itself off as Complainant. Respondent’s attempt to pass itself off as Complainant is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (finding the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant contends Respondent’s use of the disputed domain name is disrupting Complainant’s business. Complainant claims this is shown by Respondent misleadingly and falsely identifying Respondent’s website as Complainant’s website, by building mistaken confidence the <foxsportslatam.com> domain name is the source for Complainant’s FOX SPORTS website for Latin America, and interfering with Complainant’s ability to control the uses of its federally registered FOX marks. The Panel finds Respondent’s use of the disputed domain name in such ways clearly constitutes bad faith registration and use under Policy ¶4(b)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”)
Complainant argues Respondent is using the disputed domain name to intentionally attract Internet users by creating a likelihood of confusion with Complainant and its FOX marks. Complainant further argues Respondent may be using the disputed domain name to profit by attempting to falsely impersonate Complainant and trade on Complainant’s goodwill to Complainant’s detriment. Respondent’s use of the disputed domain name to attract Internet users for Respondent’s own commercial gain constitutes bad faith under Policy ¶4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Complainant claims Respondent knew of Complainant’s FOX marks when the domain name was registered. Complainant claims Respondent knew about Complainant’s rights in the FOX mark because Respondent falsely represents himself as Complainant in the WHOIS record and copied Complainant’s website wholesale. The Panel agrees and finds Respondent had actual knowledge of the mark and Complainant's rights. Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Furthermore, using false WHOIS information raises the rebuttable presumption of bad faith registration and use of a domain name. Respondent has done nothing to rebut this presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <foxsportslatam.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, December 26, 2012
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