Twentieth Century Fox Film Corporation v. oranges arecool XD / orangesarecool.com
Claim Number: FA1405001558045
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is oranges arecool XD / orangesarecool.com (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <americanhorrorstorybrasil.com>, <ahsbrazil.com>, <gleedaily.com>, <gleekzone.com>, and <gleekoutbr.com>, registered with GoDaddy.com, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 7, 2014; the National Arbitration Forum received payment on May 7, 2014.
On May 8, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <americanhorrorstorybrasil.com>, <ahsbrazil.com>, <gleedaily.com>, <gleekzone.com>, and <gleekoutbr.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 2014 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@americanhorrorstorybrasil.com, postmaster@ahsbrazil.com, postmaster@gleedaily.com, postmaster@gleekzone.com, and postmaster@gleekoutbr.com. Also on May 30, 2014, 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 June 26, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the world’s leading and largest entertainment and media companies. Complainant is a television network and major film studio, among other businesses. Complainant’s business, founded in 1935, 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 AMERICAN HORROR STORY mark pursuant to its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4252376 filed April 29, 2011, registered December 4, 2012). Complainant has rights in the GLEE and GLEEK marks through registrations with the USPTO (e.g., Reg. No 3765122 filed March 6, 2009, registered March 23, 2010) and the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 008,879,876 filed February 12, 2010, registered June 28, 2010). Complainant has common law rights in the AMERICAN HORROR STORY, AHS, GLEE, and GLEEK marks based on their fame and continuous association with Complainant’s productions.
Respondent’s <americanhorrorstorybrasil.com> and <ahsbrazil.com> domain names are confusingly similar to Complainant’s AMERICAN HORROR STORY mark, Respondent’s <americanhorrorstorybrasil.com> domain name eliminates the spaces between the words in Complainant’s mark and adds the geographic term “Brasil.” Respondent’s <ahsbrazil.com> domain name features the abbreviation of Complainant’s AMERICAN HORROR STORY mark and also adds the geographic term “Brazil.”
Respondent’s <gleedaily.com> domain name combines Complainant’s GLEE mark with the generic term “daily.” Complainant’s <gleekzone.com> and <gleekoutbr.com> domain names use Complainant’s GLEEK mark with the addition of the generic word “zone” or “out.’ Respondent’s <gleekoutbr.com> domain name also features the abbreviation for Brazil’s country code “BR.”
All of Respondent’s disputed domain names add the generic top-level domain (“gTLD”) “.com” to one of Complainant’s marks.
Respondent has no rights or legitimate interests in the <americanhorrorstorybrasil.com>, <ahsbrazil.com>, <gleedaily.com>, <gleekzone.com>, and <gleekoutbr.com> domain names. Respondent is not commonly known by the disputed domain names. Nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the disputed domain names. Complainant has also not authorized Respondent to use its marks. Respondent’s <americanhorrorstorybrasil.com>, <ahsbrazil.com>, <gleedaily.com>,and <gleekzone.com> domain names resolve to a website located at the domain name <fan-girl.org> that offers entertainment content and features pay-per-click ads as well as ads for Respondent’s own services. Respondent’s <gleekoutbr.com> domain name resolves to a website that directly competes with Complainant’s online offering of the same services and products, namely, content regarding Complainant’s GLEE series including music photographs and videos.
Respondent registered and is using the <americanhorrorstorybrasil.com>, <ahsbrazil.com>, <gleedaily.com>,and <gleekzone.com> disputed domain names in bad faith. Respondent has a pattern of cybersquatting behavior, which indicates bad faith. First, Respondent has registered multiple domain names in the present case. Second, Respondent has a prior adverse UDRP decision specifically holding that Respondent has a bad faith pattern of registering trademark related domain names. Respondent’s registration and use of the disputed domain names disrupts Complainant’s business by using the domain names for directly competing websites. Respondent uses the disputed domain names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its marks as to the source, sponsorship, and affiliation with the disputed domain names and the products and services advertised. Respondent registered the disputed domain names with knowledge of Complainant and its famous marks.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
Preliminary Issue: Consent to Transfer
The National Arbitration Forum was copied on documentation submitted from Respondent to Complainant. In this document, Respondent consented to the transfer of the <americanhorrorstorybrasil.com>, <ahsbrazil.com>, <gleedaily.com>, <gleekzone.com>, and <gleekoutbr.com> domain names. Although Respondent consents to the transfer of the disputed domain names to Complainant, the Panel will analyze the case under the elements of the UDRP.
Complainant, Twentieth Century Fox Film Corporation, is one of the world’s leading and largest entertainment and media companies. Complainant is a television network and major film studio, among other businesses. Complainant has rights in the AMERICAN HORROR STORY mark pursuant to its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4252376 filed April 29, 2011, registered December 4, 2012). Complainant has rights in the GLEE and GLEEK marks through registrations with the USPTO (e.g., Reg. No 3765122 filed March 6, 2009, registered March 23, 2010) and the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 008,879,876 filed February 12, 2010, registered June 28, 2010). Complainant has common law rights in the AMERICAN HORROR STORY, AHS, GLEE, and GLEEK marks based on their fame and continuous association with Complainant’s productions.
Respondent, oranges arecool XD / orangesarecool.com, owns and operates a commercial network of entertainment websites. Respondent registered the <americanhorrorstorybrasil.com> domain name on October 21, 2011; the <ahsbrazil.com> domain name, on December 20, 2011; the <gleedaily.com> domain name, on May 20, 2009; the <gleekzone.com> domain name, on April 15, 2010; and the <gleekoutbr.com> domain name, on September 9, 2010.
Respondent’s <americanhorrorstorybrasil.com>, <ahsbrazil.com>, <gleedaily.com>,and <gleekzone.com> domain names resolve to a website located at the domain name <fan-girl.org> that offers entertainment content and features pay-per-click ads as well as ads for Respondent’s own services. Respondent’s <gleekoutbr.com> domain name resolves to a website that directly competes with Complainant’s online offering of the same services and products, namely, content regarding Complainant’s GLEE series including music photographs and videos.
Respondent has a pattern of cybersquatting behavior, which indicates bad faith. Respondent has registered multiple domain names in the present case. Respondent has a prior adverse UDRP decision specifically holding that Respondent has a bad faith pattern of registering trademark related domain names.
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(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 has rights under Policy ¶ 4(a)(i) for the AMERICAN HORROR STORY and GLEE marks through registration with the USPTO and for the GLEEK mark through registration with OHIM. Complainant’s rights in these marks date back to their respective dates of filing. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). Complainant has established Policy ¶ 4(a)(i) rights in the above marks, regardless of the fact that Respondent appears to reside outside of the United States. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Also, Complainant has common law rights in the AMERICAN HORROR STORY, AHS, GLEE, and GLEEK marks based on their fame and continuous association with Complainant’s productions.
Respondent’s <americanhorrorstorybrasil.com> and <ahsbrazil.com> domain names are confusingly similar to Complainant’s AMERICAN HORROR STORY mark under Policy ¶ 4(a)(i). Respondent’s <americanhorrorstorybrasil.com> domain name eliminates the spaces between the words in Complainant’s mark and adds the geographic term “Brasil.” Additionally, Respondent’s <ahsbrazil.com> domain name features the abbreviation of Complainant’s AMERICAN HORROR STORY mark and also adds the geographic term “Brazil.” Neither spacing nor geographic terms are enough to cure confusing similarity between a registered mark and a disputed domain name under Policy ¶ 4(a)(i). See Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also 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)). Respondent’s use of the acronym AHS does not defeat a claim of confusing similarity of the <ahsbrazil.com> domain name with Complainant’s AMERICAN HORROR STORY mark. See Algemeen Nederlands Persbureau ANP B.V. v. European Travel Network, D2004-0520 (WIPO Sept. 8, 2004) (confusing similarity found where “distinctive elements of the complainant’s marks, notably the acronym ANP, are reproduced entirely in the domain name”).
Respondent’s <gleedaily.com> domain name combines Complainant’s GLEE mark with the generic term “daily.” Respondent’s addition of the term “daily” does not distinguish the <gleedaily.com> domain name from Complainant’s GLEE mark. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end).
Respondent’s <gleekzone.com> and <gleekoutbr.com> domain names use Complainant’s GLEEK mark with the addition of the generic word “zone” or “out.’ Respondent’s <gleekoutbr.com> domain name also features the abbreviation for Brazil’s country code “BR.”
Additionally, all of Respondent’s disputed domain names add the gTLD “.com” to Complainant’s marks.
Therefore, each of Respondent’s <americanhorrorstorybrasil.com>, <ahsbrazil.com>, <gleedaily.com>, <gleekzone.com>, and <gleekoutbr.com> domain names are confusingly similar to either Complainant’s AMERICAN HORROR STORY, GLEE, or GLEEK 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), and then the burden shifts to Respondent to show it does have 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.
Respondent has no rights or legitimate interests in the <americanhorrorstorybrasil.com>, <ahsbrazil.com>, <gleedaily.com>, <gleekzone.com>, and <gleekoutbr.com> domain names. Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response). The WHOIS information for Respondent shows that “oranges arecool XD” is listed as the registrant for all the disputed domain names, except no WHOIS information was provided for <gleekzone.com>. Complainant further contends has not authorized Respondent to use its marks.
Respondent previously used the <americanhorrorstorybrasil.com> and <ahsbrazil.com> domain names to resolve to a website that directly competed with Complainant’s own online offering of the same services, namely content regarding Complainant’s AMERICAN HORROR STORY series, including photographs and videos, some of which appear to be copied from Complainant. Respondent presumably collected pay-per-click fees. Respondent claimed to own the content posted on the website by its customers. Respondent’s prior use of the <americanhorrorstorybrasil.com> and <ahsbrazil.com> domain names to redirect Internet users to a website offering content directly related to and competing with Complainant’s business represents neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a noncommercial or fair use under Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (the respondent’s use of a disputed domain name to redirect Internet users to a financial services website, which competed with the complainant’s business, was not a bona fide offering of goods or services).
Respondent’s <americanhorrorstorybrasil.com>, <ahsbrazil.com>, <gleedaily.com>,and <gleekzone.com> domain names currently resolve to a website located at the domain name <fan-girl.org> and offers entertainment content and features pay-per-click ads as well as ads for Respondent’s own services. Respondent’s resolving website located at <fan-girl.org> features the heading “Welcome to Fan-Girl.org: your ultimate one-stop source for the latest celebrity news, fan stuff, and more!” Advertisements and pay-per-click links displayed on the website include “Marvel Universe Live!,” “Zulily,” “Calculate New House Payment,” “Fan Fusion,” and “Faulkner.” Respondent’s use of the disputed domain names to resolve to a website displaying links to third-parties, and likely collecting revenue from their presence, does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii).See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Additionally, Respondent’s <gleekoutbr.com> domain name resolves to a website that directly competes with Complainant’s online offering of the same services and products, namely, content regarding Complainant’s GLEE series including music photographs and videos. Respondent prominently displays Complainant’s GLEE and GLEEK marks on the resolving website in order to attract Internet users to its competing website where Respondent likely profits from the content provided. The Panel finds that Respondent’s use of the <gleekoutbr.com> domain name does not establish rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii).See Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) ( the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website).
Respondent registered and is using the <americanhorrorstorybrasil.com>, <ahsbrazil.com>, <gleedaily.com>, <gleekzone.com>, and <gleekoutbr.com> domain names in bad faith. Respondent has a pattern of cybersquatting behavior indicating bad faith. First, Respondent has registered multiple domain names in the present case. Second, Respondent has a prior adverse UDRP decision specifically holding that Respondent has a bad faith pattern of registering trademark related domain names. See Miranda Kerr v. orangesarecool.com, D2013-0553 (WIPO May 28, 2013) (“The Respondent’s model of operating the Fan Fusion Website and registering multiple celebrity personal names as domain names amounts to a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name as many of these personal names are trade marks as well.”).
Panels have found that registering multiple domain names in the same claim shows bad faith use and registration. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)). Further, Panels have also found bad faith where a respondent was previously involved in claims where the panel transferred the disputed domain name to the complainant. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). The Panel finds that Respondent registered and is using the <americanhorrorstorybrasil.com>, <ahsbrazil.com>, <gleedaily.com>, and <gleekzone.com>, and <gleekoutbr.com> domain names in bad faith under Policy ¶ 4(b)(ii).
Respondent’s registration and use of the disputed domain names disrupts Complainant’s business by using the domain names for competing websites. The registration of domain names that are confusingly similar to a complainant’s marks for the purpose of linking to the websites displaying competing content is bad faith registration and use under Policy ¶ 4(b)(iii). See, e.g., Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Respondent uses the disputed domain names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its marks as to the source, sponsorship, and affiliation with the disputed domain names and the products and services advertised. The Panel finds that Respondent’s use of the disputed domain names to provide links to Complainant’s competitors and offer products and services associated with Complainant, likely for click through revenue, is bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (use of the disputed domain name to operate a website featuring links to competing and non-competing commercial websites from which Respondent presumably receives referral fees is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (bad faith was apparent where the respondent's use of the domain name at issue was to resolve to a website where similar services were offered to Internet users and it was likely to confuse the user into believing that the complainant was the source of or was sponsoring the services offered at the site).
Respondent registered the disputed domain names with actual knowledge of Complainant and its famous marks and, therefore, registered them in bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. 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 having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americanhorrorstorybrasil.com>, <ahsbrazil.com>, <gleedaily.com>, <gleekzone.com>, and <gleekoutbr.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 10, 2014
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