Twentieth Century Fox Film Corporation v. Abadaba S.A. / Administrador de dominios / Domain Admin
Claim Number: FA1407001570781
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is Abadaba S.A. / Administrador de dominios / Domain Admin (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <foxsportsfantasyfootball.com> and <teenchoice.com>, registered with Naugus Limited LLC; Fabulous.com Pty Ltd.
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.
Ho-Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 21, 2014; the National Arbitration Forum received payment on July 21, 2014.
On July 21, 2014; Jul 22, 2014, Naugus Limited LLC; Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <foxsportsfantasyfootball.com> and <teenchoice.com> domain names are registered with Naugus Limited LLC; Fabulous.com Pty Ltd and that Respondent is the current registrant of the names. Naugus Limited LLC; Fabulous.com Pty Ltd has verified that Respondent is bound by the Naugus Limited LLC; Fabulous.com Pty Ltd 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 July 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 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@foxsportsfantasyfootball.com, postmaster@teenchoice.com. Also on July 23, 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 August 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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
1. Complainant has rights in the following marks; FOX SPORTS, FOX FANTASY FOOTBALL and TEEN CHOICE.
a. Complainant is one of the world’s leading and largest entertainment and media companies, owning Fox television network, the major film studio, as well as other businesses.
b. Complainant has rights in the FOX SPORTS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,932,252 registered October 31, 1995). Complainant also has rights in the TEEN CHOICE mark through its registration with the USPTO (Reg. No. 3,088,908 filed July 29, 2004 registered may 2, 2006). Complainant’s rights in the TEEN CHOICE mark date back to at least August 1999 when Complainant’s TEEN CHOICE show first aired. See Complainant’s Exhibit 6. Complainant’s TEEN CHOICE show has aired continuously on an annual basis from 1999 to the present. Complainant spends significant amounts of money each year to advertise and promote its TEEN CHOICE marks, and has done so for many years. Complainant additionally, uses the <teenchoiceawards.com> domain name to offer numerous TEEN CHOICE services and products including videos, news, and interactive features.
c. Respondent’s <foxsportsfantasyfootball.com> and <teenchoice.com> domain names are confusingly similar or identical to Complainant’s FOX SPORTS mark and TEEN CHOICE mark
2. Respondent has no rights or legitimate interests in the <foxsportsfantasyfootball.com> and <teenchoice.com> domain names.
a. Respondent is not commonly known by the disputed domain names. Respondent registered the disputed domain names long after Complainant began using its marks. Additionally, the WHOIS information for the disputed domain names contains no indication that Respondent is commonly known by the disputed domain name.
b. Respondent uses the disputed domain names to resolve to pay-per-click websites displaying links that directly compete with Complainant which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names.
3. Respondent registered and is using the <foxsportsfantasyfootball.com> and <teenchoice.com> domain names in bad faith.
a. Respondent has a pattern of registering trademark-related Domain names for pay-per-click websites.
b. Respondent uses the disputed domain names to resolve to websites that display pay-per-click links that compete with Complainant’s business.
c. 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.
d. Complainant had knowledge of Complainant and its marks when Respondent registered the disputed domain names.
B. Respondent
a. Respondent failed to submit a Response in this proceeding.
b. Respondent registered the <foxsportsfantasyfootball.com> domain name on November 24, 2006, and <teenchoice.com> on March 18, 2003.
Complainant established that it had rights in the mark contained in the disputed domain names. Respondent has no rights to or legitimate interests in the disputed domain names.
Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names 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.
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 contends that it is one of the world’s leading and largest entertainment and media companies, owning Fox television network, the major film studio, as well as other businesses. Complainant thus claims that it has rights in the FOX SPORTS and TEEN CHOICE marks under Policy ¶ 4(a)(i). Complainant provides the Panel with evidence of Complainant’s rights for the FOX SPORTS mark through its registration with the USPTO (Reg. No. 1,932,252 filed February 4, 1994, registered October 31, 1995). Complainant also provides evidence of its rights in the TEEN CHOICE mark through its registration with the USPTO (Reg. No. 3,088,908 filed July 29, 2004, registered may 2, 2006). Previous panels have continuously found that evidence of a registration with the USPTO is adequate to establish rights in a mark regardless of where respondent resides. See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks”); see also 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). Previous panels have also concluded that the effective date of a complainant’s trademark rights date back to the application’s filing date. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The Panel therefore determines that Respondent has rights in the FOX SPORTS mark dating back to February 4, 1994, and the TEEN CHOICE mark dating back to July 29, 2004.
Complainant further contends that its rights in the TEEN CHOICE mark date back to at least August 1999 when Complainant’s TEEN CHOICE show first aired. See Complainant’s Exhibit 6. Complainant states that its TEEN CHOICE show has aired continuously on an annual basis from 1999 to the present. Complainant states that it spends significant amounts of money each year to advertise and promote its TEEN CHOICE marks, and has done so for many years. Complainant contends that it has also received widespread publicity and media attention from diverse media outlets reaching many millions of people. See Complainant’s Exhibit 9. Additionally, Complainant asserts that it uses the <teenchoiceawards.com> domain name to offer numerous TEEN CHOICE services and products including videos, news, and interactive features. The Panel notes the previous decision in Cybertania, Inc. v. Right Mobile, Inc. Domain Manager, FA 1015411 (Nat. Arb. Forum Aug. 6, 2007) where the panel found that a complainant had acquired secondary meaning sufficient to establish common law rights in a mark pursuant to Policy ¶ 4(a)(i) where the complainant had invested “enormous resources” in promoting the goods and services available under the complainant’s mark. See also Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The Panel therefore holds that Complainant has established secondary meaning for the TEEN CHOICE mark through its continuous use and popularity since as early as the first 1999 showing of the Complainant’s Teen Choice Awards.
Complainant asserts that Respondent’s <foxsportsfantasyfootball.com> and <teenchoice.com> domain names are confusingly similar or identical to Complainant’s FOX SPORTS mark and TEEN CHOICE mark. The Panel notes that Respondent’s <foxsportsfantasyfootball.com> domain name adds the term “Fantasy Football” which relates to Complainant’s fantasy football services offered under complainant’s FOX SPORTS mark. Complainant also states that Respondent removes the space in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel notes the prior panel decision in Twentieth Century Fox Film Corporation v. Above.com Domain Privacy, FA1509035 (Nat. Arb. Forum Aug. 26, 2013) (finding the domain names <foxsportslive.com>, <foxsportsplus.com>, <foxsportsnw.com>, <foxsportst.com>, and <wwwfoxsportsla.com> confusingly similar to Complainant’s FOX SPORTS mark because the addition of generic terms and removal of spacing does not distinguish the domain names from Complainant’s mark). The Panel concludes that Respondent’s <foxsportsfantasyfootball.com> domain name is confusingly similar to Complainant’s FOX SPORTS mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <teenchoice.com> domain name is identical to Complainant’s TEEN CHOICE mark. The Panel sees that the only difference is the removal of the space in Complainant’s mark and the addition of the gTLD “.com.” As prior panels have routinely found, the Panel determines that Respondent’s <teenchoice.com> domain name is identical to Complainant’s TEEN CHOICE mark and the alterations in Respondent’s disputed domain name are insufficient to overcome this finding. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
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); 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 alleges that Respondent has no rights or legitimate interests in the <foxsportsfantasyfootball.com> and <teenchoice.com> domain names under Policy ¶ 4(c)(ii). In so arguing, Complainant asserts that Respondent is not commonly known by the disputed domain names. Complainant claims Respondent registered the disputed domain names after Complainant began using its marks. Additionally, Complainant states that the WHOIS information for the disputed domain names contains no indication that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information for the <teenchoice.com> domain name lists “domain admin / Abadaba S.A.” as registrant, and “Abadaba S.A.” as registrant for the <foxsportsfantasyfootball.com> domain name. Based on the WHOIS information for Respondent’s <foxsportsfantasyfootball.com> and <teenchoice.com> domain names and Complainant’s contentions, the Panel concludes that Respondent is not commonly known by the disputed domain names 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 next alleges that Respondent uses the disputed domain names to resolve to pay-per-click websites displaying links that directly compete with Complainant. Complainant contends that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names. The Panel notes Complainant’s Exhibit 15 to see the websites that resolve from Respondent’s disputed domain names. The Panel also notes the resolving websites display a plethora of links including, “Fantasy football,” “Fox Sports,” “Fox Sports News,” “Teen Choice Awards,” “Teen Boarding Schools,” and “Miley Cyrus Photos.” Prior panels have agreed that using confusingly similar or identical domain names to resolve to websites displaying pay-per-click links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names. See Twentieth Century Fox Film Corporation v. PPA Media Services, FA 1467717 (Nat. Arb. Forum Dec. 11, 2012) (respondent’s use of the domain name <foxsports2.com> for a pay-per-click website featuring advertising links to Complainant’s competitors in the television industry and other commercial websites does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel concludes that Respondent has no rights or legitimate interests in the disputed domain names under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and is using the <foxsportsfantasyfootball.com> and <teenchoice.com> domain names in bad faith under Policy ¶ 4(b)(ii). Complainant asserts that Respondent has a pattern of registering trademark-related domain names for pay-per-click websites. Complainant provides a list of seventeen adverse UDRP decisions held against Respondent, some of which include; Orbitz v. Abadaba, FA 1561212 (Nat. Arb. Forum July 9, 2014); Homer TLC v. Abadaba, FA 1526594 (Nat. Arb. Forum Nov. 25, 2013); Staples v. Abadaba, FA 1516838 (Nat. Arb. Forum Oct. 14, 2013); Target v. Abadaba, FA 1505082 (Nat. Arb. Forum July 30, 2013). Prior panels have made it clear that a respondent’s involvement in numerous UDRP decisions with adverse findings is sufficient to establish a bad faith pattern under Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting). The Panel finds that Respondent’s behavior indicates a pattern of bad faith under Policy ¶ 4(b)(ii).
Complainant next alleges that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii). As discussed above, Complainant explains that Respondent uses the disputed domain names to resolve to websites that display pay-per-click links that compete with Complainant’s business. See Complainant’s Exhibit 15. Panels have routinely found bad faith use and registration where a respondent uses a disputed domain name to resolve to a website that competes with a complainant and thereby disrupts complainant’s business. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). The Panel determines that Respondent registered and is using the <foxsportsfantasyfootball.com> and <teenchoice.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by offering competing links that aim to disrupt Complainant’s business.
Complainant also claims that 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 under Policy ¶ 4(b)(iv). Complainant asserts that Respondent uses Complainant’s FOX SPORTS and TEEN CHOICE marks to attract Internet users to Respondent’s resolving website, confuse them as to Complainant’s affiliation with the websites, and thereby collects revenue from the links displayed on the websites. Twentieth Century Fox Film Corporation v. PPA Media, FA 1490506 (Nat. Arb. Forum April 30, 2013) (“Respondent improperly uses Complainant’s FOX SPORTS mark in order to drive Internet traffic to the revenue generating click-through links on Respondent’s <foxsportsnet.com> website. Therefore, the Panel finds that Respondent has registered and used the <foxsportsnet.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).”); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel holds that Respondent registered and is using the <foxsportsfantasyfootball.com> and <teenchoice.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent had knowledge of Complainant and its marks when Respondent registered the disputed domain names. Complainant elaborates by contending that Respondent registered the disputed domain name with the intent to divert Internet users to Respondent’s website and that Respondent had constructive knowledge of Complainant and is mark due to Complainant’s registration with the USPTO and Complainant’s long-held rights in the mark. Complainant further states that its marks are famous and are widely marketed and well-known. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here infers that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also 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”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <foxsportsfantasyfootball.com> and <teenchoice.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 25, 2014
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