Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS
Claim Number: FA1412001596020
Complainant is Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Daniel Pizlo / HS (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <foxlife.org>, registered with Neubox Internet S.A. de C.V. (R1857-LROR).
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2014; the National Arbitration Forum received payment on December 18, 2014. The Complaint was submitted in both English and Spanish.
On December 23, 2014, Neubox Internet S.A. de C.V. (R1857-LROR) confirmed by e-mail to the National Arbitration Forum that the <foxlife.org> domain name is registered with Neubox Internet S.A. de C.V. (R1857-LROR) and that Respondent is the current registrant of the name. Neubox Internet S.A. de C.V. (R1857-LROR) has verified that Respondent is bound by the Neubox Internet S.A. de C.V. (R1857-LROR) 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 December 30, 2014, the Forum served the Spanish language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 20, 2015 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@foxlife.org. Also on December 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 January 21, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Spanish language Complaint and Commencement Notification, and, absent a Response, will conduct the remainder of the proceedings in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <foxlife.org> domain name is confusingly similar to Complainant’s FOX LIFE mark.
2. Respondent does not have any rights or legitimate interests in the <foxlife.org> domain name.
3. Respondent registered and uses the <foxlife.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has registered FOX LIFE with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,102,644, registered Feb. 21, 2012). Complainant operates in the fields of entertainment and media, and uses the FOX LIFE mark to identify its lifestyle programming.
Respondent registered the <foxlife.org> domain name November 8, 2013, and uses it to resolve to a website featuring pay-per-click ads, some of which compete with Complainant’s entertainment offerings.
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.”).
The Panel finds that Complainant’s registration of its FOX LIFE mark with the USPTO satisfies the rights requirement of Policy ¶ 4(a)(i), despite Respondent’s purported residence in Mexico. See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under Policy ¶4(a)(i), despite the fact Respondent resides outside of the United States.”).
Respondent’s <foxlife.org> domain name incorporates Complainant’s FOX LIFE mark, and merely omits the space and adds the gTLD “.org.” Prior panels have consistently determined that the addition of a gTLD and omission of spacing are inconsequential to the Policy ¶ 4(a)(i) confusing similarity analysis. 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”). Thus, the Panel finds that the <foxlife.org> domain name is effectively identical to Complainant’s FOX LIFE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent has no rights or legitimate interests in the disputed domain name, and is not commonly known by the disputed domain name. The WHOIS record lists “Daniel Pizlo / HS” as the registrant of the <foxlife.org> domain name. Complainant states that it has not authorized Respondent to use the FOX LIFE mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also argues that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant demonstrates that the website resolving from <foxlife.org> features pay-per-click ads as well as content in competition with Complainant’s entertainment offerings. The Panel finds that this is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or for a legitimate noncommercial or fair use. See Twentieth Century Fox Film Corp. v. ZEKI GALER, FA 1576747 (Nat. Arb. Forum Oct. 6, 2014) (“The Panel notes that the domain name resolves to a website dedicated to hyperlink advertisements and competing news content. The Panel finds that using the FOX HABER mark to promote a competing and independent news source is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.”).
Further, Complainant contends that Respondent uses the disputed domain name to impersonate Complainant and pass the website off as Complainant’s website, even copying Complainant’s own content. The Panel notes that Respondent appears to have copied Complainant’s video “Fox Life Bienvenido!” to the disputed landing page. The Panel finds that this attempt to pass itself off as Complainant is additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent disrupts Complainant’s business by using the disputed domain name to compete with Complainant for Internet traffic, in violation of Policy ¶ 4(b)(iii). See 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).
Respondent also uses the <foxlife.org> domain name to intentionally attract users for commercial gain by creating a likelihood of user confusion as to Complainant’s affiliation with the disputed domain name. Respondent attempts to pass itself off as Complainant, copying Complainant’s content. Prior panels have found evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent attempts to generate revenue, click-through or otherwise, under the apparent auspices of Complainant’s mark or authority. 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). Thus, the Panel finds that Respondent’s use of the disputed domain name constitutes bad faith under Policy ¶ 4(b)(iv).
Complainant claims that Respondent opportunistically registered the disputed domain name 4 days after Complainant announced its FOX LIFE brand for the UTILISIMA channel. The Panel agrees that the timing of Respondent’s registration of the <foxlife.org> domain name is further evidence of bad faith Respondent’s registration. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”).
Respondent was obviously familiar with Complainant based on Respondent’s use of the FOX LIFE mark to feature one of Complainant’s videos on Respondent’s website. The Panel thus finds that Respondent registered the disputed domain name with actual knowledge of the FOX LIFE mark and Complainant’s rights therein, 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 Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent “must have known about the Complainant's mark when it registered the subject domain name”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <foxlife.org> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 27, 2015
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