Twentieth Century Fox Film Corporation v. Diego Ossa
Claim Number: FA1501001602016
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Diego Ossa (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <foxsports.nyc>, registered with GoDaddy.com, Inc.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 27, 2015; the National Arbitration Forum received payment on January 27, 2015.
On January 27, 2015, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <foxsports.nyc> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 January 28, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 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@foxsports.nyc. Also on January 28, 2015, 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.
A timely Response was received and determined to be complete on February 17, 2015.
A timely Additional Submission from Complainant was received on February 23, 2015.
On February 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
Complainant owns FOX SPORTS through registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,932,252, registered Oct. 31, 1995). Complainant uses the mark in connection with television and online broadcasting services in the field of sports. The <foxsports.nyc> domain name is identical to the FOX SPORTS mark as the removal of spacing and addition of a generic top-level domain (“gTLD”) are generally irrelevant to the confusing similarity analysis. If anything, the addition of the gTLD “.nyc,” known as the abbreviation for New York City, heightens confusing similarity as Complainant has offered services under the FOX SPORTS mark in New York City area for many years.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS information. Further, Respondent is not authorized to use Complainant’s mark. Respondent is using the disputed domain name in connection with a pay-per-click website featuring directly competing advertisements. Such use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. In addition, Respondent’s willingness to sell the disputed domain name is further evidence that Respondent lacks any rights or legitimate interests in the disputed domain name.
Respondent has engaged in bad faith registration and use. Respondent’s general offer to sell the disputed domain name evinces bad faith pursuant to Policy ¶ 4(b)(i). Further, Respondent’s use of the disputed domain name to promote links and advertisements to Complainant’s competitors demonstrates Respondent’s disruptive intentions, which violate Policy ¶ 4(b)(iii). Similarly, advertising or referral revenue is likely generated through this scheme, which implicates Policy ¶ 4(b)(iv). Lastly, Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights in the FOX SPORTS mark shows Respondent registered the name in bad faith.
Respondent
Respondent, a resident of New York City, purchased the available <foxsports.nyc> domain name in November of 2014. Respondent has rights in the domain name based on this availability and Respondent’s intent to commit no wrongdoing through the domain name. Respondent has no intent to gain from use of the website or disrupt Complainant in any way. Respondent has not used the disputed domain name in bad faith and has no plans to start.
Additional Submission by Complainant
I. Nothing in Respondent’s Response changes the basic facts of this case that entitle Complainant to the requested relief. Respondent registered the <foxsports.nyc> domain name with actual knowledge of Complainant’s rights in its federally registered trademark FOX SPORTS and without Complainant’s authorization. The Domain Name contains Complainant’s FOX SPORTS mark in its entirety. Respondent has used the Domain Name for a pay-per-click website featuring sponsored-link advertisements for websites offering directly competing services (e.g., sports programming) and other commercial websites.
II. UDRP ¶ 4(a)(i)
Complainant has satisfied the first requirement of UDRP ¶ 4(a) by providing proof of its rights in its mark, based on its trademark registrations in the U.S. and its long-term and widespread use of the mark for decades. Respondent does not deny that he registered the Domain Name with actual knowledge of Complainant’s rights in the mark and without Complainant’s authorization.
Complainant has satisfied the second requirement of UDRP ¶ 4(a) by showing that the Domain Name is identical and confusingly similar to Complainant’s FOX SPORTS mark because it is comprised of that Mark in its entirety. Respondent’s claim that the Domain Name is not identical to Complainant’s mark because it includes the gTLD “.nyc” has no merit. It is well settled that gTLDs are irrelevant to confusing similarity analysis. When the geographic gTLD “.nyc” is considered, such gTLD heightens the confusingly similarity because Complainant has offered FOX SPORTS services in the New York City area for many years.
III. UDRP ¶ 4(a)(ii)
Complainant has satisfied UDRP ¶ 4(a)(ii) by showing that Respondent has no legitimate interest under UDRP ¶¶ 4(c)(i) and 4(c)(iii) based on his registration and use of the Domain Name for a pay-per-click website featuring sponsored-link advertisements for websites offering directly competing services and other commercial websites. Complainant has also shown that Respondent has no legitimate interest under UDRP ¶ 4(c)(ii) because he is not commonly known by the Domain Name. Respondent admits that he has not used the Domain Name in connection with any bona fide offering. Respondent also admits he is not commonly known by the Domain Name. Respondent’s self-serving claim that he does not intend to gain from the use of the Domain Name does not overcome Complainant’s evidence or demonstrate any legitimate interest under UDRP ¶ 4(c)(iii).
Respondent’s claim that he was free to register the Domain Name because it was available for registration is baseless. It is well established under the UDRP that the mere fact that Respondent was able to register the Domain Name because it was available does not confer any rights to Respondent. Complainant is not obligated to register any and all available domain names containing its marks because it is well settled that a trademark owner has no duty to register every variation of its marks as domain names. The UDRP places the burden on the registrant to avoid registering a domain name that infringes upon the rights of others. UDRP ¶ 2(b).
IV. UDRP ¶ 4(a)(iii)
Complainant has satisfied UDRP ¶ 4(a)(iii) by showing that Respondent registered the Domain Name in bad faith with knowledge of Complainant’s rights in its famous and federally registered marks and opportunistically after “.nyc” domain names became available, and that Respondent’s use of the Domain Name for a pay-per-click website with ads for competing services constitutes bad faith. Respondent’s bare assertions that he does not intend to gain from the Domain Name do not overcome Complainant’s evidence. The registrant of a domain name is responsible for the content on the website associated with the disputed domain name, regardless of whether the registrant allows a third party to place content on the website.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.
Complainant claims to own FOX SPORTS through registration with the USPTO (e.g., Reg. No. 1,932,252, registered Oct. 31, 1995). Complainant uses the mark in connection with television and online broadcasting services in the field of sports. The Panel agrees that Complainant’s USPTO registrations for FOX SPORTS establish Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant argues that the <foxsports.nyc> domain name is identical to the FOX SPORTS mark as the removal of spacing and addition of a gTLD are generally irrelevant to the confusing similarity analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Complainant argues that the addition of the gTLD “.nyc,” known as the abbreviation for New York City, heightens confusing similarity as Complainant has offered services under the FOX SPORTS mark in the New York City area for many years. Since the introduction of new gTLDs, some of which contain descriptive attributes, panels have begun considering gTLDs in the confusing similarity analysis. For example, in DD IP Holder LLC v Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014), the panel wrote, “because there is a reference to food and restaurants inherent in the new gTLD “.menu”, the combination of the “dunkin” element with the “.menu” gTLD extension adds further to the confusing character of the domain in issue in the present case.” Presently, as Complainant has offered its services under the FOX SPORTS mark in New York City for years, the Panel agrees that the affixation of the gTLD “.nyc” to the otherwise incorporated mark only serves to increase confusing similarity. Accordingly, the Panel finds the domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims that Respondent is not authorized to use Complainant’s mark, and adds that Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS information. The WHOIS record lists “Diego Ossa” as registrant, which is corroborated by Respondent’s own submission. As Respondent’s rebuttal does not make use of Policy ¶ 4(c)(ii), the Panel agrees that there is no evidentiary basis to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant further alleges that Respondent is using the disputed domain name in connection with a pay-per-click website featuring directly competing advertisements, and argues that such use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Complainant has provided a screenshot of the resolving parked website showing featured links such as, “Football live streaming,” “Live Tv,” and “Watch Football Live,” that compete with Complainant’s sports broadcast efforts. Given the provided evidence, the Panel determines that Respondent’s allowance for the disputed domain name to promote links in competition with Complainant constitutes neither a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant argues that Respondent’s willingness to sell the disputed domain name is further evidence that Respondent lacks any rights or legitimate interests in the disputed domain name. The resolving parked page advertises the sale of the domain name with the message “Would you like to buy this domain?” The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in this disputed domain name. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
Complainant has proven this element.
Complainant argues that Respondent’s bad faith is demonstrated by Respondent’s general offer to sell the disputed domain name, which evinces bad faith pursuant to Policy ¶ 4(b)(i). Despite Respondent’s contention that it has no intention of selling the disputed domain name, the Panel concludes that the general offer to sell the disputed domain name at the resolving website suggests that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i). See CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant argues that Respondent’s use of the disputed domain name to promote links and advertisements to Complainant’s competitors demonstrates Respondent’s disruptive intentions, which violate Policy ¶ 4(b)(iii). The disputed domain name resolves to promote parked links such as, “Football live streaming,” “Live Tv,” and “Watch Football Live,” that compete with Complainant’s sports broadcast efforts. Past panels have found evidence of bad faith under Policy ¶ 4(b)(iii) in similar cases. For example, in Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), the panel wrote, “Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).” As the disputed domain name promotes links to sports broadcasts in competition with Complainant, the Panel finds evidence of bad faith disruption pursuant to Policy ¶ 4(b)(iii).
Complainant argues that advertising or referral revenue is likely generated through this scheme, and that such use through the confusingly similar domain name constitutes bad faith under Policy ¶ 4(b)(iv). The Panel agrees that the content is attributable back to Respondent despite the apparent parking service, and finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv) as Respondent is allowing the confusingly similar domain name to promote commercial links in competition with Complainant. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”).
Complainant alleges Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights in the FOX SPORTS mark shows Respondent registered the name in bad faith. Although previous panels have declined to find evidence of bad faith based solely on constructive knowledge, panels have found Policy ¶ 4(a)(iii) bad faith where the circumstances support an inference of actual knowledge. See, e.g., 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.”); Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). The Panel infers Respondent had actual knowledge based on the fame of the FOX SPORTS mark as well as Respondent’s use of the disputed domain name to promote, in part, links related to sports broadcasts comparable to Complainant’s own offerings under the mark. As such, the Panel finds additional evidence that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proven this element.
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 <foxsports.nyc> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: February 26, 2015
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