Twentieth Century Fox Film Corporation v. Gene Emory / Aliens-fx
Claim Number: FA1707001740810
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Gene Emory / Aliens-fx (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aliens-fx.com> and <thepredatormovie.com>, registered with Network Solutions, LLC and GoDaddy.com, LLC, respectively.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2017; the Forum received payment on July 20, 2017.
On July 21, 2017, both Network Solutions, LLC and GoDaddy.com, LLC confirmed by e-mail to the Forum that the <aliens-fx.com> and <thepredatormovie.com> domain names are registered with Network Solutions, LLC and GoDaddy.com, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC and GoDaddy.com, LLC have verified that Respondent is bound by the Network Solutions, LLC and GoDaddy.com, LLC registration agreements and have 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 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 2017 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@aliens-fx.com, and postmaster@thepredatormovie.com. Also on July 26, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 made the following contentions.
Complainant operates a major film studio and television network, producing many of the highest-grossing and internationally well-known film and television properties of all time. On or in connection with its business efforts and products, Complainant has demonstrable trademark rights appertaining to the ALIENS and THE PREDATOR marks. More specifically, Complainant has common-law trademark rights in the marks based on its substantial and continuous use of those marks for many years, which include monumental commercial success of the movies marketed under those marks. Complainant also owns trademarks for the ALIEN and PREDATOR marks through its registration of the marks with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., ALIEN—Reg. No. 1,776,826, registered June 15, 1993; PREDATOR—Reg. No. 1,767,716, registered Apr. 27, 1993). Respondent’s <aliens-fx.com> is confusingly similar to Complainant’s ALIEN or ALIENS marks because it incorporates the latter entirely (and merely adds an “s” to the ALIEN mark), adds a hyphen, and the term “fx” (for “effects,” meaning “special effects,” or “movie”) and the generic top-level domain (“gTLD”) “.com.” See Compl., at Attached Ex. 14 (providing the definition of “fx”). Further, the <thepredatormovie.com> is confusingly similar to the PREDATOR or THE PREDATOR marks because it fully incorporates the latter (minus the space), and adds the article “the” to the former, and merely appends the descriptive term “movie” and the gTLD “.com.”
Respondent has no rights or legitimate interests in or to <aliens-fx.com> and <thepredatormovie.com>. Respondent is not commonly known by the domain names. Further, Respondent uses the domain names to trade off Complainant’s goodwill in the marks, causing the websites to resolve to competing products, which constitute depictions of Complainant’s Predator character—also violating Complainant’s copyright rights in its costumers, masks, and accessories/props—or simply competing hyperlinks. See Compl., at Attached Exs. 15–16 (resolving websites of <aliens-fx.com> and <thepredatormovie.com>).
Respondent registered and used<aliens-fx.com> and <thepredatormovie.com> in bad faith. Respondent offered <thepredatormovie.com> for sale on its resolving website, stating, “Would you like to buy this domain?” indicating Policy ¶ 4(b)(i) bad faith. While two domain names are registered in the instant case, Policy ¶ 4(b)(ii) bad faith is evident. Next, Respondent’s competing content and hyperlinks constitutes Policy ¶¶ 4(b)(iii) and (iv) bad faith. Further, Respondent opportunistically registered <thepredatormovie.com> in anticipation of Complainant’s upcoming THE PREDATOR movie. Lastly, Respondent had actual knowledge of Complainant given the explicit references to Complainant on the resolving websites coupled with the fame and notoriety of Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates a major film studio and television network.
2. Complainant has established its registered trademark rights in the ALIEN and PREDATOR marks through their registration with the USPTO (e.g., ALIEN—Reg. No. 1,776,826, registered June 15, 1993; PREDATOR—Reg. No. 1,767,716, registered Apr. 27, 1993).
3. Complainant has also established common law trademark rights in the THE PREDATOR and ALIENS marks.
3. Respondent registered the <aliens-fx.com> and <thepredatormovie.com>, domain names on April 16, 2012 and May 13, 2016, respectively.
4. Respondent has used the disputed domain names to resolve to websites offering competing products.
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(f), 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 (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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it owns trademarks for the ALIEN and PREDATOR marks through its registration of the marks with the likes of the USPTO (e.g., ALIEN—Reg. No. 1,776,826, registered June 15, 1993; PREDATOR—Reg. No. 1,767,716, registered Apr. 27, 1993). Registration with the USPTO (or any other governmental authority) is sufficient to establish rights in a trademark. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i)). The Panel finds that Complainant has demonstrated rights in the ALIEN and PREDATOR marks under Policy ¶ 4(a)(i).
In addition, Complainant submits that it has common-law trademark rights in the ALIENS and THE PREDATOR marks based on its substantial and continuous use of those marks for many years, which include monumental commercial success of the movies marketed under those marks. Common law rights are determined through the lens of whether a secondary meaning is acquired in a mark. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Traditionally, a secondary meaning is established by evidence of complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to complainant. See Gourmet Depot v. DI S.A., FA 1378760 (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.”). Here, Complainant asserts its rights arise in the ALIENS mark from its use of the mark for a movie title that long ago acquired secondary meaning and for related products including DVDs. Complainant asserts its rights in the THE PREDATOR mark based on its promotion of the upcoming The Predator movie and the widespread and diversely-sourced publicity and public attention of the movie prior to Respondent’s registration of the <thepredatormovie.com> domain name. Accordingly, the Panel finds Complainant has established common law rights in its THE PREDATOR and ALIENS marks.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s registered and/or common law marks. Complainant argues Respondent’s <aliens-fx.com> is confusingly similar to Complainant’s ALIEN or ALIENS marks because it incorporates the latter entirely (and merely adds an “s” to the ALIEN mark), adds a hyphen, and the term “fx” (for “effects,” meaning “special effects,” or “movie”) and the gTLD “.com.” See Compl., at Attached Ex. 14 (providing the definition of “fx”). None of the foregoing alterations have been considered to distinguish domain names from marks. See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s <aliens-fx.com> domain name is confusingly similar to Complainant’s ALIEN and/or ALIENS marks under Policy ¶ 4(a)(i).
Further, Complainant argues the <thepredatormovie.com> domain name is confusingly similar to the PREDATOR or THE PREDATOR marks because it fully incorporates the latter (minus the space), and adds the article “the” to the former, and merely appends the descriptive term “movie” and the gTLD “.com.” See Antoun v. Truth Squad, FA 114766 (Forum Aug. 21, 2002) (stating that the article "the" is "often added only for grammatical purposes, and may be superfluous to the name itself"); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel finds the <thepredatormovie.com> domain name is confusingly similar to the PREDATOR or THE PREDATOR marks under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
Rights and Legitimate Interests
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ALIEN, ALIENS,PREDATOR and THE PREDATOR trademarks and to use them in its domain names;
(b) Respondent has used the disputed domain names to resolve to websites offering competing products;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues Respondent has no rights or legitimate interests in or to the <aliens-fx.com> and <thepredatormovie.com> domain names. First, Complainant contends Respondent is not commonly known by the domain names based on the WHOIS of record. WHOIS information of record shows “Gene Emory / Aliens-fx” as registrant. While Respondent has not responded to the Complaint, the Panel finds no evidence weighing against the prima facie case made by Complainant under Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration); see also Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). Accordingly, the Panel finds that Respondent is not commonly known by the domain names;
(e) Further, Complainant asserts Respondent uses the domain names to trade off Complainant’s goodwill in the marks, causing the websites to resolve to competing products, which constitute depictions of Complainant’s Predator character—also violating Complainant’s copyright rights in its costumes, masks, and accessories/props—or simply competing hyperlinks. See Compl., at Attached Exs. 15–16 (resolving websites of <aliens-fx.com> and <thepredatormovie.com>). Using a complainant’s likeness, or displaying products related to a complainant may not amount to rights and legitimate interests. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”); see also The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru, FA 1651493 (Forum Jan. 13, 2016) (noting that, as Respondent used the disputed domain to promote Complainant’s distributor without license to do so, Respondent did not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use). Nor does inclusion of competing hyperlinks amount to rights and legitimate interests. See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, <aliens-fx.com> displays identical costume/set material to the goods offered by Complainant under the ALIEN and ALIENS marks. Compare Compl., at Attached Ex. 15 (Respondent’s website), with Compl., at Attached Exs. 8, 11 (Complainant’s materials). Respondent’s <thepredatormovie.com> displays hyperlinks like “Alien Movie Trailer,” “Predator Movie,” and “Watch Predator - On Amazon Video.” See Compl., at Attached Ex. 16. Therefore, the Panel finds Respondent has no rights and legitimate interests in the domain names under Policy ¶¶ 4(c)(i) and (iii);
(f) Complainant contends that Respondent has allegedly offered to sell <thepredatormovie.com> to the general public on the resolving website. General offers for sale may lead to findings that a respondent has no rights or legitimate interests. See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“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 the disputed domain name.”). The instant dispute includes identical facts to the foregoing case. See Compl., at Attached Ex. 16 (“Would you like to buy this domain?”). The Panel therefore finds additional evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant declares that Respondent registered and used the <aliens-fx.com> and <thepredatormovie.com> domain names in bad faith. Complainant notes that Respondent offered the <thepredatormovie.com> domain name for sale on its resolving website, stating, “Would you like to buy this domain?” indicating Policy ¶ 4(b)(i) bad faith. Such an offer has been found to be in bad faith. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (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).”). The Panel agrees in all the circumstances that the query “Would you like to buy this domain?” constitutes a general offer of sale (see Compl., at Attached Ex. 16), and as such constitutes bad faith registration and use of <thepredatormovie.com> under Policy ¶ 4(b)(i).
Secondly, Complainant notes that while two domain names are registered in the instant case, Policy ¶ 4(b)(ii) bad faith is evident. Similar circumstances have returned findings of bad faith. See Albertson's, Inc. v. Bennett, FA 117013 (Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”). As two domain names have been registered by Respondent in this dispute, the Panel finds that a pattern exists under Policy ¶ 4(b)(ii), supporting a finding of bad faith.
Thirdly, Complainant asserts Respondent registered and used the <aliens-fx.com> and <thepredatormovie.com> domain names in bad faith. Specifically, Complainant alleges Respondent’s competitive use of the domain names constitutes bad faith under Policy ¶ 4(b)(iii), and while Respondent presumably profits from Internet user confusion through the inclusion of pay-per-click links and other competing content, Respondent has engaged in Policy ¶ 4(b)(iv) bad faith. Both prongs of bad faith have been found in situations where competitive use is present. See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The Panel notes Complainant’s Exhibits 15 and 16, which display either content directly related to Complainant’s offerings, or simply competing hyperlinks which presumably resolve to competitors of Complainant, and which likely net Respondent commercial gain. The Panel agrees that Respondent’s use demonstrates Policy ¶¶ 4(b)(iii) and (iv) bad faith.
Fourthly, Complainant submits that Respondent opportunistically registered <thepredatormovie.com> domain name in anticipation of Complainant’s upcoming THE PREDATOR movie. Opportunistic bad faith is defined by the following case: Pettigo Comercio Internacional Lda v. Siju Puthanveettil, FA1501001600741 (Forum Feb. 18, 2015) (concluding that because the respondent registered the <lycaradio.com> domain name within hours of a UK media report announcing the acquisition of Sunrise Radio by Lyca, the complainant, the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii)). So while opportunistic bad faith requires a public report, and the registration of a domain name related to such a report; and while Complainant provides Exhibit 11, showing articles regarding its upcoming The Predator movie, the Panel agrees that Respondent opportunistically registered the <thepredatormovie.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Fifthly Complainant argues Respondent’s actual knowledge of Complainant’s ALIEN, ALIENS, PREDATOR, and THE PREDATOR marks and its rights in the marks is clear from explicit references to Complainant on the resolving websites coupled with the fame and notoriety of Complainant. A totality of circumstances is considered in actual knowledge analyses. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Here, Respondent includes the dominant portion of Complainant’s marks and uses the associated websites to publish competing content. The Panel agrees that the totality of circumstances indicates that Respondent had actual knowledge of Complainant and its mark and therefore registered and used the domain names in bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the ALIEN, ALIENS, PREDATOR, and THE PREDATOR marks and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aliens-fx.com> and <thepredatormovie.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
, Panelist
Dated: August 18, 2017
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