Twentieth Century Fox Film Corporation v. Above.com Domain Privacy
Claim Number: FA1307001509035
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <foxsportslive.com>, <foxsportsplus.com>, <foxsportsnw.com>, <foxsportst.com>, and <wwwfoxsportsla.com>, registered with ABOVE.COM PTY LTD.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2013; the National Arbitration Forum received payment on July 10, 2013.
On July 15, 2013, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <foxsportslive.com>, <foxsportsplus.com>, <foxsportsnw.com>, <foxsportst.com>, and <wwwfoxsportsla.com> domain names are registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the names. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.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 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 2013 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@foxsportslive.com, postmaster@foxsportsplus.com, postmaster@foxsportsnw.com, postmaster@foxsportst.com, postmaster@wwwfoxsportsla.com. Also on July 17, 2013, 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 13, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant’s Contentions
Policy ¶ 4(a)(i): Rights of Complainant & Confusing Similarity of Domain Names
1. Complainant uses the FOX SPORTS to televise sporting events to Complainant’s customers throughout the United States. Complainant televises an array of professional sporting events, and millions of consumers view FOX SPORTS television daily. Complainant has registered the FOX SPORTS mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,932,252 registered on October 31, 1995).
2. Respondent registered the <foxsportslive.com>, <foxsportsplus.com>, <foxsportsnw.com>, <foxsportst.com>, and <wwwfoxsportsla.com> domain names. All of the names add generic phrasing or abbreviations such as “la, “nw,” “live,” “www,” or “t” to the FOX SPORTS mark. The addition of the generic top-level domain (“gTLD”) “.com” is not relevant to this analysis. The removal of spacing in the domain names also does not impact a finding of confusing similarity.
Policy ¶ 4(a)(ii): Respondent Lacks Rights or Legitimate Interests in Domain Names
1. Respondent is not known by any of the disputed domain names, as shown by the relevant WHOIS database reports. Complainant also notes that it has never authorized Respondent to make use of the FOX SPORTS mark in domain names.
2. Respondent uses the domain names to host pay-per-click advertisements that promote competing television programming. These sponsored advertisers provide Respondent with commercial consideration for having their products promoted on the disputed domain names’ websites.
3. Respondent lacks rights in the <foxsportsplus.com> and <wwwfoxsportsla.com> domain names as they are offered for sale, thereby indicating that Respondent cannot have any legitimate interest in holding them.
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use and Registration of the Domain Names
1. The <foxsportsplus.com> and <wwwfoxsportsla.com> domain names are subject to a general sale to any interested member of the public, as noted in an auction hosted by Sedo.
2. Respondent’s decision to register all five of these domain names is evidence of a bad faith attempt to prevent Complainant from reflecting its marks in domain names, and demonstrates a pattern of bad faith registration and use.
3. Respondent’s introduction of competing hyperlinks on the websites that resolve from these domain names is evidence of intent to disrupt Complainant’s business in bad faith.
4. Respondent is using the domain names to promote competing hyperlinks, and the confusing similarity of the domain names creates the impression that Complainant may be endorsing the competing goods on the websites.
5. Respondent is clearly engaged in typosquatting the <wwwfoxsportsla.com> domain name, as Internet users who fail to place a period between the “www” and the “foxsportsla” portion of the domain name will be taken to Respondent’s websites, rather than Complainant’s legitimate websites.
6. Respondent had actual knowledge of Complainant’s rights in its FOX SPORTS marks prior to domain name registration. Complainant and its mark are famous, and the domain names only feature terms that imply some connection with the goodwill and services offered under the FOX SPORTS mark.
Respondent registered the disputed domain names on the following dates:
1. <foxsportslive.com>, March 13, 2009.
2. <foxsportsplus.com>, February 25, 2012.
3. <foxsportsnw.com>, March 25, 2009.
4. <foxsportst.com>, July 1, 2012.
5.
<wwwfoxsportsla.com>, December 17, 2013.
Respondent did not submit a Response.
1. Respondent’s <foxsportslive.com>, <foxsportsplus.com>, <foxsportsnw.com>, <foxsportst.com> and <www.foxsportsla.com> domain names are confusingly similar to Complainant’s FOX SPORTS mark.
2. Respondent does not have any rights or legitimate interests in the <foxsportslive.com>, <foxsportsplus.com>, <foxsportsnw.com>, <foxsportst.com> and <www.foxsportsla.com> domain names.
3. Respondent registered or used the <foxsportslive.com>, <foxsportsplus.com>, <foxsportsnw.com>, <foxsportst.com> and <www.foxsportsla.com> 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 asserts that it uses the FOX SPORTS to televise sporting events to Complainant’s customers throughout the United States. Complainant notes that it has registered the FOX SPORTS mark with the USPTO (Reg. No. 1,932,252 registered October 31, 1995). The Panel agrees that Complainant’s Policy ¶ 4(a)(i) rights in the mark are sufficiently shown by its USPTO registration, regardless of where Respondent is located. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant next asserts that the <foxsportslive.com>, <foxsportsplus.com>, <foxsportsnw.com>, <foxsportst.com>, and <wwwfoxsportsla.com> domain names each add generic phrasing or abbreviations such as “la, “nw,” “live,” “www,” or “t” to the FOX SPORTS mark. Complainant claims the addition of the gTLD “.com” is not relevant to this analysis. Complainant also argues that the removal of spacing in the domain names should not affect a finding of confusing similarity between the domain names and Complainant’s mark. The Panel agrees with Complainant in regards to the spacing in the domain names, and the introduction of the gTLD. See 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)). The Panel also agrees that generic terms such as “live,” “plus, or “t” do nothing to distinguish these domain names. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity). The Panel also agrees that geographic terms such as “nw” or “la” enhance the confusing similarity of the domain names. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). The Panel also finds that the introduction of the “www” prefix is evidence of confusing similarity. Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”). Therefore, the Panel concludes in finding that all of the domain names are confusingly similar to the FOX SPORTS 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); 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 is not known by any of the disputed domain names, as shown by the relevant WHOIS database information. Complainant also notes that it has never authorized Respondent to make use of the FOX SPORTS mark in domain names. The Panel observes that Respondent used the “Above.com Domain Privacy” service as to register the domain names. The Panel thus finds that absent Complainant’s consent to use the FOX mark, and considering the WHOIS information for the domain names’ registrant, Respondent could not be known by the domain names under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant also claims that Respondent uses the domain names to host pay-per-click advertisements that promote competing television programming. Complainant argues that these sponsored advertisers provide Respondent with commercial consideration in exchange for having their products promoted on the resolving websites. The Panel notes that the domain names resolve to websites that promote competing sports programming services provided by entities such as “ESPN,” “Yahoo!,” “Dish TV,” “MSN,” “Hulu,” and “Al Jazeera Sport TV.” See Complainant’s Ex. 13. The Panel agrees that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering, nor Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain names, when Respondent promotes Complainant’s competitors through these disputed domain names. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Complainant also argues that Respondent lacks rights in the <foxsportsplus.com> and <wwwfoxsportsla.com> domain names as they are subject to a general sale, indicating that Respondent cannot have any legitimate interest in holding them. The Panel notes that it appears that interested the domain names are offered for sale through a Sedo.com auction. See Complainant’s Ex. 14. The Panel thus finds that Respondent cannot have a Policy ¶ 4(a)(ii) right or legitimate interest in either of the <foxsportsplus.com> and <wwwfoxsportsla.com> domain names as Respondent is clearly willing to part with the domain names. See Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
Complainant argues that the <foxsportsplus.com> and <wwwfoxsportsla.com> domain names are subject to a general sale to any interested member of the public, as noted in an advertisement on the Sedo.com website. The Panel notes that Complainant’s Exhibit 14 demonstrate that the domain names are clearly for sale through the Sedo auctioning services. The Panel thus finds Policy ¶ 4(b)(i) bad faith in regards to the <foxsportsplus.com> and <wwwfoxsportsla.com> domain names as Respondent is willing to sell off these domain names to the highest bidder. See 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 also contends that Respondent’s decision to register all five of these domain names is evidence of a bad faith attempt to prevent Complainant from reflecting its marks in domain names. In Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000), the panel agreed that the presence of multiple infringing domain names subject to dispute was enough evidence to find a pattern of bad faith use and registration. The Panel here likewise agrees that Respondent’s registration of the <foxsportslive.com>, <foxsportsplus.com>, <foxsportsnw.com>, <foxsportst.com>, and <wwwfoxsportsla.com> domain names evidences Policy ¶ 4(b)(ii) bad faith.
Complainant also claims that Respondent’s introduction of competing hyperlinks on the websites that resolve from these domain names is evidence of intent to disrupt Complainant’s business in bad faith. The Panel notes the various competing hyperlinks available on each of the disputed domain names’ landing pages. See Complainant’s Ex. 13. The Panel concludes that the presence of competing hyperlinks can in itself establish a Policy ¶ 4(b)(iii) bad faith intent to disrupt Complainant’s business under the FOX SPORTS mark. See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant next contends that Respondent is using the domain names to promote competing hyperlinks, and the confusing similarity of the domain names creates the impression that Complainant may be endorsing the competing goods on the websites. The Panel again notes that each of the Exhibit 13 pictures illustrate that the domain names promote the FOX SPORTS mark explicitly, along with competing and unrelated advertisements. The Panel finds that because Respondent necessarily is compensated for hosting these hyperlinks, Respondent is engaging in a Policy ¶ 4(b)(iv) bad faith scheme to confuse Internet users into believing Complainant and the FOX SPORTS mark affiliate and endorse the content accessible through these disputed domain names. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant notes that Respondent has typosquatted the <wwwfoxsportsla.com> domain name, as Internet users who mistype the web address for Complainant’s legitimate domain name at <foxsportsla.com>, by failing to place a period between the “www” and the “foxsportsla” portion of the domain name, will be taken to Respondent’s website. The Panel agrees that domain names incorporating the prefix “www” are often found to demonstrate Policy ¶ 4(a)(iii) bad faith through typosquatting; however, the Panel finds that the addition of “la” is not consistent with typosquatting, and therefore concludes that the <wwwfoxsportsla.com> domain name does not actually constitute a typosquatted domain name. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (“Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.”).
Complainant finally argues that Respondent had actual knowledge of Complainant’s rights in its FOX SPORTS marks prior to domain name registration. Complainant claims that its business and its mark are famous, and the domain names only feature terms that imply some connection with the goodwill and services offered under the FOX SPORTS mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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 <foxsportslive.com>, <foxsportsplus.com>, <foxsportsnw.com>, <foxsportst.com>, and <wwwfoxsportsla.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 26, 2013
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