Twentieth Century Fox Film Corporation v. Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org
Claim Number: FA1608001691595
Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., United States. Respondent is Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fox-news-trump.com>, registered with Launchpad.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 29, 2016; the Forum received payment on August 29, 2016.
On August 30, 2016, Launchpad.com Inc. confirmed by e-mail to the Forum that the <fox-news-trump.com> domain name is registered with Launchpad.com Inc. and that Respondent is the current registrant of the name. Launchpad.com Inc. has verified that Respondent is bound by the Launchpad.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 August 31, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2016 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@fox-news-trump.com. Also on August 31, 2016, 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 September 26, 2016, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions:
Complainant is one of the world’s leading and largest entertainment and media companies. Complainant has registered the FOX NEWS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,697,433, registered Mar. 18, 2003), which demonstrates Complainant’s rights in its mark. See Compl., at Attached Ex. 7. The <fox-news-trump.com> domain is confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and merely adds the term “Trump,” two hyphens, and the generic top-level domain (“gTLD”) “.com.” The domain also eliminates the spaces between the words of Complainant’s mark.
Respondent has no rights or legitimate interests in the domain. Respondent is not commonly known by the terms of the domain, and Complainant has not authorized Respondent to use its FOX NEWS mark. Further, Respondent is not using the domain in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent uses the domain to provide fake news, which competes with Complainant’s legitimate news service. See Compl., at Attached Ex. 8. Additionally, Respondent’s use of Complainant’s FOX NEWS mark on its website, and its mimicking of Complainant’s FOX NEWS website formatting, are evidence that Respondent is using the domain to pass itself off as Complainant. Finally, Respondent uses its resolving website to download malware onto Internet users’ computers. See Compl., at Attached Exs. 9 and 10.
Respondent registered and is using the domain in bad faith. First, Respondent’s use of the domain to promote a competing news service constitutes bad faith under Policy ¶¶ 4(b)(iii) and (iv). Second, Respondent uses the domain to pass itself off as Complainant, in violation of Policy ¶ 4(b)(iv). Third, it is clear that Respondent registered the domain with actual knowledge of Complainant’s mark and rights therein. Finally, Respondent’s use of the domain in connection with malware is evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is one of the world’s leading and largest entertainment and media companies.
2. Complainant has registered the FOX NEWS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,697,433, registered Mar. 18, 2003).
3. Respondent registered the disputed domain name on June 17, 2016.
4. Respondent uses the domain name to provide fake news, which competes with Complainant’s legitimate news service, mimick Complainant’s FOX NEWS website formatting, pass itself off as Complainant and download malware onto Internet users’ computers.
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 issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant is one of the world’s leading and largest entertainment and media companies. Complainant has registered the FOX NEWS mark with the USPTO (e.g., Reg. No. 2,697,433, registered Mar. 18, 2003), which Complainant argues demonstrates its rights in the mark. See Compl., at Attached Ex. 7. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), with respect to the geographic disparity of the parties. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed <fox-news-trump.com> domain name is identical or confusingly similar to Complainant’s FOX NEWS mark. Complainant argues that the <fox-news-trump.com> domain name is confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and merely adds the term “Trump,” two hyphens, and the gTLD “.com.” Complainant also maintains that the domain name eliminates the spaces between the words of Complainant’s mark. Panels have determined that these changes are insufficient to differentiate a respondent’s domain name and a complainant’s mark pursuant to Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (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)). For these reasons, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
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 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 (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 FOX NEWS mark and to use it in its domain name and has added the word “Trump” which does not detract from the confusing similarity that is clearly present but suggests that the domain name is referring to the news broadcasts of Complainant on which the public figure Donald Trump appears;
(b) Respondent registered the disputed domain name on June 17, 2016;
(c) Respondent uses the domain name to provide fake news, which competes with Complainant’s legitimate news service, mimick Complainant’s FOX NEWS website formatting, pass itself off as Complainant and download malware onto Internet users’ computers;
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts;
(e) Complainant also alleges that Respondent has no rights or legitimate interests in the domain name as Respondent is not commonly known by the terms of the domain name, and that Complainant has not authorized Respondent to use its FOX NEWS mark. The Panel notes that the WHOIS information merely lists “Domain Admin” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. The Panel notes Attached Exhibit 1 for additional WHOIS information. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(f) Complainant argues that Respondent is not using the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, according to Complainant, Respondent uses the domain name to provide fake news, which competes with Complainant’s legitimate news service. Specifically, Complainant contends that Respondent’s website features a fake news article, “Donald Trump reveals simple plan to help every American earn more money.” See Compl., at Attached Ex. 8. Panels have determined that a respondent’s use of a domain name to provide a competing service does not constitute 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 Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). As such, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name;
(g) Complainant submits that Respondent’s use of Complainant’s FOX NEWS mark on its website, and its mimicking of Complainant’s FOX NEWS website formatting, are evidence that Respondent is using the domain name to pass itself off as Complainant. Id. Panels have routinely decided that a respondent’s use of a domain name to pass itself off as a complainant is evidence that the respondent lacks rights and legitimate interests in the disputed domain name. See Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)). For this reason, the Panel finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use;
(h) Finally, Complainant contends that Respondent uses its resolving website to download malware onto Internet users’ computers. Specifically, Complainant maintains that Respondent’s fake news article (“Donald Trump reveals simple plan to help every American earn more money”) advertises and promotes a get-rich-quick scheme named “Home Cash Code” and links to a malicious software website. See Compl., at Attached Exs. 9 and 10. Panels have agreed that a respondent’s use of a domain name to direct Internet users to websites which attempt to download malware and/or viruses onto their computers does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). As the Panel agrees with Complainant, it finds that Respondent lacks rights and legitimate interests in the domain name.
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 name.
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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent’s use of the domain name to promote a competing news service constitutes bad faith under Policy ¶¶ 4(b)(iii) and (iv). Panels have decided that a respondent’s use of a domain name to provide competing products and/or services is evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market). Therefore, the Panel finds that Respondent registered and is using the domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant contends that Respondent uses the domain name to pass itself off as Complainant, in violation of Policy ¶ 4(b)(iv). Panels have held that a respondent’s attempt, through a disputed domain name, to pass itself off as a complainant constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). As such, the Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that it is clear that Respondent registered the domain name with actual knowledge of Complainant’s mark and rights therein. In support of this contention, Complainant references the fame of its FOX NEWS mark and Respondent’s use of the disputed domain name to offer fake news and mimick Complainant’s legitimate website. Panels have held that a respondent demonstrated bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Accordingly, the Panel finds that Respondent registered the domain name with actual knowledge of Complainant’s mark, thereby violating Policy ¶ 4(a)(iii).
Fourthly, Complainant claims that Respondent’s use of the domain name in connection with malware is evidence of bad faith. Panels have decided that a respondent’s use of a domain name to download malware onto Internet users’ computers is evidence that the respondent registered and is using the domain name in bad faith. See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”). As the Panel accepts Complainant’s argument, it finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(a)(iii).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <fox-news-trump.com> domain name using the FOX NEWS mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it 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 <fox-news-trump.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: October 3, 2016
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