Fox Media LLC v. Global Investor Media Ltd. / Global Investor Media Limited
Claim Number: FA2006001900503
Complainant is Fox Media LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, United States. Respondent is Global Investor Media Ltd. / Global Investor Media Limited (“Respondent”), represented by Ankur Raheja of CyLaw Solutions, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <foxnewsmedia.com> (the “Disputed Domain Name”), registered with easyDNS Technologies Inc..
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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 16, 2020; the Forum received payment on June 16, 2020.
On June 18, 2020, easyDNS Technologies Inc. confirmed by e-mail to the Forum that the <foxnewsmedia.com> domain name is registered with easyDNS Technologies Inc. and that Respondent is the current registrant of the name. easyDNS Technologies Inc. has verified that Respondent is bound by the easyDNS Technologies 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 June 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 2020 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@foxnewsmedia.com. Also on June 19, 2020, 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 July 13, 2020.
Complainant filed an Additional submission on July 20, 2020.
Respondent filed an Objection to Complainant’s Additional Submission, and in the alternative, an Additional Submission, on July 23, 2020.
On July 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kendall C. Reed 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s contentions may be summarized as follows.
Complainant is a news, sports, and entertainment company with a focused portfolio of media assets in live news, sports, original entertainment programming, including website based television network and programming services located at the domain names <fox.com>, <foxsports.com>, and <foxnews.com>.
Complainant owns an extensive portfolio of trademark registrations in the US, the EU, and numerous other countries throughout the world including, without limitation: FOX (registered 1915), FOX NEWS (registered 2001), and FOX NEWS CHANNEL (registered 1997). [These trademarks are sometimes referred to herein individually and/or collectively as Complainant’s Marks.]
Complainant’s FOX NEWS NETWORK is the highest rated news network in terms of viewers. As of June 1919, complainant’s FOX NEWS NETWORK is the top-rated national cable news channel in both Monday to Friday prime time and totally daily viewing and has held its number one status for 70 consecutive quarters, according to Nielsen.
Complainant’s highly popular website for its FOX NEWS services receives tens of millions of online visitors, and is located the domain name <foxnews.com>, which is been used since 1995 for the FOX NEWS website. Complainant’s FOX NEWS website is also accessible via Complainant’s domain name <foxnewchannel.com>, which is been used since at least 2005 for the FOX NEWS website., Complainant’s FOX NEWS website offers numerous services including news, live programming, videos, and interactive features.
The commercial success of Complainant’s news programming under its FOX, FOX NEWS, and FOX NEWS CHANNEL marks have been tremendous, with many billions of dollars’ worth of products and services sold under these marks over the years. Complainant also extensively and widely advertises and promotes its news products and services under the FOX, FOX NEWS, and FOX NEWS CHANNEL marks, and spends many millions of dollars every year to do so.
By virtue of the inherent strength of the FOX NEWS and FOX NEWS CHANNEL marks as applied to Complainant’s services and products, and the extensive use and promotion of these marks for many years, the FOX NEWS and FOX NEWS CHANNEL marks have long become famous.
The Disputed Domain Name is confusingly similar to Complainant’s Marks for the following reasons.
1. The Disputed Domain Name is comprised of Complainant’s Marks in their entireties and the additional terms “media” and/or “news” and the gTLD “com”, which are not sufficient to create a meaningful distinction.
2. The Disputed Domain Name is also confusingly similar to Complainant’s FOX NEWS CHANNEL mark because it contains FOX NEWS, the dominant portion of the mark. Combining the dominant portion of complainant’s FOX NEWS CHANNEL mark within an additional term (“media”) is insufficient to distinguish the Disputed Domain Name from Complainant’s mark.
3. Indeed, it the addition of the term “media” to Complainant’s FOX mark heightens the confusing similarity of the Disputed Domain Name because such term directly relates to Complainant’s business.
Respondent has no legitimate interest in the Disputed Domain Name for the following reasons.
1. Respondents registration and use of the Disputed Domain Name for a “parked” website featuring advertisement for Respondent’s registrar does not constitute a bona fide offering of services or legitimate noncommercial use. Using the Disputed Domain Name to advertise third-party services and products is not a legitimate interest under the policy.
2. Respondent’s registration and use of the Disputed Domain Name for a “parked” page is analogous to “passive holding,” which does not constitute a bona fide offering of goods or services or a legitimate noncommercial fair use.
3. Nothing and respondent’s WHOIS information or the record demonstrates that Respondent was commonly known by the Disputed Domain Name prior to its registration, and Complainant has not authorized Respondent to use Complainant’s Marks.
Respondent’s registration and use of the Disputed Domain Name has been in bad faith for the following reasons.
1. Respondent uses the Disputed Domain Name to intentionally attract Internet users to the website associated with the Disputed Domain Name by creating a likelihood of confusion with Complainant and Complainant’s Marks as the source, sponsorship, affiliation, and/or endorsement of such website. Regardless of whether Respondent attempts to profit from its use of the Disputed Domain Name directly or indirectly, the confusing similarity of the Disputed Domain Name trades on Complainant’s goodwill to the benefit of Respondent and to the detriment of Complainant.
2. Respondent’s use of the Disputed Domain Name disrupts Complainant’s business by (a) unfairly competing with Complainant for Internet traffic, (c) diverts Internet users seeking Complainant’s services and products offered under Complainant’s Marks, and (c) interferes with Complainant’s ability to control the use of its federally registered marks.
3. Respondent’s passive holding of the Disputed Domain Name constitutes bad faith under the policy.
4. There is no question that Respondent registered the Disputed Domain Name in bad faith with knowledge of Complainant and Complainant’s Marks given the fame of Complainant’s Marks and Respondent selection and registration of a domain name that contained two of Complainant’s Marks in their entireties. Registration of a domain name with knowledge of the trademark owner’s rights is bad faith under the policy.
B. Respondent
Respondent contentions may be summarized as follows.
Respondent is Global Investor Media Limited, whose Company’s director is Mr. Abdurrazaq Lawal. Mr. Lawal is also a director with Fox News Media Limited. Mr. Lawal was the initial company promoter for both of entities.
Global Investor Media Limited is the holding company for Fox News Media Limited.
The Certificate of Incorporation for Fox News Media Limited was issued by Companies House[i] August 8, 2013. Mr. Lawal’s purpose for this entity was to publishing consumer and business journals and periodicals.
The Disputed Domain Name, <foxnewsmedia.com>, was registered by Mr. Lawal on July 20, 2013 further to the effort to establish Fox News Media Limited.
The name for this business occurred to Mr. Lawal during the course of the year preceding his registration of the Disputed Domain Name and the incorporation of Fox News Media Limited. He thought that the expression “news media” was descriptive of his proposed activities, and he believed these words were generic. A recent Google search showed that there are some 17 million entries under this expression and a record search of the company’s house UK showed that there are some 61,000 entries including these words.
More specifically, the word “fox” came to Mr. Lawal because of its association with the animal; Respondent had feral foxes in own garden in London. The word “fox” also occurred to him because of its common usage as a business name in the UK. A recent Google search for this word finds references mostly to the animal and various businesses. A recent search of the company’s house, UK website, shows over 18,000 businesses with a name that includes the word “fox.”
Respondent’s registration of the Disputed Domain Name was in good faith because Respondent became fascinated with the common word and the love of the fox animal that led to his adaptation and incorporating the name into a business name now called Fox News Media limited. Respondent strongly believed that no party could claim exclusive rights in the combination of these words and memorable domain name <foxnewsmedia.com>. Respondent recognized that the Disputed Domain Name had inherent value and was useful for the company’s proposed business of publishing of consumer and business journals and periodicals.
Mr. Lawal was not aware of Complainant’s use of the word “fox” at the time he registered the Disputed Domain Name and filed the articles of incorporation for his business that he recalls.
Mr. Lawal moved to the UK from Belgium in early 2012, and he does not remember having known about any news channel by the name of FOX NEWS, or the Complainant, or Complainant’s Trademarks before he registered the Disputed Domain Name. Even the Wikipedia page for "FX TV Netherland” shows that it had intermittent presence over the years from 1998 to 2001 and later re-launched on August 1, 2013, but the program line up does not refer exactly to FOX NEWS.
The Complainant has not provided any evidence as to the popularity of Fox News in the UK as of the time of registration of the Disputed Domain Name, except for the Trademark Certificates for EUIPO.
In the UK, Complainant’s use of the word “FOX” has been limited. Mr. Lawal was not able to ascertain when the Complainant started broadcasting the Fox News Channel in the UK, but it was discontinued in 2017 for lack of viewership, being at the time only some 2000 viewers per day.
Complainant’s interest in the Disputed Domain Name has only arisen recently in connection with the above noted pending trademark applications for FOX NEWS MEDIA. Given the easily available and accessible tools for researching domain names such as DomainTools.com and DomainIQ.com, it is impossible to believe that Complainant did not know about the Disputed Domain Name for the past seven years. Rather, it is only recently that Complainant has developed an interest, and this can only be in combination with the noted trademark applications. As such, Complainant clearly was not concerned about the Disputed Domain Name with respect to its previously existing trademarks.
Respondent has registered several domain names in the past decade, mostly as and when he plans to incorporate a company and not otherwise. Respondent does not have any interest in registering any domain names for selling purposes and never before has it been named in a UDRP proceeding.
Respondent is a holding company that owns several domain names, one of which is currently being used, <globalclimatefinance.org.>, while others have been mostly left parked with the domain registrar with default name servers, with no intention to show any advertisements or earn any revenue.
The website at <globalclimatefinance.org> clearly reads that global climate finance is a leader in providing high quality reports, news, insightful content, opinions, data, and in-depth analysis from industry experts on climate change. This website serves an elite audience in political, financial, busines and academic circles.
Respondent denies that the Disputed Domain Name has been parked and passively held for the reasons noted below, but the Disputed Domain but has been held as the Respondent is known by the Disputed Domain Name and it has default domain registrar name server EASYDNS.
Complainant has no rights under policy paragraph 4(a)(i) for the following reasons.
1. Complainant’s rights focus on the word “FOX” only. Words that are used by Complainant in connection with this word, such as “news media,” “news,” “sports news,” “news active,” “news radio” and “news talk” are all disclaimed in Complainant’s trademark registrations and these other words cannot therefore provide a basis for rights under the Policy.
2. The remaining word, “FOX,” is generic and as such cannot differentiate Complainant’s services from the goods and services of others. The use of a generic term does not inevitably lead to the conclusion that the Respondent has intended to copy Complainant’s various trademarks.
3. Complainant has no rights under the policy for the expression FOX NEWS MEDIA because complainant has only recently (2019 and 2020) filed trademark applications in the US and in the EU for this expression, none of these trademark applications have matured into registrations, and trademark applications do not confer rights under the Policy.
4. These pending applications for FOX NEWS MEDIA consist of word elements and design elements, and given the noted generic nature of the word “FOX” and the disclaimer of the remaining word elements, the design elements necessarily comprise the dominant part of each of these applications. In such a situation a panel may conclude that the trademarks would confer no rights under the Policy.
5. For purposes of common law rights, if they exist, they must exist for the word “FOX” alone given the noted disclaimers with respect to other words used by the Complainant in combination with it. As such, any evidence presented by Complainant in support of a claim for common law rights must focus on this one word.
6. Even assuming Complainant at some time had common law rights in the word “FOX”, Complainant has abandoned broadcasting the FOX News channel in the UK (as of 2017), which raises a legitimate question about whether Complainant has thusly forfeit such common law rights for purpose of the Policy.
The Respondent has rights and legitimate interest in the Disputed Domain Name for the following reasons.
1. This element of the Policy focuses on Respondent’s rights or legitimate interests and does not allow for an analysis of who has the superior rights. Any right or legitimate interest on the part of Respondent is sufficient.
2. Respondent does have rights and legitimate interests in the Disputed Domain Name because it constitutes Respondent’s company name, Fox News Media Limited, as demonstrated by a copy of the Certificate Incorporation attached as an exhibit, and as such Respondent is commonly known by the Disputed Domain Name.
3. Respondent has not been passively holding the Disputed Domain Name. Rather, it promptly undertook preparations to use the Disputed Domain Name pursuant to the Policy. It printed letterhead, visiting cards, uses of emails IDs, and it delegated website development to a website development company located in India to which it paid $3,000 for this work against a contract price of $4,500. Unfortunately, this effort was not successful, and led to a legal dispute. Since that time, respondent has been focused on other matters, including its website Global Climate Finance.
The Disputed Domain Name should not be considered as having been registered and used in bad faith by respondent for the following reasons.
1. Complainant has provided no evidence that Respondent registered the Disputed Domain Name targeted the Complainant and Complainant’s trademarks. Respondent did not do this, but rather registered the Disputed Domain Name because of its common generic or descriptive meaning.
2. Complainant has provided no reason or explanation as to why or how the Respondent could have known about Complainant or Complainant’s asserted rights. Actual knowledge of the Complainant and Complainant’s Marks must exist for a finding of bad faith, constructive knowledge with respect to trademark registrations is not sufficient.
3. Given that the Disputed Domain Name contains a combination of generic words, it is necessary for Complainant to have provided evidence in its complaint herein as to (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public recognition, and (v) consumer surveys, to establish secondary meaning in the keyword in UK jurisdiction. The Complainant has not done this.
Further, Respondent requests that the Panel issue a finding of Reverse Domain Name Hijacking in addition to denying the Complaint. Complainant has no basis for this claim and the Complainant (through its counsel) knew or should have known this before filing the Complaint. Respondent also submits that any amount of due diligence would have shown that the Complainant could not prove all of the UDRP conditions for transfer of the Disputed Domain Name.
C. Additional Submissions
Claimant’s Additional Submission may be summarized as follows.
Respondent’s actions with respect to the Disputed Domain Name constitute a classic case of cybersquatting. Respondent registered the Disputed Domain Name that contains Complainant’s federally registered FOX mark in its entirety and did so long after Complainant’s FOX NEWS Mark became famous in the media industry and elsewhere. In his response, Respondent admits that he is a British citizen who had business activities in the UK in the fields of news and publishing dating back to 2010 and prior to his registration of the Disputed Domain Name, and that he intended to use the Disputed Domain Name for a directly competing, commercial website featuring news content and selling advertising, which clearly falls within the parameters of the bad faith provisions of the Policy.
Complainant’s long-term use of Complainant’s Marks prior to Respondent’s registration of the Disputed Domain Name clearly establishes Complainant’s standing to bring the Complaint herein.
Respondent’s argument that Complainant must have rights in a trademark that is identical in all respects to the Disputed Domain Name is incorrect.
Respondent’s additional attacks on Complainant’s rights under the Policy with respect to Complainant’s Marks likewise have no merit for the following reasons. First, Respondent is not correct when it asserts that Complainant has rights only in the mark FOX because words used in connection there with are disclaimed. The disclaimers in Complainant registrations for the marks FOX NEWS and FOX NEWS CHANNEL, among others, merely acknowledges that Complainant does not own rights in the individual disclaimed words, but do not in any way diminish Complainant’s rights in the registered marks in their entireties. Second, Respondent is not correct in its assertion that Complainant’s FOX mark is generic. The mere presence of the term “Fox” in the English dictionary in no way diminishes complainant’s rights in the FOX mark. The important point is that FOX is an arbitrary mark as applied to Complainant services and is therefore inherently distinctive and protectable trademark. Finally, Respondent is not correct that Complainant does not have trademark rights in the UK. Not only are Complainant’s rights in the UK covered by its EU registrations of record in this proceeding, Complainant also owns common law rights through use of the FOX NEWS Mark in the UK where it has long conducted business. Significantly, prior to Respondent’s registration of the infringing company name Fox News Media Limited, Complainant was the only company in the UK that registered a company name comprised of FOX NEWS.
Fox has satisfied the second element of Policy ¶ 4(a)(i) by showing that the Disputed Domain Name is confusingly similar to the Complainant’s Marks because the Disputed Domain Name contains two of Complainant’s Marks, FOX and FOX NEWS, in their entireties, and the dominant portion of complainant’s FOX NEWS CHANNEL marks. These facts alone are sufficient to satisfy Policy ¶ 4(a)(i).
Complainant has satisfied policy paragraph 4(a)(ii) by showing the following. First, Complainant offers an array of products and services including news and has done so for many years and owns many registrations for its FOX marks covering online services, news services and television broadcasting services, among other things. And second, Respondent’s registration and use of the Disputed Domain Name for a “parked” website does not demonstrate any legitimate interest on Respondent’s part. Additionally, Respondent’s response demonstrates that Respondent has no legitimate interests under Policy paragraph 4(c). Specifically, Respondent’s registration of the Disputed Domain Name and his subsequent registration of the company name Fox News Media Limited for directly competing services does not constitute a bona fide offering of services or legitimate noncommercial use or establish that Respondent was commonly known by the domain name prior to its registration.
It is to be emphasized that Respondent’s registration of the company name Fox News Media Limited for news related activities (“Publishing of consumer and business journals and periodicals”) occurred after he registered the Disputed Domain Names, and thus fails to establish the existence of the name (which he claims satisfies the requirement of policy paragraph 4(c)(i)) at the time of registration of the Disputed Domain Name.
Further still, Respondent’s registration of the company name Fox News Media Limited does not, as suggested, verify that the name is not infringing or otherwise validated. As shown at the top of print outs from the Company’s House website: “Company House does not verify the accuracy of the information filed,” and this notice links to a further statement: “The fact that the information has been placed on the public record should not be taken to indicate the Company’s House has verified her validated it in any way. When Companies House examines accounts it only makes basic checks on them, for example to ensure that the appropriate documents are there, that they are for the correct financial year and that they have been signed.”
Given Respondent’s activities in the news industry that are clearly competitive with Complainant’s and its FOX NEWS services, Respondent’s claim that he had no knowledge of complainant or its FOX NEWS mark because he was located in the Netherlands prior to 2012 it is not credible. Complainant’s FOX NEWS services have been offered on a global basis, including in the UK and the Netherlands, since 1995 through its <foxnews.com> website. Moreover, respondent’s claim is highly misleading because his response shows that he is a British citizen who has business activities in the UK in the fields of news and publishing that predate or were contemporaneous with his registration of the Disputed Domain Name. Specifically, in 2010 he registered in the UK the company names Financial Risk Media Limited and Financial Risk Limited, and the Companies House print outs related to both of these company names list a London address, and the business category listed for each is “publishing learned journals.” And in August 2013, Respondent registered in the UK the company name Global Climate Financial Limited in the UK in the business category of “publishing of consumer and business journals and periodicals,” which relates to his news website later posted at the domain name <globalclimatefinace.org>.
Similarly, Respondent’s several explanations for his use of the word “fox” within the Disputed Domain Name also have no credibility because Complainant stated purpose, which was “Publishing of consumer and business journals and periodicals,” has no logical connection to or association with the animal known as the fox.
Respondent laches defense has no merit. In order to establish a claim for laches, Respondent would need to prove that Complainant knew about the Disputed Domain Name for years (which it did not) and that Respondent relied to his detriment or changed his conduct based upon Complainant’s supposed inaction, none of which Respondent has established.
Respondent’s argument that Complainant is somehow precluded from acting against Respondent because other third-party domains contain Complainant’s Marks is incorrect. The improper conduct of third parties does not excuse Respondent’s improper conduct, and Complainant is under no obligation to act against every infringing use.
With respect to bad faith, Respondent’s intended use, competition with complainant, constitutes additional evidence of bad faith. Indeed, since the Complaint was filed in this action, the content on the <foxnewsmedia.com> has been changed to add news content.
With respect to Respondent’s claim of Reverse Domain Name Hijacking, there are no grounds for it because Complainant has met its burden under the Policy.
Respondent’s Additional Submission may be summarized as follows.
Respondent objects to Complainant’s Additional Submission because it is not in compliance with established UDRP procedure. Complainant did not seek leave from the Panel to file an Additional Submission as required by UDRP Rule 12 and Forum Supplemental Rule 7, and as such Respondent did not have an opportunity to object to further submissions.
If the Panel decides to admit Complainant’s Additional Submission, the Respondent provides the following Additional Submission.
Respondent strongly objects to being called a cyber squatter. Respondent is a genuine domain name registrant. Respondent already stated in his response that he registered various domain names for nine years, some of which he did not retain after the companies were dissolved. Moreover, Respondent did register other companies in 2010 while he was in the Netherlands from 2007 to 2008 until January 2012 and information about these 2010 companies were already referenced within the Response.
Respondent objects to Complainant bringing forth a new point about competition with respect to the statements and suggestions made in Respondent’s Website Proposal. These statements and suggestions were generated by the website development team as per their experience and were not those of the Respondent, and in any case are not fairly interpreted as indicative of competition. The website development company was merely trying to present many features in order to justify its fees. In any event, and looking at respondent’s website@globalclimatefinance.org, his purpose there in no way competes with the Complainant, who has no presence in the UK. Further, Complainant has never objected to his activities on that website, which proves Respondent is not competing with the Complainant.
And, Complainant has not identified the launch date for its Fox News programming in the UK nor has Complainant produced any evidence as to the popularity of the Fox News Channel in the UK, which is necessary to prove secondary meaning. More specifically, in order to establish secondary meaning, Complainant must show evidence of: (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media,) recognition, and (v) consumer surveys, to establish secondary meaning in respondent’s jurisdiction.
Further, such a showing is required to demonstrate Respondent’s knowledge as of the time it registered the Disputed Domain Name about Complainant and Complainant’s Marks
Respondent makes comments with respect to exhibits attached to Complainant’s Additional Submission, and thereby makes the following points.
1. Complainant’s reference to it being the only company in the UK that registered a company name comprised of FOX NEWS prior to Respondent’s registration for its company name is misleading. Complainant merely establish a branch office in 1997 and no further returns were filed. Consequently, Complainant’s company was closed down by Companies House in 2003. As such and as of the time Respondent registered his company in 2013, there was no active company on record with Companies House with the combination of the words “Fox News.”
2. Complainant’s reference to the disclaimers appearing on the Companies House website is misleading because Complainant does not identify the information to which they relate. In fact, Companies House is merely trying to disclaim its liability in case anyone acts on information presented upon its website.
3. Any change in the parking page for the Disputed Domain Name is not controlled by the Respondent, and in fact no change can be made while the Disputed Domain Name is locked as a result of these UDRP proceedings. No change in name server has been made for the last many years.
With respect to Reverse Domain Name Hijacking, the Complainant should have realized that it was obvious that this claim could not succeed, but instead of withdrawing it, Complainant pressed its case in its additional written statement, thereby compounding it’s bad faith in this regard.
Complainant’s arguments with respect to the timing of Respondent’s registration of the Disputed Domain Name with respect to the timing of the issuance of the Articles of Incorporation is misleading. These occurred at or about the same time, within days of each other, and part of a legitimate unitary effort.
In any event, the panel cannot ignore the present acceptance by Companies House of the Respondent’s company name in its declared area of business. As such, Respondent did have rights or legitimate interests in the Disputed Domain Name under the Policy.
Lastly, the principal of latches does apply here. The Disputed Domain Name has been registered since 2013, and Complainant’s action hereunder constitutes a delay of seven years, which is too long.
Complainant owns registrations for the trademarks FOX (registered 1915), FOX NEWS (registered 2001), and FOX NEWS CHANNEL (registered 1997) in the United States and in numerous other countries, with other dates of registration, as well as many additional trademarks that include the word “FOX.”
Complainant has spent millions of dollars per year thorough the world advertising promoting under Complainant’s Marks.
Complainant’s Marks are famous on a world-wide basis, including in the UK, and were on the date the Respondent registered the Disputed Domain Name.
Respondent is a holding company that owns Fox News Media Limited.
The Certificate of Incorporation for Fox News Media Limited was issued by Companies House on August 8, 2013.
Mr. Abdurrazaq Lawal is the initial promoter of Respondent and Fox News Media Limited.
Mr. Lawal registered the Disputed Domain Name on July 20, 2013.
Mr. Lawal’s purpose for forming Fox News Media Limited was to publish consumer and business journals and periodicals.
The Respondent owns the domain name <globalclimatefinance.org.> that resolves to a website on which is presented high quality reports, news, insightful content, opinions, data, and in-depth analysis from industry experts on climate change. This website is a leader in this arena, and this website serves elite audiences in politics, finance, business, and academic circles.
The Disputed Domain Name has been parked at a third-party website since it was registered.
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.
Preliminary Issue – Respondents’ Objection to Complainant’s Additional Submission
Respondent objects to Complainant’s Additional Submission, arguing that such is not allowed under UDRP Rule 12 and The Forum’s Supplemental Rule 7 unless leave is first requested from the Panel.
This objection is overruled.
UDRP Rule 12 reads as follows: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.
The Panel interprets this rule not as a limitation, but as clarifying that Panels have unfettered discretion to make such requests if they might wish to do so.
The Forum’s Supplemental Rule 7 (effective October 1, 2019) reads as follows: “If a party requests an additional written submission be considered by the Panel, the additional submission must be sent to Forum along with proof of service on the opposing party(s). Forum will forward all additional submissions to the Panel. It is within the discretion of the panel to accept or consider additional unsolicited submission(s).”
This rule states that a party may submit an additional written submission without first requesting leave to do so, and then it is for the panel to decide whether to accept and/or consider it.
In this instance, the panel accepts and has considered the Additional Submissions filed by both parties.
Preliminary Issue – Laches
Respondent argues that given the widely available means on the Internet to keep track of how others are using one’s trademarks, Complainant did know about Respondent’s registration of the Disputed Domain Name as of the time this was registered. Complainant’s delay in acting shows that Complainant did not care about Respondent’s registration until Complainant filed for the FOX NEWS MEDIA mark, which has only been within the past year. See The New York Times Company v. Name Administration, Inc., FA 1349045 (Forum Nov. 17, 2010), holding that: “Defendant No 1 had delayed filing its complaint until six years after the plaintiff had registered the disputed domain. In denying the Complaint, the 3-member panel unanimously held that ‘the circumstances of this case are the type that support a decision for the Plaintiff based on laches…[t]he panel explained that a party who ‘sleeps on his rights’ may sometimes be barred by his own inactivity from asserting those rights.”).
Complainant argues that Respondent has not made out a claim for latches because Respondent has not shown that Complainant in fact knew for years about Respondent’s use of the Disputed Domain Name (which it did not) or that Respondent relied to his detriment or change his conduct based on Complainant supposed inaction.
The Panel agrees with Complainant in that Respondent has not established the elements of laches.
The Panel finds that the Complainant has established the first element of the Policy.
In order to establish the first element of Policy, Complainant must first establish that it has rights in a trademark, which may be accomplished by showing a trademark registration. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“there exists an overwhelming consensus among UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under policy ¶4(a)(i) and its vested interest in a mark…”). See also, Advance Auto Parts, Inc. d/b/a Advanced 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), even though respondent reportedly resides on the Isle of Man).
Then, Complainant must establish that the Disputed Domain Name is identical or similar to the trademark. In making the comparison of the Disputed Domain Name to Complainant’s Marks for this purpose, the Panel ignores all aspects of the Disputed Domain Name that do not create a meaningful distinction, such as spaces, the absence of spaces, hyphens, the lack of hyphens, minor deviations and spelling, generic terms, and top-level domain names. See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). See also General Motors LLC versus domain admin, privacy protection service Inc. d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb 12, 2016) (finding respondent’s <gm-ubekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “Uzbekistan” is inconsequential to a policy ¶ 4(a)(i) analysis). See also Bittrex, Inc. v. HOUSNTA BENSLEM, FA 1760232 (Forum Jan 3, 2018) (“[S]ince the disputed domain name differs from the trademark only in the addition of the gTLD “.com” the Panel finds the domain name to be legally identical to the trademark.”).
In the present matter, Complainant has demonstrated its ownership of numerous US, EU, and other national trademark registrations for Complainant’s Marks, including FOX, FOX NEWS, and FOX NEWS CHANNEL.
A comparison of the Disputed Domain Name and the Complainant’s Marks reveals that the Disputed Domain Name, <foxnewsmedia.com>, is identical or confusingly similar to complainant’s Marks. The Disputed Domain Name contains the entirety of Complainant’s Marks FOX and FOX NEWS and contains the dominant features of the mark FOX NEWS CHANNEL. The gTLD “.com” is ignored, and the additional word “media” does not serve to create a meaningful distinction. If anything, the addition of this word heightens the confusing similarity because it is related to Complainant’s business.
Respondent argues that Complainant’s Mark FOX is generic and as such cannot be exclusively associated with Complainant, stating that: “…it is difficult to conclude that there is a deliberate attempt to confuse. It is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied to them.”
The Panel disagrees that this is a relevant in this matter.
This argument might be pertinent if Complainant were proceeding on the basis of common law rights, but whereas Complainant does mention common law rights, it is in fact proceeding on the basis of its registered trademarks. The issue of whether the mark FOX can distinguish the Complaint from others has been decided by the USPTO, among other trademark agencies around the word. It can. It does. And as Complainant correctly points out, “The mere presence of the term “fox” in the English dictionary in no way diminishes Fox’s [Complainant’s] rights in the FOX mark.”
Respondent’s efforts to isolate the word “FOX” from other words within Complainant’s Marks is not persuasive. The relevant and required comparison is between the totality of the trademarks to the totality of the Disputed Domain Name, and the existence of disclaimers is not relevant. It might be different if the disclaimed words were the only aspects of the trademarks found within The Disputed Domain Name, but that is not the situation here.
Respondent argues that Complainant has no trademark rights upon which it can base its Complaint because Complainant has only recently filed for trademark protection in the United States and in the EU for the mark FOX NEWS MEDIA. Respondent includes as exhibits print outs from the USPTO Trademark Electronic Search System (TESS) and from the UK Intellectual Property Office showing that Complainant filed four US trademark applications for this mark on September 11, 2019 and two EU applications filed on March 10, 2020. Whereas Respondent is correct that a trademark application does not confer rights under the Policy, Respondent is not correct that the existence of these trademark applications obviate or delegitimize Complainant’s other trademarks and the rights thereby conferred with respect to the Policy.
Respondent’s arguments with respect to Complainant’s common law trademark rights, or the alleged lack thereof, are not relevant because, as noted, Complaint is proceeding on the basis of its trademark registrations.
The Panel finds that Complainant has established the second element of the Policy.
In order to establish the second element of the Policy, 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 that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
In the present matter, Complainant has made a prima facie case.
Complainant has provided evidence that it has not granted authority Respondent to use Complainant’s Marks. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Complainant has provided evidence that Respondent has parked the Disputed Domain Name, which is synonymous with passive holding, and this is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”).
Complainant has provided evidence that Respondent is not commonly known by the Disputed Domain Name. See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant has provided evidence that Respondent’s intent was to use the Disputed Domain Name to offer directly competing services, which would constitute bad faith conduct, and such is incompatible with a finding of rights and legitimate interests. See Sub-zero, Inc. v. Jim K, FA 1895351 (Forum June 10, 2020) (“… whereas it is otherwise a legitimate enterprise to repair sub-zero’s residential appliances and advertise this fact, a bad faith use of the Disputed Domain Name is incompatible with a finding of rights or legitimate interests under the Policy.”).
Respondent has failed to carry its burden.
Respondent does not assert or argue that Complainant did not grant it permission to use Complainant’s Marks.
Respondent does argue that it is not merely passively holding the Disputed Domain Name. It provides evidence that it made efforts to utilize the disputed domain name in furtherance of a legitimate business, namely “Publishing of consumer and business journals and periodicals.” In furtherance of this purpose, Respondent created certain business stationary, including letterhead and business cards, and engaged the services of a website development company to develop a website to which the Disputed Domain Name would direct. Respondent paid this company $3,000 for this work against a contract price of $4,500. Unfortunately, these efforts did not come to fruition because the website development company did not fulfill its obligations, which led to a legal dispute with that website development company.
Generally speaking, Respondent may hold the Disputed Domain Name inactive for some period of time without forfeiting a claim of rights or legitimate interests therein. See Casual Corner Group, Inc. v. Young, FA 95112 (Forum Aug. 7, 2000) (finding that the respondent has rights and legitimate interests in the domain name even though he has made no use of the website at the time of the complaint), provided Respondent provides evidence of its demonstrable preparations in this regard. See AutoNation Holding Corp. v. Alawneh, D2002-0058 (WIPO May 1, 2002) (finding that prior to having received notice of the dispute, the respondent had made demonstrable preparations to use the disputed domain name by submitted “substantial, overwhelming and undisputed evidence” of those preparations).
However, this right to engage in development activities is not open-ended in time. How much time is allowed, and how long is too long, is to be decided under the totality of the circumstances, but previous cases provide some guidance. In one case, eight months was found to be acceptable. See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (non-use of domain name for eight months is reasonable time to engage in research and development).
As long as two years may also be acceptable, but not likely beyond that. See Casual Corner Group, Inc. v. Young, FA 95112 (Forum Aug. 7, 2000) (finding that the respondent has rights and legitimate interests in the domain name even though he has made no use of the website at the time of the complaint. Only after a two-year period of nonuse is there an inference of a lack of bona fide intent to use the name).
A delay of six years creates a nearly irrebuttable presumption against a respondent. See Sport Supply Group, Inc. v. Kendell Lang, D2004-0829 (WIPO December 10, 2004) (Respondent registered the <usgames.com> domain name on August 13, 1998. Respondent has not linked an active website to the disputed domain name – other than the temporary infringing use of the AAFLA Website which, of course, is not a bona fide use. Thus, Respondent has been passively holding the disputed domain name since 1998. After a domain name registrant “has passively held a domain name for two years a presumption of bad faith registration and use arises.” … While passive holding of a domain name for two years raises the presumption of bad faith use and registration, such holding for over six years should render the presumption nearly irrebuttable, especially in these circumstances.).
In the present matter, Respondent registered the Disputed Domain Name seven years ago. This is clearly too long, and as such, the Panel finds that Respondent is passively holding the Disputed Domain Name. As such, Respondent does not have rights or legitimate interest therein.
The Respondent did take some concrete steps as noted, the creation of stationary and the hiring of a web developer, but those efforts ended short of completion and were not taken up again. Such inchoate steps do not satisfy the requirement for development.
Respondent also argues that it is commonly known by the Disputed Domain Name and therefore has rights and legitimate interests therein pursuant to Policy ¶ 4(c)(ii). Respondent provides as an exhibit a copy of a certificate from Companies House showing the existence of an entity by the name of Fox News Media Limited that was formed on August 8, 2013.
Complainant argues to the contrary that Respondents name was not the Disputed Domain Name. It attaches as an exhibit an ICANN lookup WHOIS record showing the registrant to be “Contact Privacy,” and argues that the Panel can take this as definitive proof of the registrants name.
On the other hand, Respondent attaches as an exhibit a DomainIQ.com WHOIS record (showing data archived on July 22, 2013) that shows an address for Fox News Media Limited. Oddly, this document does not clearly identify a “Registrant” which may merely be an artifact of the particular DomainIQ.com form.
The Panel finds that these WHOIS records are inconsistent and therefore inconclusive.
The Panel notes that Mr. Lawal states in his declaration that he registered the Disputed Domain Name, and his name is clearly not the Disputed Domain Name, but it is reasonable to assume and allow that he was acting on behalf of the company that he was then in the process of forming, and its name is the Disputed Domain Name.
There is also an issue about the formation process for the company itself. The company did not come into existence until August 8, 2013, 19 days after the registration of the Disputed Domain Name. However, just as a domain name holder is allowed some time to develop a corresponding website, as noted in the discussion above, a promoter ought to be allowed some leeway with respect to corporate filings provided such efforts are clearly part of the establishment of a business and the gap in time is small, as is the case here.
However, the problem for Respondent is that Mr. Lawal’s efforts never came to fruition, and as a result, Respondent possess what might be called a mere naked company name. While this entity is “active” according to copies of Companies House records provided by Respondent and attached as exhibits, the Companies’ House filing history for this company, also attached as exhibits, show that this entity has been “dormant” since its inception. As such, it cannot be said that Respondent “has been commonly known by” this name in the same way that an individual can be said to “have been commonly known by” her or his name or as an operational company “has been commonly known by” its name. In other words, in a circumstance such as this where the entity has not in fact operated in the world (and for a period of many years, from inception to the present), the technicality of a company name is necessary but insufficient to establish rights and legitimate interests.
To hold otherwise would be to allow Policy ¶ 4(c)(ii) to be used as an unassailable defense to a charge of cybersquatting. One would simply need to create a corporate entity with the appropriate name, which the Panel notes is neither difficult nor expensive. This would not be in keeping with the purposes of the Policy.
As such and for the reasons stated, the Panel finds that Respondent does not have a right or legitimate interest in the Disputed Domain Name.
The Panel finds that after Respondent registered the Disputed Domain Name it has used the Disputed Domain Names in bad faith.
Respondent states that he has not used the Disputed Domain Name since it was registered. He had intended to use it as noted above, but that did not work out, and it has parked them since, which is not a use.
However, such non-use can be found to be a bad faith use when the holding is for too long a period, as discussed above, and when certain other conditions are met.
The case of Johnson & Johnson v. Daniel Wistbaca, WIPO D2017-0709, is instructive in this regard. This case involved a domain name that did not resolve to a website for approximately one year. The Panel, citing Aventis and Aventis Pharma SA. V. Bug Software/Palo Andrade, WIPO case no. D2004-0878, stated:
“It is less clear whether it can be established that the disputed domain names were also used in bad faith. The panel agrees with the prevailing opinion of numerous WIPO panels – that in some circumstances so-called ‘passive holding” of a domain name can be treated as using it in bad faith. The leading case in this regard is Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003…”
The Panel in the Johnson & Johnson case cited the Telstra case for the following guidance:
“In the Telstra case, the learned panel named five circumstances of the case that persuaded it to conclude that the respondent’s passive holding of a domain name could be regarded as “bad faith use” of it. These elements were as follows:
(i) The Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, my operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and is failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, is not possible to conceive of a plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, and infringement of consumer protection legislation, or an infringement of the complainant’s rights under trademark law.”
The panel in the Johnson & Johnson case continued:
“However, it seems that not all of the five elements mentioned above are of the same significance. In particular it seems that the fifth element (i.e., impossibility to conceive of any plausible active use) is actually a conclusion which is been made on the basis of the preceding four elements and that this fifth element plays a decisive role in determining whether any particular passive holding can be regarded as ‘bad faith’ use of a domain name in dispute.”
Applying this standard to the present Fox Media case, the Panel finds that whereas not all of the noted five elements are present, nevertheless Respondent’s passive holding of the Disputed Domain Name constitutes a bad faith use.
The elements that do not strongly appear in the present matter concern Respondent’s efforts to conceal its identity. Respondent did do some of this. Respondent did register the Disputed Domain Name under a privacy service, myprivacy.net, but in doing so it also identified its contact email as foxnesmeida.com@myprivacy.net, as shown in the WIPO WHOIS record and the company name and address is shown on the DomainIQ.com WHOIS record. Further, to whatever extent Respondent tried to initially hide its identity, it has not maintained the effort: it is present and participating in this matter. So, these elements do not appear as strongly as was the situation in the Telstra case, but they are not entirely absent either.
The two elements that do clearly apply in the present case, and the Panel believes these are more important, are, first, that the Complainant’s Mark had a strong reputation and is widely known, and second, the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the Disputed Domain Name. Respondent argues that it would have used the Disputed Domain Name, as has been noted several times, "Publishing of consumer and business journals and periodicals," but as the Panel notes above, this use could not have resulted in a good faith use, and otherwise the Panel cannot conceive of a plausible use by Respondent that would be legitimate.
As final point, Respondent argues that this matter presents a dispute that is outside the scope of the UDRP because its company name was allowed by Companies House, and therefore this matter involves competing legal rights. The Panel disagrees. Respondent presented no evidence that Companies House performs any type of UDRP clearance inquiry before issuance of a Certificate of Incorporation, and as such the issuance of thereof by Companies House is not relevant in this regard.
Reverse domain Name Hijacking.
Paragraph 1 of the Policy defines Reverse Domain Name Hijacking as: “…using the policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
Respondent argues that Complainant has committed Reverse Domain Name Hijacking by filing and maintaining its complaint herein. As the Panel has ruled in Complainant’s favor, the Panel finds that the Complainant has not committed Reverse Domain Name Hijacking.
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 <foxnewsmedia.com> domain name be TRANSFERRED from Respondent to Complainant.
Kendall C. Reed, Panelist
Dated: August 3, 2020
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