WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fox News Network, L.L.C. v. Pro-Life Domains Inc.
Case No. D2003-0335
1. The Parties
The Complainant is Fox News Network, L.L.C., a Delaware corporation with offices in New York City, New York, the United States of America. The Complainant is represented by Mr. Christopher J. Silvestri of the Complainantís Legal Department.
The Respondent is Pro-Life Domains Inc., an entity located in the Bronx, New York, the United States of America.
2. The Domain Name and Registrar
The disputed domain name is <gretavansustern.com>.
The registrar for the disputed domain name is eNom, Inc. of Redmond, Washington, the United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 1, 2003. On May 2, 2003, the Center transmitted by email to the registrar eNom, Inc. a request for registrar verification of the disputed domain name. On May 7, 2003, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
In response to the May 9, 2003, notification by the Center that the Complainant had misnamed the registrar for the disputed domain name, the Complainant filed an Amendment to the Complaint correcting this error on the same day.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
Per the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and this proceeding began on May 14, 2003. Under the Rules, paragraph 5(a), the due date for the Response was June 3, 2003. The Respondent did not submit a response, and the Center notified the Respondent of its default on June 4, 2003.
In view of the Respondentís default, the Panel will decide this case based on the Complaint (the Rules paragraph 5(e)). The Panel is convinced that the Centerís email and courier Notifications of the Complaint to the Respondent gave the Respondent the opportunity to answer this Complaint if it so desired.
The Center appointed Dennis A. Foster as the Sole Panelist in this matter on June 18, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Greta Van Susteren joined Fox News Network, L.L.C. d/b/a Fox News Channel in January 2002, as the host of the prime time news and interview program, "On the Record with Greta Van Susteren", which was launched in February 2002.
The Respondent registered the disputed domain name on April 7, 2002.
5. Partiesí Contentions
- The disputed domain name is identical to the name mark "Greta Van Susteren" less the last "e" in Ms. Van Susterenís name, and is confusingly similar to the mark "On the Record with Greta Van Susteren".
- It is established that well-known personalities are able to prevent the unauthorized registration of domain names in appropriate cases (Nicole Kidman v. John Zuccarini, WIPO Case No. D2000-1415 (January 23, 2001)).
- The disputed domain name is synonymous with the Complainantís television program and host Greta Van Susteren, and therefore the Respondent has no rights in the disputed domain name. The Respondent is not making a legitimate non-commercial use or fair use of the disputed domain name.
- The Respondent is using the disputed domain name to mislead Internet users by furnishing anti-abortion content on the disputed domain name website which is in no way associated with Ms. Van Susteren or the Complainantís television program.
- The Respondent is tarnishing and disparaging the marks at issue by using the disputed domain name as a platform to express its own views on a topic totally unrelated to the marks.
- The disputed domain name should be considered as having been registered and used solely in bad faith by the Respondent. Specifically, Internet users generally assume that a domain name that consists of a famous mark is associated with or sponsored by the owner of that mark and, based on that assumption, Internet users may begin a search for a website by typing in a famous mark followed by a top level domain (e.g. com).
- The disputed domain name website offers various items for sale that are related to or in support of Respondentís position on abortion and solicits donations to support "Prolife" causes and appears to sell advertising on the website. In using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain and to draw attention to its position on the abortion issue, Internet users who would be attempting to find a domain name related to Ms. Greta Van Susteren and the Complainantís television program.
- The disputed domain name should be transferred to the Complainant.
The Respondent is in default in this proceeding and thus did not file any contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name, <gretavansustern.com>, transferred to it, the Complainant must prove the following (the Policy, paragraphs 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The disputed domain name is <gretavansustern.com>. Ms. Greta Van Susteren is a television presenter who presents the Complainantís television program "On the Record with Greta Van Susteren". As the Complainant points out, the only difference between Ms. Van Susterenís name and the disputed domain name is that the Respondent dropped the final "e" when registering the disputed domain name. This still clearly leaves the disputed domain name confusingly similar to Ms. Van Susterenís name.
The Complainant further contends that, through appearing on the Complainantís television program, Ms. Van Susteren has acquired common law trademark rights in her name, and that she has assigned them to the Complainant. The Panel finds this argument convincing.
The Panel notes that previous Panels have found that entertainment personalities do acquire common law trademark rights in their names when they use their names to sell entertainment services. The Panel finds this to be true in this Case. (See Nicole Kidman v. John Zuccarini, WIPO Case No. D2000-1415 (January 23, 2001), where the disputed domain name, <nicholekidman.com>, was found to have been deliberately misspelled and to be confusingly similar nonetheless to the famous actressís name; and see Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (May 29, 2000), where the Panel found "Öthat the name ĎJulia Robertsí has sufficient secondary association with Complainant that common law rights do exist under United States trademark law").
Legitimate Rights or Interests
The Complainant contends that the Respondent has no legitimate rights or interests in the disputed domain name. For its part, the Respondent is in default and has not attempted to show legitimate rights or interests in the disputed domain name. Although the Respondent is using the disputed domain name to show anti-abortion material, the Panel finds this is not a fair use of the Complainantís mark because the Respondent also sells a variety of merchandise and services, including advertising, at the disputed domain name website. The Panel believes that the Respondent would have to run a protest site without commercial intent in order to have a chance to satisfy the fair use provisions of the Policy at paragraph 4(c)(iii).
The Panel finds the Respondent does not have legitimate rights or interests in the disputed domain name.
Registered and Used in Bad Faith
The Complainant contends that the Respondent registered the disputed domain name in order to increase its sales of miscellaneous goods and services at the disputed domain name website. The Panel agrees: the Panel is sure that the Respondent calculated that using a domain name confusingly similar to the Complainantís well-known television presenter Ms. Greta Van Susteren would increase the Respondentís sales at the disputed <gretavansustern.com> website. This contravenes the bad faith provisions of the Policy at paragraph 4(b)(iv). Therefore, the Panel finds the Respondent has registered and is using the disputed domain name in bad faith.
The Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the Complainantís "Greta Van Susteren" common law service mark. The Complainant also has shown the Respondent has no legitimate rights or interests in the disputed domain name and registered it and is using it in bad faith.
Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <gretavansustern.com>, be transferred from the Respondent, Pro-Life Domains Inc., to the Complainant, Fox News Network, L.L.C.
Dennis A. Foster
Dated: July 2, 2003