WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Twentieth Century Fox Film Corporation v. Whois Privacy Service Pty Ltd / Privacy Ltd. Disclosed Agent for YOLAPT
Case No. D2011-0374
1. The Parties
Complainant is Twentieth Century Fox Film Corporation of Los Angeles, California, United States of America represented by Bryce D. Coughlin, United States of America.
Respondent is Whois Privacy Service Pty Ltd / Privacy Ltd. Disclosed Agent for YOLAPT, of Isle of Man and Fortitude Valley, Australia, respectively.
2. The Domain Name and Registrar
The disputed domain name <myfox2detroit.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2011. On February 28, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On March 1, 2011, Fabulous.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 1, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 2, 2011.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 28, 2011.
The Center appointed Ross Carson as the sole panelist in this matter on April 1, 2011. 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
Complainant is one of the world’s leading and largest entertainment and media companies; Fox is a major film studio and television network. For many decades, Fox has produced and distributed some of the highest-grossing and internationally well-known film and television properties. Fox was founded in 1934 as a result of the merger of Fox Film Corporation and Twentieth Century Pictures, and today is a subsidiary of News Corporation, an international media conglomerate. Fox’s services and products are offered directly and via its affiliated companies that include Fox Filmed Entertainment, FOX Broadcasting Company, Fox Cable Networks, Fox News, Fox Television Stations, Inc., Twentieth Century Fox Television, Twentieth Century Fox Home Entertainment, Inc., Twentieth Television, Fox Television Studios, and Fox Networks Group, Inc.
Complainant owns and operates broadcast television stations, specifically, 27 full-power stations including stations located in nine of the top ten largest markets (which include New York, Los Angeles, and Chicago). To promote these owned and operated stations, Fox uses and has registered the MY FOX trademark, which is described in more detail below. One of these 27 full-power stations is FOX 2 Detroit (WJBK), which has been in operation as FOX 2 Detroit since 1995. In connection with this station, Complainant owns and operates a number of websites, including “www.fox2detroit.com” and “www.myfoxdetroit.com”.
Complainant is the owner of the following United States trademark registrations among many other registrations for or including FOX registered on the Principal Register in the United States Patent and Trade Mark Office:
Registration No. 1,840,919 for the FOX mark in block letters, first used March 31, 1915, issued October 3, 1995, covering services in International Class 41 (production and distribution of motion picture films, television programs, video tapes, video cassettes, and videodiscs, all on a variety of entertainment, news, and educational subjects; production and distribution of pre-recorded audio materials featuring spoken words and music).
Registration No. 2,318,595 for the mark FOX in block letters, first used June 12, 1995, issued February 15, 2000, covering services in International Class 41 (providing on-line services in the field of entertainment relating to motion picture film, television, video, children’s and sports entertainment via a global communications network).
Registration No. 3,417,578 for the mark MY FOX in block letters, first used April 30, 2006, issued April 29, 2008, covering services in International Class 41 (entertainment services in the nature of providing on-line information in the field of television news and entertainment via the Internet).
Registration No. 3,417,581 for the mark MY FOX and Design, first used April 20, 2006, issued April 29, 2008, covering services in International Class 41 (entertainment services in the nature of providing on-line information in the field of television news and entertainment via the Internet).
Complainant has for many years extensively promoted its services and products on the Internet, including its television network and programming services, via many websites, e.g., Complainant maintains websites at the domain names <fox.com> registered December 20, 1995, <foxmovies.com> registered August 12, 1996 and <foxstudios.com> registered April 24, 1997. Complainant also promotes its “FOX 2 Detroit” television station on the Internet in association with its domain names <fox2detroit.com> registered September 5, 1996 and <myfoxdetroit.com> registered October 11, 2005.
Respondent registered the disputed domain name <myfoxdetroit.com> on October 26, 2006.
5. Parties’ Contentions
A. Complainant
A.1. Identical or Confusingly Similar
Complainant states that its registered trademark FOX is widely used, registered in many countries, and well known throughout the world in association with the production, acquisition and distribution of movies throughout the world under a variety of arrangements. In addition to its movie business, Complainant uses its trademark FOX in association with a wide variety of television-related services and products including its television network and television stations. Complainant is the owner and operator of 27 full power television stations in the United States of America including FOX 2 Detroit, which has been in operation as FOX 2 Detroit since 1995, as described in greater detail in Section 4 above. Complainant is also the owner of the registered trademark MY FOX which has been in use in the U.S. since April 20, 2006 in association with entertainment services in the nature of providing on-line information in the field of television news and entertainment via the Internet.
Complainant submits that the disputed domain name <myfox2detroit.com> is confusingly similar to Complainant’s well-known FOX, MY FOX, and FOX 2 DETROIT trademarks. Panels have consistently held that a domain name is confusing similar to a mark when the domain name incorporates the mark in its entirety. See, Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768.
Complainant further submits that a disputed domain name is confusingly similar to a complainant’s trademarks when the disputed domain name combines more than one of a complainant’s trademarks. See, Yaho! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896; and when the domain name adds a geographical term to a complainant’s marks. See Playboy Enterprises International, Inc. v. Zeynel Demirtas, supra. Complainant further states that panels have held that such circumstances can exacerbate the similarity between the domain name and the mark in question. See, ACCOR v. Jose Manuel Fernandez Garcia, WIPO Case No. D2002-0988.
Complainant further states that several UDRP panels have previously held that the Complainant owns rights in the FOX mark and that such rights merit protection under the Policy. See, Twentieth Century Fox Film Corporation v. foxinteractivemedia-inc.com, WIPO Case No. D2009-1475 and Twentieth Century Fox Film Corporation v. Leverett Consulting, NAF Claim No. 338370.
Complainant submits that In this case, the disputed domain name incorporates the FOX and MY FOX marks in their entirety, and combines the FOX and MY FOX marks with the FOX 2 DETROIT mark. In addition, the geographical term “Detroit” is added to the FOX marks. Every part of the disputed domain name is an obvious reference to Complainant’s FOX 2 Detroit (WJBK) owned and operated television station. Indeed, the disputed domain name is merely a combination of FOX 2 Detroit’s two websites “www.myfoxdetroit.com” and “www.fox2detroit.com”. Respondent’s registration of the disputed domain name is a clear attempt to trade off of the valuable goodwill Complainant has established in its FOX, MY FOX, and FOX 2 DETROIT trademarks.
A.2. No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that no relationship exists between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the disputed domain name.
Complainant states that the disputed domain name resolves to a linkfarm, which prominently displayed pornographic material. The linkfarm also provides links to the websites of Complainant’s competitors. Respondent is not commonly known by the disputed domain name and is not making legitimate noncommercial or fair use of the disputed domain name. See, The Caravan Club v. Mrgsale, NAF Claim No. 95314 (domain name <thecaravanclub,com>; Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith); see also CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834.
Complainant states that on February 7, 2011, it sent Respondent a cease and desist letter that requested transfer of the disputed domain name. To date, Complainant has not received a response to its cease and desist letter.
Complainant further submits that based on the above, there is no evidence—nor could there be—that Respondent has any legitimate rights or interests in the disputed domain name. Complainant states that it is well-established that where Complainant contends Respondent has no rights or legitimate interests in a disputed domain name, the burden of proof shifts to Respondent to come forward with proof to the contrary. See, Wal-Mart Stores, Inc. v. Lynda’s/Lynda Hickman, WIPO Case No. D2003-0719. Absent a showing to the contrary by Respondent, Complainant has therefore established that Respondent has no rights or legitimate interests in the disputed domain name.
A.3. Registration in Bad Faith
Complainant states that when Respondent registered the disputed domain name, Complainant’s rights in its FOX mark had been firmly established and the FOX mark was long since famous. In addition, Respondent registered the disputed domain name only six months after Complainant adopted the MY FOX mark for use in connection with its owned and operated television stations, including for FOX 2 Detroit (WJBK). Respondent cannot claim or show any rights to the disputed domain name that are superior to Complainant’s rights in its FOX, MY FOX, or FOX 2 DETROIT trademarks.
A.4. Use in Bad Faith
Complainant submits that the disputed domain name has been registered and used in bad faith. Under Section 4(b)(iv) of the Policy, the following circumstances shall be evidence of the use and registration of a domain name in bad faith: “(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location”.
Complainant states that Respondent has registered the disputed domain name in bad faith pursuant to Section 4(b)(iv) of the Policy. Complainant further states that previous UDRP panels have held that pornographic content at domain names that include marks constitute a “significant indicia of bad faith” pursuant to Section 4(b)(iv). See, Caesars World, Inc v. Alaiksei Yahorau, WIPO Case No. D2004-0513. In addition, evidence of bad faith under Section 4(b)(iv) of the Policy can include both the degree to which the mark in the disputed domain name is famous, see, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and the accumulation of revenue from parked pages or linkfarms located at the domain name.
Complainant further states that the website associated with the disputed domain name provides pornographic content, thereby tarnishing Complainant’s famous trademarks. Complainant’s FOX trademark is so famous that Respondent has no colorable argument that he is unaware of the FOX trademark. Finally, the website at the disputed domain name is a linkfarm that provides links to Fox’s competitors and is likely to generate click-through revenue.
Complainant submits that bad faith under Section 4(b)(iv) is even further supported by the fact the disputed domain name was registered only six months after Complainant’s introduction of its MY FOX trademark for its owned and operated television stations. These facts, when taken together, provide strong evidence that Respondent, both at the time of registration and continuing to the present, has “intentionally attempted to attract, for commercial gain, Internet users to registrant’s website associated with the disputed domain name by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website or location.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is the owner of numerous registered trademarks for and including FOX, registered in many countries throughout the world, and MY FOX registered in the United States of America in relation to the goods and services described in section 4 above. Complainant has owned and operated a major television station in Detroit in association with the trademark FOX 2 DETROIT since 1995. Complainant’s registered trademarks for or including FOX were registered and in use for over 9 decades prior to the date of registration of the disputed domain name on October 26, 2006. Complainant commenced use of its registered trademark MY FOX in the United States of America on April 30, 2006 about 6 months prior to the date of registration of the disputed domain name.
The disputed domain name <myfox2detroit.com> incorporates the entirety of Complainant’s trademarks FOX and MY FOX. Many UDRP decisions have found that domain names are confusingly similar to trademarks when the domain name incorporates the trademark in its entirety. See, e.g., PepsiCo. Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696 (a domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark”; holding <pepsiadventure.net>, <pepsitennis.com>, and other domains confusingly similar to the complainant’s PEPSI mark) and Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768.
The disputed domain name <myfox2detroit.com> adds the geographic term “Detroit” to Complainant’s registered trademarks FOX and MY FOX. In accordance with the prevailing case law, the addition of geographic terms is not a distinguishing feature. Thus, the geographic term “Detroit” should not be taken into account in determining the identity or similarity between Complainant’s trademarks and the disputed domain name. See Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768 (“the [p]anel also concurs with the finding of previous WIPO panels that the use of a famous mark in its entirety with a geographical term in a domain name creates a domain name which is confusingly similar to a famous mark)”. Previous panels have held that the addition of a geographic term to a well-known trademark can exacerbate the similarity between the disputed domain name and the mark in question. See, ACCOR v. Jose Manuel Fernandez Garcia, WIPO Case No. D2002-0988. In this case the inclusion of “Detroit” in the disputed domain name enhances a finding of confusingly similarity as Complainant has used the trademark FOX 2 DETROIT as the trademark for its major television station in Detroit since 1995.
The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusing similarity. UDRP Administrative panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Several UDRP panels have previously held that Complainant owns rights in the FOX mark and that such rights merit protection under the Policy. See, Twentieth Century Fox Film Corporation v. foxinteractivemedia-inc.com, WIPO Case No. D2009-1475; Twentieth Century Fox Film Corporation v. Leverett Consulting, NAF Claim No. 338370; and Twentieth Century Fox Film Corporation v. Domains By Proxy, Inc./Samina Raham, WIPO Case No. D2009-1121.
The Panel finds that Complainant has proven that the disputed domain name <myfox2detroit.com> is confusingly similar to Complainant’s trademark for or including FOX and MY FOX.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s registered trademarks or any trademarks confusingly similar thereto. The registration of the FOX trademarks preceded the registration of the disputed domain name by over 9 decades. Complainant’s use of its MY FOX registered trademarks in the United States of America preceded the date of registration of the disputed domain name. Complainant has been using its FOX 2 DETROIT trademark in association with its major television station in Detroit since 1995. Previous UDRP panels have found that in the absence of any license or permission from a complainant to use widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. See, LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.
The disputed domain name resolves to a linkfarm, which prominently displays pornographic material. The linkfarm also provides links to the websites of Complainant’s competitors. There is no evidence that Respondent is commonly known by the disputed domain name or is making a legitimate noncommercial or fair use of the disputed domain name. See, The Caravan Club v. Mrgsale, NAF Claim No. 95314 (domain name <thecaravanclub,com>; Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith); See also CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834.
On February 7, 2011, Complainant forwarded Respondent a cease and desist letter that requested transfer of the disputed domain name. Complainant has not received a response to its cease and desist letter.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the burden of proof shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain name. Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
The Panel finds that Complainant has proven on a balance of probabilities that
Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith.
C. 1 Registered in Bad Faith
Complainant has established that it is the owner of numerous registered trademarks for and including FOX registered in many countries throughout the world and MY FOX registered in the United Stataes of America in relation to the goods and services described in section 4 above. Complainant has owned and operated a major television station in Detroit in association with the trademark FOX 2 DETROIT since 1995. Complainant’s registered trademarks for or including FOX were registered and in use for over 9 decades prior to the date of registration of the disputed domain name on October 26, 2006. Complainant commenced use of its registered trademark MY FOX in the United States of America on April 30, 2006, about 6 months prior to the date of registration of the disputed domain name.
The disputed domain name is comprised of the terms “my fox”, “2detroit” and “.com”. Complainant is the owner of the registered trademark FOX which is a well-known trademark throughout the world in use for over ninety years prior to the date of registration of the disputed domain name on October 26, 2006. Complainant has owned and operated its major television station in Detroit in association with its trademark FOX 2 DETROIT since 1995. Complainant commenced use of its registered trademark MY FOX six months prior to the date of registration of the disputed domain name. The Panel finds that that it is exceedingly unlikely that the disputed domain name was not based on Complainant’s trademarks.
The Panel finds on a balance of probabilities that Respondent registered the disputed domain name in bad faith
C.2. Domain Name Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to your website for commercial gain by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s website constitutes evidence of bad faith use of a domain name.
Respondent’s webpage associated with the disputed domain name include links to entities providing products and services related to the kind of products and services offered by Complainant without any information relating to Respondent, its purpose, business, or proposed business, if any. Respondent’s use of the disputed domain name which is confusingly similar to Complainant’s registered trademarks for or including FOX, MY FOX and the trademark FOX 2 DETROIT as the distinctive elements enables Respondent to draw Internet users to the website for profit by misleading Internet users associating the disputed domain name with Complainant. The Panel infers that Respondent is receiving click-through profits as the pages associated with the disputed domain name make no reference to Respondent, its purpose, business or proposed business. Linking to websites of institutions that are active in the same field as Complainant is evidence of bad faith use. See, e.g., Google Inc. v. Forum LLC, NAF Claim No. 1053323 (finding bad faith registration and use where <googlenews.com> resolves to a commercial search engine website generating click-through advertising fees); Brink’s Network, Inc. v. Jenny Ho, brinksplacetv.com, WIPO Case No. D2009-0530 (“Where, as here, the disputed domain name is used to link, inter alia, to websites of the [c]omplainant’s competitors, a holding of bad faith use will typically follow”).
The landing pages associated with the disputed domain name also include pornographic material. The fact that a website operated by a respondent includes pornographic material has been found in prior UDRP decisions to be evidence of bad faith when the disputed domain name is confusingly similar to a well-known trademark. Caesars World, Inc. v. Aliasei Yahorau, WIPO Case No. D2004-0513; America Online v. Viper, WIPO Case No. D2000-1198.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent has used the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complainant satisfies the requirement under paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <myfox2detroit.com> be transferred to Complainant.
Ross Carson
Sole Panelist
Dated: April 13, 2011