WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fox Media LLC v. Domain Privacy Service FBO Registrant / Justin Malonson
Case No. D2020-2590
1. The Parties
Complainant is Fox Media LLC, United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States.
Respondent is Domain Privacy Service FBO Registrant, United States / Justin Malonson, United States.
2. The Domain Name and Registrar
The disputed domain name <foxnewscarolina.com> (the “Domain Name”) is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2020. On October 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 9, 2020, 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 October 10, 2020.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 6, 2020.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 16, 2020. 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 a large entertainment and media company. Complainant has used the trademark FOX NEWS since 1993 to identify and distinguish its news media services. Complainant has ranked as the most-watched cable news channel in the United States for several years.
Complainant holds various registered trademarks for FOX NEWS, including United States Patent and Trademark Office (“USPTO”) Reg. No. 2,697,433 (word mark), registered on March 18, 2003, and USPTO Reg. No. 2,697,434 (word and logo), registered on March 18, 2003.
The Domain Name was registered on May 22, 2019. The Domain Name currently does not resolve to an active website. For a time, however, the Domain Name resolved to a website purporting to offer news. The website liberally used Complainant’s FOX NEWS mark and logo, and even bore the false copyright notice “© Fox News Corporation. All rights reserved”.
Complainant asserts that Respondent has never had a relationship with Complainant, and that Complainant has never authorized Respondent to use the FOX NEWS mark in a domain name or otherwise.
5. Parties’ Contentions
Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name 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.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the trademark FOX NEWS through registration and use demonstrated in the record. The Panel also concludes that the Domain Name is confusingly similar to that mark. The dominant portion of the mark – FOX NEWS – is clearly recognizable within the Domain Name. The additional geographic descriptor “Carolina” does not prevent a finding of confusing similarity between the mark and the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to articulate or prove his bona fides vis-à-vis the Domain Name. On the record before the Panel, it is undisputed that Complainant has had no relationship with Respondent, and has never authorized Respondent to use its FOX NEWS trademark in a domain name or otherwise. Respondent, for a time, was using the Domain Name to offer purported news stories in direct competition with Complainant. This evidently fraudulent conduct certainly does not vest Respondent with any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent registered and used the Domain Name in bad faith. On the undisputed record before the Panel, it is rather clear that Respondent had Complainant’s FOX NEWS trademark in mind when he registered the Domain Name. This is obvious from Respondent’s use of Complainant’s logo at his website, and the fact that news stories were presented at the website.
As respects bad faith use, it is clear that Respondent was attempting to somehow disrupt the business of the Complainant.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <foxnewscarolina.com>, be transferred to Complainant.
Robert A. Badgley
Date: November 22, 2020