WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fox Media, LLC v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Sagar Bhardwaj
Case No. D2021-2029
1. The Parties
The Complainant is Fox Media, LLC, United States of America (“United States” or “US”), represented by Winterfeldt IP Group PLLC, United States.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Sagar Bhardwaj, India.
2. The Domain Name and Registrar
The disputed domain name <foxnewsupdates.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2021. On June 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2021, the Registrar 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 the Complainant on June 30, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 30, 2021.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2021.
The Center appointed George R. F. Souter as the sole panelist in this matter on August 3, 2021. 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
The Complainant is one of the world's largest entertainment and media companies, including a major television network. Among many trademark registrations of its FOX trademark is US registration number 1924143, registered on October 3, 1995, claiming use in commerce since March 31, 1915. The Complainant is also the proprietor of US registration number 2697433 in respect of its FOX NEWS trademark, registered on March 18, 2003 and claiming use in commerce since July 26, 1993.
In 2018, the Complainant’s network operating under the FOX NEWS trademark completed its third consecutive year as the most watched cable news network in the United States, and is widely available internationally.
The disputed domain name was registered on March 28, 2021 and resolves to a website offering news items and also solicits advertising partners.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its FOX and FOX NEWS trademarks, in particular because it contains the FOX NEWS trademark in its entirety, with the mere addition of a descriptive or non distinctive element in the form of the word “updates".
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that the Complainant must have been aware of the Complainant's FOX and FOX NEWS marks at the time of registration of the disputed domain name, and the Complainant has never granted permission to the Respondent to use its FOX and FOX NEWS trademarks in connection with registration of a domain name, or otherwise.
The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with a website offering competing services to those offered by the Complainant. The Respondent uses certain logos on the website at the disputed domain name and in related content that are nearly identical in visual appearance to logos used by the Complainant in connection with its FOX marks and other trademarks owned by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel recognizes the Complainant’s FOX and FOX NEWS trademarks to be well known.
It is well established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) is irrelevant when comparing a trademark with a disputed domain name.
Accordingly, the Panel considers the gTLD “.com” to be irrelevant in the circumstances of the present case, and so finds.
It is well established in prior decisions under the Policy that the mere addition of a term (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a clearly recognizable trademark does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant’s FOX and FOX NEWS trademarks are instantly recognizable in the disputed domain name, and the word “updates" does not prevent a finding of confusing similarity, and the Panel so finds. Accordingly, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel is convinced that the Respondent must have been aware of the existence of the Complainant's FOX and FOX NEWS trademarks when selecting the disputed domain name, and the fact that advertising partners could provide a revenue stream to the Respondent provides an economic motive.
When applying the principles established under Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903, the Panel finds that the Respondent’s services are not bona fide, and a finding of lack of legitimate interests in the disputed domain name is inevitable.
The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Moreover, the Panel finds that the disputed domain name carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel regards it as self-evident that the Complainant’s FOX and FOX NEWS trademarks were deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified, and so finds.
It is well established in prior decisions under the Policy that the use of a disputed domain name which includes the complainant’s trademark in connection with a website offering services competing with those of the complainant constitutes use in bad faith. In the Panel's opinion, this is an egregious example of use in bad faith, and, accordingly finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For 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, <foxnewsupdates.com>, be transferred to the Complainant.
George R. F. Souter
Date: August 17, 2021