WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Twentieth Century Fox Film Corporation v. Case No. D2009-1475 1. The Parties
Complainant is Twentieth Century Fox Film Corporation of Los Angeles, California, United States of America, represented by Cantor Colburn LLP, United States of America (“U.S.”).
Respondent is of Beverly Hills, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2009. On November 2, 2009, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the disputed domain name. On November 3, 2009, B, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center with respect to the Registrant and Registrar information, Complainant filed an amendment to the Complaint on November 6, 2009. The Center verified that the Complaint, together with the amendment to the 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 November 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2009. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 1, 2009.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on December 10, 2009. 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 Twentieth Century Fox Film Corporation owns the marks FOX and FOX INTERACTIVE, as used on or in connection with a wide variety of entertainment services, including motion pictures, TV programs, and related goods and services. See Complaint, Exhibits G, H, and I. Over the past five years, the films released by Fox have generated approximately USD15 billion in revenue.
In 1987, Complainant launched its own TV network by the name FOX. See Complaint, Exhibit D. Complainant's TV broadcasts under the FOX mark reach more than 260 million viewers in Europe, Latin America, Asia, and Africa.
Complainant owns trademark registrations around the world for its FOX and FOX INTERACTIVE marks. See Complaint, Exhibit B. The FOX mark was first used in the U.S. and in numerous other countries in 1915; the FOX INTERACTIVE mark was first used in 1996 in Australia and since 2002 in the U.S. and other countries. Complainant has also registered more than 3,400 domain names which consist of, begin with, and/or include the term “fox”. See Complaint, Exhibit D.
The disputed domain name was registered on August 10, 2009. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain name, , is confusingly similar to its FOX and FOX INTERACTIVE marks. It notes that the disputed domain name incorporates the FOX INTERACTIVE mark in its entirety, “and, as such, is a clear attempt to trade off of the valuable goodwill Complainant has established in the FOX and FOX INTERACTIVE marks.” Complainant maintains that the addition of the term “interactive” to the disputed domain name increases the confusingly similarity since Complainant owns numerous trademark registrations for the FOX INTERACTIVE mark. “Finally, adding the descriptive terms ‘MEDIA' and ‘-INC,' make confusion more, not less, likely.”
Complainant further argues that Respondent has no rights or legitimate interests in the disputed domain name. It points out that there is no relationship between the parties that would give rise to any license, permission, or authorization by which Respondent could own or use the disputed domain name. Complainant further asserts that Respondent is not commonly known by the domain name and is not making a legitimate noncommercial or fair use of the disputed domain name.
With respect to the issue of “bad faith” registration and use, Complainant asserts that, given the fame of its FOX mark, its trademark rights in the FOX INTERACTIVE mark and the mark's total incorporation in the disputed domain name, along with the descriptive terms “media” and “inc.”, “it is clear that Respondent in all likelihood knew of the existence of Complainant's trademarks and their significance in the market.”
According to Complainant, “given the fame of Complainant's Mark, it is not possible to conceive of a use by Respondent of the Disputed Domain Name that would not constitute an infringement of Complainant's rights in its Mark.” The mere registration of the disputed domain name is evidence of bad faith, Complainant contends.
On information and belief, Complainant indicates that Respondent has used the disputed domain name to engage in “malvertising,” which has been defined as “an internet-based criminal method for the installation of unwanted or malicious software through the use of internet advertising media networks and exchanges.” See Complaint, Exhibit O. Upon information and belief, Complainant further contends that Respondent was, and may still currently be, unlawfully using the domain name in issue to impersonate Complainant and Complainant's sister company, Fox Interactive Media, Inc., by holding itself out to third parties as being affiliated with Complainant or its sister company when no such relationship exists. See Complaint, Exhibit P.
In sum, Complainant maintains, it is clear “that Respondent was and is trading upon the goodwill and fame of Complainant's marks for its own substantial commercial profit at the expense of Complainant's marks and the erroneous consumer association therewith, and thus the Disputed Domain Name has been registered and used in bad faith.”
In further support of its “bad faith” registration and use argument, Complainant, upon information and belief, asserts that Respondent provided false contact information to the registrar, and that, as of the date the complaint was executed, the domain name in issue did not resolve to a website. See Complaint, Exhibit R. “Such inactive or passive holding constitutes bad faith use,” Complainant declares, “especially where Complainant has a strong reputation and is widely known, and Respondent has unlawfully impersonated Complainant in email correspondence to third parties, and has taken active steps to conceal its true identity.” B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the FOX and FOX INTERACTIVE marks. The domain name incorporates the mark FOX INTERACTIVE in its entirety, adding only descriptive terms and the top-level domain “.com.” As noted by Complainant, “[i]t has been routinely held that [the] addition of descriptive or generic wording to a mark satisfies Section 4(a)(i) of the Policy.” See, e.g., National Association for Stock Car Auto Racing, Inc. v. David Crawford, Jr.,WIPO Case No. D2001-1338.
The evidence also indicates that Complainant has rights in the FOX and FOX INTERACTIVE marks. B. Rights or Legitimate Interests
The Panel determines, also in light of the Panel's findings under the “Bad Faith” Section below, that Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is using the domain name in connection with a bona fide offering of goods or services, that Respondent is commonly known by the domain name, or that Respondent is making a legitimate noncommercial or fair use of the domain name. C. Registered and Used in Bad Faith
The Panel further determines that the domain name in issue was registered and is being used in bad faith. Given the longstanding and widespread use of the FOX and FOX INTERACTIVE marks, there can be little doubt that Respondent was aware of such marks and their use in connection with various forms of media prior to the registration of the domain name on August 10, 2009.
The evidence further supports a finding that Respondent indicated to third parties that it is associated with Complainant. This is further evidence of bad faith registration and use. Exhibit P to the Complaint includes the text of an email message in which Complainant was informed that was approached by somebody at indicating that Fox Interactive media was currently searching for ad placements for BigFishG.
The Panel finds other evidence of bad faith registration and use in Respondent's efforts to conceal its true identity and in Complainant's assertion that the domain name in issue is not being used with an active website. With respect to the former, Complainant notes that the contact information provided to the registrar was for a restaurant and bar in Beverly Hills, California. With respect to the latter, numerous UDRP panel decisions have held that passive holding of a domain name does not prevent a finding of bad faith use, especially where, as here, a complainant has a widely known and long-used mark, there is no response, and the respondent has sought to conceal its true identity. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. 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 domain name be transferred to Complainant.
Jeffrey M. Samuels
Sole Panelist
Dated: December 15, 2009
Full & Egal Universal Law Academy