WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Fox News Network, LLC v. H, Heihachi Ltd Case No. D2009-1551 1. The Parties
The Complainant is Fox News Network, LLC of New York, New York, United States of America, represented internally.
The Respondent is H, Heihachi Ltd of Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2009. On November 19, 2009, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the Domain Name. On the same date, eNom, Inc. 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 the Complainant on November 24, 2009 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 amendment to the Complaint on November 27, 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 the Respondent of the Complaint, and the proceedings commenced on December 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 28, 2009.
The Center appointed J. Christopher Thomas, Q.C., W. Scott Blackmer and Marino Porzio as panelists in this matter on January 15, 2010. The Panel finds that it was properly constituted. Each member of 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, Fox News Network, LLC is a licensee of Twentieth Century Fox whose majority parent is Fox Entertainment Group, Inc. and whose ultimate parent is News Corporation. Twentieth Century Fox is an international media organization that produces, acquires, and distributes motion pictures. The company was founded in 1935, is based in Los Angeles, California, and is a subsidiary of Fox Entertainment Group, Inc., which in turn is a subsidiary of News Corporation.
Twentieth Century Fox is the owner of the mark FOX and a large number of trademarks and service marks that include the word “fox”, which are used and registered in connection with radio, television, cable television, motion picture, Internet programming and other programming and content, plus additional goods and services. Many marks within the FOX group of marks consist of two or three words and usually begin with the word “fox”, with the next word describing the nature of the programming and/or audience.
The Complainant adduced evidence of Twentieth Century Fox's registration of some thirty-four marks with the U.S. Patent and Trademark Office (“USPTO”). These include FOX NEWS, Registration No. 2,708,769; dated April 22, 2003.
The Complainant is a non-exclusive licensee of Twentieth Century Fox with respect to the mark FOX and certain other FOX marks and an exclusive licensee of certain of the other FOX marks. It has used various FOX marks since its inception in 1996. The Complainant is also a sibling entity to Twentieth Century Fox which shares the same majority parent company, Fox Entertainment Group, Inc., and ultimate parent, News Corporation. 5. Parties' Contentions A. Complainant
The following is a condensed summary of the Complainant's case and does not purport to summarize all of the various arguments advanced in support thereof. The Panel has simply recorded what appears to it to be the material submissions.
The Complainant contends firstly that the Domain Name is confusingly similar to marks in which the Complainant has rights. The leading syllable in the Domain Name is “fox”, which is consistent with the mark FOX and the FOX group of marks. The second syllable is “news” which is also consistent with the FOX NEWS marks in the FOX group of marks. The only difference between the Domain Name, on the one hand, and the marks FOX, FOX NEWS and the FOX group of marks, on the other, is the addition or substitution of the geographic term “america” plus the addition of the “.com” top level domain extension. In the Complainant's submission, these are insufficient to distinguish the Domain Name from the marks FOX, FOX NEWS and the FOX group of marks.
Since neither the addition of the geographic and generic term “america” nor the addition of the “.com” extension distinguishes from FOX, FOX NEWS, and the FOX group of marks, the Domain Name is therefore said to be confusingly similar to marks in which the Complainant has rights.
The fact that the Complainant has not yet registered FOX NEWS AMERICA as a mark nor used it specifically in connection with services is said not to be relevant because of the confusing similarity to the marks in which it has rights. Nor does it matter that the Complainant is not the owner of the marks but rather is licensed by the marks' owner to use the marks.
Turning to the issue of legitimate use, the Complainant asserts that neither it nor its parent Twentieth Century Fox has licensed or otherwise granted rights to the Respondent to use the Domain Name. It contends further, based upon information and belief, that the Respondent has not used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services.
It is observed that the web site to which the Domain Name resolved as of November 9, 2009 appeared to be an advertisement “masquerading as a news story” about the “Acai Berry Diet” and two related products called “Acai Advanced” and “Colo Thin”, for colon cleansing.
In the Complainant's view, the Domain Name is thus being used to draw persons familiar with FOX and FOX NEWS to a web site on which the Respondent advertises products. Thus, it is said to be relying on consumer confusion and trading on the goodwill associated with the fame of the FOX and FOX NEWS marks, and the FOX group of marks.
The Complainant notes further that there has been no prior use by the Respondent or reference to the Respondent by a nickname that corresponds to the Domain Name. There is no indication that the Respondent is known as “Fox News America”.
Turning to the issue of bad faith use, in the Complainant's submission the Respondent does not meet paragraph 4(c)(iii) of the Policy. The web site does not make a legitimate noncommercial or fair use of the Domain Name; rather, it poses as a news story, but is actually advertising a diet with accompanying products, which are offered for sale on the web site to which the Domain Name resolves. Such use clearly is intended to be commercial.
Moreover, the Respondent clearly knows of the existence of the FOX group of marks since the design mark “FOX NEWS CHANNEL” is placed prominently at the top of the advertisement content of the web site to which the Domain Name resolves, along with other major media companies' marks. In addition, there is a disclaimer at the bottom of the web site that states that “This site is not affiliated in any way with … FOX NEWS” and that “FOX NEWS [and the other listed media companies] … are all registered trademarks of their respective owners” and further that the authors of “this web site are not sponsored by or affiliated with any of the third-party trade mark or third-party registered trade mark owners, and make no representations about them, their products or services”. The Complainant points out that this disclaimer proves that the Respondent knows that the FOX and FOX NEWS marks are federally registered in the United States. In the Complainant's view, the Respondent's knowledge of the Complainant's rights strongly suggests that registration of the Domain Name was made for the purpose of intentionally attracting, for commercial gain, Internet users to the Respondent's web site at by creating a likelihood of confusion with Twentieth Century Fox's and the Complainant's trademarks in violation of paragraph 4(b)(iv) of the Policy.
In accordance with paragraph 4(i) of the Policy, the Complainant requests the Panel to issue a decision that the registration be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Panel has reviewed the Complaint and the evidence filed in support thereof and has concluded that the Complainant has made out its case. A. Identical or Confusingly Similar
The Panel finds that the Domain Name is confusingly similar to marks in which the Complainant has rights. The Panel considers that the Complainant, as a licencee, has the right to make the Complaint. As for the Domain Name, the Panel agrees with the Complainant that the only difference between the Domain Name, on the one hand, and the marks FOX, FOX NEWS and the FOX group of marks, on the other, is the addition or substitution of the geographic term “america” plus the addition of the “.com” top level domain extension. These are insufficient to distinguish the Domain Name from the marks FOX, FOX NEWS and the FOX group of marks and indeed the geographic indication of “america” shows an intent to ally the name to the FOX NEWS mark, which is used predominantly in North America. B. Rights or Legitimate Interests
Based on the evidence before it, the Panel finds that neither the Complainant nor its parent has licensed or otherwise granted rights to the Respondent to use the Domain Name. The Panel finds no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The evidence shows instead that the web site to which the Domain Name resolved appears to be an advertisement dressed up as a news story about the “Acai Berry Diet” and two related products called “Acai Advanced” and “Colo Thin”.
The Panel agrees that the Domain Name was thus being used to draw persons familiar with FOX and FOX NEWS to a web site on which the Respondent advertised products. The Panel agrees with the Complainant that there has been no prior use by or reference to the Respondent that corresponds to the Domain Name, nor is there any indication that the Respondent is known as “Fox News America”.
The Panel finds that the Respondent lacks rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Turning to the issue of bad faith, the Panel has little difficulty finding that this element has also been made out. The web site does not make a legitimate noncommercial or fair use of the Domain Name; rather, it used an apparent news story to advertise a diet and certain products, which were offered for sale. Moreover, the purported disclaimer, while simultaneously using the FOX design mark, was a patent attempt to avoid any suggestion of infringement with a mark in which the Complainant has rights. This purported disclaimer is rejected by the Panel. It in fact proves the Respondent's awareness of the FOX and FOX NEWS marks and indicates that the Domain Name was registered precisely for the purpose of attracting, for commercial gain, Internet users to the Respondent's web site at by creating a likelihood of confusion with Twentieth Century Fox's and the Complainant's trademarks in violation 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 Domain Name be transferred to the Complainant.
J. Christopher Thomas, Q.C.
Presiding Panelist
W. Scott Blackmer
Panelist
Marino Porzio
Panelist
Dated: February 3, 2010
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