Complainant is Fox Media LLC, United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States.
Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2020. On May 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2020, 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 Complainant on June 3, 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 June 4, 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 June 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 3, 2020. The Center appointed Marina Perraki as the sole panelist in this matter on July 13, 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 an entertainment and media company, including a major television network. Complainant was originally founded as Fox Film Corporation in 1915, later evolving in 1935 into Twentieth-Century Fox. In 2019, Disney acquired Twenty-First Century Fox and spun off the Fox Broadcasting Company, Fox Television Stations, Fox News Channel, Fox Business, FS1, FS2, Fox Deportes, and the Big Ten Network into the newly-formed Fox Corporation, namely Complainant. Per Complaint, Fox News finished 2018 as the most-watched basic cable network for the third consecutive year in primetime and total day viewing. Fox News has held its number one United States cable news network status for 17 years. Fox Business Network 7 has been the most-watched national financial channel for more than two years in business day viewership. Fox Network has aired the most watched television program, NFL’s America’s Game of the Week on Fox, for ten consecutive years, and in 2018, the NFL on Fox regular season pulled in an average of more than 18 million viewers. The Fox Network’s primetime entertainment lineup accounted for seven of the 2017-2018 broadcast season’s top 20 new broadcast entertainment series. Fox Television Stations owns and operates 28 broadcast television stations in the United States, which distribute sports, entertainment and syndicated content, and collectively produce nearly 1,000 hours of local news every week. Per Complaint, Complainant has developed considerable reputation and goodwill in the United States and worldwide in the field of entertainment under the FOX mark. Complainant owns several registrations worldwide for FOX, including: - United States trademark registration No. 1840919, FOX (typed drawing), filed on September 7, 1993 and registered on June 21, 1994 (first use in commerce March 7, 1986) for services in international class 38; - United States trademark registration No. 1924143, FOX (typed drawing), filed on September 7, 1993 and registered on October 3, 1995 (first use in commerce March 31, 1915) for services in international class 41; - Romania trademark registration No. 050596, FOX (word), filed on October 11, 2001 and registered on October 3, 2002 for services in international classes 38 and 41; - European Union Trade Mark registration No. 000142943, FOX (word), filed on April 1, 1996 and registered on October 19, 1998 for goods and services in international classes 9,16, 25, 28, 35, 38, 41, and 42; and - European Union Trade Mark registration No. 005749452, FOXTV (word), filed on March 12, 2007 and registered on January 14, 2008 for goods and services in international classes 9, 16, 25, 28, 35, 38, 41, and 42. Complainant also owns several domain names including its FOX trademark, such as The Domain Name was registered on March 5, 2020, and resolves to a website purportedly offering paid subscriptions to access downloadable or streamable video-on-demand content, including various televised sporting events, by an alleged company under the name “Foxtvro” (the “Website”). The Website lists no information regarding the alleged company’s address or history and no phone number is available for users. 5. Parties’ Contentions A. Complainant Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent 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; (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 Complainant has demonstrated rights through registration and use on the FOX mark. The Panel finds that the Domain Name is confusingly similar with the FOX trademark of Complainant. The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525). The addition of the letters “iptvro” in the “fox” portion of the Domain Name are in effect disregarded, as these letters are non distinctive and are merely descriptive (apparently these are to be seen as the mark plus “ip” plus “tv” plus “ro”) and do not prevent a finding of confusing similarity (Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin1,WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). The generic Top-Level Domain (“gTLD”) “.net” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275). 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 submitted any response and has not claimed any rights or legitimate interests with respect to the Domain Name. As per the Complaint, Respondent was not authorized to register the Domain Name. Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Complainant demonstrated that Respondent used the Domain Name in connection with the Website purporting to provide content and services in direct competition with those provided by Complainant. Furthermore, as Complainant demonstrated, the Website invites Internet users to create an account, collecting credit card information and other personal and financial information, in order to obtain access to online streaming and/or downloadable video-on-demand content. The diversion of Internet users to competitors of Complainant does not give rise to any rights or legitimate interests in the Domain Name on the part of Respondent within the meaning of paragraph 4(c)(i) of the Policy. This, along with the fact that the Domain Name is registered with a privacy shield service, speaks against any rights or legitimate interests held by Respondent (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen,WIPO Case No. D2018-0625; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records,WIPO Case No. D2017-2533). The Panel finds that these circumstances do not confer upon Respondent 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 has registered and used the Domain Name in bad faith. Complainant’s FOX trademark is well known for entertainment and media. Because the FOX mark had been widely used and registered at the time of the Domain Name registration by Respondent, the Panel finds it rather obvious that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226). Respondent would also have known about Complainant’s rights, due to the fact that Complainant’s mark had significant goodwill and reputation when the Domain Name was registered. Furthermore, even if not, such knowledge is readily obtainable through a simple browser search due to Complainant’s wide use of FOX mark on the Internet, in various websites, such as “www.fox.com” (Caesars World, Inc. v. Forum LLC,WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc.,WIPO Case No. D2009-0462). Furthermore, the Domain Name incorporates in whole Complainant’s mark plus the additional terms “ip” and “tv” on the “fox” part of the Domain Name the latter of which corresponds to the nature of Complainant’s business, which includes television broadcasting. This further indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry. As regards bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name was used to create the Website, that provides services identical to services provided by Complainant. The Domain Name operates by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the website it resolves to. This can be used in support of bad faith registration and use (WIPO Overview 3.0, sections 3.3 and 3.4). The Panel considers the following factors: (i) the reputation of Complainant’s mark, (ii) the failure of Respondent to submit a response, (iii) the fact that the Domain Name is registered with a privacy shield service to hide the holder’s identity, which further supports an inference of bad faith (WIPO Overview 3.0, section 3.6), and (iv) the implausibility of any good faith use to which the Domain Name may conceivably be put, given that as Complainant has demonstrated the Domain Name resolves to the Website which provides services directly competing with those of Complainant and creates the false impression that the services provided thereon are related to or endorsed by Complainant, while users are required to provide various personal and financial information, including credit card details in order to receive the services. Under these circumstances and on this record, the Panel finds no good-faith basis for Respondent’s conduct vis-à-vis the Domain Name. Complainant has established Policy, paragraph 4(a)(iii). 7. Decision 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 Marina Perraki
Sole Panelist
Date: July 27, 2020
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