WIPO Domain Name Decision DRO2009-0012 for foxtv.ro

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Twentieth Century Fox Film Corporation v. WEB4COMM SRL Case No. DRO2009-0012 1. The Parties

The Complainant is Twentieth Century Fox Film Corporation of Los Angeles, California, United States of America, represented by Cantor Colburn LLP, United States of America.

The Respondent is WEB4COMM SRL of Bucharest, Romania. 2. The Domain Name and Registrar

The disputed domain name is registered with RNC.ro. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2009. On October 13, 2009, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the disputed domain name. On October 14, 2009, RNC.ro transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 October 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 19, 2009.

The Center appointed Mihaela Maravela as the sole panelist in this matter on December 1, 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.

Language of the Proceedings

As regards the question of the language applicable to this dispute, paragraph 11(a) of the Rules provides:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The Registrar of the disputed domain name has informed the Center that the language of the relevant registration agreement is Romanian.

As the Complaint had been submitted in English, on October 12, 2009, the Center forwarded a notice to the Complainant stating that the Complainant should (a) provide evidence of an agreement between the parties that proceedings be in English; (b) translate the Complaint into Romanian; or (c) submit a request that English be the language of the proceedings. On October 20, 2009, the Complainant submitted a request that the proceedings be in English.

Although properly notified in both languages on the commencement of the proceedings, the Respondent chose not to participate.

In accordance with previous decisions (see e.g. DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA,WIPO Case No. DRO2006-0003; Companie Générale des Établissements Michelin - Michelin & Cie. v. IPSOS New Media Research SRL,WIPO Case No. DRO2006-0004; Alphyra Romania S.A. v. Redpoint Software Impex S.R.L.,WIPO Case No. DRO2008-0001; Advanced Micro Devices, Inc. v. Softconcept SRL, Suciu Alexandru,WIPO Case No. DRO2008-0002; SC Tip Top Food Industry SRL v. S.C. WEB4COMM SRL/ web4COMM S.R.L. Romania, WIPO No. DRO2008-0013; Symantec Corporation v. SC SOFTCONCEPT S.R.L.,WIPO Case No. DRO2008-0014), the Panel determines according to the Rules under paragraph 11(a) that the language of these proceedings be English for the following reasons:

- the Complaint has been submitted in English, and the Complainant has requested and provided supporting arguments that the language of proceedings be English;

- the Center sent all the communications in both languages, Romanian and English. Further, the Center specifically advised the Respondent that if no objections are filed until October 26, 2009 it shall be proceeded on the basis that the Respondent has no objections to the Complainant's request that English be the language of the proceedings; however, the Respondent did not attempt to file a Response in Romanian;

- the Respondent has been involved as a respondent in several administrative proceedings before WIPO UDRP panels, all conducted in English (see The Body Shop International Plc. v. web4COMM SRL Romania, WIPO Case No. DRO2009-0006; SC Tip Top Food Industry SRL v. S.C. WEB4COMM SRL/ web4COMM S.R.L. Romania, WIPO Case No. DRO2008-0013; DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA, WIPO Case No. DRO2006-0003; OSRAM GmbH, v. web4COMM SRL Romania,WIPO Case No. DRO2005-0004; Accor v. Catalin Alexandra Tibulca / WEB4COMM SRL Romania, WIPO Case No. DRO2005-0003; Beiersdorf AG v. Web4comm Srl Romania, WIPO Case No. DRO2005-0002; Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001; Praktiker AG v. web4COMM SRL Romania, WIPO Case No. DRO2003-0001;

- at the registration date of the disputed domain name - January 1, 1996 (according to the WhoIs data) and at least until 2006- there were no possibility for a domain name applicant to choose between English or Romanian as the controlling language of the registration agreement; accordingly by registering the domain name, such applicant accepts the use of both languages in the relationship with the domain name as other panels found in other previous cases (see Symantec Corporation v. SC SOFTCONCEPT S.R.L.,WIPO Case No. DRO2008-0014 and the decisions cited therein);

- the registration agreement was available in both English and Romanian, and in the absence of any statement to the contrary from the Respondent the Panel draws the inference that the domain applicant accepts the use of both languages (see Prelatura Del Opus Dei, Region de España v. Sebastian Koga, WIPO Case No. DRO2006-0006). 4. Factual Background

The following facts have been alleged by the Complainant and not refuted by the Respondent.

The Complainant is a major film studio and television network. The Complainant is a global leader in movie production and distribution, and is responsible for some of the top-grossing movies of all times. The Complainant is also well known for its television programming, producing and distributing some of the world's most popular television series.

In 1987, the Complainant launched its own television network by the name of FOX. The network was dedicated to airing programs which came out of its own production house, Twentieth Century Fox Television, and other television production entities affiliated with the Complainant. The Complainant has since introduced various channels dedicated to different target audiences including FX, Speed Channel, Fuel TV, National Geographic Channel, Fox News Channel, Fox Movie Channel, Fox Reality, Fox Buisness Channel, Fox Soccer Channel, FSN (Fox Sports Net) and Fox College Sports.

The Complainant owns the famous FOX trademark and service mark, and other trademarks and service marks in which the FOX mark is dominant element such as FOX SPORTS, FOX NEWS and 20th CENTURY FOX, for a wide variety of entertainment services, including motion pictures films and television programs and related goods and services.

The Complainant owns hundreds of active trademark registrations worldwide for its FOX trademarks, including numerous Romanian Trademark Registrations.

The Complainant has registered more than 3,400 Internet domain names which consist of, begin with, and/or include, the word “fox” and are associated with Internet websites concerning the Complainant and its activities.

The Respondent in the present proceedings is WEB4COMM SRL of Bucharest, Romania. The disputed domain name was registered on January 1, 1996 according to the WhoIs information and data available from the way back machine. 5. Parties' Contentions A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant's well-known FOX trademark. The disputed domain name incorporates the FOX mark in its entirety, and as such, is a clear attempt to trade off of the good value goodwill the Complainant has established in the FOX mark.

Also, the Complainant contends that given the fame of the Complainant's FOX mark and the Respondent's total lack of rights in the FOX mark, it stands to reason that the Respondent registered the domain name solely to create an impression of an association with the Complainant and its reputable goods and services in violation of Section 4(b) of the Policy. Furthermore, there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission, or authorization by which the Respondent could own or use the disputed domain name. The Respondent is not commonly known by the disputed domain name and is not making legitimate non-commercial or fair use of the disputed domain name. The Respondent has not engaged in any legitimate use of the domain name, but rather has held the disputed domain name for more than 10 years according to WhoIs records. Furthermore, the Respondent has been involved in eight WIPO UDRP cases, all related to domain names identical or confusingly similar to famous trademarks, and all decided in the favor of the respective complainants. In conclusion, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant contends that in light of the fame of the FOX mark, its total incorporation in the Respondent's domain name, the combination of the mark with the descriptive term “tv”, and Respondent's “pattern of conduct” of acquiring other domain names featuring famous trademarks, it is clear that the Respondent in all likelihood knew of the existence of the Complainant's trademark and its significance in the market. The domain name resolves, but only to an inaccessible website. Such inactive or passive holding constitutes bad faith use, especially where the Complainant has a strong reputation and is widely known, and the Respondent has been involved in several prior UDRP procedures, all related to famous marks and all decided in the favor of the respective complainants. The passive holding of the disputed domain name by the Respondent for more than 10 years since its registration together with the other circumstances of the present case is evidence of bad faith use. B. Respondent

The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Due process

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules, establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond

(See, e.g., paragraph 2(a), Rules).

A copy of the Complaint was sent by the Center to the email address and a hard copy of the Complaint and attachments by courier to the mail address contained in the WhoIs database of registrar, which were also confirmed by the concerned registrar. Although the email messages appear not to be delivered due to invalid address, the hard copies were delivered. The Panel therefore finds that the Respondent has received the Complaint, but has chosen not to respond. See also S.p.A. Egidio Galbani v. Ms. Jenny Saputo,WIPO Case No. D2003-0953; Littleford Day Inc. v. NRM Equipment Company,WIPO Case No. D2004-0201; Virgin Enterprises Limited v. Steve Peter H S Kok and James Tan,WIPO Case No. DCC2002-0001.

Based on the methods employed to provide the Respondent with notice of the Complaint, the Respondent's obligation under the registration agreement to maintain accurate and current contact information, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center. See also Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814.

Because the Respondent has defaulted in providing a response to the allegations of the Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of the Complainant's undisputed representations (id., paragraph 15(a)). “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and,

(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar

The Panel must find that: (a) the Complainant has rights in a trademark or service mark; and (b) that the disputed domain name is identical or confusingly similar to that trademark or service mark.

Here, the Complainant has demonstrated ownership of the registered trademark FOX by submitting the Romanian Registration Certificates no. 54579 dated June 3, 2002, no. 79759 dated August 14, 2006 and no. 50596 dated October 12, 2001 and other registrations made in Romania starting with 1981 for trademarks comprising the FOX name.

The question of identity or confusingly similarity for the purpose of the Policy requires a comparison of the disputed domain names to the trademark rights which have been proved.

Here, as regards the domain name , it has two differences from the trademark of the Complaint FOX: the addition of the country code “.ro”, and the addition of the suffix “tv”.

It is well accepted that a top-level domain, in this case “.ro”, is to be ignored when assessing identity or confusing similarity of a trademark and a domain name (See, e.g. VAT Holding AG v. V,WIPO Case No. D2000-0607; Billa Aktiengesellschaft v. Ganea Nicolae,WIPO Case No. DRO2002-0001; Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L.,WIPO Case No. DRO2006-0001; Auchan v. Web4comm Srl Romania,WIPO Case No. DRO2005-0001).

Many panels have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. The addition of a generic word to a trademark will not generally avoid a determination that the contested domain name is confusingly similar. See Hoffmann-La Roche Inc. v. Lindy Shaw,WIPO Case No. D2008-0985. The fact that a domain name wholly incorporates a complainant's trademark may be sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See Oki Data Americas Inc. v. ASD Inc.,WIPO Case No. D2001-0903. The addition of a generic term does not serve to distinguish the domain name from the trademark, but may reinforce the association of the Complainant's trademark with a domain name. See Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Limited,WIPO Case No. D2000-0275; Société Air France v. RBlue,WIPO Case No. D2005-0290.

In this case, apart from the country code top level domain, the disputed domain name consists of the Complainant's trademark FOX and the suffix “tv”. The suffix “tv” is of a descriptive nature only and the distinctive element of the domain name is the term “fox”. In these circumstances, Internet users finding are likely to be misled into believing that the Complainant is the registrant or is otherwise affiliated or associated with the domain name. Adding “tv”, a word commonly used in the broadcasting industry and readily understood by both the industry and the public as an abbreviation for “television”, makes confusion more, not less likely. Panels have decided that the addition of “tv” to a preexisting mark in a domain name is insufficient to distinguish that domain name from the pre-existing trademark and transfer of the domain name was awarded. See Brink's Network, Inc. v. Jenny Ho, ,WIPO Case No. D2009-0530, Advance Magazine Publishers Inc. d/b/a Conde Nast Publications v. Rodney Rooney Productions Inc., WIPO Case No. D2009-0639, Samsung Electronics Co., Ltd v. Kutchery Road, WIPO Case No. D2008-1436.

It should also be stressed that when a disputed domain name incorporates, as here, the entirety of the Complainant's trademark – and a notorious and famous trademark – it is difficult, if not impossible, regardless of added terms to distinguish adequately the mark from the disputed domain names. The additional term in our case, “tv”, is common term of no significance value in distinguishing the famous mark FOX from the disputed domain name.

Given the fame of the Complainant and the fact that the Complainant's FOX trademark is well-known among Internet users, an Internet user or consumer viewing the disputed domain name is likely to confuse it with the trademark FOX.

In the absence of any argument to the contrary from the Respondent, this Panel concludes that the domain name is confusingly similar to the Complainant's trademarks. See also Reuters Limited v Global Net 2000, Inc,WIPO Case No. D2000-0441.

The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests

The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, [the] respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.)

In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights. (See, e.g. Barbara Brennan Inc. v. Texas International Property Associates,WIPO Case No. D2008-0351; Sanford Winery Company v. Matt Geiser,WIPO Case No. D2008-0210).

By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any right or legitimate interest in the domain name. Furthermore, considering that the Respondent has not contested that it currently does not use the domain name (it does not resolve to a website created by the Respondent or some other on-line presence of the Respondent), there are no indications that the Respondent could demonstrate a right or legitimate interest in the disputed domain name. (See, e.g. Pizza Hut International, LLC v. Kim Beom Sung,WIPO Case No. DRO2002-0003).

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name. C. Registered and Used in Bad Faith

To fulfill the third requirement, the Complainant must prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, be evidence of registration and use of a domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for a valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name.

(ii) Circumstances indicating that the Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.

(iii) Circumstances indicating that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.

(iv) By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the said website location or of a product or service on that website location.

However, the requirement of the Policy of a domain name “being used in bad faith” is not limited to positive actions (see, e.g. Beiersdorf AG v. Web4comm Srl Romania,WIPO Case No. DRO2005-0002). In this particular case, the following actions are considered as use in bad faith:

- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name:

- the Respondent has not contested any of the allegations made by the Complainant:

- Any use of the disputed domain name would lead the public to the conclusion that it is associated with the Complainant;

- the Complainant's trademark FOX is well-known: and

- the Respondent has already been involved in several domain name disputes (see The Body Shop International Plc. v. web4COMM SRL Romania,WIPO Case No. DRO2009-0006; SC Tip Top Food Industry SRL v. S.C. WEB4COMM SRL/ web4COMM S.R.L. Romania,WIPO Case No. DRO2008-0013; DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA,WIPO Case No. DRO2006-0003; OSRAM GmbH, v. web4COMM SRL Romania,WIPO Case No. DRO2005-0004; Accor v. Catalin Alexandra Tibulca / WEB4COMM SRL Romania,WIPO Case No. DRO2005-0003; Beiersdorf AG v. Web4comm Srl Romania,WIPO Case No. DRO2005-0002; Auchan v. Web4comm Srl Romania,WIPO Case No. DRO2005-0001; Praktiker AG v. web4COMM SRL Romania,WIPO Case No. DRO2003-0001).

In light of these particular circumstances, the Panel concludes that the Respondent's passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by the Respondent.

Also, particularly given the fame of the Complainant and the market value of its marks, the Panel agrees with the view expressed in AT&T Corp. v. Linux Security Systems,WIPO Case No. DRO2002-0002, that:

“Most of the time it is quite difficult, if not impossible to actually show bad faith with concrete evidence, particularly given the limited scope of the inquiry in these proceedings; one should not expect to easily find “the smoking gun”. While bad faith cannot be presumed, once Complainant has presented some evidence pointing in that direction, it is then incumbent upon Respondent to either respond or explain why its conduct should not be assimilated to bad faith. Panel's understanding of the Policy is that although the initial burden to prove Respondent's bad faith in the registration or the use of the disputed Domain Name relies squarely on the shoulders of Complainant, such obligation is only to make out a prima facie case, and once it has done so, as Panel finds it did in the present case, it is then incumbent upon the Respondent to either justify or explain its business conduct (if not to demonstrate the contrary). Failure to do so will, in some circumstances, enable the Panel to draw a negative inference. In the case at hand, the Respondent has elected (or failed) not to put forward any justification for its registration and use of the Domain Name and, in the circumstances, the Panel does draw a negative inference out of such omission. See Société Des Bains De Mer Et Du Cercle Des Étrangers à Monaco v. Iggi Networks Media Group,WIPO Case No. D2000-1324 (December 18, 2000); Hebdomag Inc. v. Illuminaty Marketing,WIPO Case No. D2001-0206 and InterTrade Systems Corporation v. Donna Lawhorn, FA0204000112488 Nat. Arb. Forum (July 15, 2002).”

Given the above circumstances, the Panel concludes that the disputed domain name were registered and used in bad faith.

The Panel concludes that the Complainant has succeeded in proving the three elements of paragraph 4(a) 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 disputed domain name be transferred to the Complainant.

Mihaela Maravela
Sole Panelist

Dated: December 15, 2009

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