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Fox Group Legal v. Saeid Yomtobian [2000] GENDND 1762 (18 December 2000)

National Arbitration Forum

PANELISTS

1. The domain names at issue and registered by Respondent are confusingly similar to the registered trademarks of Complainant. Since 1915, Fox and its predecessors in interest have continually used the trademark and service mark "FOX." They have also continually used other marks in which the mark "FOX," or a word or mark derived from or similar to the "FOX" mark is the predominant feature (hereinafter collectively referred to as the "FOX Marks"). Such use is in connection with a wide variety of entertainment services and products. Such products and services include, but are not limited to, the production, distribution, promotion and sale of theatrical motion picture films and television programming and the broadcast of a number of television and cable television channels such as the FOX NEWS CHANNEL and the FOX FAMILY CHANNEL. Fox currently owns at least 152 United States Registrations for trademarks and service marks containing or consisting of the "FOX" mark, or a word or mark derived from or similar to the "FOX" mark. Fox also currently owns over 2,500 trademark and service mark registrations or applications for registration of trademarks or service marks that contain or consist of the "FOX" mark or a word or mark derived from or similar to the "FOX" mark. Fox also has an affiliate, which operates under the corporate name Fox Channels Group.

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1. In 1979, 1986, 1992, and 1997, Fox released a series of four theatrical films, entitled "Alien", "Aliens", "Alien 3", and "Alien Resurrection" (collectively, the "ALIEN Movies"). The ALIEN Movies have developed into a valuable film franchise, grossing more than $365.1 million in worldwide box office receipts, and generating substantial revenue beyond box office grosses. Fox owns eleven registrations in the United States Patent and Trademark Office for its ALIEN trademarks (collectively, the "ALIEN Marks"). The ALIEN Marks are used in connection with all of Fox's ALIEN Movies' commercial activities; these include but are not limited to the distribution, promotion, and sale of the ALIEN Movies, video and audio tapes, action figures and accessories, comic books, computer games, books, posters, and clothing. Due to extensive marketing, advertising, and promotion, the ALIEN Marks are famous throughout the United States and internationally, and are inherently distinctive for Fox's goods and services.
2. Respondent’s application for a trademark registration of "FOXCHANNEL" is not evidence of registration or prior use as presented to the Panel.
3. Both of the domain names at issue are simply combinations of Fox's mark and a "good" represented or affiliated with that mark. The FOXCHANNEL.COM domain name obviously suggests a connection or affiliation with Fox's network and cable channels, while the ALIENMOVIES.COM domain name suggests a connection to Fox's ALIEN Movies. These variants on the FOX Marks and ALIEN Marks are obviously intended to imply a connection with or sponsorship by Fox and its activities in the entertainment, motion picture, television, and cable broadcasting fields.
4. Respondent has never been commonly known or recognized by either of the domain names at issue, nor does he so allege.
5. Respondent has neither made a bona fide offering of goods or services nor a legitimate noncommercial or fair use (without intent for commercial gain) of either of the Infringing Domain Names. It appears to the Panel that before notice of the dispute, the Respondent made no use of foxchannel.com and was using alienmovies.com for pornographic content. Therefore, the Complainant contends that the Respondent has neither made a bona fide offering of goods and services nor a legitimate noncommercial use of either of the domain names. Policy ¶ 4.c.(i), (iii). See Computer Doctor Franchise Systems, Inc. v. The Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); Melbourne IT Limited v. Grant Matthew Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the Respondent is not commonly known by the domain name).

See also MatchNet plc. V. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark).

6. Subsequent to Complainant’s request to transfer the domain names, Respondent began using the domain names as locations for banner advertising. The home pages established by Respondent lack any substantive content related to the names at issue. Such home pages only contain advertisements and links. ALIENMOVIES.COM redirects the user to PUBLICADVERTISING.COM, while FOXCHANNEL.COM is used to trigger a new window to open containing PUBLICADVERTISING.COM/THRIFTYS.HTML, another advertising site with no substantive content related to the domain names in use. Accordingly, the only attraction for user's to access Respondent’s sites and the source of Respondent’s advertising revenue is the confusion with Complainant and the FOX and ALIEN Marks.
7. Unless living the life of a hermit, Respondent must have been aware of Complainant’s use of the marks at issue at the time of his registrations. Respondent registered the domain names at issue well after Complainant registered these FOX and ALIEN Marks.
8. Respondent has continued use of the domain names at issue and has refused to transfer them to the trademark owner despite repeated cease and desist communications. This is an apparent attempt to profit from consumer confusion and is bad faith conduct. See, e.g., Talk City, Inc. v. Robertson, WIPO D2000-0009; Travel Services, Inc. v. Tour COOP of Puerto Rico, FA92524 (Nat. Arb. Forum February 29, 2000).. This use by Respondent falsely suggests a connection with Complainant and its ALIEN Movies and/or Fox and its broadcasting or cable channels. Such misrepresentation demonstrates an intention to falsely designate the origin and source of Respondent’s website.
9. Respondent has offered to transfer the ALIENMOVIES.COM domain name to Complainant for $750.00 during initial correspondence. Respondent asserted $750.00 was the price he originally paid for the domain name but refused to produce any evidence verifying such a price. This demonstrates a bad faith intention to sell the domain names at a profit.

Hon. Harold Kalina, Hon. Nelson A. Diaz, Hon. James A. Carmody (Chairman), Panelists

Dated: December 18, 2000