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Twentieth Century Fox Film Corporation v.Michele Dinoia [2003] GENDND 124 (3 February 2003)


National Arbitration Forum

DECISION

Twentieth Century Fox Film Corporation v. Michele Dinoia

Claim Number: FA0212000135643

PARTIES

Complainant is Twentieth Century Fox Film Corporation, Beverly Hills, CA (“Complainant”), represented by Vivian L. Polak, of LeBoeuf, Lamb, Greene & MacRae, LLP.  Respondent is Michele Dinoia, Pineto, Italy (“Respondent”), represented by Avvocato Valerio Donnini.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <foxmoviechannel.com>, registered with The Registry At Info Avenue d/b/a Ia Registry.

PANEL

The undersigned certify that they have acted independently and impartially, and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

The Panelists are:  Richard DiSalle (Chair), James P. Buchele and Clive Elliott.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 5, 2002; the Forum received a hard copy of the Complaint on December 9, 2002.

On December 11, 2002, The Registry At Info Avenue d/b/a Ia Registry confirmed by e‑mail to the Forum that the domain name <foxmoviechannel.com> is registered with The Registry At Info Avenue d/b/a Ia Registry and that the Respondent is the current registrant of the name.  The Registry At Info Avenue d/b/a Ia Registry has verified that Respondent is bound by the The Registry At Info Avenue d/b/a Ia Registry registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On December 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 6, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@foxmoviechannel.com by e-mail.

A timely Response was received and determined to be complete on January 6, 2003.

Complainant filed a timely Additional Submission on January 6, 2003.

Respondent filed a timely Additional Submission on January 13, 2003.

On January 7, 2003, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Richard DiSalle (Chair), James P. Buchele and Clive Elliott as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

FOX MOVIE CHANNEL is an internationally-recognized, distinctive trademark of Complainant Twentieth Century Fox Film Corporation ("Fox").  Fox holds the following United States trademark registrations for its FOX MOVIE CHANNEL mark:

FOX MOVIE CHANNEL, International Class 41, Reg. No. 2578468.

FOX MOVIE CHANNEL, International Class 38, Reg. No. 2617849.

Since at least as early as 1915, Fox and its predecessors in interest have continually used the trademark and service mark "FOX," and 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"), in connection with a wide variety of entertainment services and products including, but not limited to, the production, distribution, promotion and sale of theatrical motion picture films and television programming, video and audio tapes and discs, as well as the exploitation and further distribution of motion pictures and other programming on television, cable and via satellite delivery. 

Fox currently owns over 2,400 United States registrations and applications for trademarks and service marks containing or consisting of the Fox Marks. Worldwide, Fox currently owns over 3,050 registrations and applications for trademarks and service marks consisting of or containing the Fox Marks.

The authorized website for Fox Movie Channel is <thefoxmoviechannel.com>.  The primary purpose of this website is to disseminate information to the public about programming available through the Fox Movie Channel.  It also features articles on related topics, such as interviews with actors starring in the movies airing on the channel.  In addition, the website features links to related sites such as "Fox Movie Channel News."  The website offers links to the official websites of other Fox related companies, such as Fox Home Entertainment.

Complainant alleges that Respondent Michele Dinoia is a notorious cybersquatter, and that his infringing registrations of <kidsrus.com>, <wwwfootlocker.com>, and <anheuserbusch.com> have all been transferred to their rightful trademark owners through UDRP proceedings.  See Geoffrey, Inc. v. no aka Michele Dinoia, FA 104089 (Nat. Arb. Forum Feb. 25, 2002) (transferring <kidsrus.com>), Venator Group Retail Inc v. Michele Dinoia d/b/a SZK.com, FA 101506 (Nat. Arb. Forum Dec. 10, 2001) (transferring <wwwfootlocker.com>), Anheuser‑Busch, Inc. v. Michele Dinoia, FA 114465 (Nat. Arb. Forum July 15,  2002) (transferring <anheuserbusch.com>).

Complainant says that (1) the infringing domain name <foxmoviechannel.com> is identical or confusingly similar to Complainant's FOX MOVIE CHANNEL trademark; (2) Respondent Michele Dinoia has no rights or legitimate interests in the <foxmoviechannel.com> domain name, and in this case, there is no legitimate explanation for Respondent's registration of the words "Fox Movie Channel" as a dot-com domain name other than his practice of commercially capitalizing on Internet website traffic from users seeking information concerning Complainant's Fox Movie Channel; and (3) that he registered and is using the name in bad faith in that he chose the name in order to first attract Internet users who were looking for the official Fox Movie Channel website, and then to divert their attention away from their intended destination and towards other unrelated sites for his commercial gain.   

B. Respondent

The Respondent claims that Complainant’s assertions regarding the holding of U.S. trademark registrations for the mark FOX MOVIE CHANNEL are incomplete.  The registrations of Complainant’s marks took place on June, 11 2002, for Reg. No. 2578468 and on September 10, 2002, for Reg. No. 2617849; the Respondent registered the contested domain name months earlier, on August 7, 2001.  Therefore, the Complainant had no trademark rights in the words “fox movie channel” at the time the Respondent registered the domain name, because no such mark existed.

Respondent claims that he has rights or legitimate interests in respect of the domain name, and that he is not a cybersquatter.  He says his business is, among others, to register numerous generic names, and to resell or to use them for websites.  Respondent claims that selling a domain name is not per se prohibited; it is prohibited only if there is trademark infringement and lack of legitimate interest, and that the panel in Todito S.a v. Dinoia, D2002-0620 (WIPO Aug. 26, 2002) (<hechos.com>) acknowledged that the Respondent’s activity is legitimate.

Respondent further argues that the domain name should not be considered as having been registered and being used in bad faith.  Indeed, he says the domain name was registered in good faith and that he was not aware of the existence of the television channel named Fox Movie Channel.

Finally, Respondent says that Complainant has not proved that he was aware of the mark or that he was aware of the existence of a television channel named Fox Movie Channel and that Complainant has produced no evidence that its television channel is known in Italy, where the Respondent is resident.  Respondent says there is no evidence that the Complainant’s mark is well known outside the United States.

 

C. Complainant’s Additional Submission

In its Additional Submission, Complainant states that in Italy alone, Fox owns 11 registered trademarks that incorporate its FOX house mark, with an additional pending application in process.  In the European Union, Fox owns 18 community trademark registrations that incorporate its FOX house mark, with 3 additional pending applications in process.

Complainant offers the Declaration of Robert B. Carrasco to show that Fox Movie Channel motion picture content has been broadcast on the European continent pursuant to licenses from Fox since as early as March 1999.  Pursuant to these license agreements, the Fox Movie Channel marks, which began use in early 2000, appeared in the screen images and in the film credits in the programming broadcast to Europe and which was accessible by viewers in Italy.

Complainant also argues that Respondent's attempt to hide behind the <hechos.com> panel ruling concerning his registration of a single generic Spanish word as a second-level domain does not support his domain name registration practice because the domain name is not generic.

Finally, Complainant contends that Respondent’s website links to other websites that offer motion picture and other entertainment services, as well as numerous websites that offer adult and teen pornography.

D. Respondent’s Additional Submission

In his Additional Submission, Respondent argues that the declaration of Mr. Carrasco is not evidence that the Fox Movie Channel was widely known in Italy.  He states that the license agreements to broadcast content owned by the Complainant include French and Spanish companies, not Italian companies, and that the Fox Movie Channel was not directed to an Italian audience; in fact, he says that (without any real evidence to support the assertion) the mark in question is totally unknown in Italy.

           

FINDINGS

Having reviewed all of the submissions, we find that:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical or Confusingly Similar

Complainant holds trademark registrations with the United States Patent and Trademark Office for the FOX MOVIE CHANNEL mark (Reg. Nos. 2,578,468 and 2,617,849).  Complainant has continually used the FOX mark and similar variations of the mark since 1915 to denote a variety of entertainment services and products.  Complainant is involved in the motion picture industry and television industry and uses the FOX related marks to denote its services within each industry. 

Fox Movie Channel is Hollywood’s first and only studio-based movie network, and airs movies from its “Fox library” of movies, including such hits as Titanic, as well as programming that focuses on how a particular film was made.  Fox Movie Channel reaches nearly 19 million households in the United States. 

Complainant promotes its Fox Movie Channel at a website found at <thefoxmovie-channel.com>.  This website features information about programming available through the Fox Movie Channel as well as articles on such topics as interviews with actors staring in Complainant’s films.  The <thefoxmoviechannel.com> website received approximately 13,659,000 visitors in the year 2002.  Therefore, the FOX MOVIE CHANNEL mark carries a significant amount of goodwill. 

Respondent’s <foxmoviechannel.com> domain name is identical to the FOX MOVIE CHANNEL mark because the absence of spaces in the domain name is irrelevant in a Policy ¶ 4(a)(i) analysis.  The top-level domain “.com” is negligible because top-level domains are a required feature of every domain name.  Therefore, Respondent’s <foxmoviechannel.com> domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the Internet address and does not add source identity significance).

In its Additional Submission, Complainant addresses Respondent’s claim that the subject domain name predates Complainant’s interest in the FOX MOVIE CHANNEL mark.  Even if we accepted that argument, Complainant’s rights in the FOX trademark and various related marks are well established with over 85 years of commercial use. 

Rights and Legitimate Interests

It is clear that Respondent uses the domain name to re-direct Internet traffic to a revenue generating search engine, “SearchPort,” is not a use in connection with a bona fide offering of goods or services.  Respondent uses the domain name to direct those searching for Complainant by its FOX MOVIE CHANNEL mark directly to the “SearchPort” movie page.  The resulting webpage of the subject domain name contains links to the websites <howtocopydvds.com> and <jump.sex.com>, which Complainant would prefer not to be associated with.  Respondent’s actions unfairly trade off the goodwill and commercial value of the FOX MOVIE CHANNEL mark, and his behavior warrants a finding that neither Policy ¶¶ 4(c)(i) nor (iii) serve to assist Respondent in establishing rights or legitimate interests in the subject domain name.  See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).

Respondent is not a licensee authorized to use the FOX MOVIE CHANNEL mark and no evidence exists that suggests Respondent has ever been known by the mark.  Therefore, Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding that no person besides Complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>).  Complainant’s Additional Submission supports this finding.

Registration and Use in Bad Faith

Complainant argues that Respondent’s commercial use of the subject domain name to increase Internet traffic at the search engine website “SearchPort” is bad faith under Policy ¶ 4(b)(iv) and we agree.  Respondent’s use of the subject domain name results in consumer confusion as to Complainant’s affiliation with the resulting search engine website.  See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy 4(b)(iv)).

Respondent was involved in prior domain name disputes, including disputes regarding the domain names <anheuserbusch.com> and <kidsrus.com>.  In these prior disputes Respondent infringed on the ANHEUSER-BUSCH mark and the KIDS “R” US mark.  Respondent was found to have had constructive knowledge of the marks it infringed upon in the aforementioned cases.  Based on the strength of the FOX MOVIE CHANNEL mark and Respondent’s infringing behavior, we find that Respondent purposefully registered the subject domain name to trade off of the goodwill associated with the FOX MOVIE CHANNEL mark.

The Panel concludes that Respondent was aware of Complainant’s interests in the FOX MOVIE CHANNEL mark, and registered and used the subject domain name in bad faith.  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

DECISION

The Registry at Info Avenue is directed to transfer the registration to <foxmoviechannel.com> from Michele Dinoia to Twentieth Century Fox Film Corporation.

Richard DiSalle, Chair

James P. Buchele, Panelist

Clive Elliott, Panelist
Dated:  February 3, 2003


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