DECISION

Twentieth Century Fox Film Corporation v. This Name Is For Sale - Make An Offer To: bdomains@yahoo.com Make An Offer For This Domain Contact: bdomains@yahoo.com (bdomains@yahoo.com)

Claim Number:  FA0407000296328

PARTIES

Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by Del Barrio of Twentieth Century Fox Film Corporation c/o Fox Group Legal, Intellectual Property Dept., 2121 Avenue of the Stars, Suite 700, Los Angeles, CA 90067.  Respondent is This Name Is For Sale-Make An Offer To: bdomains@yahoo.com Make An Offer For This Domain Contact: bdomains@yahoo.com (bdomains@yahoo.com) (“Respondent”), GPO Box 12295, Central Hong Kong, 0000, Hong Kong.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fxchannel.com>, registered with Enom, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 13, 2004; the Forum received a hard copy of the Complaint on July 14, 2004.

On July 14, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name <fxchannel.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 July 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 9, 2004 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@fxchannel.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On August 13, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <fxchannel.com> domain name is confusingly similar to Complainant’s FX mark.

2. Respondent does not have any rights or legitimate interests in the <fxchannel.com> domain name.

3. Respondent registered and used the <fxchannel.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Twentieth Century Fox Film Corporation, is in the television and film entertainment business.  Complainant and its media entitities distribute some of the most internationally well-known film and television properties. 

Complainant owns registrations in many countries and with the United States Patent and Trademark Office for numerous marks featuring the FX mark (Reg. No. 2,107,517 issued October 21, 1997; Reg. No. 2,557,520 issued April 9, 2002; and Reg. No. 2,227,788 issued March 2, 1999).

Complainant has reacted to the growing popularity of cable television by developing specific channels to appeal to a variety of members of a diverse group of consumers.  On June 1, 1994, Complainant launched its internationally broadcast and distributed cable network the “FX channel,” which airs FX original programs, acquired hit series, motion pictures, sports events and many award winning shows and movies.       

Currently, Complainant’s FX channel reaches approximately 83 million homes in the United States and has more than 7 million subscribers in the United Kingdom and Ireland.  The FX channel has also been covered extensively in the media, including international magazines, journals, and trade guides throughout the world. 

Complainant has launched numerous websites associated with its FX mark, including <fxchannel.co.uk>, <fxchannel.it>, <fxnetworks.com>, <fxcable.com>, and <fxtv.com>. 

Respondent registered the <fxchannel.com> domain name on July 3, 2000.  Respondent is using the domain name to redirect Internet users to a website which features an entertainment-based search engine and links to subjects associated with Complainant’s business such as “broadcasting” and “production companies.”  Additionally, the website states that “This Domain is For Sale” and Respondent’s WHOIS information lists the contacts for the <fxchannel.com> domain name registration as “This Name Is For Sale – Make An Offer To: bdomains@yahoo.com Make An Offer For This Domain Contact: bdomains@yahoo.com (bdomains@yahoo.com).”

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 and/or Confusingly Similar

           

Complainant has established in this proceeding that it has rights in the FX mark through registration with the United States Patent and Trademark Office and by continuous use of its mark in commerce for at least the last 10 years.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption.

The <fxchannel.com> domain name registered by Respondent is confusingly similar to Complainant’s FX mark, because the domain name incorporates Complainant’s mark in its entirety, adding only the generic or descriptive term “channel.”  Furthermore, the term “channel” is descriptive of Complainant’s FX mark as a cable television channel.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term; see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business.

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.    

Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in the <fxchannel.com> domain name, which contains Complainant’s entire FX mark.  Due to Respondent’s failure to respond to the Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain name.  In fact, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name; see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise.

Furthermore, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true.

Respondent is using the <fxchannel.com> domain name to redirect Internet users to a website that features an entertainment-related search engine and advertising for a variety of goods, and links viewers to numerous websites, including sites that appear to be related to Complainant’s broadcasting business.  Respondent’s use of a domain name that is confusingly similar to complainant’s FX mark to redirect Internet users interested in Complainant’s services to a commercial website that offers a search engine and links unrelated to Complainant’s business is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum March 17, 2003) finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names; see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services; see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) finding that Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names.

Finally, Respondent offered no evidence and nothing in the record suggests that Respondent is commonly known by the <fxchannel.com> domain name.  Furthermore, Complainant has not licensed Respondent to use the FX mark.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name.

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The website at the <fxchannel.com> domain name lists the domain name registration for sale, which is evidence that Respondent registered the disputed domain name primarily for the purpose of selling the domain name registration.  Additionally, the WHOIS domain name owner registration states that the domain name registration is for sale.  The Panel finds that Respondent’s registration of the disputed domain name with the primary purpose of selling the domain name is evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(i).  See CBS Broadcasting Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) finding bad faith where Respondent offered domain names for sale; see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”.

Respondent intentionally registered the <fxchannel.com> domain name, which contains Complainant’s well-known FX mark in its entirety, for Respondent’s commercial gain.  The <fxchannel.com> domain name diverts Internet users who seek Complainant’s FX mark to Respondent’s commercial website through the use of a domain name that is confusingly similar to Complainant’s mark.  Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s FX mark.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See 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. Khan, 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); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website.

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <fxchannel.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  August 27, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/968.html