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Twentieth Century Fox Film Corporation, COMPLAINANT V. David A. Risser, RESPONDENT DOMAIN NAME DISPUTE
ADMINISTRATIVE PANEL DECISION
This domain name dispute was heard by the undersigned Arbitrators pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy upon the written submissions of the parties. The Complainant is represented by Vivian Polak, LeBoeuf, Lamb, Greene & MacRae, 125 West 55th Street, New York, NY 10019-5389, Tel: 212-424-8000, Fax: 212-424-8500. The Respondent is represented by Adam L. Brookman and Brian G. Gilpan, Godfrey & Kahn, S.C., 780 North Water Street, Milwaukee, WI 53202, Tel: 414-273-3500.
Procedural Findings
After reviewing the complaint and determining it to be in administrative compliance, the National Arbitration Forum ("Forum") forwarded the complaint to the Respondent in compliance with Rule 2(a) of the ICANN Rules for Uniform Domain Name Dispute Policy. The administrative proceeding was commenced pursuant to Rule 4(c). The Forum immediately notified Network Solutions. The Complainant elected to have the administrative proceeding conducted by a three-member panel and paid the appropriate fee. The Complaint and the Response were docketed and forwarded to the Arbitrators for decision. The Arbitrators did not consider the parties "Additional Responses" as those papers are not authorized by the ICANN Rules.
Findings of Fact The Complainant, Twentieth Century Fox Film Corporation, is the well-known entertainment conglomerate. It owns hundreds of trademarks and service marks containing the word "Fox." Some include the words "Twentieth Century" or the symbol "20th Century," such as "20th Century Fox Home Entertainment." Others include only the word "Fox." "Fox Broadcasting Company" is an example. In September 1999, when he was employed by a subsidiary of the Complainant that owns Chicago television station WFLD, the Respondent registered the domain names FOXNETWORKNEWS.COM, FOXNEWSNETWORK.COM, and FOXHOMEVIDEO.COM. According to the Respondent, he thought that Fox would be a good name to use in starting his own business, which he describes as "developing subscription directories, or link pages on the Internet, as well as designing home pages." (Risser Decl., p. 2). When the Complainant learned of the domain name registrations, it retained the trademark investigation firm of Marksmen, LLC, to investigate their registration and use. KierstenVanhorne of Marksmen spoke to the Respondent by telephone. The Respondent revealed that he was an employee of WFLD. According to Vanhorne, the Respondent stated that he discovered that the Complainant did not own FOXHOMEVIDEO.COM, "so I grabbed it. . . I just sort of grabbed to go "ha ha.". . . I haven’t considered really what I’m going to do with it next." (Vanhorne Decl., p. 1). The Respondent explained his registration of the other two domain names and stated that his brother thought he should put "dirty pictures on the site and then when [Fox] gets good and mad, we should sell it back to them." Id. The Respondent disputes some of Vanhorne’s version of their conversation. As to most of it, though, he does not dispute it, but says that Vanhorne repeated his remarks out of context. (Risser Decl., pp. 6-7). Marjorie Curtis, WFLD Human Resources Manager, confronted the Respondent a few weeks later and directed him to sign papers transferring FOXHOMEVIDEO.COM to the Complainant. The Respondent refused. Instead, between then and November 17, he registered eighteen additional domain names, all but one of which contain the name Fox. Curtis and the Respondent discussed a potential sale of the domain names. According to the Respondent, he told Curtis that he "had read of several domain names selling at auction for around $170,000." (Risser Decl., p. 4). When Curtis asked the Respondent if he would be happy with that for a domain name, the Respondent replied, "who wouldn’t be?" (Id.). Daphne Gronich, the Complainant’s senior vice president-legal affairs, on November 8, 1999, wrote the Respondent demanding that he transfer the three original domain names to the Complainant. She accused the Respondent of offering to sell them to the Complainant for $170,000. The Respondent replied with a long letter dated November 24, 1999. He refused to transfer the names and denied any attempt to sell the names. Gronich renewed her demand in a December 3, 1999, letter. In the meantime, on November 27, the Respondent was confronted again by Curtis and other officials at WFLD. He was told that if he did not transfer the domain names, he would be terminated. (Id.). His termination was delayed, however. At a later meeting, the Respondent was asked if he would speak privately to Gronich. The Respondent declined. Moreover, he insisted that any further communications be in writing. (Id., p. 5-6). WFLD terminated his employment on January 12, 2000. The Respondent says that for several domain names, including FOXHOMEVIDEO.COM, he "registered these domain names to link together as an online link and directory network for "Fox" realtors" and other property related entities. (Id. p.7.). He admits, however, that he told Vanhorne, the trademark investigator, in response to her question about his intended use for FOXHOMEVIDEO.COM, that he "hadn’t really considered it." (Id., p. 6). Now he says that he had an intended use for nearly every one of them when he registered them. (Id., pp.7-11). Except for FOXHOMEADULTVIDEO.COM. He denies that he intended to use this for an adult content site, but acknowledges that he registered it with the intent to sell it. (Id., p. 10). And the Respondent and his witnesses acknowledge discussing an adult content site. The Respondent states he registered TCFHV.COM for the Fire Museum of Greater Chicago to market a video entitled "The Chicago Fire House Video." He has produced a declaration from Michael F. O’Donnell, who describes himself as a founding member of the Fire Museum and who describes a conversation about the video with the Respondent in September, 1999. Some of the other domain names the Respondent has registered include HarleyBike.com, SenatorDickDurbin.com, SammySosas.com, SosasRestaurant.com, and SonyHighDefinition.com. The Respondent has an innocent explanation for why he registered each of them. He acknowledges that he has no business interest in any of these names. (Id., p. 11).
Conclusions Pursuant to ICANN Policy 4(a), the Complainant must establish each of these three elements: 1. The domain names registered by the Respondent are identical to or confusingly similar to a trademark or service mark in which the Complainant has rights; 2. The Respondent has no legitimate interest in respect of the domain name; and 3. The domain names have been registered and used in bad faith.
1. Similarity of Domain Names None of the domain names are identical to the Complainant’s trademarks or service marks. Most of them are confusingly similar, however. All but one of the names begin with the word Fox which, as noted, is included in hundreds of trademarks and service marks belonging to the Complainant. The name TCFHV.COM is made up of the first initial of the words Twentieth Century Fox Home Video. The descriptive words in all but four of the names beginning with Fox describe entertainment services in film, video, television, and music, of which the Complainant is an internationally known provider. The Complainant has a registered trademark for "Fox News." The Respondent registered the name FOXNEWSNETWORK.COM.. The Complainant has a registered trademark for "Fox Home.com." The Respondent registered the domain name FOXHOMEVIDEO.COM. The Complainant has a registered trademark for "Fox Film." The Respondent registered FOXFLICKS.COM and FOXPICTURES.COM. The Complainant has a registered trademarks for "Fox Video." The Respondent registered FOXVIDEODOWNLOAD.COM. FOXFASHION.COM, FOXFASHION.NET, FOXFORFUN.COM, and FOXDOWNLOAD.COM are similar in that they contain the word Fox, but the descriptive words are not particularly descriptive of the entertainment business. It seems unlikely that an Internet user looking for Fox or even 20th Century Fox would attempt to find it with the name TCFHV.COM. The Panel concludes that all the names except the above five are confusingly similar to trademarks and service marks in which the Complainant has rights. 2. Lack of Rights or Legitimate Interests The Respondent is not named Fox, he has no trademarks or service marks including the name Fox, and he has never done business by the name Fox. His only connection with the name Fox was his employment at WFLD, the Complainant’s subsidiary and affiliate station in Chicago. The Respondent has no rights or legitimate interests in the name Fox. 3. Registration and Use in Bad Faith The Respondent knew when he registered the domain names that the Complainant was commonly known by the name Fox. More importantly, he registered all but the first three domain names after he had notice of a dispute with the Complainant over domain names that included the name Fox. The Respondent seems to have registered the names to prevent the Complainant from using them. As pointed out earlier, they are nearly all descriptive of segments of the entertainment business in which the Complainant engages. Even if the Respondent’s story about his future business plans is believed, he had no legitimate need to register so many similar domain names. Moreover, the Respondent has engaged in a pattern of such conduct. He obviously has no legitimate interest in the names HarleyBike.com, SammySosas.com, SosasRestaurant.com, or SonyHighDefinition.com. These are only some of the names the Respondent has registered . The Respondent’s own presentation raises questions about his credibility. He gave conflicting statements about when he decided on uses for the names. His statements regarding intended use appear to be contrived. The explanation of how he came up with TCFHV.COM is not credible. The term "com" designates commercial sites. Presumably, the proposed museum about Chicago firefighting is not a commercial enterprise. Further, a domain name created to market a video for the Fire Museum of Greater Chicago would surely use at least one of the words fire, museum, or Chicago. It is inconceivable that the Respondent registered TCFHV.COM for the museum and that it is a mere coincidence that the name he used corresponds to Twentieth Century Fox Home Video. The Respondent can keep the name because it is not confusingly similar to one of the Complainant’s trademarked names. But his story is more evidence of bad faith. The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names. It is disputed whether the Respondent attempted to sell the first sites. But it is not disputed that discussed selling them and that he, not the Complainant, first mentioned the sum of $170,000. He acknowledges that he registered the name FOXHOMEADULTVIDEO.COM with the intent to sell it. Those facts, plus his use of words that describe the Complainant’s business activities, his lack of any legitimate interest in the name Fox, his employment with a Complainant subsidiary to which he owed a duty of loyalty, his registration of the names after notice of a dispute, his conflicting statements over when he supposedly decided on a use for one of the names, his contrived response to the complaint, and the world-wide knowledge that the Complainant does business under the name Fox lead the Panel to conclude that the Respondent is using the domain names in bad faith.
Decision The Complainant has carried its burden of proof on all issues relating to all names except the domain names FOXFASHION.COM, FOXFASHION.NET, FOXFORFUN.COM, FOXDOWNLOAD.COM, and TCFHV.COM . The Complainant has not shown that those names are confusingly similar to its trademarked or service marked names. The following domain names are transferred to the Complainant: FOXNETWORKNEWS.COM, FOXNEWSNETWORK.COM, FOXHOMEVIDEO.COM, FOXCLASSICS.COM, FOXFLICKS.COM, FOXHOMEADULTVIDEO.COM, FOXHOMEVIDEO.NET, FOXHOMEVIDEO.ORG, FOXHOMEVIDEOS.COM, FOXRELEASES.COM, FOXVIDEOS.COM, FOXHOMEMOVIES.COM, FOXHOMENET.COM, FOXMP3.COM, FOXPICTURES.COM, and FOXVIDEODOWNLOAD.COM. Robert S. Brandt Paul Michael DeCicco Theodore R. Kupferman Arbitrator Arbitrator Arbitrator Date: May 18, 2000 |
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URL: http://www.worldlii.org/int/other/GENDND/2000/343.html