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Generic Top Level Domain Name (gTLD) Decisions |
Claim Number: FA0112000102962
Complainant is Twentieth Century Fox Film Corporation, Beverly Hills, CA, USA
(“Complainant”). Respondent is Patricia Benstein, Adelaide, AUSTRALIA
(“Respondent”).
The domain name at issue is <foxstudios.biz>, registered with
Tucows, Inc.
The undersigned certifies that he has
acted independently and impartially and to the best of his knowledge, has no
known conflict
in serving as Panelist in this proceeding.
M.
KELLY TILLERY, ESQUIRE,
as Panelist.
Complainant has standing to file a
Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the
required Intellectual
Property (IP) Claim Form with the Registry Operator,
NeuLevel. As an IP Claimant,
Complainant timely noted its intent to file a STOP Complaint against Respondent
with the Registry Operator, NeuLevel
and with the National Arbitration Forum
(the “Forum”).
Complainant submitted a Complaint to the
Forum electronically on December 14, 2001; the Forum received a hard copy of
the Complaint
on December 26, 2001.
On January 8, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting
a deadline of January 28, 2002 by which Respondent
could file a Response to the Complaint, was transmitted to Respondent in
compliance
with paragraph 2(a) of the Rules for the Start-up Trademark
Opposition Policy (the “STOP Rules”).
A timely Response was received and
determined to be complete on January 22, 2002.
On February 8,
2002, pursuant to STOP Rule 6(b), the Forum appointed M. KELLY TILLERY, ESQUIRE
as the single Panelist.
Complainant requests that the domain name
be transferred from Respondent to Complainant.
A. COMPLAINANT
Complainant contends that it is one of the world’s leading
entertainment and media companies which provides a wide variety of
entertainment
services and products, including but not limited to, the
production, distribution and promotion of theatrical motion picture films
and
television programming as well as the sale of video and audio tapes and discs
and affiliated merchandise and the exploitation
and distribution of programming
on television, cable and via satellite delivery.
Complainant contends that it owns a
number of trademarks registered in the United States, Australia, Mexico and
Canada, including
but not limited to the following:
MARK COUNTRY REGISTRATION# REGISTRATION DATE
Fox Studios United States 214,0779 3/3/98
Fox Studios Mexico 567,518 3/13/97
Fox Studios Australia 761,739 5/11/98
Complainant also contends that it has an
application for “Fox Studios” pending in Canada (Application No. 837,984). Complainant contends that it owns a number
of other registrations and has a number of other applications pending for a
variety of
Fox Studios-related trademarks which marks include the words “Fox
Studios” followed by additional words such as “Baja”, “Australia”,
and/or
“Production Services.”
Complainant further contends that in
1997, it established a movie studio/theme park in Sydney, Australia which has
become known as
“Fox Studios”, though formally known as “Fox Studios
Australia.” Complainant contends that
it has expanded its operations by establishing a third movie studio/theme park
known formally as “Fox Studios
Baja” in Baja, Mexico but popularly known as
“Fox Studios.”
Complainant contends that it owns the
domain name <foxstudios.com> as well as the domain name
<foxstudios.com.au>.
Complainant contends that it is cognizant of the need for it
to coexist with other entities and individuals legitimately utilizing
the words
“Fox” or “Studios” separately for legitimate business interests but contends
that Respondent has no such legitimate business
interest here. Complainant contends that Respondent has not
registered any trademark for “Fox Studios” with any trademark registry anywhere
in the
world, she is not a licensee of Complainant or affiliated in any way
with Complainant, her surname is not “Fox” nor has she at any
point been
“commonly known by Fox Studios.”
Complainant further contends that
Respondent registered the domain in bad faith to “intentionally attempt to
attract for commercial
gain, Internet users to her website or other online
location by creating a likelihood of confusion with Complainant’s marks as to
the source, sponsorship, affiliation or endorsement of Respondent’s website or
location of the product or service on Respondent’s
website or location. Complainant contends that the domain name in
question <foxstudios.biz> is identical to its trademarks and that
potential visitors to its site will be confused by Respondent’s site.
Complainant contends that as Respondent
is located in Australia, she was very likely aware of Fox Studios Australia and
registered
the domain name in question to intentionally cause consumer
confusion with Fox Studios’ mark and create a false sense of source,
sponsorship, affiliation or endorsement with Fox Studios.
B. RESPONDENT
Although Respondent recognizes that
Complainant owns a number of registered trademarks, Respondent contends that
Complainant does
not have any right to a domain name which contains a single
word “foxstudios.”
Respondent further contends that she was under the
impression, which she now realizes is false, that she would be notified in the
event that her pre-application for the domain name infringed anyone’s
intellectual property rights and questions whether Complainant
did what was
required of it to protect its rights.
Respondent contends that Complainant did
not protect its own intellectual property rights by registering <foxstudios.biz>
and concludes that Complainant was apparently not interested in registering the
name <foxstudios.biz>.
Respondent contends that Complainant utilizes a number of other domain
names including fox.com, foxfilm.de, <fox.ch>, <fox.co.uk>,
<fox.be>, <fox.es>, <foxbaja.com>, <foxlatina.com>
and/or <foxasia.com> and that Complainant is often
known by the domain
name <fox.com>. Respondent
further contends that a significant amount of domain names exist which contain
the word “fox” or “fox studios” that do
not belong to Complainant including
<foxstudios.net>, <foxstudios.au.com>, <foxstudios.org>,
<fox.com.au>,
<fox.au.com>, <fox.org>, <fox.co.nz>,
<fox.net.au>, <fox.net>, <fox.info>., <fox.biz>,
and
<foxstudios.net.au>.
Respondent contends that it would be
unfair if it had to relinquish its domain name to Complainant when at least
thirteen (13) other
domain names are allowed to exist independently of
Complainant.
Respondent further contends that it is
not true that “Fox Studios” is always associated with Complainant for a Yahoo search
often
turns up numerous entities which are unrelated to Complainant.
Respondent contends that it intended to
use the domain name to create a website address for her planned dance
studios. Respondent contends that she
planned to establish a dance studio after semi-retirement and knew that she
would at least have to wait
another year before she could tackle the project.
Respondent contends that she did not
register the domain name in bad faith because if she had registered in order to
sell it she would
have done so immediately after obtaining it and she has
not. Respondent contends that Internet
users will not be confused by her domain name for it would be difficult for
anyone to confuse a
local dance studio in Adelaide, Australia with a
multi-national corporation.
(1) Complainant has met its burden to prove by a
preponderance of the competent, credible and admissible evidence that the
domain name
at issue is identical to trademarks in which Complainant has
rights.
(2) Complainant has met its burden to prove by a
preponderance of the competent, credible and admissible evidence that
Respondent has
no rights or legitimate interests in respect of the domain name
at issue.
(3) Complainant has not met its burden to
prove by a preponderance of the competent, credible and admissible evidence
that the domain name at issue has been
registered or is being used in bad
faith.
Paragraph 15(a) of
the STOP 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 STOP Policy requires that Complainant
must prove each of the following three elements to obtain an order that
a
domain name should be transferred:
(1) the domain
name is identical 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
or is being used in bad faith.
Due to the common authority of the ICANN
policy governing both the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and these
STOP proceedings, the Panel will exercise its discretion to
rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP
Complaint may only be filed when the domain name in dispute is identical to a
trademark or service
mark for which a Complainant has registered an
Intellectual Property (IP) claim form. Therefore,
every STOP proceeding necessarily involves a disputed domain name that is
identical to a trademark or service mark in which
a Complainant asserts
rights. The existence of the “.biz”
generic top-level domain (gTLD) in the disputed domain name is not a factor for
purposes of determining
that a disputed domain name is not identical to the
mark in which Complainant asserts rights.
This record contains ample evidence that
Complainant owns several registered trademarks for “Fox Studios” (word mark)
and has been
using that mark for a significant amount of time prior to
Respondent’s registration of the domain name in question. In addition, those registered marks are
identical to the domain name in question.
Respondent denies neither of these points.[1] Under these circumstances, Complainant has
met its burden to prove by a preponderance of the competent, credible and
admissible evidence
that the domain name at issue is identical to trademarks in
which Complainant has rights.
Complainant has alleged and Respondent
has not denied, that Respondent has no registered trademark for Fox Studios,
that she is not
a licensee or in any way affiliated with Complainant, that her
surname is not “Fox” and that at no point has she ever been commonly
known by
the name “Fox” or “Fox Studios.”
Respondent has alleged that it registered
the domain name in order to get a website address for her planned dance studios
and that
she planned to establish a dance studio after semi-retirement but has
presented no evidence whatsoever in support thereof other than
her own one,
brief and bold statements. On this
Record, this Panel is compelled to find that such unsupported, self-serving
allegations alone are insufficient to establish
that Respondent has rights or
legitimate interests in respect to the domain name at issue.
Under these circumstances, Complainant
has met its burden to prove by a preponderance of the competent, credible and
admissible evidence
that Respondent has no rights or legitimate interests in
respect to the domain name at issue.
Complainant
contends that Respondent has registered the domain name in question in bad
faith but has presented no evidence in support
of said contention. Complainant simply argues that the domain
name in question is confusingly similar to its marks and that the use of
<foxstudios.biz>
will create “initial interest confusion” for Internet users
as well as dilution of Fox’s famous marks and that since Respondent is
located
in Australia she was very likely aware of Fox Studios Australia and registered
the domain name to cause consumer confusion.
While neither are necessarily unreasonable conclusions, they do not
constitute evidence of Respondent’s registration in bad faith
and this Panel is
bound to decide the matter on the evidence.
Complainant does not argue or submit
evidence that the domain name “is being used in bad faith.” In fact, the parties seem to agree that it
does not seem to be “in use” yet at all, like many registered domain names.
Unfortunately, Respondent has not
explained why she chose the particular name “foxstudios” and registered it
except to say that it
was for use in connection with a planned “dance
studio.” The Record is barren in this
regard. While this Panel appreciates
that without discovery or substantive position taken by Respondent, it is often
difficult for a Complainant
to present evidence of registration and/or use in
bad faith, it is still Complainant’s burden to do so under the STOP
Policy. Under these circumstances and
in light of the clear requirement that Complainant prove that the domain name
at issue has been registered
or is being used in bad faith, this Panel
cannot conclude Complainant has met its burden to prove the third element
required in order
to succeed in its quest to have the domain name transferred.
Under these circumstances, Complainant
has not met its burden to prove by a preponderance of the competent,
credible and admissible evidence that the domain name at issue has been
registered or is being used in bad faith.
Complainant’s
Complaint is hereby dismissed.
Subsequent challenges under the STOP Policy shall be permitted.
M. KELLY TILLERY, ESQUIRE, PANELIST
Philadelphia, PA
Dated: February 27, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/307.html