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Fox News Network, L.L.C. v. Bill Orielly [2004] GENDND 1232 (5 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fox News Network, L.L.C. v. Bill Orielly

Case No. D2004-0464

1. The Parties

The Complainant is Fox News Network, L.L.C., New York, New York, United States of America, represented by Christopher J. Silvestri, United States of America.

The Respondent is Bill Orielly, Beverly Hills, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <billorielly.com> is registered with Gandi SARL.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2004. On June 28, 2004, the Center transmitted by email to Gandi SARL a request for registrar verification in connection with the domain name at issue. On June 29, 2004, Gandi SARL transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 12, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 30, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2004.

The Center appointed William R. Towns as the sole panelist in this matter on August 24, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Complainant submitted a supplemental filing to the Center on August 26, 2004, which the Center informed the Panel of and forwarded to the Panel by email on August 27, 2004. Hard copies of the supplemental filing, including all annexes thereto, were forwarded by the Center to the Panel on August 30, 2004.

4. Factual Background

The Complainant has registered THE OREILLY FACTOR with the United States Patent and Trademark Office (“USPTO”) as a trademark and service mark for use in entertainment services in the nature of an on-going television news program, for use on t-shirts, polo shirts, golf shirts, sweatshirts, jackets, hats, caps and neckties, and for use on mugs, beverage glassware and sports bottles sold empty (USPTO registration nos. 2545045, 2725456 and 2725457). The Complainant has used this mark in connection with “The O’Reilly Factor”, the primetime interview program hosted by Bill O’Reilly, since the program’s inception in 1996.

The Respondent is the owner of the disputed domain name <billorielly.com>, which was originally registered with Gandi SARL on February 2, 2001, according to information provided by the registrar. The disputed domain name resolves to “www.plannedchildhood.com”, a website that contains anti-abortion content. The domain name <plannedchildhood.com> is registered to Chris Hoffman, who in an earlier administrative proceeding was found to have engaged in abusive domain name registration. Women on Waves Foundation v. Chris Hoffman, WIPO Case No. D2000-1608. The relationship between the Respondent and Chris Hoffman is unclear.

5. Parties’ Contentions

A. Complainant

The Complainant operates Fox News Channel (FNC), a twenty four (24) hour cable news channel, which the Complainant states is available in approximately 85 million homes in the United States of America. Bill O’Reilly joined Fox News Network, L.L.C. d/b/a/ Fox News Channel in 1996 as the host of the primetime interview program, “The O’Reilly Factor” (the “program”). The Complainant maintains that Mr. O’Reilly is one of the biggest and most watched personalities in television news, and that his name is well known and synonymous with the Fox News Channel.

The Complainant states that, since the launch of “The O’Reilly Factor”, it has been the exclusive owner of all copyright, trademark and other intellectual property rights associated with the program. The Complainant asserts rights in the mark THE O’REILLY FACTOR based on the use of the mark since 1996, and multiple registrations of the mark. The Complainant also asserts rights in the name “Bill O’Reilly”, which the Complainant maintains has achieved the status of a common law trademark based on Mr. O’Reilly’s fame and the exploitation of his name for commercial purposes. The Complainant points out that well known personalities have been able to prevent the unauthorized registration of domain names in appropriate cases, citing Fox News Network, LLC v. Pro Life Domains Inc., WIPO Case No. D2003-0335, and Nicole Kidman v. John Zuccarini, WIPO Case No. D2000-1415.

The Complainant contends that the disputed domain name <billorielly.com> is identical or confusingly similar to trademarks or service marks in which the Complainant has rights. The disputed domain name is identical to the name/mark “Bill O’Reilly” except for transposition of the letters “i” and “e” in “O’Reilly”, misspelling and is confusingly similar in relation to the name/mark “The O’Reilly Factor” and “Bill O’Reilly”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not making a legitimate non- commercial use or fair use claim of the disputed domain name, which the Complainant asserts is synonymous with FNC, “The O’Reilly Factor”, and the program’s host, Bill O’Reilly. The Respondent is using the disputed domain name to mislead Internet users by furnishing anti abortion content on the website in no way associated with the Complainant, FNC, “The O’Reilly Factor”, or Mr. O’Reilly.

Finally, the Complainant asserts that the Respondent has registered and is using this disputed domain name in bad faith by intentionally attempted to attract, for possible commercial gain and to draw attention to his position on the abortion issue, Internet users attempting to find domain names related to Bill O’Reilly, “The O’Reilly Factor”, or FNC.

Accordingly, the Complainant seeks the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Scope of the Policy and Rules

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process pages 169 & 170.

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

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

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in Paragraph 4(i).

Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) in turn identifies three means through which a Respondent may establish rights or legitimate interests in the domain name. Since Paragraph 4(a)(iii) requires the Complainant to prove that the domain name has been registered and is being used in bad faith, a number of Panels have concluded that Paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the domain name, once the Complainant has made a prima facie showing under Paragraph 4(a)(iii). See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

Rule 15(a) provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. Rule 5(e) instructs that if a Respondent does not submit a response, in the absence of exceptional circumstances the Panel shall decide the dispute based upon the complaint.

In discharging its obligations under these Rules, the Panel must determine as a threshold matter whether to consider the Complainant’s supplemental submission of August 26, 2004. The Complainant’s supplemental submission presents documentary evidence of the Complainant’s rights in the mark THE O’REILLY FACTOR, including registration information, evidence that “Bill O’Reilly” is a common law trademark, and evidence that the Respondent may have registered the disputed domain name under a fictitious name.

Rule 12 provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties. The Policy and the Rules collectively demonstrate a strong preference for single submissions by the parties absent extraordinary circumstances. See Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427. The Panel also favors single submissions by the parties, but recognizes that extraordinary circumstances may exist where a supplemental submission of a party, even if not requested by the Panel, offers new evidence that is demonstrably material to the Panel’s decision. The documentary evidence provided by the Complainant in its supplemental submission is material to the Panel’s decision, and much of it would have been requested by the Panel if not otherwise provided. Accordingly, the Panel accepts and will consider the Complainant’s supplemental submission in rendering a decision in this case.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <billorielly.com> is at least confusingly similar if not identical to “Bill O’Reilly” for purposes of Paragraph 4(a)(i) of the Policy. The alternate spelling in the domain name, consisting of the transposition of the letters “i” and “e” in O’Reilly, without more, is not sufficient to dispel a likelihood of confusion. See Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085 (<billoriley.com> confusingly similar to “Bill O’Reilly”). The critical question under Paragraph 4(a)(i) in this case, however, is whether “Bill O’Reilly” is a trademark or service mark in which the Complainant has rights.

A number of WIPO Panels have considered the distinction between the mere protection of a personal name on the one hand, and the legitimate protection of a trademark or service mark from abusive domain name registration on the other. The right of a complainant to claim a common law trademark in his or her name was discussed extensively in the three-member WIPO Panel decision in Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248. The Panel in that case found useful guidance in the Final Report on the Second WIPO Domain Name Process (the ‘Second WIPO Report’). In that Report, WIPO considered the degree to which protection should be extended to personal names in domain name disputes. In its recommendations, WIPO indicated that the Policy should be limited to personal names that have been commercially exploited.

Similarly, the Panel in Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540, observed that in the majority of the UDRP cases in which panelists have found a complainant to have trademark rights in a personal name has been, the complainant was famous or well-known and had used his or her personal name as a marketable commodity, allowing the name to be used to promote someone else’s goods or services, or for direct commercial purposes in the marketing of his or her own goods and services.

The record in this case leaves no doubt that Bill O’Reilly’s personal name has been commercially exploited in the promotion of the FNC program “The O’Reilly Factor”. In addition, the Complainant has commercially exploited Mr. O’Reilly’s name through its use and registration of the service mark THE O’REILLY FACTOR. It is also clear from the record in this case that Mr. O’Reilly has become well-known or famous in the United States as a prominent cable television news personality. Given these circumstances, the Panel has little difficulty concluding that Bill O’Reilly has acquired common law trademark rights in his personal name.

That conclusion without more, however, does not demonstrate that the Complainant has acquired rights in the common law mark “Bill O’Reilly”. As was the case in Fox News Network, L.L.C. v. Kenneth A. Young, WIPO Case No. D2003-0407, in which the Complainant asserted rights in “Greta Van Susteren”, the Complainant has produced no direct evidence to support the contention that it has acquired any intellectual property rights in Mr. O’Reilly’s name. This Panel is not prepared simply to assume that the Complainant has acquired such rights.

Yet it is clear from the record that the Complainant has commercially exploited the name/mark “Bill O’Reilly” in the promotion of FNC program “The O’Reilly Factor”, and respecting the registration and use of the corresponding mark THE O’REILLY FACTOR. It also seems an inescapable conclusion that the Complainant could not successfully have done so without Mr. O’Reilly’s knowledge and consent. Thus, the record in this case supports the inference that Mr. O’Reilly has authorized the Complainant to commercially exploit the name “Bill O’Reilly”, which this Panel finds qualifies as a trademark or service mark within the meaning of Paragraph 4(a)(i) of the Policy.

The Panel finds on this basis that the Complainant has established sufficient rights in the mark/name “Bill O’Reilly” to invoke the Policy. Accordingly, the Complainant has established that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

C. Rights or Legitimate Interests

The record reflects that the Complainant has not authorized the Respondent to use the name/mark “Bill O’Reilly” in connection with the Respondent’s domain name or the “www.plannedchildhood.org” website to which the disputed domain name resolves. The disputed domain name bears no relation to this website, and given Bill O’Reilly’s reputation as a well known news personality, the Respondent’s adoption of a confusingly similar domain name seems patently calculated to divert Internet users searching for Bill O’Reilly to the “www.plannedchildhood.org” website. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. Unless rebutted by other evidence, this suffices to make a prima facie showing for purposes of Paragraph 4(a)(ii) that the Respondent lacks rights or legitimate interests in the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Once a Complainant makes a prima facie showing that a Respondent lacks rights to the domain name at issue, the Respondent must come forward with proof that it has some legitimate interest in the domain name to rebut this presumption. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Pursuant to Paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no indication that the Respondent has used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Further, there is nothing to support a contention that either the Respondent or the “www.plannedchildhood.org” website have become commonly known by the disputed domain name for purposes of Paragraph 4(c)(ii). See Peter Frampton v. Frampton Enterprises, Inc., WIPO Case No. D2002-0141.

The Respondent’s registration and use of the a confusingly similar domain name trades on the reputation and strength of the mark/name “Bill O’Reilly” to divert unsuspecting Internet users to the Respondent’s website, and arguably creates confusion regarding the Complainant’s sponsorship of or affiliation with the Respondent’s website. This is not a legitimate noncommercial or fair use of the domain name. See Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279: Lloyds TSB Bank PLC v. Paul Brittain, WIPO Case No. D2000-0231; Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299.

Given the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the Respondent registered or acquired the primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the Respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.

The circumstances of this case do not bring it squarely within any of these four examples, but the Panel finds from the particular facts of this case that the Respondent registered and is using the disputed domain name in bad faith. There is evidence that the Respondent provided fictitious addresses in connection with the registration of the domain name (based on the Center’s unsuccessful attempts to serve hard copies of the Complaint at these addresses), which is indicative of bad faith. See Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Further, the Respondent has deliberately sought to divert visitors to the “plannedchildhood.org” website by adopting a domain name that is confusing similar to the well known or famous mark/name “Bill O’Reilly”. This is sufficient to persuade the Panel that the domain name was registered and has been used in bad faith. See Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <billorielly.com> be transferred to the Complainant.

William R. Towns
Sole Panelist

Dated: September 5, 2004