DECISION

Twentieth Century Fox Film Corporation v. Leverett Consulting

Claim Number:  FA0410000338370

PARTIES

Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by Jon Del Barrio, of Fox Group Legal, Intellectual Property Department, 2121 Avenue of the Stars, Suite 700, Los Angeles, CA 90067.  Respondent is Leverett Consulting (“Respondent”), 5781 SW 27^th St., Miami, FL 33155.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <foxsportsradio.com> and <foxsportsfootball.com>, registered with Tucows Inc. and Intercosmos Media Group, Inc. d/b/a Directnic.com.

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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 1, 2004; the Forum received a hard copy of the Complaint on October 1, 2004.

On October 1, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <foxsportsradio.com> is registered with Tucows Inc. and that Respondent is the current registrant of the domain name.  Tucows Inc. has verified that Respondent is bound by the Tucows 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 October 1, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by letter to the Forum that the <foxsportsfootball.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the domain name.  Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 October 5, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 25, 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@foxsportsradio.com and postmaster@foxsportsfootball.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 November 3, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <foxsportsradio.com> and <foxsportsfootball.com> domain names are identical and confusingly similar to Complainant’s FOX SPORTS RADIO and FOX SPORTS marks.

2. Respondent does not have any rights or legitimate interests in the <foxsportsradio.com> and <foxsportsfootball.com> domain names.

3. Respondent registered and used the <foxsportsradio.com> and <foxsportsfootball.com> domain names in bad faith.

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

FINDINGS

Complainant, Twentieth Century Fox Film Corporation, is one of the world’s leading entertainment and media companies producing and distributing some of the most internationally well-known film and television properties.  Complainant is one of the worldwide leaders in television sports programming operating under the FOX SPORTS mark.  Complainant is also the largest sports network programmer at the regional level in the United States, with a focus on live professional and major collegiate home team sporting events. 

Complainant owns common law rights, as well as 590 trademark applications and registrations worldwide including the United States Patent and Trademark office for the marks incorporating the FOX SPORTS and FOX SPORTS RADIO marks (e.g., Reg. No. 1,932,252, issued October 31, 1995). 

Respondent registered the <foxsportsradio.com> and <foxsportsfootball.com> domain names on June 2, 1999 with the respective registrars.  Respondent is using the <foxsportsradio.com> domain name to redirect Internet users to a website containing an entertainment-related search engine containing categories such as “Fox Television” and “Dark Angel.”  In addition to the information pertaining to Complainant’s television programs, the website also displays advertisement for the sale of the domain name registration.  The <foxsportsfootball.com> domain name resolves to a search engine website. 

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 that it has rights in the FOX SPORTS and FOX SPORTS RADIO marks through registration with the United States Patent and Trademark Office and through continuous use of the marks in commerce. 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 <foxsportsradio.com> and <foxsportsfootball.com> domain names registered by Respondent are identical and confusing similar to Complainant’s FOX SPORTS RADIO and FOX SPORTS marks respectively.  Respondent’s <foxsportsradio.com> domain name is identical to Complainant’s FOX SPORTS RADIO mark because the domain name incorporates Complainant’s mark in its entirety with the exception of the omission of spaces between the words and the addition of the top-level domain “.com.”  The Panel finds that minor differences such as spaces and top level domains are not sufficient to distinguish domain name from the mark under Policy ¶ 4(a)(i).  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (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 Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark).

Moreover, Respondent’s <foxsportsfootball.com> is confusingly similar to Complainant’s FOX SPORTS mark because the domain name includes Complainant’s mark and deviates from it only with the addition of the generic or descriptive term “football.”  The Panel finds that the mere addition of a generic or descriptive word to a regsitered mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with Complainant’s registered mark “llbean” does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); 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); see also Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to Complainant's mark since it merely adds the word "auction" used in its generic sense).

Accordingly, the Panel finds that the <foxsportsradio.com> and <foxsportsfootball.com> domain names are identical and confusingly similar to Complainant’s FOX SPORTS RADIO and FOX SPORTS marks under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the

<foxsportsradio.com> and <foxsportsfootball.com> domain names.  Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain names.  The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case 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, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

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 <foxsportsradio.com> and <foxsportsfootball.com> domain names to redirect Internet users to a search engine website and a website containing an entertainment-related search engine containing categories such as “Fox Television” and “Dark Angel” in addition to an advertisement for the sale of the domain name registration.  Respondent’s use of domain names that are identical and confusingly similar to Complainant’s FOX SPORTS RADIO and FOX SPORTS marks to redirect Internet users interested in Complainant’s services to Respondent’s website for commercial purposes 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 Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website).

Finally, Respondent offered no evidence and no proof in the record suggests that Respondent is commonly known by the <foxsportsradio.com> and <foxsportsfootball.com> domain names.  Furthermore, Complainant has not authorized or licensed Respondent to use its FOX SPORTS RADIO and FOX SPORTS marks.  Thus, Respondent has not established rights or legitimate interests in the disputed domain names 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).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <foxsportsradio.com> and <foxsportsfootball.com> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered the <foxsportsradio.com> and <foxsportsfootball.com> domain names for Respondent’s commercial gain by re-routing Internet users to Complainant’s search engine website.  The Panel finds Respondent’s commercial and diversional use of the domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding Respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to Complainant’s <deluxeforms.com> domain name, thus receiving a commission from Complainant through its affiliate program); 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. 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)).

Respondent is also offering the <foxsportsradio.com> domain name registration for sale.  The Panel finds that Respondent’s advertising of the domain name registration for sale evidences bad faith registration and use under Policy ¶ 4(b)(i).  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where Respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites).

The Panel finds that Respondent registered and used the <foxsportsradio.com> and <foxsportsfootball.com> domain names in bad faith and that Policy ¶ 4(a)(iii) is 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 <foxsportsradio.com> and < foxsportsfootball.com> domain names be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  November 15, 2004

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