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Fox News Network, LLC v. Sam Solomon [2005] GENDND 216 (25 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fox News Network, LLC v. Sam Solomon

Case No. D2005-0022

1. The Parties

Complainant is Fox News Network, LLC, New York, New York, United States of America, represented by Lesley West, Esq., Media Counsel Fox News Network, LLC, United States of America.

Respondent is Sam Solomon, Ypsilanti, Michigan, United States of America, represented by Omar T. Mohammedi, United States of America.

2. The Domain Name and Registrar

The disputed domain name <hannityandcolmes.com> (the “Disputed Domain Name”) is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2005. On January 7, 2005, the Center transmitted by

e-mail to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On January 11, 2005, Network Solutions, LLC transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on January 13, 2005. In accordance with the Rules, Paragraph 5(a), and after adjusting for a delay in service at Respondent’s request, the due date for the Response was set for February 9, 2005. The Response was filed with the Center on February 9, 2005.

The Center appointed the undersigned as the sole panelist in this matter on March 11, 2005. 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.

4. Factual Background

Complainant operates the Fox News Channel (“FNC”), a 24-hour cable news channel station which is available in approximately 85 million homes in the United States of America and in approximately 92 countries outside of the United States. Sean Hannity (“Hannity”) and Alan Colmes (“Colmes”) joined FNC in 1996 as co-hosts of the primetime debate program “Hannity & Colmes” (the “Program”). The Program airs nightly Monday through Friday at 9:00 p.m. (Eastern Standard Time) on FNC. Complainant asserts that, since the Program’s launch, it has been the exclusive owner of all copyright, trademark and other intellectual property rights associated with the Program.

The Disputed Domain Name was first registered on May 30, 2002, approximately six years after the Program’s launch.

Complainant has produced a computer printout derived by typing in “www.hannityandcolmes.com” in a computer’s address bar. This printout evidenced that on January 5, 2005, the date of the printout, the Disputed Domain Name took a user’s browser to a website at “www.answering-christianity.com” (the “Islamic Site”). The Islamic Site apparently has no relationship with Complainant, with Hannity, or with Colmes. The Islamic Site includes a disclaimer stating, “This website is not associated with Fox News’ Hannity and Colmes [six] show. This site is solely owned and operated by Osama Abdallah. The Fox News’ Hannity and Colmes [sic] website is located at “www.foxnews.com/hannityyandcolmes/”. Respondent, who is also known as Osama Abdullah, states in the section on the Islamic Site titled “the purpose of my website”: “I want to expose my experience with Christianity to [our young Muslim brothers and sisters born in the U.S.] and to show them that the Bible is not the book that teaches freedom of speech and choice as many Americans and Westerners purport. I also want to expose to them that the Bible doesn’t respect women, since Islam is always attached from the issue of the inequality of women. I want to prove to as many Muslim brothers and sisters as possible that Jesus is not and cannot be God nor ever claimed to be God. I also want to encourage them to investigate Islam, a beautiful religion of love and peace and not a religion of hatred as it is often portrayed by Westerners.” Further, Mr. Abdullah states: “If you wonder why my website is called ‘Answering Christianity’, well that’s because a group of anti-Islamics called “Answering Islam” had created a website that falsely attacks Islam. Their site is several years older than mine. I remember seeing them on the internet at least 3 years before I created this site.”

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name is identical to its mark HANNITY & COLMES (with the exception of a spelled-out “and” instead of an ampersand). Complainant contends that its mark is widely known and has submitted documentary evidence supporting this contention. Complainant contends that the Disputed Domain Name is synonymous with FNC, the Program and the Program’s co-hosts Hannity and Colmes. Complainant also contends that Respondent is not making a legitimate non-commercial use or fair use of the Disputed Domain Name. Further, Complainant contends that the Disputed Domain Name should be considered as having been registered and used solely in bad faith because of the notoriety of the Program, Hannity, and Colmes, and the fact that Respondent is intentionally attempting to attract users attempting to find a website related to Hannity, Colmes, or the Program to his Islamic Site, an unrelated website espousing a variety of opinions not endorsed by FNC, Hannity, or Colmes.

B. Respondent

Respondent does not dispute that the Disputed Domain Name incorporates, and is virtually identical to, Complainant’s mark, but raises the defenses of free speech and fair use. Respondent contends that the principal purpose for using the Disputed Domain Name was not for commercial gain, but rather to exercise his First Amendment right to criticize Complainant. Respondent contends that the use of the Disputed Domain Name “is for the communicative purpose of identifying the entities that are the subject of [Respondent’s] complaints and gaining equal access to [the Program’s] audience.”

Respondent further asserts that he is not misleadingly diverting users to the Islamic Site because he has plainly posted adequate disclaimers respecting the source of the website so that users are not confused into thinking that it is somehow sponsored by or affiliated with Complainant. Finally, Respondent asserts that his actions were not intended to tarnish, nor have they tarnished, Complainant’s HANNITY & COLMES mark.

6. Discussion and Findings

The Panel’s jurisdiction is limited to a determination whether Complainant has proved the necessary elements of a claim for transfer or cancellation of a domain name under the Policy and the Rules. Policy, paragraph 4(a). The discussion and decision will be governed by the terms of the Policy.

To obtain relief, Paragraph 4(a) of the Policy requires complainants to prove each of the following:

(1) that 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

(2) that the respondent has no rights or legitimate interests in the domain name registered by the respondent; and

(3) that the domain name registered by the respondent has been registered and used in bad faith.

A. Identical or Confusingly Similar

Respondent does not dispute, and the Panel finds, that the Disputed Domain Name registered by Respondent is identical or confusingly similar to Complainant’s HANNITY & COLMES mark.

B. Rights or Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of a dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy, paragraph 4(c).

Respondent contends that he has rights or legitimate interests in the Disputed Domain Name because he is making a noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Respondent relies on Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc. and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190, to support this contention.

In Bridgestone, the Panel dismissed the complaint where the respondent used the complainant’s Bridgestone-Firestone trademark in the disputed domain name for a website designed to communicate critical commentary about the Bridgestone corporations. In Bridgestone, as in the present dispute, the respondent posted disclaimers on his website.

Respondent’s reliance on Bridgestone is misplaced. In Bridgestone, the respondent used the Bridgestone-Firestone trademark in his disputed domain name to criticize the three complainant Bridgestone corporations and their policies. This is not the case in the present dispute. Here, despite Respondent’s contention in his papers that his “principal purpose in using the domain name is . . . to exercise his First Amendment right to criticize Complainants [sic],” Respondent has not proffered any evidence that he made any criticism, comment, or even a passing reference to Complainant, the Program, Hannity, or Colmes on the Islamic Site before this action was instituted.

Instead, Respondent submitted transcripts of two episodes of the Program evidencing his belief that the Program “disseminated a negative picture of Islam, in a direct attempt to sway public opinion against Muslims, against the religion of Islam, and against the Islamic way of life.” The first example, which concerned an episode of the Program dated August 6, 2002, featured the Reverend Franklin Graham as a guest, and the second example, which concerned an episode of the Program dated September 18, 2002, featured the Reverend Pat Robertson as a guest. Respondent strongly urges in his papers that it was these examples that prompted him to choose the Disputed Domain Name in the hope “that his website would reach substantially the same audience as that of the Program.” “Without equal access,” Respondent argues, “it would be difficult [for Respondent] to offset . . . biased and one-sided arguments directed at that particular audience, with the counter arguments that [Respondent] hoped would spark a lively and intellectual debate.” The Panel finds that this argument is not well grounded because Respondent registered the Disputed Domain Name on May 30, 2002, several months before the programs featuring Mr. Graham and Mr. Robertson even aired. (A third and final example submitted by Respondent was undated and, in any event, concerned Hannity’s radio program, not the Program.)

Moreover, Respondent states on the Islamic Site that the purpose of the site is “to expose my experience with Christianity to [our young Muslim brothers and sisters born in the U.S.] and to show them that the Bible is not the book that teaches freedom of speech and choice as many Americans and Westerners purport.” The Islamic Site further says that the site was created “because a group of anti-Islamics called ‘Answering Islam’ had created a website that falsely attacks Islam. Their site is several years older than mine. I remember seeing them on the internet at least 3 years before I created this site.” These statements are also at odds with Respondent’s fair use contentions.

For these reasons, the Panel concludes that, unlike in Bridgeport, Respondent does not use the Disputed Domain Name to designate a website for criticism and commentary about Complainant. Instead, the Panel concludes that Respondent registered the Disputed Domain Name to take advantage of the wide notoriety of Hannity, Colmes, and the Program in order to gain access to the Program’s large audience. The Panel finds that such a use of the Disputed Domain Name does not constitute a fair use within the meaning of the Policy and that Respondent has no rights or legitimate interest in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which are evidence of registration and use of a domain name in bad faith:

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

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The Panel finds that the facts in this dispute do not clearly fall within examples (i), (iii or (iv) above, and do not squarely fall within example (ii). Indeed, Complainant has not argued, and the Panel has seen no evidence, that Respondent registered the Disputed Domain Name in order to prevent Complainant from reflecting the “Hannity & Colmes” mark in a corresponding domain name.

However, as stated in Fox News Network, L.L.C. v. Kenneth A. Young, WIPO Case No. D2003-0407, “[i]t does not matter that the facts in this case may not fall within any of the circumstances described at paragraph 4(b) of the Policy. Those circumstances are no more than examples of bad faith registration and use, and do not in any way limit the ability of panels to find that circumstances other than those described at paragraph 4(b) can amount to bad faith registration and use.” (Emphasis in original.)

In Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248, the panel held that registering and using a domain name to divert traffic to the disputed domain name is sufficient to constitute bad faith registration and use. That panel said that “it does not matter that Respondent intends to operate a website which is entirely non-commercial. The bad faith lies in the deliberate and misleading use of another person’s trademark for the purpose of diverting Internet users looking for sites associated with the owner of that trademark, to Respondent’s website.”

The Panel finds that Respondent deliberately chose and commenced using the Disputed Domain Name with a view to diverting Internet users looking to locate information about Hannity, Colmes, and/or the Program to the Islamic Site that he linked to the Disputed Domain Name. Complainant has argued that such conduct constitutes bad faith, and the Panel agrees.

In addition, Complainant also submitted evidence that Respondent has engaged in similar conduct in the past. On April 8, 2003, a Consent Judgment was entered in the United States District Court for the Southern District of Texas in an action where Respondent registered the Internet domain name <joelosteen.net> that incorporated the name of Joel Osteen. Mr. Osteen is the pastor of a well-known non-denominational Charismatic Christian Church located in Houston, Texas with weekly attendance at services of approximately 30,000. In the Consent Judgment, Respondent agreed that his unauthorized registration and use of the Internet domain name <joelosteen.net> was likely to cause confusion, to cause mistake, and/or to deceive the public as to some affiliation, connection, or association with Joel Osteen, and blurred, tarnished, and diluted the distinctive quality of Joel Osteen’s mark. The Panel is persuaded that the fact that Respondent had engaged in similar conduct in the past is at odds with Respondent’s fair use contentions, and supports Complainant’s bad faith contentions, in the present dispute.

For these reasons, the Panel concludes that the bad faith element of the Policy is satisfied.

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 <hannityandcolmes.com> be transferred to Complainant Fox News Network, LLC.

Steven Auvil
Sole Panelist

Dated: March 25, 2005