The Complainant is Cox Media Group Northeast, LLC of Atlanta, Georgia, United States of America (“United States”), represented by Kilpatrick Stockton LLP, United States.
The Respondent is M.F. DeMita, Michael DeMita of Weymouth, Massachusetts, United States, represented by The Digital Business Law Group, P.A., United States.
The disputed domain names <foxundercover.com>, <fox25boston.com> and <fox25undercover.com> are registered with Network Solutions, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2015. On December 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 7, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2015. On December 29, 2015, the Respondent filed a request for an extension of time to file the Response. In accordance with paragraph 5(e) of the Rules, the Center granted the extension of time until January 10, 2016. The Response was filed with the Center on January 10, 2016.
The Center appointed William R. Towns as the sole panelist in this matter on January 18, 2016. 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 is the licensed operator of the television station WFXT-TV, which has broadcasted in the Boston, Massachusetts metropolitan area as “channel 25” since at least 1977, and with a Fox network affiliation since 1987. The Complainant, as successor to Fox Television, Inc. (“Fox”), asserts trademark rights in FOX 25, FOX 25 UNDERCOVER, FOX UNDERCOVER, and other FOX 25-formative symbols, including FOX 25 NEWS. The Complainant uses FOX 25 in connection with WFXT-TV’s broadcasts in the Boston metropolitan area, and FOX 25 UNDERCOVER and FOX UNDERCOVER in connection with investigative news stories.
The Respondent registered the disputed domain names <foxundercover.com> and <fox25boston.com> on April 7, 1999, and <fox25undercover.com> on September 8, 1999, according to relevant WhoIs records maintained by the concerned Registrar. The disputed domain names currently redirect Internet users to an apparently commercial website entitled “Cars.com” (“www.cars.com”).
The Complainant asserts that it has trademark rights in FOX 25, FOX 25 UNDERCOVER, FOX 25 NEWS, and FOX UNDERCOVER, having been exclusively authorized by Fox to use, and, together with Fox, having exclusively and extensively used the FOX 25, FOX 25 NEWS, FOX 25 UNDERCOVER, and FOX UNDERCOVER marks (“the Complainant’s Marks”) in the Boston metropolitan service area for almost thirty years. The Complainant submits that FOX 25 was first used in 1987 as an indicator of source respecting the television broadcasts of WFXT-TV. The Complainant relates that WFXT-TV began using the mark FOX 25 NEWS in connection with its news programming in 1993, and began using the marks FOX 25 UNDERCOVER and FOX UNDERCOVER for its investigative news stories in 1996. The Complainant states that since 1996 the television station has had hundreds of thousands of television viewers each month and millions of viewers each year.
The Complainant relates that the use of the FOX 25 marks was expanded to the Internet not later than 1996, using first a website at “www.fox25.com” and later adding a site at “www.myfoxboston.com”. The Complainant submits screenshots of its websites depicting the use of the FOX UNDERCOVER mark. The Complainant relates that the “www.myfoxboston.com” website is extremely successful and popular, having received over 55,000,000 visits with 180,000,000 page views in the past year alone. Further, according to the Complainant, millions of dollars have been expended over the years marketing and promoting the goods and services offered under the FOX 25 and FOX UNDERCOVER marks, and the Complainant and its predecessor have sold tens of millions of dollars of advertising under the marks.
In view of the foregoing, the Complainant asserts that the FOX 25 and FOX UNDERCOVER marks are widely recognized in the greater Boston viewing area, and that the consuming public strongly associates these marks with the television station’s goods and services. The Complainant submits that the disputed domain names are confusingly similar to the Complainant’s FOX 25 and FOX UNDERCOVER marks, as the disputed domain names each incorporate one of the Complainant’s Marks in its entirety. The Complainant argues that consumers encountering the disputed domain names are certain to associate them with the Complainant and its marks.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. According to the Complainant, WFXT-TV’s first use of the FOX 25, FOX 25 UNDERCOVER, and FOX UNDERCOVER marks predates the Respondent’s registration of the disputed domain names in 1999. Given that the Complainant’s Marks by 1999 were well known in the Boston metropolitan area, where the Respondent resides, the Complaint asserts that the Respondent was aware of the Complainant’s Marks when registering the disputed domain name. According to the Complainant, the Respondent has not been licensed or otherwise authorized to use the Complainant’s Marks, and the Respondent has not been commonly known by the disputed domain names. The Complainant submits that the Respondent for commercial gain is trading on the confusing similarity of the disputed domain names to divert Internet users to the Cars.com website, to which the Respondent has pointed the disputed domain names. The Complainant submits this such use is not a bona fide offering of goods or services and does not otherwise constitute a legitimate noncommercial or fair use of the disputed domain names.
The Complainant maintains that the Respondent registered and is using the disputed domain names in bad faith, for commercial gain and to benefit from the goodwill associated with the Complainant’s Marks. The Complainant reiterates that the Respondent was well aware of the Complainant’s Marks when registering the disputed domain names, and that the Respondent’s bad faith registration and use is made clear by the Respondent’s purposeful incorporation of the Complainant’s Mark in the disputed domain names, in order to profit from the creation of consumer confusion as to source, sponsorship, affiliation, or endorsement. The Complainant contends that the Respondent is using the disputed domain names to divert consumers seeking the Complainant’s website to the Cars.com website, to obtain lead generations, advertising revenues, or other payments from the owners of Cars.com.
The Complainant further asserts that the Respondent has engaged in a bad faith pattern of registering and using domain names incorporating the marks of others. According to the Complainant, the Respondent also has registered <weymouthnews.com>, associated with a newspaper in the greater Boston area, and <jamesbondgold.com>, associated with a famous entertainment franchise, both of which the Respondent has pointed to the Cars.com website. Additionally, the Complainant contends that the Respondent registered the disputed domain names in order to prevent the Complainant for registering domain names reflecting its marks, or to sell to the Complainant at an exorbitant price.
The Respondent submits that the Complainant has demonstrated no rights in the asserted marks, that the Respondent has demonstrated rights in the disputed domain names arising from their legitimate and continuous use for over 16 years, predating the Complainant’s purported rights, and that the Respondent’s registration and use of the domain names accordingly was not in bad faith. The Respondent further urges that the circumstances this case support the application of laches, given the Complainant’s unexplained delay in bringing any claim.
The Respondent observes that the Complainant has no registrations for the asserted marks, and maintains that the Complainant has not demonstrated common law rights in the marks. In that regard, the Respondent submits that the Complainant has offered no evidence of sales, marketing, or advertising related to the asserted marks, that the asserted marks consist of generic terms, and that the Complainant has failed to establish that the marks have become distinctive through secondary meaning.
The Respondent submits, were these terms were found to be marks, that the Complainant has failed to prove it has been licensed or authorized by its predecessor Fox to use the marks. Further, even assuming Fox made a trademark use of FOX 25 beginning in 1987, the Respondent argues that the Complainant cannot claim the benefit of such use. Thus, the Respondent argues that evidence submitted by the Complainant of its predecessor’s use of FOX 25 or FOX 25 NEWS does not establish that the Complainant has common law rights therein.
The Respondent further asserts that he has rights or legitimate interests in the disputed domain names. The Respondent submits in a sworn declaration that he registered the disputed domain names in 1999 and has continuously used the disputed domain names in connection with a legitimate business for over 16 years. The Respondent explains that he has owned for nearly 20 years a business in the Boston area, Car Care Unlimited, Inc. (“CCU”), which according to the Respondent provides information and inventory control services to car dealers and consumers to assist in assessing, investigating, purchasing, and financing new and used vehicles.
The Respondent asserts that the disputed domain names were registered and have been associated with CCU’s services since 1999, directing Internet users to the Respondent’s website at “www.vpcars.com”. The Respondent relates that the disputed domain names <foxundercover.com> and <fox25undercover.com> were chosen because a consumer who uses the Respondent’s services to check out a car is working “undercover” and is smart like a “fox” getting information about a car before buying. The Respondent states he does not recall after 16 years why “25” is incorporated into <fox25boston.com> and <fox25undercover.com>.
The Respondent denies that the disputed domain names were registered and have been used in bad faith. The Respondent submits that he was not aware of the Complainant’s or it predecessor Fox’s claims to any mark that may be reflected in the disputed domain names. He further maintains that the disputed domain names have been used only in connection with the sale, inventory control, and financing of vehicles, and that for over 16 years without interruption the disputed domain names and his related websites have directed prospective car buyers to the Respondent’s “www.vpcars.com” website. The Respondent avers that he has never offered the disputed domain names for sale.
According to the Respondent, in over 16 years he had never been notified by Fox or the Complainant that they had any interest in the disputed domain names until the filing of the Complaint herein. Given the overall circumstances of the case, the Respondent urges that laches should be applied.
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”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules 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.
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 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) of the Policy 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) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production 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. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel initially addresses whether the Complainant has established trademark or service mark rights in the asserted marks – e.g., FOX 25, FOX 25 NEWS, FOX 25 UNDERGROUND, and FOX UNDERGROUND. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218. In this case, the Complainant has presented no evidence that any of the asserted marks have been registered.
In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). That is to say, the mark must be used such that a relevant segment of the public comes to recognize it as a symbol that distinguishes the Complainant’s goods and services from those of others. For purposes of paragraph 4(a)(i) of the Policy, and consistent with United States trademark law, in cases involving claimed common law or unregistered trademarks that are descriptive in nature, a complainant must present convincing evidence of secondary meaning or acquired distinctiveness. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7.
The Panel does not believe that marks asserted herein by the Complainant would necessarily be considered descriptive, but assuming they are descriptive, the Panel is persuaded from the Complainant’s submissions that the use of the asserted marks has been sufficiently extensive and continuous that a relevant segment of the public has come to recognize them as symbols distinguishing the Complainant’s goods and services from those of others. Accordingly, the Panel finds that the Complainant has sufficiently demonstrated common law rights under United States law in the geographic area served by the Complainant, and concludes that the Complainant has established trademark or service mark rights in the asserted marks within the contemplation of paragraph 4(a)(i) of the Policy.
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s Marks. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain names, when directly compared, are identical or confusingly similar. Applying this standard, the disputed domain names are confusingly similar to the Complainant’s mark for purposes of paragraph 4(a)(i) of the Policy. The disputed domain names incorporate one or more of the Complainant’s Marks in their entirety.
Although the Top-Level Domain (“TLD”) may in appropriate circumstances be considered when evaluating identity or confusing similarity, TLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant’s mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel finds that the Complainant has made a prima facie showing. The Respondent, without the Complainant’s authorization or consent, has registered multiple domain names that are confusingly similar to the Complainant’s Marks. The Respondent has pointed each of the disputed domain names to Cars.com, a commercial third-party website.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a 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.
Based on the totality of the record, the Panel considers it highly likely that the Respondent, a longtime resident of the Boston area, was aware of the Complainant and its marks when registering the disputed domain names in 1999. The Complainant has provided archival videotape evidence of WFXT’s broadcast use of FOX 25 predating the Respondent’s registration of the disputed domain names. A screenshot of the Complainant’s website (“www.fox25.com”) from May 2000, publicly available on “www.archive.org” (the “Internet Wayback Machine”), and submitted by the Respondent, clearly shows that the Complainant’s predecessor was claiming trademark rights in FOX 25, as evidenced by the use of the “™” designation. The screenshot also reflects the ongoing use of FOX 25 UNDERCOVER in connection with investigative reports.
The Panel finds no credible evidence in the record that the Respondent chose the disputed domain names for reasons unrelated to the Complainant. See The American Automobile Association Inc. v. Private Whois Escrow Domains Private Limited / K.A.L Services, WIPO Case No. D2009-0822. The Respondent’s purported explanation regarding the connotation of the disputed domain names is strained, and his claimed memory loss as to why two of the disputed domain names include “25” (immediately following “fox”) strongly suggests that the Respondent’s explanation is pretextual. The Panel concludes that the Respondent registered the disputed domain names in order to trade on the goodwill and reputation of the Complainant’s Marks through the creation of Internet user confusion. Internet users could easily expect that the disputed domain names would be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774. The disputed domain names instead are pointed to the Cars.com website, an indisputable fact negating the Respondent’s assertion that the disputed domain names have been associated only with his “www.vpcars.com” website.
Having regard to all of the relevant circumstances in this case, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services. Use which intentionally trades on the goodwill and reputation of another’s trademark cannot constitute a bona fide offering of goods or services. The Panel further finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. As noted earlier, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy, and the Complainant has not licensed or otherwise authorized the Respondent to use the Complainant’s Marks.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
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 and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(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; or
(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 is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. As noted earlier, the Panel concludes that the Respondent in all likelihood was aware of the Complainant’s Marks when registering the disputed domain names. The Panel further concludes for the reasons set forth above that the Respondent’s primary motive in registering and using the disputed domain names was to capitalize on and take advantage of the good will associated with the Complainant’s Marks, diverting Internet users to one or more third-party websites for commercial gain, whether that be lead generations, advertising revenue, or other means.
The Respondent has urged that the Panel dismiss the Complaint based on laches. The Panel declines to do so. Panels have recognized that the doctrine or defense of laches as such does not generally apply under the Policy, and that delay in bringing a complaint does not of itself prevent a complainant from filing under the Policy, or from being successful under the Policy, where a complainant establishes a case on the merits under the requisite three elements. Panels further have noted that the remedies under the Policy are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services. See WIPO Overview 2.0, paragraph 4.10.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <foxundercover.com>, <fox25boston.com> and <fox25undercover.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: February 1, 2016