WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fox Media LLC v. Hasan, Friend’s and co

Case No. D2020-0780

1. The Parties

Complainant is Fox Media LLC, United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States.

Respondent is Hasan, Friend’s and co, China.

2. The Domain Name and Registrar

The disputed domain name <foxtv.live> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2020. On April 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 8, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 8, 2020.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on April 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 30, 2020.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on May 5, 2020. 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 is Fox Media LLC, which is one of the world’s leading entertainment and media companies. Complainant was formerly known as Fox Film Corporation, at its creation date in 1915 and became Twentieth-Century Fox after a merger, until Disney acquired it. Complainant is now composed of several entities, namely Fox Broadcasting Company, Fox Television Stations, Fox News Channel, Fox Business, FS1, FS2, Fox Deportes, and the Big Ten Network.

Complainant has developed a global reputation in the broadcast television field, first in the United States and then around the world.

Complainant owns numerous trademarks in the FOX sign, including the ones in China, such as:

- United States trademark No. 1840919, FOX, registered on June 21, 1994 (first used in commerce on March 7, 1986) (class 38);

- United States trademark No. 1924143, FOX, registered on October 3, 1995 (first used in commerce on March 31, 1915) (class 41);

- United States trademark No. 4732170, FOX, registered on May 5, 2015 (first used in commerce in September, 2008) (class 38);

- United States trademark No. 5874614, FOX, registered on October 1, 2019 (first used in commerce in October, 1996) (class 42);

- United States trademark No. 5978480, FOX, registered on February 4, 2020 (first used in commerce in 1997) (class 9);

- United States trademark No. 2318595, FOX, registered on February 15, 2000 (first used in commerce on June 12, 1995) (class 41);

- China trademark No. 8149629, FOX, registered on April 21, 2011 (class 38); and

- China trademark No. 10240175, FOX, registered on January 28, 2013 (class 9).

Complainant also owns several domain names including the FOX sign, such as:

- <fox.com> (registered on December 20, 1995);

- <foxnews.com> (registered on June 21, 1995);

- <foxsports.com> (registered on August 10, 1998);

- <foxtv.com> (registered on May 8, 1998);

- <foxtelevision.com> (registered on March 9, 2000); and

- <fox.tv> (registered on February 16, 2001).

Respondent has registered the disputed domain name <foxtv.live> on March 31, 2017.

At the time the Complaint was filed, the disputed domain name was resolving to a website offering free and unauthorized downloadable or streamable video content. It redirected to the following page “goplayz.com/subscriptions/checkout/allsports-directUS” when the user was asked to sign up and create an account, as well as enter the credit card number in case they would like to purchase a video or sign up for a premium account.

5. Parties’ Contentions

A. Complainant

Firstly, Complainant alleges that the disputed domain name is identical or confusingly similar to its trademarks.

Complainant argues that the disputed domain name fully incorporates the FOX trademark with the addition of the generic term “tv”. It alleges that this addition enhances the risk of confusion since it implies an authorized online source from Complainant. Complainant adds that the use of a trademark in its entirety is sufficient to establish the risk of confusion, whether there is an addition of generic term or domain extension.

Complainant also argues that the confusion exists given that Respondent offers video download and streaming, without Complainant’s authorization.

Secondly, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant has never authorized Respondent to use the FOX trademark. It also argues that the disputed domain name has been registered after Complainant owned rights in the FOX sign and Respondent is not known under the FOX sign.

Furthermore, Complainant alleges that the disputed domain name resolves to a website that directly competes with Complainant’s activity. It resolves to a website offering video content, such as unauthorized and illegal online streaming and/or downloadable video-on-demand content. It also offers additional fee-based services.

Therefore, Complainant considers that the disputed domain name does not constitute a bona fide offering of goods and services and using the disputed domain name with a monetized website for illegal content does not constitute a legitimate noncommercial or fair use.

Thirdly, Complainant states that the disputed domain name was registered and is being use in bad faith. The fact that the disputed domain name purports to provide video services is constitutive of bad faith since it directly refers to Complainant’s activity. Complainant alleges that it has been registered for disturbing Complainant’s business. It diverts Internet users seeking legitimate content provided by Complainant to Respondent’s illegitimate site.

Complainant also alleges that seeking personal and financial information from users for illegitimate content is necessarily constitutive of a use in bad faith.

Finally, Complainant argues that Respondent could not have ignored Complainant’s FOX rights at the time it registered the disputed domain name since the FOX trademark is well established.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, in order to obtain the transfer of the disputed domain name, Complainant must prove that each of the following three elements are present:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

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

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

Paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.

Furthermore, paragraph 14(b) provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of or requirement under these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.

Respondent did not reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favor of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Taking the foregoing provisions into consideration the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider in the first place, whether Complainant has established relevant trademark rights. The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. This test involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. See section 1.7 of the WIPO Overview 3.0.

Complainant has duly shown its rights in the FOX sign since it owns numerous FOX trademarks and has registered numerous domain name using this sign.

The disputed domain name reproduces the FOX trademark with the mere addition of the acronym “tv” for “television”. The Panel notes that this term directly refers to Complainant’s field of activity. In fact, Complainant is known under this sign for television and video programs that it has developed for many years. The addition of this term does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s trademark (see section 1.8 of the WIPO Overview 3.0).

Furthermore, the addition of the generic Top-Level Domain (“gTLD”) “.live” is purely technical and should not challenge the confusing similarity test under the first element. In fact, continuous UDRP decisions have established that the domain name extensions should not be relevant in the scope of the confusing similarity assessment. See for example ageas SA/NV v. Tri Nguy\u1ec5n, WIPO Case No. D2019-2946, “The gTLD, ‘.life’ and ‘.live’ in this case, respectively, is normally disregarded.”

Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s FOX trademarks.

Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that a respondent has no rights or legitimate interests in the disputed domain name.

Complainant is required to establish a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, Respondent fails to come forward with such relevant evidence, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

Complainant has duly established a prima facie case since it has shown that Respondent has never been authorized to use FOX trademark for any matter. Without such an authorization, Respondent should not have registered the disputed domain name, and particularly after having decided to use the disputed domain name to provide illegal video content to Internet users.

Respondent did not respond to Complainant’s contention and therefore did not try to give any evidence of rights or legitimate interests in the disputed domain name. Previous UDRP panels have considered that Respondent’s lack of response allows establishing that it has no rights or legitimate interests in the disputed domain name. See for example Philip Morris Products S.A. v. Joseph Chartouni, WIPO Case No. D2020-0351: “In this Panel’s view, the lack of response is also indicative that Respondent lacks arguments and evidence to support its holding of the disputed domain name.”

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

Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith.

Firstly, Complainant started to use FOX sign at the beginning of the 20th Century and has developed a huge activity related to television, cinema and entertainment, first in the United States and then around the world.

In light of those elements, it appears that Respondent could not have ignored Complainant’s activity and FOX trademarks when registering the disputed domain name. A basic Internet research on the term “fox” directly refers to Complainant. Thus, associating the FOX sign to the term “tv”, the Panel considers that Respondent obviously had Complainant in mind when it registered the disputed domain name.

Therefore, the Panel finds that Respondent has registered the disputed domain name in bad faith.

Secondly, the disputed domain name is being used for offering video content to Internet users. However, the said content appears to be illegal since it allows Internet users to download and watch video in streaming. Furthermore, Internet users are able to register and indicate their credit card information to access a premium account. In this way, Respondent is earning money from Internet users by offering illegal content.

This use appears to be fraudulent and could not be considered as a legitimate noncommercial or fair use. This shows that Respondent wishes to attract Complainant’s customers by offering similar services for potential commercial gain.

It has already been considered that offering similar services as Complainant, which creates a risk of confusion, and furthermore of illegal activity, is constitutive of a use in bad faith. See for example Wenger S.A. v. Phaphimon Surasang, Blisstwenties Co. Ltd., WIPO Case No. D2019-3173: “Thus, Respondent has likely registered and used the disputed domain name for commercial gain by creating a likelihood of confusion with Complainant’s SWISSGEAR marks within the meaning of Policy, paragraph 4(b)(iv). The Panel also finds credible Complainant’s claim that Respondent has registered and used the disputed domain name to conduct a counterfeiting operation, and such per se illegal activity is manifestly evidence of bad faith.” Moreover, such use of the disputed domain name disrupts the business of Complainant.

Therefore, the Panel also finds that the disputed domain name is being used in bad faith.

Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <foxtv.live> be transferred to Complainant.

Nathalie Dreyfus
Sole Panelist
Date: May 18, 2020