WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fox Media LLC v. Mohamed Shalaby

Case No. D2020-1844

1. The Parties

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

The Respondent is Mohamed Shalaby, Egypt.

2. The Domain Name and Registrar

The disputed domain name <foxegyptnews.net> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2020. On July 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 July 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2020.

The Center appointed Marilena Comanescu as the sole panelist in this matter on August 25, 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

The Complainant is an entertainment and media company, one of the world’s leading companies in its industry.

The Complainant was originally founded as Fox Film Corporation in 1915, later evolving in 1935 into Twentieth-Century Fox. In 2019, Disney acquired Twenty-First Century Fox and spun off the Fox Broadcasting Company, Fox Television Stations, Fox News Channel, Fox Business, FS1, FS2, Fox Deportes, and the Big Ten Network into the newly-formed Fox Corporation, namely the Complainant.

The Complainant holds numerous trademark rights for FOX, such as the following:

- United States word trademark registration No. 1840919 FOX filed on September 7, 1993 and registered on June 21, 1994, for services in International Class 38; and

- Egyptian word trademark registration No. 151588 FOX filed on June 3, 2002 and registered on May 7, 2007, for services in International Class 38.

The Complainant’s trademark FOX is well known worldwide. See Fox Media LLC v. Host Master, 1337 Services LLC, WIPO Case No. D2020-1352.

The Complainant owns numerous domain names reflecting its FOX mark, including <fox.com>, <foxnews.com>, <foxsports.com>, <foxtv.com> and <fox.tv>.

The disputed domain name was registered on May 24, 2018 by a physical person. At the time of filing the Complaint, the disputed domain name resolved to a website presenting news reporting content in Arabic and English languages, which was substantially similar to and directly competes with the news reporting content and related media provided by the Complainant under its FOX mark. According to the Complainant’s assertions, on the website corresponding to the disputed domain name, the Respondent provides media news content taken from the Complainant’s direct competitors.

Also, the Respondent appears to operate a related YouTube channel under the name “Fox Egypt News”, through which it monetizes certain online video content associated with its website located at the disputed domain name. The Respondent also operates various other social media profiles and similar pages pertaining to its operations of the website associated with the disputed domain name.

Before initiating the present proceedings, between February 10, 2020 and June 16, 2020, the Complainant sent several cease and desist letters to the Respondent, asserting its trademark rights and requesting, inter alia, to cease from using the FOX mark and similar logos and to transfer the disputed domain name to it. The Respondent claimed that the website “talks about Egypt news in Arabic” and there is no trademark infringement and, despite the fact that the Respondent changed some elements of the logo used on the website under the disputed domain name, the Respondent continued to use logos similar to the Complainant’s marks and logos and did not transfer the disputed domain name to the Complainant.

Further, in the correspondence between the Parties before commencing the present proceedings, particularly in Annex 14 to the Complaint, the Respondent claimed that “we are Fox Egypt News & Sports Marketing - Advertising - We own the trade name in Egypt from the date of April 14, 2016”, and that the Respondent carries out the activities based on a license and certificate received from the United Kingdom but no licensor is named. There are no supporting evidence for any of such claims and no participation from the Respondent in the present proceedings.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark FOX, that the Respondent has no rights or legitimate interests in the disputed domain name and, that the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name to it.

B. Respondent

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

6. Discussion and Findings

In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

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

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

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

The Panel will further analyze the concurrence of the above circumstances.

A. Identical or Confusingly Similar

The Complainant holds rights in the FOX trademark.

The disputed domain name <foxegyptnews.net> incorporates the Complainant’s trademark FOX in its entirety with two additional terms, “egypt” and “news”. However, such additions do not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.

Numerous UDRP panels have considered that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.net”, “.com”, “.club”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.

Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark FOX, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the mark FOX, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.

Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of the WIPO Overview 3.0.

The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case in the present proceedings.

To the contrary, the Respondent’s statements during the communications between the Parties prior to the filing of the Complaint, provided as Annexes 10 to 15 to the Complaint, are contradictory and unsupported by relevant evidence.

Although the Respondent claimed that “[w]e are Fox Egypt News Company”, “we are Fox Egypt News & Sports Marketing - Advertising - We own the trade name in Egypt from the date of April 14, 2016”, and the Respondent carries out the activities based on a license and certificate issued from the United Kingdom, there was no evidence provided in such regard and the Respondent refused to participate in the present proceedings in order to provide any arguments in his favor.

In fact, at the time of filing the Complaint, the disputed domain name resolved to a website using FOX marks and logos without consent and providing content that attempt to compete directly with the content provided by the Complainant under its FOX mark. This is definitely not a bona fide activity nor a legitimate noncommercial or fair use because fundamentally the Respondent falsely suggests affiliation with the Complainant or the Respondent takes unfair advantage of the Complainant’s mark.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant holds trademark rights for FOX for decades and its trademark is famous worldwide. The disputed domain name was created in 2018 and incorporates the Complainant’s mark together with the dictionary term closely related to the Complainant’s business, “news” and the geographical term “Egypt”.

For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location” is evidence of registration and use in bad faith.

The Respondent has been using without permission the Complainant’s well-known trademark in order to get traffic on his web portal and YouTube channel and to very likely obtain commercial gain from the false impression created for the Internet users with regard to a potential affiliation or connection with the Complainant. This false impression was increased by the incorporation of the Complainant’s trademark FOX in the disputed domain name, the similar services provided on the website corresponding to the disputed domain name, the unauthorized featuring of the Complainant’s mark and logos or similar variations thereof.

Further, it has been found that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark constitutes, by itself, bad faith presumption for the purpose of the Policy. See section 3.1.4 of the WIPO Overview 3.0.

Furthermore, the Respondent refused to participate in the present proceedings in order to put forward any arguments in his favor. Such fact, together with all the other elements in this case, constitute, in the eyes of this Panel, further evidence of bad faith behaviour.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

7. Decision

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 name <foxegyptnews.net> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Date: August 26, 2020