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3/11/08 4:47 PMWIPO Domain Name Decision: D2007-1782Page 1 of 7http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1782.html
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISIONFox News Network, LLC v. Domains by Proxy, Inc. / Worldwide Directory ServicesCase No. D2007-1782
1. The Parties
The Complainant is Fox News Network, LLC of New York, New York, United States of America, represented by Hogan & Hartson,L.L.C., United States of America.The Respondents are Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America) / Worldwide Directory Services, of Sebring, Florida, United States of America, represented by Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A., United States of America.
2. The Domain Name and Registrar
The disputed domain name <foxbusinessnetwork.com> (the “Domain Name”) is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint (naming as Respondent “Domains by Proxy, Inc.”) was filed with the WIPO Arbitration and Mediation Center (the“Center”) on November 30, 2007 naming as Respondent Domains by Proxy, Inc. On December 4, 2007, the Center transmitted byemail to Wild West Domains, Inc. a request for registrar verification in connection with the Domain Name. On December 4, 2007, WildWest Domains, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for thedisputed domain name which differed from the named Respondent and contact information in the Complaint. Specifically, the Registrar identified the registrant as “Worldwide Directory Services”. The Center sent an email communication to the Complainant on December 13, 2007, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit anamendment to the Complaint. The Complainant filed an amended Complaint on December 19, 2007 (naming as Respondent“Worldwide Directory Services”). The Center verified that the Complaint together with the amendment to the Complaint satisfied theformal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain NameDispute 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 the Respondent of the Complaint, and theproceedings commenced December 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January10, 2008. The Response was filed with the Center January 11, 2008.The Center appointed Harrie R. Samaras, W. Scott Blackmer, and Diane Cabell as panelists in this matter on February 12, 2008. ThePanel finds that it was properly constituted. Each member of 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.
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On January 25, 2008, Complainant sent to the Center a Reply to Respondent’s Response. Thereafter, on February 4, 2008,Respondent sent a Surreply to the Center. Neither of these submissions are provided for in the Rules, and thus the Panel would nothave routinely considered them. Because of the nature of the facts and circumstances in this case, including Respondent’s assertionof reverse domain name hijacking, the Panel considered the additional filings (which reached the Center before the Panel wasappointed) in reaching its decision.The Panel also notes that the Complaint exceeds the 5,000 word limit imposed by the Rules and Supplemental Rules, Paragraph10(a). This excess includes over four pages of tables identifying information about Complainant’s trademarks which Complainantbelieves are relevant to its case. Insofar as Complainant’s description of the grounds on which the complaint is made does not exceedthe 5,000 word limit, the Panel has rendered its decision on the basis of the Complaint as submitted, without requesting amendment.See
Talal Abu-Ghazaleh Int’l, Talal Abu Ghazaleh & Co., Abu Gazaleh Intellectual Prop. and Aldar Audit Bureau v. Fadi Mahassel
,WIPO Case No. D2001-0907(September 13, 2001) (suggesting that “[t]he word limit referred to in the WIPO Supplemental Rules,Paragraph 10a[], is only applicable to the description of grounds on which the Complaint is made . . . .”).
4. Factual Background
Complainant was incorporated in 1996 and began operations soon thereafter as a 24-hour cable television news network.Complainant is a subsidiary of Fox Entertainment Group, Inc. and ultimately of News Corporation. Twentieth Century Fox is a multi-billion dollar international media organization that produces, acquires, and distributes motion pictures. It was founded in 1935 and is asubsidiary of Fox Entertainment Group, Inc. Twentieth Century Fox is the owner of the mark FOX and other trademarks and servicemarks that include the word “Fox” (the “FOX Marks”), which are used and registered in connection with radio, television, cabletelevision, motion pictures, and other programming and content, along with other goods and services. Many marks within the FOXMarks consist of two or three words, the first of which is “Fox,” the second of which is a descriptive term that identifies the nature of theprogramming and/or audience, and the third of which, if present, consists of either “Network” or “Channel.” In appendix D to theComplaint, Complainant made of record copies of twenty-five registrations (
e.g
., FOX, FOX SPORTS RADIO NETWORK, FOXNEWS, FOX KIDS NETWORK) issued by the U.S. Patent and Trademark Office (PTO) and seven applications currently pendingbefore the PTO for FOX or the FOX Marks owned by Twentieth Century Fox.Complainant is the exclusive licensee of Twentieth Century Fox with respect to the marks FOX NEWS CHANNEL, for example, and anon-exclusive licensee of Twentieth Century Fox for the marks FOX and FOX NEWS, among others. Complainant has been providingservices under these marks continuously and in some cases exclusively since its inception. Fox News is transmitted throughout theworld for viewing by millions of households. Complainant’s web site, “www.foxnews.com”, has received millions of visitors sinceSeptember 2007. (Exhibit E).In addition to the United States registrations and applications, Twentieth Century Fox owns registrations throughout the world for certain of the FOX marks. Twentieth Century Fox and its licensees have used the FOX Marks through television, cable television,motion pictures, print media and the Internet around the world. Twentieth Century Fox and its licensees have spent billions of dollarspromoting the goods and services they offer under the FOX Marks including in conjunction with the movies Titanic and Star Wars:Episode I - The Phantom Menace. The FOX Marks also appear prominently on the Fox broadcast television network, which featuresshows such as American Idol and The Simpsons. Also, Fox News Network is available for viewing in 94 countries. As a result of suchlongstanding and widespread use, the Panel finds that FOX and the FOX Marks have become widely known in the United States(where both Complainant and Respondent are located) as being associated with Twentieth Century Fox, its licensees, and their goodsand services.Since at least as early as 2004, Complainant has been developing a 24-hour cable news channel to provide detailed business newscoverage. The media has reported on these efforts (referring to a planned “Fox Business Channel”) since at least as early asNovember 5, 2004. (Exhibit F). On February 8, 2007, Rupert Murdoch, Chief Executive Officer of News Corporation, announced theplanned launch of a business channel in the fourth quarter of 2007. On the same day, Roger Ailes, Complainant’s Chairman andCEO, announced that the planned “business cable network” (named the “Fox Business Channel” in the press release) will “extend theFOX News brand.” (Exhibit G). A May 4, 2007 article in
The New York Times
reports Mr. Murdoch’s plans for a “Fox BusinessChannel” (printout from “www.nytimes.com” furnished by Respondent).On February 22, 2007, Twentieth Century Fox filed three applications with the PTO to register the mark FOX BUSINESS CHANNELbased on intent to use in connection with various services related to the Business Network. In addition, on July 16, 2007, TwentiethCentury Fox filed three applications with the PTO to register the mark FOX BUSINESS NETWORK based on intent to use inconnection with services related to the Business Network. Since at least approximately August 26, 2005, Complainant used thedomain name <foxbusiness.com> (registered on October 4, 1999 and currently in the name of Twentieth Century Fox) to direct usersto its web site, “www.foxnews.com”. On or about October 1, 2007, Complainant posted content at “www.foxbusiness.com” to promotethe launch of its business channel.Respondent Worldwide Directory Services resells domain names and offers Internet advertising and marketing services. According to
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the Respondent’s Surreply, the Respondent owns more than 1,400 domain names on which it “selectively” posts free content “to getsearch engine listings” for its clients. Respondent registered the Domain Name on February 8, 2007, and uses it in conjunction with itsInternet business.The Domain Name resolves to a website headed “FoxBusinessNetwork.Com,” with the tag line “State of the art internet business –networking - promotion.” The website offers domain name reseller plans and assistance to businesses in posting web pages on “FoxBusiness Network.”The parties agree that on August 20, 2007, Respondent’s CEO, Mr. Hodges, telephoned Twentieth Century Fox concerning theDomain Name. It is undisputed that during the call Mr. Hodges mentioned the figure US$50,000, although, as discussed below, theparties differ in their characterization of the context of that remark.
5. Parties’ ContentionsA. Complainant
Complainant has rights in FOX and the FOX Marks as a licensee of Twentieth Century Fox. Complainant has used various of the FOXMarks since its inception in 1996. The Domain Name is confusingly similar to those marks. Neither the addition of the descriptive andgeneric terms “business” and “network” to FOX nor the addition of the “.com” extension distinguishes the Domain Name from FOX andthe FOX Marks.Respondent has no right in or to use, and is not engaged in any legitimate use of, the Domain Name. Neither Complainant nor Twentieth Century Fox has licensed or otherwise granted Respondent rights to use the Domain Name.Respondent has registered and is using the Domain Name in bad faith. Respondent’s knowledge of Complainant’s rights and thecreation of the Business Network strongly suggest that registration of the Domain Name was made for the purpose of intentionallyattracting, for commercial gain, Internet users to Respondent’s web site at <foxbusinessnetwork.com> by creating a likelihood of confusion with Twentieth Century Fox’s and Complainant’s trademarks in violation of the Policy.Respondent’s bad faith was further established when Respondent contacted Complainant and offered to sell the domain for $50,000,an amount that greatly exceeds the registration expense.
B. Respondent
Complainant has no rights in and to the mark FOX BUSINESS NETWORK in any jurisdiction. Despite Complainant’s large portfolios of trademarks containing the term FOX, Respondent is not precluded from using the term FOX as part of its own trademark. The phrase“BUSINESS NETWORK” is common. Respondent conducted a preliminary trademark clearance search for the mark FOX BUSINESSNETWORK which yielded no results from domain name registrations, U.S. Trademark Office records or search engine queries.Complainant filed its trademark applications for FOX BUSINESS NETWORK after Respondent registered the Domain Name. Thoseapplications are based on intent to use the mark. Thus, Complainant has not established rights in FOX BUSINESS NETWORK. Therecan be no confusion because Respondent’s services are not related to the entertainment industry.Complainant has not established the absence of Respondent’s right or legitimate interests in the domain name. Respondent adoptedand began using the service mark FOX BUSINESS NETWORK as early as 2002. Respondent registered the Domain Name because itbelieved it was free to use the phrase “business network” to describe a business computer network, and because “fox” refers toRespondent’s president’s nickname, “The British Fox.” Before Respondent received notice of the dispute, Respondent used theDomain Name in connection with a
bona fide
offering of services, that is, a network of free business web pages, a domain nameregistration business, and other network business opportunities.Respondent registered the Domain Name in good faith. It was not aware of Complainant’s intention to use and register FOXBUSINESS NETWORK until August 2007. Respondent did not desire to disrupt Complainant’s business activities and claims thattraffic to the site is minimal. Respondent did not solicit the sale of the Domain Name, but merely approached Complainant to discussstrategies to avoid confusion or infringement. As part of that conversation, Respondent revealed that the cost to develop its FoxBusiness Network had been $50,000. Respondent did not intend to use Complainant’s FOX mark to attract Internet users for commercial gain.Complainant has engaged in reverse domain name hijacking. Complainant filed its intent to use trademark applications for the markFOX BUSINESS NETWORK five months after Respondent registered the Domain Name. Complainant very likely knew of Respondent’s use and legitimate interest in the Domain Name at the time it filed the trademark applications and has engaged inReverse Domain Name Hijacking.
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