Domain name - Dispute resolution policy - Trademarks - Service marks - Identical - Confusingly similar - Legitimate interest - Bad faith registration - Bad faith use - Intent to sell - Pattern of conduct - Descriptive words - Entertainment business.

Complainant, is a well-known entertainment conglomerate.  It owns hundreds of trademarks and service marks containing the words, Fox" and “Twentieth Century” among others. Complainant alleges that Respondent registered and used in bad faith twenty-one domain names that were identical or confusingly similar to its famous trademarks and service marks, which all included the word, "Fox". Respondent, an employee of a subsidiary of Complainant, registered three domain names beginning with “Fox” which were descriptive of entertainment services, like those Complainant is known to provide: FOXNETWORKNEWS.COM, FOXNEWSNETWORK.COM, and
FOXHOMEVIDEO.COM.

HELD, 16 Names transferred to Complainant, 5 Names not transferred to Complainant.

After the first three domain names were registered by Respondent Complainant commenced an investigation. Respondent admitted to a representative of the trademark investigation firm hired by Complainant that he registered the third name to spite Complainant, without knowing what he would do with it next.  Respondent also spoke of putting “dirty pictures” on the first two websites registered and then selling the domain names to Complainant.  Complainant subsequently demanded that Respondent transfer the three domain names first registered to Complainant.  Respondent refused the request and went on to register eighteen more domain names in October and November, 1999, all but one of which contain the name “Fox.” 

Respondent has registered several other domain names representative of other famous business enterprises, so as to give rise to a pattern of conduct.  Respondent discussed the possible sale of the domain names registered for $170, 000 with the manager of the station where he worked who was acting on behalf of Complainant.  Respondent later denied having offered this price and reiterated his refusal to transfer the names.  Respondent’s employment at Complainant’s subsidiary television station was subsequently terminated.

None of the domain names registered by Respondent are identical to Complainant’s trademarks or service marks.  Most of them are, however, confusingly similar. All the names but one begin with the word “Fox” and one of the names is made up of the first initials of the name “Twentieth Century Fox Home Video.”  The descriptive words in all but four of the names beginning with “Fox” describe entertainment services of which Complainant is an internationally recognized provider. 

However, five of the registered domain names, while containing the word “Fox” or the initials “TCFHV,” are not particularly descriptive of the entertainment business.  As such these five names are not confusingly similar.

Respondent has no rights or legitimate interest in the domain names as he is not named “Fox” nor has he ever done business by the name “Fox.”  Respondent acknowledges that he originally intended to sell the domain names he registered.  Respondent knew when he registered the domain names that Complainant was commonly known by the name “Fox.”  More importantly he registered all but the first three domain names after he had notice of a dispute with Complainant. 

Respondent says that he registered most of the domain names to link together as an online link and directory for “Fox” realtors.  Even if Respondent’s story about his future business plans is to believed, he had no legitimate need to register so many similar domain names.  It appears that Respondent registered the names to prevent Complainant from using them.  This constitutes bad faith registration.

Use in bad faith can be inferred from the totality of the circumstances, and does not require positive action on a respondent’s part.  Respondent’s own presentation raises questions about his credibility.  He gave conflicting statements about when he decided on uses for the names.  His statements regarding intended use appear to be contrived. 

Respondent’s acknowledgement of the intent to sell at least one name, his registration of the names after notice of a dispute and his conflicting statements lead the Panel to conclude that Respondent is using the domain names in bad faith.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
 

Administrative Decision referred to
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Brandt, DeCicco, Kupferman, Arbitrators: -
This domain name dispute was heard by the undersigned Arbitrators pursuant to the
ICANN Uniform Domain Name Dispute Resolution Policy upon the written submissions
of the parties. The Complainant is represented by Vivian Polak, LeBoeuf, Lamb,
Greene & MacRae, 125 West 55th Street, New York, NY 10019-5389, Tel:
212-424-8000, Fax: 212-424-8500. The Respondent is represented by Adam L.
Brookman and Brian G. Gilpan, Godfrey & Kahn, S.C., 780 North Water Street,
Milwaukee, WI 53202, Tel: 414-273-3500. 
 

Procedural Findings

Domain names and registration dates: 

     1. FOXNETWORKNEWS.COM September 9, 1999 

     2. FOXNEWSNETWORK.COM September 9, 1999

     3. FOXHOMEVIDEO.COM September 15, 1999

     4. FOXCLASSICS.COM October 30, 1999

     5. FOXFLICKS.COM October 31, 1999

     6. FOXFORFUN.COM October 31, 1999

     7. FOXHOMEADULTVIDEO.COM October 31, 1999

     8. FOXHOMEVIDEO.NET October 31, 1999

     9. FOXHOMEVIDEO.ORG October 31, 1999

     10. FOXHOMEVIDEOS.COM October 31, 1999

     11. FOXRELEASES.COM October 31, 1999

     12. TCFHV.COM October 31, 1999

     13. FOXFASHION.COM November 5, 1999

     14. FOXFASHION.NET November 7, 1999

     15. FOXVIDEOS.COM November 9, 1999

     16. FOXHOMEMOVIES.COM November 11, 1999 

     17. FOXDOWNLOAD.COM November 17, 1999

     18. FOXHOMENET.COM November 17, 1999

     19. FOXMP3.COM November 17, 1999

     20. FOXPICTURES.COM November 17, 1999

     21. FOXVIDEODOWNLOAD.COM November 17, 1999

     Domain name registrar: Network Solutions.

     Domain name registrant: David Risser. 

After reviewing the complaint and determining it to be in administrative compliance, the
National Arbitration Forum ("Forum") forwarded the complaint to the Respondent in
compliance with Rule 2(a) of the ICANN Rules for Uniform Domain Name Dispute
Policy. The administrative proceeding was commenced pursuant to Rule 4(c). The
Forum immediately notified Network Solutions. The Complainant elected to have the
administrative proceeding conducted by a three-member panel and paid the
appropriate fee. The Complaint and the Response were docketed and forwarded to the
Arbitrators for decision. The Arbitrators did not consider the parties "Additional
Responses" as those papers are not authorized by the ICANN Rules. 
 

Findings of Fact 

The Complainant, Twentieth Century Fox Film Corporation, is the well-known
entertainment conglomerate. It owns hundreds of trademarks and service marks
containing the word "Fox." Some include the words "Twentieth Century" or the symbol
"20th Century," such as "20th Century Fox Home Entertainment." Others include only
the word "Fox." "Fox Broadcasting Company" is an example. 

In September 1999, when he was employed by a subsidiary of the Complainant that
owns Chicago television station WFLD, the Respondent registered the domain names
FOXNETWORKNEWS.COM, FOXNEWSNETWORK.COM, and
FOXHOMEVIDEO.COM. According to the Respondent, he thought that Fox would be
a good name to use in starting his own business, which he describes as "developing
subscription directories, or link pages on the Internet, as well as designing home
pages." (Risser Decl., p. 2). 

When the Complainant learned of the domain name registrations, it retained the
trademark investigation firm of Marksmen, LLC, to investigate their registration and
use. KierstenVanhorne of Marksmen spoke to the Respondent by telephone. The
Respondent revealed that he was an employee of WFLD. According to Vanhorne, the
Respondent stated that he discovered that the Complainant did not own
FOXHOMEVIDEO.COM, "so I grabbed it. . . I just sort of grabbed to go "ha ha.". . . I
haven’t considered really what I’m going to do with it next." (Vanhorne Decl., p. 1). The
Respondent explained his registration of the other two domain names and stated that
his brother thought he should put "dirty pictures on the site and then when [Fox] gets
good and mad, we should sell it back to them." Id. The Respondent disputes some of
Vanhorne’s version of their conversation. As to most of it, though, he does not dispute
it, but says that Vanhorne repeated his remarks out of context. (Risser Decl., pp. 6-7).

Marjorie Curtis, WFLD Human Resources Manager, confronted the Respondent a few
weeks later and directed him to sign papers transferring FOXHOMEVIDEO.COM to the
Complainant. The Respondent refused. Instead, between then and November 17, he
registered eighteen additional domain names, all but one of which contain the name
Fox. Curtis and the Respondent discussed a potential sale of the domain names.
According to the Respondent, he told Curtis that he "had read of several domain
names selling at auction for around $170,000." (Risser Decl., p. 4). When Curtis asked
the Respondent if he would be happy with that for a domain name, the Respondent
replied, "who wouldn’t be?" (Id.). 

Daphne Gronich, the Complainant’s senior vice president-legal affairs, on November 8,
1999, wrote the Respondent demanding that he transfer the three original domain
names to the Complainant. She accused the Respondent of offering to sell them to the
Complainant for $170,000. The Respondent replied with a long letter dated November
24, 1999. He refused to transfer the names and denied any attempt to sell the names.
Gronich renewed her demand in a December 3, 1999, letter.

In the meantime, on November 27, the Respondent was confronted again by Curtis and
other officials at WFLD. He was told that if he did not transfer the domain names, he
would be terminated. (Id.). His termination was delayed, however. At a later meeting,
the Respondent was asked if he would speak privately to Gronich. The Respondent
declined. Moreover, he insisted that any further communications be in writing. (Id., p.
5-6). WFLD terminated his employment on January 12, 2000.

The Respondent says that for several domain names, including
FOXHOMEVIDEO.COM, he "registered these domain names to link together as an
online link and directory network for "Fox" realtors" and other property related entities.
(Id. p.7.). He admits, however, that he told Vanhorne, the trademark investigator, in
response to her question about his intended use for FOXHOMEVIDEO.COM, that he
"hadn’t really considered it." (Id., p. 6). Now he says that he had an intended use for
nearly every one of them when he registered them. (Id., pp.7-11). Except for
FOXHOMEADULTVIDEO.COM. He denies that he intended to use this for an adult
content site, but acknowledges that he registered it with the intent to sell it. (Id., p.
10). And the Respondent and his witnesses acknowledge discussing an adult content
site. 

The Respondent states he registered TCFHV.COM for the Fire Museum of Greater
Chicago to market a video entitled "The Chicago Fire House Video." He has produced
a declaration from Michael F. O’Donnell, who describes himself as a founding member
of the Fire Museum and who describes a conversation about the video with the
Respondent in September, 1999. 

Some of the other domain names the Respondent has registered include
HarleyBike.com, SenatorDickDurbin.com, SammySosas.com, SosasRestaurant.com,
and SonyHighDefinition.com. The Respondent has an innocent explanation for why he
registered each of them. He acknowledges that he has no business interest in any of
these names. (Id., p. 11). 
 

Conclusions

Pursuant to ICANN Policy 4(a), the Complainant must establish each of these three
elements:

1. The domain names registered by the Respondent are identical to or confusingly
similar to a trademark or service mark in which the Complainant has rights;

2. The Respondent has no legitimate interest in respect of the domain name; and

3. The domain names have been registered and used in bad faith. 
 

1. Similarity of Domain Names

None of the domain names are identical to the Complainant’s trademarks or service
marks. Most of them are confusingly similar, however. All but one of the names begin
with the word Fox which, as noted, is included in hundreds of trademarks and service
marks belonging to the Complainant. The name TCFHV.COM is made up of the first
initial of the words Twentieth Century Fox Home Video. 

The descriptive words in all but four of the names beginning with Fox describe 

entertainment services in film, video, television, and music, of which the Complainant
is an internationally known provider. 

The Complainant has a registered trademark for "Fox News." The Respondent
registered the name FOXNEWSNETWORK.COM.. The Complainant has a registered
trademark for "Fox Home.com." The Respondent registered the domain name
FOXHOMEVIDEO.COM. The Complainant has a registered trademark for "Fox Film."
The Respondent registered FOXFLICKS.COM and FOXPICTURES.COM. The
Complainant has a registered trademarks for "Fox Video." The Respondent registered
FOXVIDEODOWNLOAD.COM. 

FOXFASHION.COM, FOXFASHION.NET, FOXFORFUN.COM, and
FOXDOWNLOAD.COM are similar in that they contain the word Fox, but the
descriptive words are not particularly descriptive of the entertainment business. It
seems unlikely that an Internet user looking for Fox or even 20th Century Fox would
attempt to find it with the name TCFHV.COM. 

The Panel concludes that all the names except the above five are confusingly similar
to trademarks and service marks in which the Complainant has rights. 

2. Lack of Rights or Legitimate Interests

The Respondent is not named Fox, he has no trademarks or service marks including
the name Fox, and he has never done business by the name Fox. His only connection
with the name Fox was his employment at WFLD, the Complainant’s subsidiary and
affiliate station in Chicago. The Respondent has no rights or legitimate interests in the
name Fox. 

3. Registration and Use in Bad Faith

The Respondent knew when he registered the domain names that the Complainant
was commonly known by the name Fox. More importantly, he registered all but the
first three domain names after he had notice of a dispute with the Complainant over
domain names that included the name Fox. The Respondent seems to have registered
the names to prevent the Complainant from using them. As pointed out earlier, they
are nearly all descriptive of segments of the entertainment business in which the
Complainant engages. Even if the Respondent’s story about his future business plans
is believed, he had no legitimate need to register so many similar domain names.
Moreover, the Respondent has engaged in a pattern of such conduct. He obviously has
no legitimate interest in the names HarleyBike.com, SammySosas.com,
SosasRestaurant.com, or SonyHighDefinition.com. These are only some of the names
the Respondent has registered .

The Respondent’s own presentation raises questions about his credibility. He gave
conflicting statements about when he decided on uses for the names. His statements
regarding intended use appear to be contrived. The explanation of how he came up
with TCFHV.COM is not credible. The term "com" designates commercial sites.
Presumably, the proposed museum about Chicago firefighting is not a commercial
enterprise. Further, a domain name created to market a video for the Fire Museum of
Greater Chicago would surely use at least one of the words fire, museum, or Chicago.
It is inconceivable that the Respondent registered TCFHV.COM for the museum and
that it is a mere coincidence that the name he used corresponds to Twentieth Century
Fox Home Video. The Respondent can keep the name because it is not confusingly
similar to one of the Complainant’s trademarked names. But his story is more
evidence of bad faith. 

The requirement in the ICANN Policy that a complainant prove that domain names are
being used in bad faith does not require that it prove in every instance that a
respondent is taking positive action. Use in bad faith can be inferred from the totality of
the circumstances even when the registrant has done nothing more than register the
names. It is disputed whether the Respondent attempted to sell the first sites. But it is
not disputed that discussed selling them and that he, not the Complainant, first
mentioned the sum of $170,000. He acknowledges that he registered the name
FOXHOMEADULTVIDEO.COM with the intent to sell it. Those facts, plus his use of
words that describe the Complainant’s business activities, his lack of any legitimate
interest in the name Fox, his employment with a Complainant subsidiary to which he
owed a duty of loyalty, his registration of the names after notice of a dispute, his
conflicting statements over when he supposedly decided on a use for one of the
names, his contrived response to the complaint, and the world-wide knowledge that
the Complainant does business under the name Fox lead the Panel to conclude that
the Respondent is using the domain names in bad faith. 
 

Decision

The Complainant has carried its burden of proof on all issues relating to all names
except the domain names FOXFASHION.COM, FOXFASHION.NET,
FOXFORFUN.COM, FOXDOWNLOAD.COM, and TCFHV.COM . The Complainant has not shown that those names are confusingly similar to its trademarked or service
marked names. 

The following domain names are transferred to the Complainant:
FOXNETWORKNEWS.COM, FOXNEWSNETWORK.COM, FOXHOMEVIDEO.COM, FOXCLASSICS.COM, FOXFLICKS.COM, FOXHOMEADULTVIDEO.COM, FOXHOMEVIDEO.NET, FOXHOMEVIDEO.ORG, FOXHOMEVIDEOS.COM, FOXRELEASES.COM, FOXVIDEOS.COM, FOXHOMEMOVIES.COM, FOXHOMENET.COM, FOXMP3.COM, FOXPICTURES.COM, and FOXVIDEODOWNLOAD.COM. 

Robert S. Brandt Paul Michael DeCicco Theodore R. Kupferman
Arbitrator Arbitrator Arbitrator
Date: May 18, 2000