Fox News Network v. Domains by Proxy, Inc/Worldwide Directory Services
WIPO Domain Name Decision No D2007-1782, Feb 26, 2008 (WIPO Arbitration and Mediation Center)
FACTS
(1) Parties- plaintiff= Fox News; Defendant= Domains by Proxy/Worldwide Directory Services
(2) Plaintiff was incorporated in 1996, and had 25 registrations and marks that normally had 2-3 words, the first of which was “FOX,†and the second typically being a descriptive term to identify the nature of the programming.
(3) 2/8/2007- Plaintiff’s CEO announces planned launch of business channel in fourth qtr of 2007
(4) 2/9/2007- Defendant registered domain name “foxbusinessnetwork.com,†and uses it in conjunction with its internet business
(5) 2/22/07- Plaintiff filed 3 applications w/ PTO to register mark “Fox Business Channel†w/ intent to use in connection with services related to Business Network
(6) 07-16-07-- Plaintiff filed 3 applications to register mark “Fox Business Networkâ€
(7) 08-20-2007- Defendant telephoned Plaintiff and mentioned the figure “$50,000,†but the parties differ on the characterization of content of the remark
PROCEDURAL HISTORY
(1) Fox filed complaint w/ WIPO Arbitration and Mediation Center. Complaint was amended on
December 19, 2007.
(2) WIPO initially ruled that the complaint satisfied formal requirements of UDNDRP Policy and Rules for UDNDRP, and the WIPO Supplemental Rules for UDNDRP, and therefore could be heard.
(3) WIPO center appointed a panel, that was found to be properly constituted.
(4) Panel also allowed additional filings due to the facts and circumstances of the case
RULE- 3 Elements must be met to show that a domain name should be canceled/transferred
(1) domain name is identical or confusingly similar
(2) Defendant has no legitimate interests/rights in the domain name
(3) domain name registered & used in bad faith
HOLDING
(1) Plaintiff’s programming is longstanding and available in 94 countries. As a result, Plaintiff’s mark is widely known in the United States, where both Plaintiff and Defendant are located.
(2) Identical or Confusingly Similar--> Defendant’s domain is confusingly similar, and the use of “business,†and “network†is insufficient to distinguish and actually compound the confusion, as the Defendant’s mark is of a similar type, nature, and construction as Plaintiff’s marks, and additionally, Plaintiff does provide TV network news focused on Business.
(3)Rights or Legitimate Interests--> Panel finds there is no evidence that Defendant owned or controlled the Domain Name, which “shifts the burden to Defendant to show by concrete evidence that it has rights or legitimate interests in the domain.†Defendant provides several declarations that he began using the domain as early as 2002. The Declarations stated that “Mr. Hodges promotes his services offered under the mark FOX BUSINESS NETWORK,†and that a Mr. “Clough. . . since at least as early as 2002, has provided a link on his website to Mr. Hodges’ services.†Additionally, Defendant provided some proof that he was known as “the British Fox,†and that Defendant’s company “operated an active and bona fide business that used the term ‘FOX BUSINESS NETWORK’ in it’s promotion for several years before the dispute arose.†Paragraph 4(c)(1) of the Policy protects domain registrants who “before any notice of the dispute, have used the domain name in connection with a bona fide offering or goods or services.†THEREFORE the Panel finds plausible evidence that Defendant used domain in connection with bona fide business, and that Plaintiff has not met its burden of persuasion.
(4) Registered and Used in Bad Faith--> No need to discuss this element as Plaintiff didn’t meet the burden of persuasion for the second element.
(5) Panel declines to enter a finding of Reverse Domain Name Hijacking
(6) COMPLAINT DENIED
WIPO Domain Name Decision No D2007-1782, Feb 26, 2008 (WIPO Arbitration and Mediation Center)
FACTS
(1) Parties- plaintiff= Fox News; Defendant= Domains by Proxy/Worldwide Directory Services
(2) Plaintiff was incorporated in 1996, and had 25 registrations and marks that normally had 2-3 words, the first of which was “FOX,†and the second typically being a descriptive term to identify the nature of the programming.
(3) 2/8/2007- Plaintiff’s CEO announces planned launch of business channel in fourth qtr of 2007
(4) 2/9/2007- Defendant registered domain name “foxbusinessnetwork.com,†and uses it in conjunction with its internet business
(5) 2/22/07- Plaintiff filed 3 applications w/ PTO to register mark “Fox Business Channel†w/ intent to use in connection with services related to Business Network
(6) 07-16-07-- Plaintiff filed 3 applications to register mark “Fox Business Networkâ€
(7) 08-20-2007- Defendant telephoned Plaintiff and mentioned the figure “$50,000,†but the parties differ on the characterization of content of the remark
PROCEDURAL HISTORY
(1) Fox filed complaint w/ WIPO Arbitration and Mediation Center. Complaint was amended on
December 19, 2007.
(2) WIPO initially ruled that the complaint satisfied formal requirements of UDNDRP Policy and Rules for UDNDRP, and the WIPO Supplemental Rules for UDNDRP, and therefore could be heard.
(3) WIPO center appointed a panel, that was found to be properly constituted.
(4) Panel also allowed additional filings due to the facts and circumstances of the case
RULE- 3 Elements must be met to show that a domain name should be canceled/transferred
(1) domain name is identical or confusingly similar
(2) Defendant has no legitimate interests/rights in the domain name
(3) domain name registered & used in bad faith
HOLDING
(1) Plaintiff’s programming is longstanding and available in 94 countries. As a result, Plaintiff’s mark is widely known in the United States, where both Plaintiff and Defendant are located.
(2) Identical or Confusingly Similar--> Defendant’s domain is confusingly similar, and the use of “business,†and “network†is insufficient to distinguish and actually compound the confusion, as the Defendant’s mark is of a similar type, nature, and construction as Plaintiff’s marks, and additionally, Plaintiff does provide TV network news focused on Business.
(3)Rights or Legitimate Interests--> Panel finds there is no evidence that Defendant owned or controlled the Domain Name, which “shifts the burden to Defendant to show by concrete evidence that it has rights or legitimate interests in the domain.†Defendant provides several declarations that he began using the domain as early as 2002. The Declarations stated that “Mr. Hodges promotes his services offered under the mark FOX BUSINESS NETWORK,†and that a Mr. “Clough. . . since at least as early as 2002, has provided a link on his website to Mr. Hodges’ services.†Additionally, Defendant provided some proof that he was known as “the British Fox,†and that Defendant’s company “operated an active and bona fide business that used the term ‘FOX BUSINESS NETWORK’ in it’s promotion for several years before the dispute arose.†Paragraph 4(c)(1) of the Policy protects domain registrants who “before any notice of the dispute, have used the domain name in connection with a bona fide offering or goods or services.†THEREFORE the Panel finds plausible evidence that Defendant used domain in connection with bona fide business, and that Plaintiff has not met its burden of persuasion.
(4) Registered and Used in Bad Faith--> No need to discuss this element as Plaintiff didn’t meet the burden of persuasion for the second element.
(5) Panel declines to enter a finding of Reverse Domain Name Hijacking
(6) COMPLAINT DENIED