Fox Media LLC v Farhan Asif and Farrukh Chaudhry

WIPO Case No. D2023-2412

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fox Media LLC v. Farhan Asif and Farrukh Chaudhry

Case No. D2023-2412

1. The Parties

The Complainant is Fox Media LLC, United States of America (“United States”), represented by Greenberg

Traurig, LLP, United States.

The Respondents are Farhan Asif, Pakistan, and Farrukh Chaudhry, Pakistan.

2. The Domain Names and Registrars

The disputed domain name <fox3now.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com

(the “First Registrar”).

The disputed domain name <fox5now.com> is registered with Hello Internet Corp (the “Second Registrar”).

The disputed domain name <fox7now.com> is registered with Web Commerce Communications Limited dba

WebNic.cc (the “Third Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2023. On June 5, 2023, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On June 5, 2023, the Second Registrar and Third Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Domain Admin, Privacy Protect, LLC (PrivacyProtect.org)) and contact information in the Complaint. On June 6, 2023, the First 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 (Domain Admin, Privacy Protect, LLC (PrivacyProtect.org)) and contact information in the Complaint.

The Center sent an email communication to the Complainant on June 12, 2023, providing the registrants and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint or to file a separate complaint. The Complainant filed an amended Complaint on June 15, 2023.

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

page 2

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 Respondents of the Complaint, and the proceedings commenced on June 16, 2023. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2023. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 25, 2023.

The Center appointed Edoardo Fano as the sole panelist in this matter on July 28, 2023. 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.

The Panel has not received any requests from the Complainant or the Respondents regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to [the] Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondents.

The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is Fox Media LLC, a United States company operating in the field of entertainment and media services, and owning several trademark registrations for FOX in many countries (including Pakistan, the Respondents’ country), among which:

- United States Trademark Registration No. 1,840,919 for FOX, registered on June 21, 1994;

- United States Trademark Registration No. 1,924,143 for FOX, registered on October 3, 1995.

The Complainant operates also on the Internet, owning several domain name registrations for FOX, among which <fox.com>, <foxnews.com>, <foxsports.com>, and, for its local news affiliate stations, <fox4now.com> and<fox6now.com>.

The Complainant provided evidence in support of the above.

According to the WhoIs records, the disputed domain names were registered on the following dates: reproduced, and similar news services as the Complainant’s are purportedly provided.

<fox3now.com> on December 27, 2021, <fox5now.com> on February 4, 2023, and <fox7now.com> on
5. Parties’ Contentions
A. Complainant

The Complainant states that the disputed domain names are confusingly similar to its trademark FOX, as the disputed domain names wholly incorporate the Complainant’s trademark.

page 3

Further to section 6.1 below, the Complainant argues that the disputed domain names are under common control and thus addresses the Respondents in the singular. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to register the disputed domain names or to use its trademark within the disputed domain names, it is not commonly known by the disputed domain names and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names: the disputed domain names are resolving to very similar websites, purportedly providing the same services as the Complainant, with the aim to divert consumers and deceive them into believing that the disputed domain names are associated to the Complainant.

The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since the Complainant’s trademark FOX is well-known in the field of entertainment and media services. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain

names, and the Complainant contends that the use of the disputed domain names with the purpose to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites, qualifies

as bad faith registration and use.

B. Respondents

The Respondents have made no reply to the Complainant’s contentions and are in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3.

6. Discussion and Findings

6.1 Consolidation of Multiple Respondents

The Complainant has requested consolidation of multiple Respondents and stated that all the disputed
domain names belong to the same person or organization. No objection to this request was made by the
Respondents.

Pursuant to the WIPO Overview 3.0, section 4.11.2, “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”. The Panel may consider a range of factors to determine whether consolidation is appropriate, such as examining relevant registrant contact information, and any naming patterns in the disputed domain names, or other evidence of respondent affiliation that indicate common control of the disputed domain names.

The Panel notes that all the disputed domain names are owned by the Respondents located in Pakistan, they follow a very similar naming pattern and resolve to very similar websites, in which similar services as the Complainant’s are purportedly provided and the Complainant’s trademark is reproduced. The Panel finds that there is plausible evidence that the disputed domain names are subject to common control, and that it would be procedurally efficient, fair, and equitable to all Parties to accept the Complainant’s consolidation request. The Panel further notes that the Respondents did not object to the consolidation request. The Panel therefore accepts the Complainant’s consolidation request. Hereinafter, the Panel will refer to the Respondents in the singular, i.e., “the Respondent”.

page 4

6.2 Substantive Issues

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

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

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

(iii)      the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademark FOX both by registration and acquired reputation and that the disputed domain names are confusingly similar to the trademark FOX.

Regarding the addition of the term “now”, and the numbers “3”, “5” and “7”, the Panel notes that it is now well established that the addition of other terms (whether descriptive, geographical terms, letters, or otherwise) to a domain name does not prevent a finding of confusing similarity between the disputed domain name and

the trademark. See WIPO Overview 3.0, section 1.8.

It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, is typically ignored
when assessing the similarity between a trademark and a domain name. See WIPO Overview 3.0, section
1.11.1.

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain names.

The Respondent may establish rights or legitimate interests in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following circumstances, in particular but without limitation:

“(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use,
the domain name[s] or a name corresponding to the domain name[s] in connection with a bona fide offering

of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain

name[s], even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name[s], without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

According to paragraph 4(a) of the Policy, the Complainant has the burden of proving the three elements of the Policy. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain names according to paragraph 4(a)(ii) of the Policy is potentially quite difficult, since proving a negative circumstance is generally more complicated than establishing a positive one. As such, it is well accepted that it is sufficient for the Complainant to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names in order to shift the burden of production to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

page 5

prima facie

The Complainant in its Complaint, and as set out above, has established a case that the domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services. The disputed domain names are used by the Respondent in an attempt to pass off as the Complainant while seeking a commercial gain.

Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names.

The Panel therefore concludes that the disputed domain names are not being used in connection with a bona fide offering of goods or services.

Moreover, the Panel finds that the composition of the disputed domain names carries a risk of implied
affiliation as they effectively impersonate or suggest sponsorship or endorsement by the Complainant. See
WIPO Overview 3.0, section 2.5.1.

Based on the facts of this case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that “[f]or the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable

consideration in excess of [its] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or
service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has]

engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location”.

Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark FOX in the field of entertainment and media services is clearly established and the Panel finds that the Respondent likely knew of the Complainant, and deliberately registered the disputed domain names

in bad faith, especially because the disputed domain names resolve to websites purportedly providing similar
services as the Complainant’s, as well as reproducing the Complainant’s trademark in combination with the
term “now” and a number, that is in the same way in which the Complainant is using its trademark for its local
news affiliate stations.

page 6

The Panel further notes that the disputed domain names are also being used in bad faith since the
Respondent is trying to attract Internet users to its websites by creating likelihood of confusion with the
Complainant’s trademark as to the disputed domain names’ source, sponsorship, affiliation or endorsement,
in order to purportedly provide similar services as the Complainant’s, an activity detrimental to the
Complainant’s business.

The above suggests to the Panel that the Respondent intentionally registered and was using the disputed domain names in order both to disrupt the Complainant’s business, in accordance with paragraph 4(b)(iii) of the Policy, and to attract, for commercial gain, Internet users to its websites in accordance with paragraph 4(b)(iv) of the Policy.

Furthermore, the Panel considers that the nature of the inherently misleading disputed domain names, which include the Complainant’s trademark in its entirety with the mere addition of the term “now” and a number as in the websites of the Complainant’s local news affiliate stations, further supports a finding of bad faith. See, WIPO Overview 3.0, section 3.2.1.

The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 names <fox3now.com>, <fox5now.com>, and <fox7now.com> be transferred to the Complainant.

/Edoardo Fano/
Edoardo Fano
Sole Panelist
Date: August 11, 2023