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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fox News Network, LLC. v. Michele Dinoia
Case No. D2002-1082
1. The Parties
The Complainant in this proceeding is Fox News Network, LLC., New York, New York, U.S.A.
The Respondent in this proceeding is Michele Dinoia, Pineto, Te, Italy.
2. The Domain Name and Registrar
This dispute concerns the domain name <oreillyfactor.com> (the "Domain Name").
The Domain Name was registered on April 18, 2002.
The Registrar with whom the Domain Name is registered is OnlineNic, Inc.
3. Procedural History
A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy (the "Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") both of which are implemented by ICANN on October 24, 1999, was received by WIPO Arbitration and Mediation Center (the "Center"), in electronic format on November 26, 2002, and in hardcopy on December 10, 2002. Payment in the required amount to the Center has been made by the Complainant.
On November 28, 2002, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the complaint from the Complainant, that the Domain Name was currently registered with it and that the Policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name.
In accordance with the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 17, 2002.
On January 3, 2003, a Response was received from the Respondent.
On January 23, 2003, a notification of appointment of administrative panel and projected decision date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainant’s request, the appointment notification informed the parties that the administrative panel would be comprised of a single panelist, Clive Elliott.
On February 9, 2003, a decision was submitted to the Center.
4. Factual Background
The Complainant is the owner of copyright, trademark and other intellectual property rights (trade marks filed in the U.S.A. in July 2002, but relying on first use going back to 1996) associated with "The O'Reilly Factor" which is a news program hosted by Mr. Bill O'Reilly on the Fox News Channel. The Complainant d/b/a Fox News Channel operates a 24 hour cable news network on which Mr. O'Reilly’s news program airs.
The Respondent registers generic names to resell or to use them for web sites for vanity-type e-mail web sites. The Respondent is also a dealer in generic and short domain names.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is synonymous with its news channel and with its host Mr. Bill O'Reilly.
The Complainant claims that the Respondent is using the Domain Name to attract internet users to SearchPort's website for commercial gain. The Respondent admits using the Domain Name to generate revenue by charging a fee for what is identified as "target web traffic", "banner advertisements", "opt-in emails", as well as "pop-up advertisements".
The Respondent contends that the Domain Name is not identical to the Complainant’s mark, which is "The O’Reilly Factor", where the Domain Name is <oreillyfactor>, with no sign between "o" and "r" in the name O’Reilly.
Moreover, the Respondent notes, the mark "The O’Reilly Factor" is registered only in the U.S.A., and contends it is only in the U.S.A. the mark "The O’Reilly Factor" could have acquired distinctiveness. He asserts that Mr. Dinoia is an Italian citizen, living in Italy, and could not be aware of the existence of a trademark based on those words.
The Respondent submits that the Complainant did not bring any evidence of the reasons why the Respondent should have been aware of the mark "The O’Reilly Factor".
The Respondent states that the Complainant’s business, as operated under the name FOX NEWS CHANNEL, is directed to viewers in the U.S.A., not to those who live outside the U.S.A.; in particular, no TV channel named FOX NEWS CHANNEL is available for direct viewers living in Italy, which includes Mr. Dinoia.
The Respondent says that the Domain Name was selected because it can be used for "vanity e-mail" or internet users named "O'Reilly".
The Respondent claims to have invested in a web server for his business and negotiated with software developers to complete all the e-mail software applications necessary to his business.
The Respondent claims he is not a competitor of the Complainant, as he is not using the Domain Name to sell products that are competitive with those of the Complainant. He also states that a visitor to the website would readily see this.
Finally, the Respondent claims he never offered to sell the Domain Name to the Complainant.
6. Discussion and Findings
Para. 4(a) of the Policy requires that the Complainant must prove each of the following:
- The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
- The Respondent has no right or legitimate interest in respect of the Domain Name; and
- The Domain Name has been registered and is being used in bad faith.
Para. 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by para. 4(a)(iii) referred to above.
Para. 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in para. 4(a)(ii) referred to above.
Domains Name Identical or Similar
It is established that well-known entertainers and personalities are able to prevent the unauthorized registration of domain names in appropriate cases. Refer: Nicole Kidman v. John Zuccarini, WIPO Case No. D2000-1415 (January 23, 2001). That is, because of Ms. Kidman’s renown and the use of her name in connection with entertainment services, which provided a strong indication of source. The same broad principles apply here.
The Complainant relies on trade mark rights which may have been recently lodged but rely on first use in commerce going back to 1996, these rights being associated with "The O'Reilly Factor", a news program hosted by Mr. Bill O'Reilly on the Fox News Channel. This is not disputed by the Respondent.
The Complainant asserts that the Domain Name is synonymous with its news channel and with its host Mr. Bill O'Reilly. The Complainant’s evidence is not particularly enlightening on why this is so, but there is just enough in the Complaint to get the Complainant over this first hurdle.
The Respondent’s contention that the Domain Name is not identical to the Complainant’s mark, which is "The O’Reilly Factor", where the Domain Name is <oreillyfactor>, has no merit. They are at least confusingly similar.
Accordingly, it is found that the Domain Name is identical or confusingly similar to the name/mark "The O’Reilly Factor" and that the Complainant makes out its case on this ground.
Respondent has no Right or Legitimate Interest
Given that the words "O’Reilly Factor" appear to be, at least in part, arbitrary when used together, it is unlikely that the Respondent would have coined such a domain name without already knowing about the Complainant. The Respondent says that the Domain Name was selected because it can be used for "vanity e-mail" or internet users named "O'Reilly". That may be so but it does not explain why the domain name O’Reilly Factor (emphasis added) was chosen.
It is clear that Respondent uses the Domain Name to re-direct Internet traffic to a revenue generating search engine SearchPort. The Respondent uses the Domain Name to direct those searching for the Complainant directly to the SearchPort movie page. This seems to be the real reason for the use of the Domain Name. This is not use in connection with a bona fide offering of goods or services and therefore legitimate.
Accordingly, it is found that the Respondent has no right or legitimate interest in respect of the Domain Name.
Domain Name Registered and Being Used in Bad Faith
The Panel finds that the Respondent’s commercial use of the Domain Name to increase Internet traffic at the search engine website SearchPort is bad faith under Policy, Para. 4(b)(iv) and the use of the Domain Name is likely to result in consumer confusion as to the Complainant’s supposed affiliation with the resulting search engine website.
The Respondent contends that the Complainant’s business is directed to viewers in the U.S.A., not to those who live outside the U.S.A.; and in particular, "The O'Reilly Factor" news program, hosted by Mr. Bill O'Reilly on the Fox News Channel, is not available for direct viewers living in Italy, which includes Mr. Dinoia. He also asserts that the Complainant did not bring evidence of the reasons why the Respondent should have been aware of the mark "The O’Reilly Factor".
However, the Respondent is in the business of finding and then using or selling desirable domain names. His protestations of innocence do not fit well with his chosen business.
The Panel accordingly concludes that the Respondent must have been aware of the Complainant’s interests in "The O'Reilly Factor" mark, and registered and used the Domain Name in bad faith. see Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum April 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
Again the Complainant makes out its case on this ground.
Accordingly, the Complainant has successfully made out all three of the above grounds and is entitled to appropriate relief.
Therefore, and in consideration to the Complaint’s compliance with the formal requirements for this domain dispute proceeding, to the factual evidence and legal contentions that were submitted, to the confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i), (ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraph 15(a) of the Rules, it is found:
(1) that the Domain Name is confusingly similar to the Complainant’s "The O'Reilly Factor" trade mark and name;
(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) that the Domain Name has been registered and is being used in bad faith by the Respondent.
Therefore, the Panel requires, pursuant to what is provided for under Paragraphs 3(c) and 4(i) of the Policy, that the Domain Name be transferred to the Complainant.
Clive L. Elliott
Dated: February 9, 2003