Domain Dispute for Sport

Complainant is one of six major American film studios. It is a subsidiary of News Corporation, the media conglomerate owned by Rupert Murdoch, and was founded in 1934 as the result of a merger between Fox Film Corporation and Twentieth Century Pictures.  Complainant owns over 500 active worldwide registrations in over 80 countries for its FOX and FOX SPORTS marks, dating back to 1995.  Among others, Complainant offers online sports entertainment, including news, information, up-to-date scores, play-by-play coverage of games, and streaming videos, accessible by Internet users globally.  Its television broadcasts under the FOX SPORTS mark reach more than 99 million viewers in the United States and over 1 billion viewers worldwide.  The website www.foxsports.com consistently enjoys a ranking among the top 400 websites visited on the Internet as a whole and on average is visited by more than 13 million visitors each month.

The disputed domain name, "livefoxsports.info", was used in connection with Respondent's website which purportedly offered sports coverage similar to that of Complainant, namely coverage of the National Football League games.

In transferring the disputed domain name to Complainant, the Panel held that the addition of the term "live" is insufficient to distinguish it from relevant FOX SPORTS marks.  There was no indication of any right or legitimate interest that Respondent may have in the domain and, given the fact that Respondent offered online sports coverage identical to those offer by Complainant, it was evident that Respondent's only purpose in registering the domain was to divert traffic away from Complainant's website to its own for commercial gain and by confusing consumers into believing that Respondent's site was sponsored, endorsed or otherwise approved of or authorized by Complainant, falling squarely within the terms of paragraph 4(b)(iv) of the Policy.  Twentieth Century Fox Film Corporation v. Domains by Proxy, Inc./Samina Rahman, WIPO Case No. D2009-1121

Domain Name Going "South"

The Complainant, Viacom International, Inc., owns trademark registrations in the service mark and trademark "SOUTH PARK", which it has used in connection with various forms of entertainment and related apparel since as early as July 1997.  The marks have been used in connection with an animated television show called "South Park" and Complainant maintains "the official South Park web site" at
www.southparkstudios.com.  The television show has several cartoon characters, including "Stan" and "Mr. Marsh", who is identified as Stan's father.

On March 22, 2007, the Respondent registered the disputed domain name, "stansdad.com", which resolves to a web site in which a cartoon character's face corresponding to Mr. Marsh appears in the place of the "O" in ".COM".  The website contains episodes of the television show South Park (including two copyrighted episodes) and the tagline "W-W-WATCH SOUTH PARK ONLINE FREE!".  The website contains prominent disclaimers identifying the Complainant as the owner of the trademark and copyrighted material and expressly disassociates the disputed domain name with the Complainant.

Denying Viacom's complaint, the Panel pointed out that the UDRP was designed to deal with the problem of cybersquatting.  The disputed domain is clearly not confusingly similar to any trademarks or service marks asserted by Viacom, as "stansdad.com" is not even remotely similar to "South Park".  Instead, Viacom's concerns were not really directed towards the particular domain name itself but, rather, what was occurring on Respondent's website.  While the Panel recognized that Viacom's concerns may be legitimate and perhaps entitled to legal redress, the UDRP is simply not the vehicle to provide that redress.  Here, Viacom was really asserting possible claims of copyright infringement, which goes beyond the purview of the issues that the UDRP was designed to redress and should have been brought in a more traditional legal proceeding.

And The Disputed Domain Name Winner Is . . .

In this WIPO dispute, Complainant sought transfer of the disputed domain names "goldenglobe.com" and "goldenglobes.com".  Complainant's Golden Globe Award Ceremony is world famous and Complainant is the registered owner of three US trademark registrations for "GOLDEN GLOBE" covering, among other things, services associated with its award ceremony.

The disputed domain names were not in use and were not connected to any website.  Complainant sent Respondent a cease and desist letter, but got no reply to that or its WIPO Complaint.  The Panel ordered that the disputed domain names be transferred to Complainant, holding that Respondent did not appear to have any legitimate rights or interest in the disputed domain names and that they had been registered and used in bad faith.  In so holding, the Panel accepted Complainant's argument that Respondent had registered the domains with the intention of selling them at a profit.  In that regard, the Registrar's Whois database identified the Administrative Contact of the domains as "Sale, For" (i.e. For Sale).  The Panel believed that, under the circumstances, Complainant's argument was a reasonable assumption, particularly since Respondent had not challenged the allegation.  Given that Respondent had no active use planned for the domains and they had remained unused for over 10 years, the Panel accepted that their sale was Respondent's objective at the date of registration. Registration of a domain name with knowledge that it reproduces the Complainant's trademark and with a view to profiting from its sale is bad faith registration and use, warranting transfer of the disputed domain names. Hollywood Foreign Press Association v. F.M.I., WIPO Case No. D2008-1610

Domain Name Pimped For A Ride

Complainant has a registered trademark for the word mark "Pimp My Ride".  Its wholly-owned subsidiary MTV Networks produces a reality television series entitled "Pimp My Ride", which features a car, chosen from among viewer submissions, which is then restored and customized by the program's experts.

The disputed domain name, "pimpmyride.com", was registered by the Respondent 3 months after the Complainant had filed its trademark application for "Pimp My Ride" and only 4 weeks before the television series was first aired while the show was receiving considerable advance publicity.  The disputed domain name resolves to an extensive website which includes information on car modification, related and unrelated advertising and many links to subpages or related commercial sites offering commercial goods or services related to car modification.  Ordering transfer of the disputed domain name, the Panel deemed this usage of the domain to be in bad faith.  The uncontroverted evidence suggested that the Respondent registered the domain name to attract viewers of the Complainant's subsidiary's show to its website, using the Complainant's trademark to do so. Coupled with this, there was evidence that the Respondent had previously used the disputed domain name to commit illegal acts in relation to a lottery for which the Missouri Attorney General obtained an injunction in 2004. With respect thereto, the website contained an offer than once $20,000 had been raised by members of the public paying $1 each for a chance to have their car "pimped", one entry would be randomly selected.  Respondent appeared to have subsequently run a similar dishonest scam in relation to a $20 required payment for an alleged processing fee to be paid by the selected "winners" of its illegal lottery.  This uncontroverted evidence suggested to the Panel that the Respondent was using the disputed domain name to defraud members of the public or make them purchase goods and services from the Respondent's sponsors, presumably for Respondent's financial benefit in click-through revenue, constituting bad faith registration and use.  Viacom International Inc. v. All in Marketing LLC, WIPO Case No. D2008-0155