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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Fox News Network, L.L.C. v. Kenneth A. Young

Case No. D2003-0407

 

1. The Parties

The Complainant is Fox News Network, L.L.C. of New York, New York, United States of America. The Complainant is represented by its senior media counsel, Christopher J. Silvestri, of the same address.

The Respondent is Kenneth A. Young of Stirling, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name is <gretavansusteren.com> ("the domain name"). The domain name is registered with eNom Inc. of Redmond, Washington, United States of America ("the Registrar").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 27, 2003. On May 28, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On May 29, 2003, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact for the domain name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 18, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2003. The Response was filed with the Center on June 20, 2003.

The Center appointed Warwick Smith as the sole panelist in this matter on July 3, 2003. 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.

 

4. Factual Background

The Complainant operates the Fox News Channel, a 24-hour Cable News television channel which is available in approximately 82 million homes in the United States of America. In January 2002, Greta Van Susteren joined the Complainant’s news channel, as the host of the prime time news and interview program "On the Record with Greta Van Susteren" ("the program"). The program was launched in February 2002. The Complainant asserts that, since the program’s launch, it has been the exclusive owner of all copyright, trademark and other intellectual property rights associated with the program.

The domain name was first registered on March 30, 2002, approximately one month after the program’s launch.

The Complainant has produced computer printouts derived by typing in "www.gretavansusteren.com" in the computer’s address bar. One such printout, dated May 13, 2003, took the browser to the website at "www.tiscali.co.uk," a website with apparently no relationship with either the Complainant or Ms. Van Susteren. (The website at "www.tiscali.co.uk" offers a range of services, including news headlines, weather, horoscopes, various Internet and telephone services, and hotlinks to various other sites, including sites relating to auctions, car buying, car insurance, cheap flights, and so on. There are also a number of other links, including to sites covering popular topics such as motoring, property, sport, shopping, travel, and gambling.) Contact information provided on the website at "www.tiscali.co.uk" provides an address for "Tiscali Customer Service" at Milton Keynes in the United Kingdom.

The Complainant has also produced a web page, downloaded on May 22, 2003, derived by typing in "www.gretavansusteren.com" in the computer address bar. This later download contains the prominent notice "Site under Construction," and the following note:

"This site is entirely unofficial and seeks merely to offer visitors information on the U.S. television personality Greta Van Susteren.

It is in no way connected with or approved by Ms Van Susteren."

 

5. Parties’ Contentions

The Complainant

1. The domain name is identical to the name/mark "Greta Van Susteren," and is confusingly similar in relation to the name/mark "On the Record with Greta Van Susteren."

2. Well-known personalities are able to prevent the unauthorized registration of domain names in appropriate cases (citing Nicole Kidman v. John Zuccarini; WIPO Case No. D2000-1415, Fox News Network LLC v. Reid; WIPO Case No. D2002-1085, and Fox News network LLC v. Michele Dinoia; WIPO Case No. D2002-1082).

3. Since the program’s launch, the Complainant has been the exclusive owner of all copyright, trademark and other intellectual property rights associated with the program.

4. The domain name is synonymous with Fox News Channel, the program, and the program’s host, and the domain name is identical in spelling to Ms. Van Susteren’s full name. The Respondent therefore has no rights in the domain name.

5. The Respondent is not making a legitimate non-commercial use or fair use of the domain name. The only use so far made by the Respondent of the domain name has been the re-direct to the website at "www.tiscali.co.uk," and the "under construction" site.

6. At least at some points in the past, the Respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the "www.tiscali.co.uk" website. Since the content on the website at "www.tiscali.co.uk" is not affiliated with the Complainant or with Ms. Van Susteren, the Respondent has, and may again in the future, tarnish and disparage the marks at issue by using the domain name for commercial gain.

7. The domain name has been registered and used solely in bad faith by the Respondent. Specifically, Internet users will assume that a domain name that consists of a famous mark is associated with or sponsored by the owner of that mark and, based on such an assumption, Internet users may begin a search of a website by typing in a famous mark followed by a top level domain such as ".com." In this case, Internet users have been taken to a website that is completely unrelated to the mark, and by using the domain name for that purpose, the Respondent has intentionally intended to attract, for commercial gain, Internet users who would be attempting to find a domain name related to Ms. Van Susteren, the program, or Fox News channel.

The Respondent

Trademark

(i) The fact that a body may or may not own a trademark does not preclude another person from registering a domain name that is identical or similar, providing the domain name is to be used in good faith.

(ii) The Complainant has failed to play a proactive role in protecting the alleged trademark. Specifically, if the Complainant claims rights over the domain name as well as rights to the alleged trademark, why did the Complainant itself not register the domain name at the time Ms. Van Susteren joined its network? Similarly, why did the Complainant not secure registration of Ms. Van Susteren’s name in the ".net," ".org," and other top-level domains?

(iii) The Complainant in its Complaint has waived any claims and remedies against various parties, including the Registrar. The Complainant’s policy in pursuing the Respondent, while not pursuing the Registrar, is "clearly discriminatory and is a classic example of the corporate bully at work."

Legitimate interests

(i) The Respondent says that he purchased the domain name because he was concerned over certain allegations made by others against Ms. Van Susteren, which questioned her journalistic integrity. In brief, it was alleged that Ms. Van Susteren is a scientologist, and that, while employed with another television network before she joined the Complainant, Ms. Van Susteren had allegedly used her influence within that other network to suppress a story due to be aired by that network which purportedly would have cast the scientology movement in a bad light. The Respondent says that the suggestion that someone in the position of Ms. Van Susteren might have been prepared to compromise journalistic ethics to further the cause of scientology, raises difficult moral issues, and that it was his intention to look into the matter further and to publish his findings on a website which would be linked to the domain name.

(ii) The world’s media is increasingly concentrated in fewer and fewer hands, including those of a number of companies (including the Complainant) which are under the direct or indirect control of Mr. Rupert Murdoch. That concentration of control poses no significant difficulty, so long as editorial independence and the exercise of the highest journalistic standards are maintained.

(iii) Because of his concern at the possibility of possible damage to Ms. Van Susteren’s career should his findings prove compromising, and the possibility of opening himself up to legal action by publishing any premature comment on his investigations before they are complete, the Respondent has taken the decision not to publish anything on the website at the domain name at this stage. However, he says that he does intend to publish his findings on the website at the domain name in due course, at which point he intends to offer Ms. Van Susteren and the Complainant a right of reply on the site. The site would be entirely non-commercial, and (as now) would carry a clear disclaimer that it was in any way approved or endorsed by Ms. Van Susteren.

Bad Faith

(i) The website which the Respondent intends to operate at the domain name is intended to be entirely non-commercial. The Respondent has not received, nor intends to receive, any income from it whatsoever.

(ii) The Respondent denies having put up the holding page containing links to other sites, and asserts that it was the Registrar who was responsible for putting up the holding page. The Respondent says that he has derived no income from the holding pages, and has no editorial control over these holding pages which he says are the sole responsibility of the Registrar. Further, the Respondent says that such holding pages are commonplace throughout the Internet and that it is extremely unlikely that any web surfer would mistake such a holding page for an official site dedicated to Ms. Van Susteren and thus damage the value of the trademark. In this case, the Registrar, without the Respondent’s knowledge or consent, appears to have gone further by diverting surfers to a completely unrelated page.

(iii) For the foregoing reasons, the only party who could have derived income from the website at the domain name, or could have damaged any trademark, is the Registrar. The Complainant has deliberately precluded itself from taking action against the Registrar.

(iv) The Complainant has been motivated by a desire to cloud the real issue of free speech on the Internet.

(v) The Respondent’s good faith has been demonstrated by his actions taken since learning of the Complainant’s complaint. The Respondent immediately put up a holding page of his own stating that the site was in no way connected with or approved by Ms. Van Susteren. The Respondent also offered to come to some sort of compromise arrangement with the Complainant, for example, redirecting visitors to the website at the domain name, to the Complainant’s official site, pending the launch of the Respondent’s own site.

General

(i) Dispute Resolution Policies established by ICANN do not qualify as true arbitration under the FAA.

(ii) An arbitration system that is financed by fees paid by the Complainant only is clearly open to the charge that it is biased in favour of the Complainant.

(iii) There is a question over the impartiality of many of the Panelists who have sat on disputes procedures. For instance, many have links with large corporations or legal firms, and, especially where trademarks are an issue, "their judgment will always be slanted towards the interests of their corporate paymasters."

(iv) The issue in this case is freedom of speech versus trademark issues. Under the United States Constitution freedom of speech is paramount.

 

6. Discussion and Findings

General Principles under the Policy and the Rules

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:

(i) That the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [the respondent has] registered or 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 that complainant, for valuable consideration in excess of [the respondent’s] 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, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

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

Paragraph 15(a) of the Rules requires the Panel to:

"… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable."

Paragraph 4(a)(i) of the Policy – domain name identical or confusingly similar to trademark or service mark in which Complainant has rights

The Complainant does not rely on any registered trademark or service mark. It relies on the proposition that well-known personalities are able to prevent the unauthorized registration of their names as domain names in appropriate cases.

The right of a complainant to claim a common law trademark in his or her name was discussed in the recent three-member WIPO panel decision in WIPO Case D2003-0248, Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, relating to the domain names <aboutsrichinmoy.com> and <gurusrichinmoy.com>). The Panel in that case referred to a number of decisions in "famous names" cases, including WIPO Case No. D2001-0121, Julian Barnes v. Old Barn Studios Limited, a case involving a complaint by the author Julian Barnes, who was very well known in the United Kingdom. The panelist in the Julian Barnes case held that the easiest way of defining a common law trademark, is to say it is an unregistered mark used by its proprietor in the course of trade, the unauthorised use (or imitation) of which by another trader will lead to a successful action in the tort of passing off. The panelist in WIPO Case No. D2001-0121, Julian Barnes v. Old Barn Studios Limited, went on to say:

"the clearest example of a common law trademark is a person’s name, which as the Respondent has pointed out may sometimes be difficult to register as a trademark. So, if the Panel writes a novel and falsely represents that the author is Julian Barnes, the Complainant would sue in passing off and would undoubtedly succeed. In that example "Julian Barnes" is the common law trademark."

In this case, it seems clear that the name "Greta Van Susteren" is a famous name. The television program which she hosts is broadcast to some 82 million homes in the United States of America, and as appears from the Respondent’s response, the program can also be seen in Europe. On any view of it, Ms. Van Susteren is not only "famous," but there is a service (the broadcasting of the program) which the Complainant is providing by reference to her name. Accordingly, the Panel finds that the name "Greta Van Susteren" qualifies as a trademark or service mark within the meaning of paragraph 4(a)(i) of the Policy.

However, there is a further question as to whether the rights in that mark are owned by the Complainant, or by Ms. Van Susteren herself. Ordinarily, one would expect the famous individual to own the rights in his or her name, and that would be particularly so in this case where it appears that Ms. Van Susteren may have acquired some degree of celebrity status working with another network before she joined the Complainant’s network. The Complainant, in this particular case, has produced no evidence to support the contention that it has acquired all rights in Ms. Van Susteren’s name, and in those circumstances the Panel is not prepared to assume that it has. (In WIPO Case No. D2001-0639, UBS AG v. has book publishers Inc., a complaint relating to a domain name which incorporated the name of the complainant’s former president and chief executive officer, the Panel denied the complaint, because the former chief executive had not been joined as a complainant in the complaint. The learned Panelist in that case was not prepared to assume that the former chief executive had assigned any rights he enjoyed in his name to the complainant. The Panelist made it clear however, that the dismissal of the complaint was without prejudice to the right of the former chief executive to file a separate complaint of his own if he so wished.). However, in the Panel’s view in this case, it is probable that the Complainant does own a common law trademark right in the name of the program. The Respondent accepts that the program is broadcast by the Complainant throughout the United States and also in Europe. Because of the wide publication of the name of the program, and the relatively "instant" effect of television communications into some millions of homes, the panel is prepared to accept that the complainant has acquired common law service mark rights in the name of the program viz "On the Record with Greta Van Susteren," and that those rights existed by the time the domain name was registered on March 30, 2002, (in the Panel’s view, it is probable that by that date the Complainant could have successfully sued in the tort of passing off anyone who used the name of the program (or a dominant part of it) without the Complainant’s consent).

The Panel also finds that the domain name is confusingly similar to that service mark. The dominant part of the program name is clearly Ms. Van Susteren’s name – the words "On the Record" are general and non-distinctive, and there is no doubt that the domain name reproduces exactly the strong and distinctive part of the mark "On the Record with Greta Van Susteren."

The Panel therefore finds that the domain name is confusingly similar to a service mark to which the Complainant has rights.

Paragraph 4(a)(ii) of the Policy – respondent has no rights or legitimate interests in respect of the domain name

First, it is clear from both complaint and response that neither the Complainant nor Ms. Van Susteren have authorised the Respondent to use the domain name.

Clearly the Respondent has not been known by the domain name, and he has acquired no trademark or service mark rights in it. In his response, the Respondent says that he has not used the domain name in connection with the offering of any goods. The issues under paragraph 4(c) of the Policy, therefore, are whether the Respondent has made demonstrable preparations to use the domain name in connection with the bona fide offering of any services (Policy paragraph 4(c)(i)), and whether the Respondent is making a legitimate non commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark at issue (Policy, paragraph 4(c)(iii)).

The Respondent denies any association with the "www.tiscali.co.uk" website, although in the Panel’s view it is improbable that the domain name could have been linked to the website without the Respondent’s knowledge or consent. It must have been open to the Respondent to obtain some explanation from the Registrar as to how that circumstance came about, and put the Registrar’s explanation before the panel. The Respondent has chosen not to do that. However, in the circumstances of the case the Panel does not need to refer to the linkage of the domain name to the website at "www.tiscali.co.uk." On the Respondent’s own evidence, he was well aware at the time of the registration of the domain name, that it was confusingly similar to the Complainant’s mark, and indeed identical to Ms. Van Susteren’s famous name. When registering the domain name, the Respondent must have known that web browsers looking for websites associated with the program or Ms. Van Susteren would be drawn to the website at the domain name.

In those circumstances, this case is the same in relevant respects as in WIPO Case No. D2003-0248, Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, in which the Panel found that any offering of goods or services through the website could not be bona fide, or constitute a legitimate non-commercial or fair use of the domain name, and could not therefore form the basis of any right or legitimate interest under paragraph 4(a)(ii) of the Policy. As the Panel put it in WIPO Case No. D2003-0248, Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, "it could never be a legitimate or fair use to select a domain name which is confusingly similar to another person’s trade or service mark, with a view to misleadingly attracting visitors to a website linked to a domain name."

Again as noted in WIPO Case No. D2003-0248, Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, that finding does not in any way affect the Respondent’s rights of free speech, including any right he may enjoy under United States or other relevant law to criticize the Complainant or Ms. Van Susteren. While any content the Respondent might post on a website might enjoy certain free speech protections, those protections do not equate to rights or a legitimate interest with respect to a domain name which is confusingly similar to another’s trademark.

The provision of the disclaimer on the website linked to the domain name does not assist the Respondent. By the time an Internet visitor reads the disclaimer, the initial mischief will have been achieved (i.e. the Respondent will have attracted to his website Internet browsers looking for sites associated with Ms. Van Susteren or the Complainant). The disclaimer comes too late to render the use of the domain name either bona fide or a legitimate, or fair use.

For the foregoing reasons, the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(a)(iii) of the Policy – domain name registered and being used in bad faith

The Respondent has deliberately and confusingly used the dominant part of the Complainant’s mark as the domain name, with a view to attracting web browsers to the website which he intends to link to the domain name. As noted in WIPO Case No. 2003-0248, Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, that on its own is sufficient to constitute bad faith registration and use.

It does not matter that the facts in this case may not fall within any of the circumstances described at paragraph 4(b) of the Policy. Those circumstances are no more than examples of bad faith registration and use, and do not in any way limit the ability of panels to find that circumstances other than those described at paragraph 4(b) can amount to bad faith registration and use.

Dealing with the Respondent’s submissions made under the "bad faith" heading, it does not matter that the Respondent intends to operate a website which is entirely non-commercial. The bad faith lies in the deliberate and misleading use of another person’s trademark for the purpose of diverting Internet users looking for sites associated with the owner of that trademark, to the Respondent’s website.

It is unnecessary for the Panel to make any finding on the Respondent’s responsibility for the domain name having been linked to the website at "w.tiscali.co.uk."

The Complainant is not and never was under any obligation to make any claim against the Registrar (even if such a claim were justified, and the Panel is unaware of any evidence which would justify such a claim). The fact that the Complainant has, in its complaint, formally waived any right to make a claim against the Registrar is irrelevant. The waiver of claims against the dispute/resolution provider and panelists (except in the case of deliberate wrongdoing), the registry administrator, and ICANN (as well as their directors, officers, employees and agents), is mandatory for all persons wishing to file complaints under the Policy (Rule 3(b)(xiv) of the Rules).

The Complainant’s motive for filing this administrative proceeding is not relevant – the issue is whether the Complainant has established the grounds set out in paragraph 4(a) of the Policy.

The action of the Respondent in placing a disclaimer on the holding page linked to the domain name does not assist the Respondent on the bad faith argument. As indicated above, the damage (misleading diversion of Internet browsers to the Respondent’s website) has already been done by the time the Internet visitor reads the disclaimer. Similarly, the Complainant was not obliged to accept the Respondent’s proposal of redirecting visitors to his website at the domain name, to the Complainant’s official site, pending the launch of the Respondent’s own site. That would only have been a temporary expedient which would not have addressed the issues raised by the Complainant. The Panel does not find it necessary or appropriate to address the more general complaints made by the Respondent about the procedures which apply to complaints made under the Policy.

 

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 domain name <gretavansusteren.com> be transferred to the Complainant.

 

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Warwick Smith
Sole Panelist

Dated: July 17, 2003