Fox News loses domain name fights after late trade mark filing

[slaughterbeck]

Fox News Network has failed to win control over a domain name that is almost identical to one of its television station names because it did not register its trade marks early enough.

Fox News, the cable television news channel of Rupert Murdoch-controlled News Corporation, announced its intention to launch a business news channel on 8 February 2007.

On that same day Worldwide Directory Services (WDS) registered the domain name foxbusinessnetwork.com. But because Fox News did not register any trade marks for the term 'Fox business network' until 16th July that year it was not entitled to force the handover of the address.

The World Intellectual Property Organisation (WIPO) arbitrates in many disputes over domain names and can order their transfer if three conditions are met. The name must be identical or confusingly similar to a trade or service mark held by the person who wants to gain control of it, the person holding the domain name must have no rights in it, and the domain name must be registered and used in bad faith.

All three of these conditions must be met if a name is to be transferred, and Fox failed to meet the second.

Rupert Murdoch announced the long-rumoured creation of a business channel on 8th February 2007, and WDS registered the address that day. Fox did not register any trade marks in relation to it, though, until 22 February, and those marks were for Fox Business Channel. It took until 16th July for it to register three marks in relation to Fox Business Network.

Fox argued that the registration of the name was designed to create a likelihood of confusion from which WDS would benefit. It also said that WDS had contacted it and offered to sell the domain for $50,000.

WDS claimed that it had been publishing web pages using the term 'fox business network' since 2002, and that the 'fox' in question referred to its president's nickname, which it said was 'the British fox'.

WDS said that it did not know until August 2007 of Fox's intention to create a business channel. It said that it had approached Fox about the domain name in order to "discuss strategies to avoid confusion or infringement," according to its submission to the WIPO arbitrator. "As part of that conversation, [WDS] revealed that the cost to develop its Fox Business Network had been $50,000. [WDS] did not intend to use [Fox's] 'fox' mark to attract internet users for commercial gain."

The arbitration panel said that it could not rule that WDS had acted improperly in its registration of the address.

"[Fox] infers from the timing of the Domain Name registration and [WDS]'s subsequent telephone call in August 2007, that [it] registered the Domain Name not in furtherance of a legitimate business activity but only because the Domain Name might be confused with [Fox]'s proposed business channel," said the ruling. "While [WDS]'s hasty domain name registration after the …announcement in February 2007 is suspicious (and not adequately explained by [it]), this action might just as well be attributed to an effort to protect a name, 'Fox Business Network,' that [WDS] had been using before [Fox] announced its own intentions to use a similar name (“Fox Business Channel”)."

The arbitration panel did say, though, that since it cannot call witnesses or force the discovery of evidence a WIPO hearing is not the best place to settle disputes such as that over the telephone call in which Fox said WDS asked for $50,000 for the domain name. It said that a court would be a better location for that dispute.

It said that on the evidence presented to it, it found "sufficient plausible evidence" that WDS did actually use the name 'fox business network' in business, and that therefore the domain should stay with it.

Source
Read ruling: Here

Best wishes,
Kimmy

 

[.jd.]

Think of how this might have gone if the snowe bill was in effect..

Thanks for the news

 

[bricio]

Think of how this might have gone if the snowe bill was in effect..

i dont want even to imagine
you would lose your name and would be fined in $x,xxx,xxx

a real nightmare... this bill cant pass at all

 

[netzilla]

All I have to say is wow!

 

[Tempest111]

In this situation i've gotta side with fox. WDS obviously registered the name to profit off of confusion with the fox channel. Unfortunately cases like this is what is going to make the snowe bill pass.

 

[duceman]

Clear case of bad faith IMO...

The owner got lucky on this one

 

[Red Rock]

I think the good guys won.
Look, they were using this since 2002.

WDS claimed that it had been publishing web pages using the term 'fox business network' since 2002, and that the 'fox' in question referred to its president's nickname, which it said was 'the British fox'.

All they were doing was protecting something they have used for 6 years.
From the big corporate bully who said...
I think WE will use this now.

2 cents added!

 

[-NC-]

I think the good guys won.
Look, they were using this since 2002

nah. its a wild west domains reseller site. other links go to ld.net which is basically parking. if they've been "using" it for years, how come wds registered it on the same day of the announcement?. it's scum like this that are endangering all of us.

 

[Red Rock]

Yeah NC,
I see what you are saying.
If it is a reseller site,
then the intent most likely was to def. screw Fox, for the quick buck.
But if they have used this term since 2002,
then it's a whole different story.

 

[-NC-]

But if they have used this term since 2002,
then it's a whole different story.

yeah, but used it for what? if they actually used it for something, why doesn't it resolve to that? are they saying they've been using it to resell domains since 2002? BS.

 

[Red Rock]

Why do you think the worst of the little guy?
Read what the article says...

It said that on the evidence presented to it, it found "sufficient plausible evidence" that WDS did actually use the name 'fox business network' in business, and that therefore the domain should stay with it.

Have a little faith.
You actually think the lawyers, and judge got it wrong?
Geez, if you were protecting something you used long before big corporate bullies came in,
and said we are gonna grab that now,
because It sounds like something that can suit us.
You would go register it too!
Because you were using that particular name.

 

[-NC-]

Why do you think the worst of the little guy?

because the domain resolves to nothing more than 5 minutes setup/work.

if you were protecting something you used long before big corporate bullies came in

something? something what? where is their something? this win for the "little guy" is another nail in the coffin of the rest of us little guys.

Read what the article says...

The Respondents are Domains by Proxy, Inc. of Scottsdale, Arizona.
Domains by Proxy, Inc are not little guys.

 

[Red Rock]

because the domain resolves to nothing more than 5 minutes setup/work..

5 minutes?
How about "4 years" that they have been using that term,
before Fox came in and said...
Hey WE want that now!

something? something what? where is their something? this win for the "little guy" is another nail in the coffin of the rest of us little guys.

That would be true...IF this wasn't something that had been used
previus to Fox wanting it, and it looks like it has been founded
that it was used...since 2002

The Respondents are Domains by Proxy, Inc. of Scottsdale, Arizona.
Domains by Proxy, Inc are not little guys.

They are representing their client.
As they should.

Who knows about the little particulars.
Either way, if this was in bad faith...It definitely does not look good for us.
If it was a common term they used, well then, they deserve to win.

I guess I am open minded enough to stop arguing,
because there are alot of missing details.
I was just initially happy because I thought someone was getting bullied,
that should have some recourse for a term that was suppose to be theirs!

You're probably right, maybe someone who used the term once
4 years ago, then heard a cnn bulletin, and said,
Hey I'm gonna make a quick buck.

But I really just hope, that's not true!

 

[labrocca]

In this situation i've gotta side with fox. WDS obviously registered the name to profit off of confusion with the fox channel. Unfortunately cases like this is what is going to make the snowe bill pass.

I agree with you. Snowe bill will get passed and cases like this will be why.

 

[MyNet-Tony]

I concur - this kind of decision will help the Snowe bill get past. They should have done the right thing and given the domain to Fox. They registered it the same day the channel was announced. You can't call it anything but bad faith.

 

[CrazyTech]

Come on guys, it's clear what's being done here. The guy is sitting on the name for obvious reasons. Number one, it hasn't been much of a secret Fox was looking to start up a business network - this was prior even to the WSJ deal. Number two, it's an easy and safe bet that Fox was going to start a Business/Money network given their show lineup for the past 6+ years and other cable news channels had already done the same.

He basically proved that ignorance continues to reign in the domain arena just as the Snowe bill does.

 

[Pommy - The DN Doc]

An ethical dilemma who to support here.

Option 1
Rupert Murdoch :td:

Option 2
In my opinion: a bad faith registration - what else could foxbusinessnetwork.com be used for? What business news about foxes do you know of?

Pommy

 

[Cyberdev]

The Respondents are Domains by Proxy, Inc. of Scottsdale, Arizona.
Domains by Proxy, Inc are not little guys.[/QUOTE]

Your right they are not little, they are Go Daddy. Domains by Proxy is listed in the whois when one uses their whois privacy.

Seems like the owner of this domain had a good lawyer and got lucky in my opinion.

 

[ekal]

This kind of B.S. ruling only does our industry harm.

Much as I loathe Fox, they should clearly have won this name.