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.
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