Got an email from Fox

[B40]

From : Fox Intellectual Property <[email protected]>
Sent : April 15, 2005 5:56:29 PM
To : <[email protected]>
Subject : Domain Names Infringing on Fox Intellectual Property



April 12, 2005

VIA COURIER AND ELECTRONIC MAIL


Re: Domain Names Infringing on Fox Intellectual Property

Dear Mr. xxx:


As you are aware, xxx is an upcoming television series TLC. Fox Television Studios, Inc. ("Fox") is the exclusive owner of all intellectual property rights, including but not limited to, copyright and trademark rights associated with the R U the Girl ("Fox Property") television series.

It has recently come to our attention that you registered the Internet domain names<xxx.COM>and<xxx.COM> (the "Infringing Registrations"). Your registration and exploitation of the Infringing Registrations is of the utmost concern to Fox, and your activities constitute "passing off," as consumers may erroneously believe that the Infringing Registrations and any services and/or on-line activities conducted in association therewith, are licensed, sponsored or authorized by Fox. Therefore, Fox demands that you immediately transfer the Infringing Registrations to Fox.

Your actions may fall within the scope of the Anticybersquatting Consumer Protection Act ("ACPA"), which amends the Federal Trademark Dilution Act (to add Section 43(d) of the Lanham Act, 15 U.S.C. § 1125(d)). See Twentieth Century Fox Film Corporation v. WWWFOXKIDS.COM, No. S-00-1987 (D.Md., Baltimore Div., Order dated October 24, 2000), where the Court ordered the registrar to transfer the domain name to Fox under the In Rem provision of the ACPA. The legislation creates liability for those persons who, without regard to the goods and services of others, have a bad faith intent to profit from a mark and register a domain name that is identical or confusingly similar to that mark. Furthermore, the legislation provides factors to guide a court in its determination of a defendant’s bad faith. Those factors include, but are not limited to:

· the domain name registrant’s registration or acquisition of multiple domain names which the person knows are identical or similar to the trademarks of others that are distinctive at the time of registration of the domain names;

· the domain name registrant’s pattern and practice of conduct that indicates bad faith;

· the extent to which the trademark incorporated in the domain name is distinctive and famous;

· the domain name registrant’s intent to divert consumers from the trademark owner’s online locations, which could harm the goodwill represented by the trademark, for commercial gain, by creating a likelihood of confusion as to the source, sponsorship or endorsement of the site;

· the domain name registrant’s trademark rights in the domain name (if any);

· the domain name registrant’s offer to transfer, sell or otherwise assign the domain name to the trademark owner or any third party for financial gain without having used or having the intent to use the domain name for the bona fide offering of any goods or services;

· the domain name registrant’s prior use (prior to receiving actual notice of the rights of the trademark owner) of the domain name in connection with the bona fide offering of goods and services; and

· the domain name registrant’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name prior to receiving actual notice from the trademark owner.

These factors were considered in the case of Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F. 3d 489 (2nd Cir. 2000), where the court held that the defendant had a bad faith intent to profit from the plaintiff’s mark. Id. at 498. See also Electronic Boutique Holding Corp. v. Zuccarini, Civ. Action No.: 00-4055 (E.D. Pa. Oct. 3, 2000). Furthermore, please note that as your registration of the Infringing Registrations post-dates the enactment of this legislation, the ACPA provides that statutory damages of no less than $1,000 and up to $100,000 per domain name could be assessed against you, if you are found liable thereunder.

In addition, as a result of this legislation, and in conjunction with the ICANN Uniform Dispute Resolution Policy ("UDRP"), the World Intellectual Property Organization and the National Arbitration Forum have issued a number of decisions with regard to domain name misuse. In over 80% of these cases, the decisions have resulted in orders transferring domain names from registrants, whose intent was to trade off of well-known trademarks, to the rightful trademark owners. Under the above-referenced UDRP, individuals have been ordered to delete or transfer domain names such as worldwrestlingfederation.com, alcoholicanonymous.net, and bigdog.com to their rightful owners. In fact, Fox and its related companies have secured the return of numerous domain names, pursuant to similar decisions. See Twentieth Century Fox Film Corporation v. This Name Is For Sale -Make An Offer to: [email protected] Make An Offer For This Domain Contact: [email protected] ([email protected]), FA0407000296328 (Nat. Arb. Forum, August 27, 2004), Twentieth Century Fox Film Corporation v. Alienvspredator Music Tracker, FA0407000296332 (Nat. Arb. Forum, August 26, 2004), Twentieth Century Fox Film Corporation v. The Cupcake Patrol aka John Zuccarini, FA0403000245963 (Nat. Arb. Forum, May 24, 2004), Fox News Network, LLC v. Kenneth A. Young, D2003-0407 (WIPO, July 17, 2003), Fox News Network, LLC v. Pro-Life Domains Inc., D2003-0335 (WIPO, July 2, 2003, Fox News Network, LLC v. Reid, D2002-1085 (WIPO, February 18, 2003), Fox News Network, LLC v. Michele Dinoia, D2002-1082 (WIPO, February 9, 2003), Twentieth Century Fox Film Corporation v. Michele Dinoia, FA0212000135643 (Nat. Arb. Forum, February 3, 2003), Twentieth Century Fox Film Corporation v. Leonard Rogan, FA0112000102952, (Nat. Arb. Forum, February 15, 2002), Twentieth Century Fox Film Corporation v. Cupcake Confidential a/k/a John Zuccarini, FA0011000096118, (Nat. Arb. Forum, January 18, 2001), Twentieth Century Fox Film Corporation v. DVD Monthly, D2000-1355, (WIPO, January 16, 2001), Fox Group Legal/Twentieth Century Fox Film Corporation v. Yomtobian, FA0010000095839, (Nat. Arb. Forum, Dec. 18, 2000), Twentieth Century Fox Film Corporation v. CDP and Marc Yu, FA0005000094827, (Nat. Arb. Forum, July 7, 2000) and Twentieth Century Fox Film Corporation v. David Risser, FA0002000093761, (Nat. Arb. Forum, May 18, 2000) which are available at http://icann.org/udrp/proceedings-list.htm.

In addition to "passing off," your registration of the Infringing Registrations also constitutes "initial interest confusion," which is prohibited by federal law. Brookfield Communications v. West Coast Ent., 174 F.3d 1036 (9th Cir. 1999). In accordance with the Brookfield case, the Infringing Registrations draw "hits" by virtue of your use of the R U THE GIRL trademark as a domain name. Each such "hit" misleads persons looking for an officially sanctioned Fox site. Even more detrimental is the fact that when a consumer attempts to access the sites associated with the Infringing Registrations, the sites contain a placeholder from godaddy.com, thereby causing consumers to believe that Fox does not have an official site affiliated with the Fox Property.

Through your receipt of this letter, you have actual notice that your actions constitute "passing off," initial interest confusion, trademark infringement, unfair competition, a violation of the ICANN UDRP and a violation of the ACPA. We hereby suggest that you should agree to immediately transfer the Infringing Registrations to Fox. For your convenience, we have enclosed the required transfer documents ("Transfer Documents") for the transfer of the Infringing Registrations from you to Fox. Please complete the Transfer Documents, have the Transfer Documents notarized, and return them to Fox at the address listed above within 7 days, so that we may resolve this matter without delay. We would also request that you immediately refrain from registering any other domain names which infringe the rights of Fox, and that you inform us if you currently own any other domain names which infringe the rights of Fox.

This letter is not a complete statement of the rights of Fox in connection with this matter, or of Fox's potential claims against you, and nothing contained herein is intended, nor should be construed as an express or implied waiver of any rights, remedies, or defenses of Fox in connection with this matter, all of which are expressly reserved.

Yours truly,

Fox Intellectual Property Department

 

[csitenet]

Want a good tip. Hand it over to them for the reg fee. i am sure they will cover it.
Else you may have to goto court and its VERY likely you lose! if they own the tm of the name!

 

[kingeric]

From : Fox Intellectual Property <[email protected]>
Sent : April 15, 2005 5:56:29 PM
To : <[email protected]>
Subject : Domain Names Infringing on Fox Intellectual Property



April 12, 2005

VIA COURIER AND ELECTRONIC MAIL


Re: Domain Names Infringing on Fox Intellectual Property

Dear Mr. xxx:


As you are aware, xxx is an upcoming television series TLC. Fox Television Studios, Inc. ("Fox") is the exclusive owner of all intellectual property rights, including but not limited to, copyright and trademark rights associated with the R U the Girl ("Fox Property") television series.

It has recently come to our attention that you registered the Internet domain names<xxx.COM>and<xxx.COM> (the "Infringing Registrations"). Your registration and exploitation of the Infringing Registrations is of the utmost concern to Fox, and your activities constitute "passing off," as consumers may erroneously believe that the Infringing Registrations and any services and/or on-line activities conducted in association therewith, are licensed, sponsored or authorized by Fox. Therefore, Fox demands that you immediately transfer the Infringing Registrations to Fox.

Your actions may fall within the scope of the Anticybersquatting Consumer Protection Act ("ACPA"), which amends the Federal Trademark Dilution Act (to add Section 43(d) of the Lanham Act, 15 U.S.C. § 1125(d)). See Twentieth Century Fox Film Corporation v. WWWFOXKIDS.COM, No. S-00-1987 (D.Md., Baltimore Div., Order dated October 24, 2000), where the Court ordered the registrar to transfer the domain name to Fox under the In Rem provision of the ACPA. The legislation creates liability for those persons who, without regard to the goods and services of others, have a bad faith intent to profit from a mark and register a domain name that is identical or confusingly similar to that mark. Furthermore, the legislation provides factors to guide a court in its determination of a defendant’s bad faith. Those factors include, but are not limited to:

· the domain name registrant’s registration or acquisition of multiple domain names which the person knows are identical or similar to the trademarks of others that are distinctive at the time of registration of the domain names;

· the domain name registrant’s pattern and practice of conduct that indicates bad faith;

· the extent to which the trademark incorporated in the domain name is distinctive and famous;

· the domain name registrant’s intent to divert consumers from the trademark owner’s online locations, which could harm the goodwill represented by the trademark, for commercial gain, by creating a likelihood of confusion as to the source, sponsorship or endorsement of the site;

· the domain name registrant’s trademark rights in the domain name (if any);

· the domain name registrant’s offer to transfer, sell or otherwise assign the domain name to the trademark owner or any third party for financial gain without having used or having the intent to use the domain name for the bona fide offering of any goods or services;

· the domain name registrant’s prior use (prior to receiving actual notice of the rights of the trademark owner) of the domain name in connection with the bona fide offering of goods and services; and

· the domain name registrant’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name prior to receiving actual notice from the trademark owner.

These factors were considered in the case of Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F. 3d 489 (2nd Cir. 2000), where the court held that the defendant had a bad faith intent to profit from the plaintiff’s mark. Id. at 498. See also Electronic Boutique Holding Corp. v. Zuccarini, Civ. Action No.: 00-4055 (E.D. Pa. Oct. 3, 2000). Furthermore, please note that as your registration of the Infringing Registrations post-dates the enactment of this legislation, the ACPA provides that statutory damages of no less than $1,000 and up to $100,000 per domain name could be assessed against you, if you are found liable thereunder.

In addition, as a result of this legislation, and in conjunction with the ICANN Uniform Dispute Resolution Policy ("UDRP"), the World Intellectual Property Organization and the National Arbitration Forum have issued a number of decisions with regard to domain name misuse. In over 80% of these cases, the decisions have resulted in orders transferring domain names from registrants, whose intent was to trade off of well-known trademarks, to the rightful trademark owners. Under the above-referenced UDRP, individuals have been ordered to delete or transfer domain names such as worldwrestlingfederation.com, alcoholicanonymous.net, and bigdog.com to their rightful owners. In fact, Fox and its related companies have secured the return of numerous domain names, pursuant to similar decisions. See Twentieth Century Fox Film Corporation v. This Name Is For Sale -Make An Offer to: [email protected] Make An Offer For This Domain Contact: [email protected] ([email protected]), FA0407000296328 (Nat. Arb. Forum, August 27, 2004), Twentieth Century Fox Film Corporation v. Alienvspredator Music Tracker, FA0407000296332 (Nat. Arb. Forum, August 26, 2004), Twentieth Century Fox Film Corporation v. The Cupcake Patrol aka John Zuccarini, FA0403000245963 (Nat. Arb. Forum, May 24, 2004), Fox News Network, LLC v. Kenneth A. Young, D2003-0407 (WIPO, July 17, 2003), Fox News Network, LLC v. Pro-Life Domains Inc., D2003-0335 (WIPO, July 2, 2003, Fox News Network, LLC v. Reid, D2002-1085 (WIPO, February 18, 2003), Fox News Network, LLC v. Michele Dinoia, D2002-1082 (WIPO, February 9, 2003), Twentieth Century Fox Film Corporation v. Michele Dinoia, FA0212000135643 (Nat. Arb. Forum, February 3, 2003), Twentieth Century Fox Film Corporation v. Leonard Rogan, FA0112000102952, (Nat. Arb. Forum, February 15, 2002), Twentieth Century Fox Film Corporation v. Cupcake Confidential a/k/a John Zuccarini, FA0011000096118, (Nat. Arb. Forum, January 18, 2001), Twentieth Century Fox Film Corporation v. DVD Monthly, D2000-1355, (WIPO, January 16, 2001), Fox Group Legal/Twentieth Century Fox Film Corporation v. Yomtobian, FA0010000095839, (Nat. Arb. Forum, Dec. 18, 2000), Twentieth Century Fox Film Corporation v. CDP and Marc Yu, FA0005000094827, (Nat. Arb. Forum, July 7, 2000) and Twentieth Century Fox Film Corporation v. David Risser, FA0002000093761, (Nat. Arb. Forum, May 18, 2000) which are available at http://icann.org/udrp/proceedings-list.htm.

In addition to "passing off," your registration of the Infringing Registrations also constitutes "initial interest confusion," which is prohibited by federal law. Brookfield Communications v. West Coast Ent., 174 F.3d 1036 (9th Cir. 1999). In accordance with the Brookfield case, the Infringing Registrations draw "hits" by virtue of your use of the R U THE GIRL trademark as a domain name. Each such "hit" misleads persons looking for an officially sanctioned Fox site. Even more detrimental is the fact that when a consumer attempts to access the sites associated with the Infringing Registrations, the sites contain a placeholder from godaddy.com, thereby causing consumers to believe that Fox does not have an official site affiliated with the Fox Property.

Through your receipt of this letter, you have actual notice that your actions constitute "passing off," initial interest confusion, trademark infringement, unfair competition, a violation of the ICANN UDRP and a violation of the ACPA. We hereby suggest that you should agree to immediately transfer the Infringing Registrations to Fox. For your convenience, we have enclosed the required transfer documents ("Transfer Documents") for the transfer of the Infringing Registrations from you to Fox. Please complete the Transfer Documents, have the Transfer Documents notarized, and return them to Fox at the address listed above within 7 days, so that we may resolve this matter without delay. We would also request that you immediately refrain from registering any other domain names which infringe the rights of Fox, and that you inform us if you currently own any other domain names which infringe the rights of Fox.

This letter is not a complete statement of the rights of Fox in connection with this matter, or of Fox's potential claims against you, and nothing contained herein is intended, nor should be construed as an express or implied waiver of any rights, remedies, or defenses of Fox in connection with this matter, all of which are expressly reserved.

Yours truly,

Fox Intellectual Property Department

I got two letters in 2002 one from ConsumerReports and one from ABC. Both demanding me to hand over my domain names and pay them a trademark violation fee of 10,000. I made sure my sites did not have any content resembling their sites and threw the demand letters in the trash...I still have my domains and have not heard from them again. I'm not recommending you do the same because I'm the type of individual that's not scared of anything...I don't care if they sue me...you cant get want I don't have. Maybe you have something to lose...I don't!
Goodluck

 

[csitenet]

This letter looks aggressive giving examples of previous court actions. But i think kingeric is right. As long as you don't have any resembling contents / no contents at all there is little action they can take!

 

[GT Web]

if the domain violates the Fox TM, then you sure as heck can bet you will have a problem...if Fox decides to persue it, I would hand them over, unless the domains are sensational and you think you actually have a chance at WIPO

 

[OnSpec]

if the domain violates the Fox TM, then you sure as heck can bet you will have a problem...if Fox decides to persue it, I would hand them over, unless the domains are sensational and you think you actually have a chance at WIPO

I don't understand the logic here. Either they infringe or they don't. In the absense of the specifics of the domains, whether they are "sensational" or not seems irrelevant.

 

[Dave Zan]

You guys gotta admit, though, that the letter was very nicely prepared. :-D

How have you been using the names, B40?

 

[B40]

Thanks for the info guys. The domains are for an upcoming TV show. I have not been using them. They were simply parked at GoDaddy. They are nothing special, but have potential if the show does well to become good unofficial/fan sites.

Re: Domain Names Infringing on Fox Intellectual Property

<ruthegirlwithtbozandchilli.com and <girlwithtbozandchilli.com>

Dear Mr. B40:

As you are aware, R U the Girl with T-Boz & Chilli is an upcoming television series surrounding the search for a third member of the female R&B group, TLC. Fox Television Studios, Inc. ("Fox") is the exclusive owner of all intellectual property rights, including but not limited to, copyright and trademark rights associated with the R U the Girl ("Fox Property") television series.

 

[DaddyHalbucks]

Trademark rights flow from use.

If the shows are "upcoming" --well, the "rights" may not have started.

THIS IS NOT LEGAL ADVICE AND I AM NOT AN ATTORNEY.

 

[FineE]

Trademark rights flow from use.

If the shows are "upcoming" --well, the "rights" may not have started.

THIS IS NOT LEGAL ADVICE AND I AM NOT AN ATTORNEY.

This is an interesting point. If the services have not yet been rendered (ie the TV show aired) does Fox have a registable mark in the US here?

http://www.uspto.gov/web/offices/tac/doc/basic/appcontent.htm#basis

 

[Poker]

Just write them back and mention that fox news is a pretty pathetic cult

 

[GT Web]

The point is, its a lot easier to fight your case if the domains are much better than average...if they are only average names it isn't worth the time to fight back.

 

[Sandwalker]

The fact is, for them to pursue a trademark case is VERY expensive for them. The C&D letters are sent out as scare tactics and most aren't pursued unless you truly do show an intent to infringe on their trademark.

Easiest way to get out of it is to offer to help them with finding the owner of the domain for a fee. Don't offer to sell the domain directly, as that could feed into their claim of cybersquating etc..

At least, that's been my experience with a few corps. Remember, just because someone has a trademark, does not mean they have the legal right to something. Any fool can file a trademark, but they have to prove their right, which is very expensive.

** Just my opinion from experience, I'm not giving legal advice.

 

[Theo]

You think that the FOX network don't have the time or the funds to pursue their trademark?

First off, corporations of that caliber have legal counsels on-staff, which are paid wages to do exactly their job. Second, if they don't pursue it, they will risk losing the rights to the mark as it might become generic. So the rule of thumb is, avoid trademark domains.

 

[mark]

You think that the FOX network don't have the time or the funds to pursue their trademark?

First off, corporations of that caliber have legal counsels on-staff, which are paid wages to do exactly their job. Second, if they don't pursue it, they will risk losing the rights to the mark as it might become generic. So the rule of thumb is, avoid trademark domains.

-----------------------------

agree with radistar

 

[B40]

So how do I check if this domain is trade marked or not? I tried searching yesterday, but didn't find anything.

 

[mark]

So how do I check if this domain is trade marked or not? I tried searching yesterday, but didn't find anything.

----------------

try: http://www.uspto.gov

 

[B40]

----------------

try: http://www.uspto.gov

That's where I searched. I searched for "tboz" and "r u the girl" and didn't find anything.

 

[mark]

they just filed one (application) on 3-18-05 #78590903

 

[kingeric]

You think that the FOX network don't have the time or the funds to pursue their trademark?

First off, corporations of that caliber have legal counsels on-staff, which are paid wages to do exactly their job. Second, if they don't pursue it, they will risk losing the rights to the mark as it might become generic. So the rule of thumb is, avoid trademark domains.

The fact is that T-boz and chilli ARE generic names, especially if you have the right lawyer (RIP JC). I have two nieces with the name T-boz and chilli and if I had the website in question I would post pictures of my nieces to prove my point. The fact is that trademark law is so ambiguous that even your so-called generic names are not safe from trademark violation claims. Fox could make a trademark claim on all your so-called generic names because most of them refer to a theatrical release that Fox own the rights to...especially combat.org.
girlwithtbozandchillishowonFOX.com is available for registration but I would not touch that one because it's too HOT!!