March 2008
Domain Names - Fox News and WDS
As we recently reported regarding the Mr Spicy trade mark case, this is an area of intellectual property that continues to evolve. Rupert Murdoch’s Newscorp Fox News Network recently failed to win control of a domain name almost identical to one of its television station names as it had not registered this early enough.
On 8 February 2007 Fox News Corporation announced its intention to launch a business news channel. That day a company named Worldwide Directory Services (WDS) registered the domain name www.foxbusinessnetwork.com. Fox News however failed to register any trade marks for ‘Fox Business Network’ until 16 July 2007, some five months later.
The World Intellectual Property Organisation (WIPO) is able to order the transfer of a domain name if:
- The name is identical or confusingly similar to a trade or service mark held by the person wanting to gain control of it;
- The person holding the domain name must have no rights in it;
- The domain name must be registered and used in bad faith.
In order to transfer the domain name all three conditions must be met. In this case, Fox failed to meet the second, in that WDS had already registered their mark.
Although Fox had announced the Business Channel on 8 February, the day on which WDS had registered their address, Fox had failed to register any trade marks until 22 February 2007, and these were for Fox Business Channel. It was not until 16 July 2007 that Fox registered three marks in relation to Fox Business Network.
Fox argued that WDS’ name would create a likelihood of confusion which WDS would benefit from, and further that WDS had offered to sell them the domain for $50,000. WDS argued that they had been using ‘Fox Business Network’ on web pages since 2002, and that ‘Fox’ referred to their President’s nickname, ‘The British Fox’.
WDS said they did not know until August 2007 of Fox’s intention to create a business channel, and had approached Fox about the domain name in order ‘to discuss strategies to avoid confusion or infringement’; WDS revealing that the cost of their Fox Business Network had been $50,000. WDS said they did not intend to use Fox’s mark to attract internet users for commercial gain.
The WIPO Arbitration Panel agreed and said they could not rule that WDS had acted improperly in their registration of the address. They found that WDS had registered the Domain Name not in furtherance of a legitimate business activity but because the Domain Name might be confused with Fox’s proposed business channel. The Panel stated that whilst WDS’s quick registration in February 2007 may have been suspicious and not adequately explained by them, their action could well be attributed to their wish to protect the name ‘Fox Business Network’, which in any event WDS had been using before Fox announced their intention to use a similar name.
Finally, the Panel did say that they could not call witnesses to force evidence, which might have clarified whether WDS had in fact asked for $50,000 for the domain name, and that a Court would have been a more appropriate place to hear the dispute. They found that the evidence before them was ‘sufficiently plausible’ to establish that WDS did actually use the name ‘Fox Business Network’ in business and that the domain should stay with WDS.
Briffa Comment
Briffa recommends registering for any trade marks and domain names as early as possible so as to avoid a situation such as above occurring. Even if you do not intend to use the name for several months, there is a lot of brand strength in obtaining trade marks and domain names which you intend to use in the future. This is preferable to being left in a situation where you find that another person owns the rights to these marks and domain names and you are forced to rebrand entirely.