billoriley.com

WIPO Arbitration and Mediation Center

The Complainant in this proceeding is Fox News Network, LLC, of New York, New York, United States of America.

The Respondent in this proceeding is Warren Reid, of Sydney, Australia.

This dispute concerns the domain name <billoriley.com> (the "Domain Name").

The Domain Name was registered on July 17, 2002.

The Registrar with whom the Domain Name is registered is Intercosmos Media Group d/b/a directNIC.com.

A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy (the "Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") both of which are implemented by ICANN on October 24, 1999, was received by WIPO Arbitration and Mediation Center (the "Center"), in electronic format on November 27, 2002, and in hardcopy on December 10, 2002. Payment in the required amount to the Center has been made by the Complainant.

On November 28, 2002, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the Complaint from the Complainant, that the Domain Name was currently registered with it and that the Policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name.

In accordance with the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 17, 2002.

On January 6, 2003, a Response was received from the Respondent.

On January 24, 2003, a notification of appointment of administrative panel and projected decision date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainant’s request, the appointment notification informed the parties that the administrative panel would be comprised of a single panelist, Clive Elliott.

On February 18, 2003, a decision was submitted to the Center.

The Complainant is the owner of copyright, trade mark and other intellectual property rights (trade marks filed in the USA in July 2002, but relying on first use going back to 1996) associated with "The O'Reilly Factor" which is a news program hosted by Mr. Bill O'Reilly on the Fox News Channel. The Complainant d/b/a Fox News Channel operates a 24 hour cable news network on which Mr. O'Reilly’s news program airs.

The Respondent is an Australian website developer who has registered a number of domain names incorporating common first and last names, with the intention of selling domain names and website package deals to people who want their own personalised domain name and website.

The Complainant alleges the Respondent is using this Domain Name to mislead users by diverting them to a search engine operated by Roar.com Pty Ltd. and that it is using the Domain Name for the purposes of commercial gain. This search engine is not affiliated with the Complainant.

The Complainant asserts that its trade mark is being tarnished by the Respondent and that the Domain Name was registered and is being used in bad faith by the Respondent. The Complainant indicates that in its view the Respondent has allowed Roar.com Pty Ltd. (a website which is the authorised user of the Domain Name) to use the Domain Name. It is submitted that by so using this Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to Roar.com and that by their own admission on Roar's web site, the Respondent and Roar.com Pty Ltd, are using the Domain Name to generate revenue by charging a fee for what is identified as advertisement and affiliate fees.

The Respondent submits that the Domain Name is not identical or confusingly similar to the trade mark or service mark "the O'Reilly Factor" as there are no identical words that are common to both the Domain Name or the Complainant's mark "The O'Reilly factor". However, the Respondent does admit that the Domain Name is similar to "Bill O'Reilly", the name of the person who hosts the television show "The O'Reilly Factor". However, he asserts the Complainant does not have, nor do they claim to have, any relevant trade mark or service mark rights in the name "Bill O'Reilly".

The Respondent claims that at the time of registering the Domain Name he had no knowledge that "The O’Reilly Factor" was a television program. He also claims that the program hosted by Bill O'Reilly is not commercially broadcasted in Australia.

The Respondent denies the allegations that he is using the Domain Name to mislead users by diverting them to a search engine operated by Roar.com Pty Ltd.

The Respondent argues that until he sells the Domain Name and develops a personal website for a third party named Bill O’Rilley, he is parking the Domain Name on the name servers which host Roar.com (an unrelated internet directory portal). He asserts this practice is a common and legitimate temporary use of a domain name that is inactive or has a website under construction.

Para. 4(a) of the Policy requires that the Complainant must prove each of the following:

- The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
- The Respondent has no right or legitimate interest in respect of the Domain Name; and
- The Domain Name has been registered and is being used in bad faith.

Para. 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by Para. 4(a)(iii) referred to above.

Para. 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in Para. 4(a)(ii) referred to above.

The Complainant relies on trade mark rights which may have been recently lodged but rely on first use in commerce going back to 1996, these rights being associated with "The O'Reilly Factor", a news program hosted by Mr. Bill O'Reilly on the Fox News Channel.

The Complainant asserts that the Domain Name is synonymous with its news channel and with its well-known host Mr. Bill O'Reilly. As this panelist has noted before in a similar case involving the same Complainant and the mark "The O’Reilly Factor", the Complainant’s evidence is not particularly enlightening on why this is so. However, there is just enough in the present Complaint to get the Complainant over this first hurdle.

The Respondent’s contention that the Domain Name is not identical to the Complainant’s mark, "The O’Reilly Factor", and that his domain name <billoriley.com> is allowable because the Complainant has no rights as such in the Bill O'Reilly name is not accepted. It is established that well-known entertainers and personalities are able to prevent the unauthorised registration of domain names in appropriate cases. Refer: Nicole Kidman v. John Zuccarini, WIPO Case No. D2000-1415 (January 23, 2001). The same broad principle applies here and it seems appropriate to apply it to the present facts.

Accordingly, it is found that the Domain Name is at least confusingly similar to the name/mark "Bill O'Reilly" and arguably also in relation to the name/mark "The O’Reilly Factor" and that the Complainant makes out its case on this ground.

It appears that the Respondent and Roar.com Pty Ltd., are using the Domain Name to generate revenue by charging a fee for what is identified as advertisement and affiliate fees. While the Respondent denies the allegations that he is using the Domain Name to mislead users by diverting them to a search engine operated by Roar.com Pty Ltd.

This seems to be the real reason for the use of the Domain Name. It does not appear to be use in connection with a bona fide offering of goods or services and therefore legitimate.

Accordingly, it is found that the Respondent has no right or legitimate interest in respect of the Domain Name.

The Panel finds that the Respondent’s commercial use of the Domain Name to increase Internet traffic directed at a search engine operated by Roar.com Pty Ltd. is evidence of bad faith under Policy, para. 4(b)(iv) and the use of the Domain Name is likely to result in consumer confusion as to the Complainant’s supposed affiliation with the search engine and its operator/s.

The Respondent claims that at the time of registering the Domain Name he had no knowledge that "The O’Reilly Factor" was a television program. He also claims that the program hosted by Bill O'Reilly is not commercially broadcasted in Australia.

However, the Respondent is a website developer who has registered a number of domain names with the intention of selling them to people who want their own personalised domain name and website. Part of this activity must include finding, parking or using and/or then selling desirable domain names. No satisfactory explanation is proffered as to why this particular name was chosen.

The Panel accordingly concludes that the Respondent must have been aware of the Complainant’s interests in the Bill O’Reilly name/mark and to the "The O'Reilly Factor" name/mark, and registered and used the Domain Name in bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum April 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Again, the Complainant has made out this ground.

Therefore, and in consideration to the Complaint’s compliance with the formal requirements for this domain dispute proceeding, to the factual evidence and legal contentions that were submitted, to the confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i), (ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by Paragraph 15(a) of the Rules, it is found:

(1) that the Domain Name is confusingly similar to the Bill O’Reilly name and mark;

(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(3) that the Domain Name has been registered and is being used in bad faith by the Respondent.

Therefore, the Panel requires, pursuant to what is provided for under Paragraphs 3(c) and 4(i) of the Policy, that the Domain Name be transferred to the Complainant.

Clive L. Elliott
Sole Panelist

Dated: February 18, 2003