WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Comcast Sportsnet Philadelphia, L.P v. Privacy Protection / Laksh Internet Solutions Private Limited Case No. D2008-1316 1. The Parties
The Complainant is Comcast Sportsnet Philadelphia L.P., of Philadelphia, Pennsylvania, United States of America, represented by Cozen O'Connor, United States of America.
The Respondent is Privacy Protection / Laksh Internet Solutions Private Limited, of Mumbai, Maharashtra, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Lead Networks Domains Pvt. Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2008. On August 29, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. On September 1, 2008, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 3, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 5, 2008. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 30, 2008.
The Center appointed David Perkins as the sole panelist in this matter on October 6, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background 4.A The Complainant
4.A.1 The Complainant is a subsidiary of Comcast Corporation (“Comcast”). Comcast is a United States of America (“US”) Corporation which is the nation's largest provider of entertainment, information and communications products and services. According to its website, Comcast has 24.6 million cable customers, 14.4 million high-speed Internet customers and 5.6 million voice customers.
4.A.2 Comcast is the proprietor of US trademark registration 1,421,433 for COMCAST in Class 37. That registration was granted on December 16, 1986 based on first use in commerce in April 1969. It is the first of a number of other US trademark registrations for COMCAST and COMCAST with varying suffixes, for example COMCAST CONNECTIONS and COMCAST DIGITAL VOICE.
4.A.3 The Complainant owns a group of television sports networks throughout the US and provides television sports networks throughout the US under the COMCAST SPORTSNET trademark, beginning in July 1997. The COMCAST SPORTSNET trademark
4.A.4 The Complainant is the proprietor of the following US trademark registrations.
US Trademark
Reg. No.
Mark
Classes of goods and services
Date of Application
Date of Registration
2,984,662
COMCAST SPORTSNET
25,38 and 41
February 20, 2004
August 16, 2005
2,984,663
COMCAST SPORTSNET (stylized)
(25, 38 and 41
February 20, 2004
August 16, 2005
Both marks were first used in commerce in July 1997. “Sportsnet” is disclaimed except where used in combination with “Comcast”. The COMCAST SPORTSNET website
4.A.5 The Complainant is the registrant of the domain name which was created on December 19, 1997 and which has been used in relation to its flagship website since 2000. A print out from that website lists a number of Sportsnets, for example, Bay Area: Chicago: New England, etc., and provides Daily News Live and Post Games Live information and comment. 4.B. The Respondent
4.B.1 In the absence of a Response, nothing is known of the Respondents other than what appears from the Complaint.
4.B.2 The disputed domain name was created on May 1, 2002. That domain name resolves to the website which offers links to third party commercial websites grouped under headings such as “Comcast Sports”: “Cable TV”: “Cable television” and “Broadband”. These include similar products and services to those offered by the Complainant under its COMCAST SPORTSNET trademark. The website also offers links to third party commercial websites grouped under the headings “Finance”: “Travel” and “Home”, which provide quite different goods and services to those offered by the Complainant under its COMCAST SPORTSNET trademark. 5. Parties' Contentions 5.A Complainant Identical or Confusingly Similar
5.A.1 But for omission of the word “net” from the Complainant's COMCAST SPORTSNET trademark and domain name, the disputed domain name is identical. It contains both the distinctive prefix COMCAST and the descriptive suffix SPORTS.
5.A.2 Both the Complainant's COMCAST SPORTSNET trademark and its domain name were being used – respectively, July 1997 and 2000 – before the disputed domain name was created in May 2002.
5.A.3 The Complainant asserts that, in the circumstances, the disputed domain is confusingly similar to the COMCAST SPORTSNET trademark. Rights or Legitimate Interests
5.A.4 The Complainant's case is that there are none of the circumstances present whereunder the Respondents could demonstrate rights to or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy.
5.A.5 Manifestly, it cannot bring itself under paragraph 4(c)(ii).
5.A.6 As to paragraphs 4(c)(i) and (iii) the Complainant says that the use being made of the disputed domain name – which is described in paragraph 4.B.2 above – is neither bona fide nor a legitimate noncommercial or fair use. This is because the disputed domain name is being used in connection with a commercial link service, known as a “link farm”. That use is, the Complainant says, designed to lure Internet users and divert them to other commercial websites by using the disputed domain name which is confusingly similar to the COMCAST SPORTSNET trademark. That practice on similar facts has been found in a number of decisions under the Policy not to confer a right to or legitimate interest in the disputed domain name. In that respect, the Complainant cites the decisions in Deloitte Touche Tohmatsu v. Henry Chan,WIPO Case No. D2003-0584: Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi,WIPO Case No. D2004.0984: Bridgestone Corporation v. Horoshiy, Inc.,WIPO Case No. D2004-0795 and MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550. These cases involved the respective trademarks and disputed domain names: Complainant's Trademarks Disputed Domain Name Deloitte & Touch Minka
Bridgestone The Danbury Mint Registered and Used in Bad Faith
5.A.7 The disputed domain name was created in May 2002, some 5 years after the Complainant began using its COMCAST SPORTSNET trademark and over 15 years after the COMCAST US trademark was registered by its parent company.
5.A.8 The Complainant points to the continued use of the disputed domain name notwithstanding a cease and desist letter dated August 7, 2008 sent by the Complainant's counsel to the address given for the registrant of the disputed domain name appearing in the WHOIS database.
5.A.9 The Complainant points to the use being made of the disputed domain name - described in paragraph 4.B.2 above - which it says falls within the circumstances set out in paragraph 4(b)(iv) of the Policy. Hence, the Complainant says, the disputed domain name was registered and is being used in bad faith. 5.B The Respondent
As stated, no Response has been filed. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusive. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 Comcast is a very well-known cable TV operator in the US and has now traded under the COMCAST name and mark for some 45 years. The Complainant, a Comcast subsidiary, has operated under the COMCAST SPORTSNET mark since July 1997. That mark was applied for in February 2004 and registered in August 2005. The Complainant is the registered proprietor of that mark. The COMCAST prefix is the dominant feature of that trademark.
6.6. The disputed domain name incorporates the COMCAST SPORTSNET mark in its entirety but for the suffix “net”. In the circumstances, the Panel has no hesitation in finding that the disputed domain name is confusingly similar to the Complainant's trademark and that, consequently, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.7 The disputed domain name is used in the manner described in paragraph 4.B.2 above. Such use does not constitute any of the circumstance set out in paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in that domain name.
6.8 In particular, use of the disputed domain name as discussed above, which is confusingly similar to the Complainant's COMCAST SPORTSNET trademark, does not qualify as a bona fide use of that domain name. The COMCAST SPORTSNET trademark was in use at least 4 years before the disputed domain name was created and the COMCAST mark itself had been used very many years before. Since the use to which the confusingly similar disputed domain name is being put is likely to misleadingly divert consumers into believing it is in some way connected to and a part of the Complainant's business, such use cannot be bona fide.
6.9 The cases cited by the Complainant (see, paragraph 5.A.6 above) serve to confirm that the use being made of the disputed domain name in this case cannot provide the Respondent with rights to or legitimate interests in the disputed domain name.
6.10 In the light of the foregoing, the Complaint satisfies the second requirement of the Policy in paragraph 4(a)(ii). Registered and Used in bad Faith
6.11 Although the domain name was created 3 years (May 2002) before the Complainant's COMCAST SPORTSNET trademark was registered (August 2005), the COMCAST SPORTSNET trademark had been used since July 1997 and the well-known COMCAST trademark of the Complainant's parent company had been used for almost 40 years. In the circumstances, it is not credible that the disputed domain name was registered in good faith. This is confirmed by the use to which the disputed domain name has been put.
6.12 By reason of the confusing similarity between the disputed domain name and the Complainant's trademark, that use – described in paragraph 4.B.2 above – can only be regarded as an intentional attempt to attract, for commercial gain, Internet users to the “www.” website by creating a likelihood of confusion with the COMCAST SPORTSNET trademark as to the affiliation of that website with the Complainant's trademark and its business. The Respondent's “www.” website offers links to third party commercial websites offering services which compete with those of the Complainant and also to third party commercial websites offering services in quite different areas, namely “Finance”, “Travel” and “Home”. This is precisely evidence of circumstances falling within paragraph 4(b)(iv) of the Policy.
6.13 In the circumstances, the Panel has no hesitation in finding that the Complaint satisfies the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: October 15, 2008
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