The Complainant is Cox Communications, Inc. of Atlanta, United States of America (the “USA”), represented by Kilpatrick Stockton LLP, USA.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, Bahamas / Ryan G Foo, PPA Media Services of Santiago, Chile. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2015. On February 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 2, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the details specified in the Complaint. Accordingly, the Center sent an e-mail communication to the Complainant on March 3, 2015, inviting the Complainant to amend the Complaint. On the same day, the Complainant sent an amended Complaint to the Center.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2015. The Respondent did not submit a Response. Accordingly, the Center notified the Respondent’s default on March 30, 2015.
The Center appointed Assen Alexiev as the sole panelist in this matter on April 17, 2015. 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
The Complainant is a broadband communications and entertainment company providing digital video, Internet, telephone, home security and automation services. With over six million customers, it is one of the largest cable television providers in the USA. The Complainant has used the COX brand for more than thirty five years in connection with communications-related services, including distribution of television programming, cable television programming, wireless transmission of data, images, video, audio, television broadcasting, and provision of Internet access, including wired and wireless access. Since 1998, the Complainant has offered and promoted its products and services online through its website at the domain name , which website has tens of thousands of visitors per month. In 2007, the Complainant expanded its services to include the provision of access to programming and movies on all devices at any time or “on demand”, offering customers thousands of “on demand” choices under the COX brand.
The Complainant is the owner of a number of trademarks containing COX as their most distinctive element, including the word trademark COX with registration No. 2,189,184, registered in the United States of America on September 15, 1998 for services in International Class 41 (the “COX trademark”).
The disputed domain name was registered on July 20, 2007. 5. Parties’ Contentions A. Complainant
The Complainant submits that it has expended tens of millions of US Dollars for marketing and promoting its services provided under the COX trademark in the USA. As a result of the longstanding use, extensive promotion and sales of a wide variety of services under the COX trademark, the consuming public recognizes it as a source identifier and associates it exclusively with the Complainant.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s COX trademark, because it incorporates it in its entirety and couples it with the phrase “on demand,” which describes some of the services for which the COX trademark has been used by the Complainant since 2007.
The Complainant points out that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s COX trademark predates any use by the Respondent of the disputed domain name. The Respondent registered the disputed domain name after the Complainant started the promotion of its “Cox on Demand” services, and must have known at that time of the Complainant and of its “Cox on Demand”services. The Respondent has used the dispute domain name for commercial gain and not for a bona fide offering of goods or services.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent registered it shortly after the Complainant announced its “Cox on Demand” services. The website at the disputed domain name displays the COX trademark and lists services similar or related to the services of the Complainant, such as “Online TV,” “Movies Online,” “Live Football,” “TV Channels,” “Streaming TV,” “Free TV Online,” and “Broadband TV.” These services are listed through pay-per-click links to the websites of the Complainant’s competitors. The Respondent thus attempts to attract traffic to its website by confusing the Complainant’s actual or potential customers and diverting them to its website, where by clicking on pay-per-click links they may generate “click-through” revenues for the Respondent. Therefore, by registering and using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to its website and other online locations for commercial gain, by creating a likelihood of confusion with the Complainant’s COX trademark as to the source, affiliation, or endorsement of the Respondent’s website or of the links on this website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”. In the event of a default, under Rules, paragraph 14(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques,WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.”
At the same time, it is a consensus view among UDRP panelists that a respondent’s default does not automatically result in a decision in favor of the complainant. Even in cases where the respondent is in default, to justify the transfer of the disputed domain name the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar
To satisfy the first UDRP element, the disputed domain name must be identical or confusingly similar to a trademark, in which the Complainant has rights. The Complainant has demonstrated its rights in the COX trademark by providing evidence of its registration in the USA.
As discussed in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. It is also widely accepted that the top-level suffix in the domain name would usually be disregarded under the confusing similarity test, as it is a technical requirement of registration.
Therefore, the relevant part of the disputed domain name for the purposes of the test for confusing similarity is the “coxondemand” section. This section consists of the elements “cox”, “on” and “demand”. The “cox” element is identical to the COX trademark. The “on” and “demand” elements represent the phrase “on demand”, commonly used to describe the service offered by TV broadcasters to make some of their programs available via the Internet, usually after they have been transmitted, where consumers can choose when to watch these programs. In the Panel’s view, the “on” and “demand” elements of the disputed domain name do nothing to detract from the confusing similarity between it and the COX trademark. These elements merely indicate how broadcasting services are provided, and they make it likely that Internet users would associate the disputed domain name with the Complainant and its COX trademark and would have the impression that the disputed domain name represents an official online location of the Complainant, where “on demand” TV broadcasting services are offered to consumers.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the COX trademark in which the Complainant has rights, and that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests
The Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview 2.0.
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the COX trademark was registered long before the registration of the disputed domain name, and that the Respondent registered the disputed domain name after the Complainant started the promotion of its COX “on demand” services. The Complainant also asserts that the Respondent is not making a bona fide commercial use of the disputed domain name, but rather uses it for a website that contains pay-per-click links to other websites that offer services in competition with the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent, although given a fair opportunity to do so, chose not to present to the Panel a Response in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any legitimate reasons for the registration and use of the disputed domain names, it could have brought it to the attention of the Panel. In particular, the Respondent has failed to deny the contentions of the Complainant and to contend that any of the circumstances described in Policy, paragraph 4(c), is present in its favor.
Apart from the factual contentions of the Complainant, the only other sources of information about the Respondent is the WhoIs information, provided by the Registrar, and the content of the website at the disputed domain names. The WhoIs information contains no evidence that the Respondent is commonly known by the disputed domain name. The disputed domain name is confusingly similar to the COX trademark, which was registered long before the registration of the disputed domain name. There is no evidence that the Complainant has licensed or authorised the Respondent’s use of the COX trademark in the disputed domain name. As contended by the Complainant and undisputed by the Respondent, the disputed domain name was registered shortly after the Complainant started advertising its “on demand” services, and the Respondent’s website contains pay-per-click links to competitors of the Complainant.
In the Panel’s view, in these circumstances it is unlikely that the registration of the disputed domain name was coincidental. The Respondent must have been aware of the Complainant and of the COX trademark when it registered the disputed domain name, and its registration and use, made without the consent of the Complainant, was likely an attempt to take advantage of the goodwill of the Complainant and of the COX trademark by attracting Internet traffic to the Respondent’s website and diverting it to third party websites through pay-per-click links. The Panel is of the opinion that such conduct cannot give rise to rights and legitimate interests in the disputed domain name, and finds that the Complainant’s prima facie case has not been rebutted. Therefore, the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
As discussed above in relation to the issue of rights and legitimate interests, the Respondent is likely to have known of the Complainant and of its services prior to the registration of the disputed domain name, which is confusingly similar to the COX trademark. The disputed domain name was registered long after the COX trademark was registered and, as contended by the Complainant and not denied by the Respondent, the disputed domain name was registered shortly after the Complainant started promoting its “on demand” services. In the Panel’s view, these circumstances support a finding that by choosing and registering, without authorization from the Complainant, a domain name that is confusingly similar to the COX trademark and that describes a new service of the Complainant, the Respondent has registered the disputed domain name in bad faith.
The Respondent has not established that it has any rights or legitimate interests in the disputed domain name, and has not denied that the website linked to it contains pay-per-click links to competitors of the Complainant. In the absence of any evidence or allegation to the contrary, these circumstances satisfy the Panel that by registering and using the disputed domain name, confusingly similar to the COX trademark, the Respondent, has intentionally attempted to attract for commercial gain Internet users to the website at the disputed domain name and to divert them to competitors of the Complainant by creating a likelihood of confusion with the COX trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and of the pay-per-click links there. This supports a finding of bad faith registration and use of the disputed domain name under Policy, paragraph 4(b)(iv).
Therefore, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Date: May 5, 2015
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