The Complainant is Comcast Corporation of Philadelphia, Pennsylvania, United States of America (“USA”), represented by Wilkinson Barker Knauer, LLP, USA.
The Respondent is Domain Admin, WhoisPrivacy Corp. of Nassau, New Providence, Bahamas. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2016. On July 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 26, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details of the Respondent.
The Center verified that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2016.
The Center appointed Dawn Osborne as the sole panelist in this matter on September 5, 2016. 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 provides cable television, video on demand and streaming, Internet access, telephone, home and business security and related goods and services under the trade mark XFINITY registered in the USA. It has been using the XFINITY mark in commerce for its services since at least as early as February 3, 2010.
The Domain Name registered in 2014 has been pointed to a web site of a competitor of the Complainant and to search engine and pay-per-click sites. 5. Parties’ Contentions A. Complainant
The Complainant’s submissions can be summarised as follows:
The Complainant is one of the world’s leading media entertainment and communications companies. It provides cable television, video on demand and streaming, Internet access, telephone, home and business security and related goods and services under the trade mark XFINITY registered in the USA. It has been using the XFINITY mark in commerce for its services since at least as early as February 3, 2010. It has spent over USD 3 billion to advertise and promote its business under the XFINITY marks. As a result, the mark is famous, indicative of high quality services provided by the Complainant and the Complainant has valuable goodwill in this mark.
In 2014, more than 4 years after the Complainant announced the launch of its XFINITY mark, the Respondent registered the Domain Name without the consent or knowledge of the Complainant.
The first time the Complaint visited the site attached to the Domain Name it resolved to the web site of a competitor to the Complainant. On subsequent visits however the Domain Name resolved to a pay-per-click web page, featuring links that appeared to be operated or sponsored by the Complainant. On that page the statement “THIS DOMAIN MAY BE FOR SALE” appeared. As of June 9, 2016 the Domain Name resolved to a web site that provided search features which when used directed visitors to a pay-per-click page with links to third party web sites including competitors of the Complainant.
The Complainant first became aware of the Domain Name on November 20, 2015 when it sent a demand letter.
Except for the insertion of a hyphen after the letter “x” the Domain Name is identical to the Complainant’s XFINITY trade mark. It is well recognised that adding a hyphen to a registered trade mark is insufficient to avoid a finding of confusing similarity under the Policy. As such the Domain Name is confusingly similar to the Complainant’s XFINITY mark.
Connecting a domain name to the site of a competitor of an owner of a mark reflected in the domain name or attaching such a domain name to a pay-per-click sites or advertising is not a bona fide offering of services.
The fact that the Domain Name has been offered for sale is not bona fide offering of goods or services or fair use either.
The Respondent has never been commonly known by the Domain Name and has no trade mark rights in it.
The use is commercial and so cannot be a legitimate noncommercial or fair use.
Where a respondent registers a domain name to attract users looking for a complainant’s web site for commercial gain it is established that the Domain Name was registered and is being used in bad faith.
The fact that it was offered for sale shows that the Domain Name was registered for the primary purpose of sale, rental or transfer.
In at least six UDRP cases the Respondent has even found to have engaged in bad faith registration and use of domain names based on their correspondence to the trade marks of others. Registering multiple domain names that infringe or are confusingly similar to the well-known marks of others constitutes a pattern of conduct indicative of bad faith under paragraph 4(b)(ii) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical and/or Confusingly Similar
The Complainant is a well-known provider of entertainment and communication services and is the owner of the XFINITY trade mark in the USA with first use in commerce and registration recorded as 2010.
Except for the generic Top-Level Domain “.net” which is typically not considered under the first element of the Policy, the Domain Name consists of a name identical to the Complainant’s registered mark XFINITY save a hyphen has been inserted after the “x”. The addition of this hyphen does not serve to distinguish the Domain Name from the Complainant’s XFINITY mark and the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights and that the Complainant has satisfied the first limb of the Policy. B. Rights or Legitimate Interests
It is clear from the evidence that the Respondent has used the sites which have been attached to the Domain Name to promote goods in competition with those of the Complainant. It is clear from the content of the sites which have been or are attached to the Domain Name that relate to the same services provided by the Complainant that the Respondent was aware of the significance of the name “XFINITY” at the time of registration. The usage is not fair as the site did and does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use confusing. As such, it cannot amount to the bona fide offering of goods and services. The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant’s XFINITY mark. It does not appear to be commonly known by the mark, have any rights in it or be authorised to use it. The use was and is commercial so cannot be noncommercial fair use. As such, the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy. C. Registration and Use in Bad Faith
The Respondent’s use of the site was and is commercial and it was and is using it to make profit from products which compete with the Complainant in a confusing manner. The content of the web sites which have been attached to the Domain Name makes it clear that the Respondent was aware of the Complainant’s rights at the time of registration. It seems clear that the use of the Domain Name in relation to entertainment and communication services would cause users to associate such sites with the Complainant and its business and services. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site by creating likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the web sites attached to the Domain Name.
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy and there is no need to consider further alleged grounds of 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 Domain Name be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Date: September 15, 2016
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