The Complainant is Cox Communications, Inc. of Atlanta, Georgia, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Domain Hostmaster, Customer ID: 01528441524040, Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Domain Admin, Privacy Ltd. Disclosed Agent for YOLAPT of the Isle of Man, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2017. On February 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 3, 2017, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 8, 2017, 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 February 9, 2017.
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” 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 February 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2017.
The Center appointed Cherise Valles as the sole panelist in this matter on March 9, 2017. 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 advanced digital video, Internet, telephone, home security and automation services in the United States. It is one of the largest cable television providers in the United States, having provided cable services for decades and served over six million customers.
The Complainant has used the COX marks in connection with a wide variety of communications-related services for more than 35 years. The Complainant has provided comprehensive data transmission, communications, and access services to businesses under the mark COX BUSINESS SERVICES since 1998 and under the mark COX BUSINESS since 2007.
The Complainant has expended hundreds of millions of USD marketing and promoting the services provided under the COX marks, and specifically under the COX BUSINESS marks, throughout the United States.
The Complainant is the owner of multiple trademark registrations in the United States for the COX marks. These include the following:
- United States trademark registration No. 4807670 for COX BUSINESS, registered on September 8 2015, in classes 38 and 42;
- United States trademark registration No. 4971484 for COX BUSINESS, registered on June 7, 2016, in classes 9, 37, 38, 41 and 42;
- United States trademark registration No. 2007780 for COX COMMUNICATIONS, registered on October 15, 1996, in classes 38 and 41;
- United States trademark registration No. 2189184 for COX, registered on September 15, 1998, in class 41;
- United States trademark registration No. 2928124 for COX SPORTS TELEVISION, registered on February 22, 2005, in classes 38 and 41;
- United States trademark registration No. 3788022 for COX WIRELESS, registered on May 11, 2010, in class 38;
- United States trademark registration No. 4227419 for COX TV CONNECT, registered on October 16, 2012, in class 38; and
- United States trademark registration No. 4614400 for COX WIFI, registered on September 30, 2014, in class 38.
The Complainant has also registered the marks COX and COX BUSINESS as the domain names and .
The disputed domain name was registered on April 23, 2010, and resolves to a parked page displaying sponsored “pay-per-click” links. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain name is confusingly similar to the Complainant’s registered COX trademark, in light of the fact that it wholly incorporates the Complainant’s mark. In addition, the disputed domain name is identical to the Complainant’s registered COX BUSINESS trademark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a Response in this proceeding and is therefore in default. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant. A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is the sole and exclusive owner of the COX and COX BUSINESS trademarks. The Complainant is the owner of multiple registrations in the United States for these trademarks, as indicated in section 4 above.
The disputed domain name is confusingly similar to the Complainant’s marks because it uses the term “Cox”, the most salient portion of each of the Complainant’s registered marks, exactly and in its entirety. Numerous earlier UDRP decisions have held that when a domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish confusing similarity for purpose of the Policy.
In addition, the disputed domain name is identical to the Complainant’s COX BUSINESS mark.
In the light of the foregoing, the Panel finds that the disputed domain name is identical to the Complainant’s registered COX BUSINESS mark and confusingly similar to the Complainant’s registered COX mark, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Previous UDRP panels have established that in order to shift the burden of production to the Respondent, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent registered the disputed domain name in 2010, long after the Complainant first registered its COX marks as well as the and domain names, and long after the Complainant had begun using the COX marks online and had begun promoting its COX BUSINESS branded services. The Complainant has provided its services to millions of customers over decades, in connection with a wide variety of communications, transmission, and data and programming distribution services across the United States.
The Respondent must, therefore, have been aware of the Complainant’s legal rights in the name and trademark COX and/or COX BUSINESS at the time of the registration of the disputed domain name, and indeed the Respondent is shown to be aware of the Complainant’s business and rights in the COX marks in Section C below. The Respondent cannot claim to have been using the trademarks COX or COX BUSINESS without having been aware of the Complainant’s rights to it. This suggests that the Respondent’s interests cannot have been legitimate.
In the light of the foregoing, and absent circumstances to show that the provisions of paragraph 4(c) of the Policy apply, the Panel finds that the Complainant has established an unrebutted prima facie case, and concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
After registering the disputed domain name in 2010, the Respondent did not make use of it for a number of years. The Respondent has recently begun using the disputed domain name for a click-through advertising site and to promote potential sale of the domain name. By registering and holding the disputed domain name for a period of time and now promoting the disputed domain name for possible sale to require the Complainant to pay it to obtain the disputed domain name, the Respondent is seeking to receive an amount in excess of the cost of registration and thus to profit from the disputed domain name.
The disputed domain name resolves to a website that lists categories that describe services similar or related to COX brand services. The Respondent posts content on its site that is specifically calculated to confuse consumers by displaying both the COX BUSINESS mark and categories consistent with the services offered on the Complainant’s website, such as “Cox Business Email,” “Cox Business Internet”, “Cox Cable”, “Cox Business Solutions” and “WiFi Service”. The Respondent thereby misleads Internet users who reach the Respondent’s site, seeking to cause them to believe mistakenly that the Respondent’s site is associated with, and/or offered by, the Complainant.
The Respondent’s site is a pay-per-click site, offering links to a variety of sites, including ones that feature Internet, communications, television, data and distribution and transmission services in competition with the Complainant. The Respondent intends for diverted Internet users to click on one of the links on its site, thereby enabling the Respondent to collect “click-through” revenues from the operator of the linked site. By using the disputed domain name for the purpose of linking to sites from which the Respondent may obtain “click-through” revenues, 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 marks as to source, sponsorship, affiliation, or endorsement of the Respondent’s site or the links on its site. Previous UDRP panels have held that “click-through” sites show a respondent’s bad faith intent to profit. See, for example, Nintendo of America, Inc. v. P et al.,WIPO Case No. D2001-1020.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy. 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.
Cherise Valles
Sole Panelist
Date: March 15, 2017
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