The Complainant is Comcast Corporation, United States of America (“United States” or “US”), represented by Wilkinson Barker Knauer, LLP, United States.
The Respondent is Domain Admin, Whois protection, this company does not own this domain name s.r.o., Czech Republic / Hulmiho Ukolen, Poste restante, Finland. 2. The Domain Name and Registrar
The disputed domain name is registered with Gransy, s.r.o. d/b/a (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2019. On June 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2019, 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 June 12, 2019 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 June 17, 2019.
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 June 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2019.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on July 23, 2019. 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 evidence adduced by the Complainant, Comcast Corporation, is that it 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.
It does so using the trade mark XFINITY. It has been using the mark XFINITY to promote and sell these services since at least February 3, 2010. It owns seven active US Federal registrations for the mark (e.g., Reg. No. 4522145, registered on April 29, 2014). Six of these were filed before the date of registration of the disputed domain name on August 30, 2015. It also has an additional four registrations and two pending applications for marks consisting of or incorporating XFINITY.
A chart listing the registered marks is attached as Annex 4 to the Complaint and copies of the certificates of registration are exhibited at Annex 5.
The Complainant has invested a substantial amount of time and resources to advertise and promote the XFINITY marks. Conservatively it has spent over 3 billion US dollars advertising and promoting its business under the XFINITY marks.
The Complainant contends it has used the unregistered mark XFINITY ON CAMPUS for streaming live television and on demand shows and movies to college students living in campus housing since August 2014. A screen capture of the home page of the XFINITY ON CAMPUS website is annexed at Annex 7 of the Complaint.
The disputed domain name currently resolves to a portal website, which offers numerous links to third party sites, some of which are competitors of the Complainant. Screen captures showing the homepage of the website and various destination pages from links on the home page, from January 30, 2019 are attached as Annex 8 of the Complaint.
The Complainant’s representative has sent two emails to the Registrar asking for the disputed domain name to be suspended. Copies of the emails are exhibited at Annex 9 of the Complaint. The Registrar declined to take any action so that the Complainant has commenced this Complaint seeking a transfer of the disputed domain name.
In the absence of a Response and any evidence to the contrary the Panel finds the above factual evidence adduced by the Complainant to be true and proceeds to determine the Complaint on the basis of that evidence. 5. Parties’ Contentions A. Complainant
The Complainant submits:
i. the disputed domain name is confusingly similar to the marks XFINITY in which it has rights;
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name;
a. it has not used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services;
b. it has not been commonly known by the domain name;
c. it is not making a legitimate noncommercial or fair use of the domain name;
iii. the disputed domain name has been registered and used in bad faith;
a. in order to prevent the Complainant from reflecting the mark in a corresponding domain name;
b. in an intentional attempt to attract for commercial gain internet users to the Respondent’s website by creating a likelihood of confusion. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
On the basis of the evidence referred to in section 4 above the Panel finds that the Complainant has both registered and unregistered rights in the mark XFINITY. It also finds XFINITY to be a famous mark. On the evidence the Panel is satisfied that the Complainant also owns unregistered trade mark rights in XFINITY ON CAMPUS.
The Complainant submits that the disputed domain name is confusingly similar to the XFINITY mark with the only difference being the addition of the word CAMPUS which is descriptive of a location where the Complainant’s goods and services are provided. The Panel agrees with this submission.
The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s unregistered or common law trade mark XFINITY ON CAMPUS. The only difference is the deletion of the generic preposition “on” in the case of the disputed domain name. In doing so the Panel is supported by two earlier decisions cited by the Complainant including in particular LA FRANCAISE DES JEUX v. Intercoastal Business Ltd.,WIPO Case No. D2008-1784, which involved the deletion of the French preposition “des” and which was found to be insufficient to exclude confusion between the domain name and complainant’s mark.
Accordingly, the Panel finds for the Complainant in respect of this element of the Policy. B. Rights or Legitimate Interests
The Complainant’s evidence is that the Respondent has at no time been authorized by it to use the XFINITY marks so that the Respondent would be able to show that it has any rights or legitimate interests in the disputed domain name.
There is no evidence that the Respondent has ever used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services within paragraph 4(c)(i) of the Policy. To the contrary the Complainant’s evidence shows that the disputed domain name resolves to a portal website offering links to third party sites some of which are competitors of the Complainant and provide the same or similar services as the Complainant. Two of the links use the Complainant’s marks COMCAST CABLE and XFINITYHOME.
There is no evidence that the Respondent has been commonly known by the disputed domain name within paragraph 4(c)(ii) of the Policy. There is nothing in the Respondent’s WhoIs information or any other information about the Respondent that shows it is commonly known by the disputed domain name.
The Respondent uses the disputed domain name to misdirect potential visitors seeking the Complainant’s website to the Respondent’s website and then to third party websites. As is shown by established panel decisions cited by the Complainant this is not legitimate noncommercial or fair use of the disputed domain name within paragraph 4(c)(iii) of the Policy.
Accordingly and in the absence of evidence from the Respondent to the contrary the Panel finds for the Complainant in respect of this element of the Policy. C. Registered and Used in Bad Faith
On the Complainant’s evidence the only reason why the Respondent registered and is using the disputed domain name is to attract users looking for the Complainant’s website so as to misdirect potential visitors to its website by the use of display banner advertisements, links to third party commercial websites or unsolicited pop-up advertisements.
The Respondent is using the disputed domain name to operate a Directory Placeholder website which contains commercial links to inter alia competitor websites and which the Complainant suggests earn the Respondent referral fees. In the Panel’s view this constitutes evidence of bad faith within paragraph 4(b)(iv) of the Policy as an intentional attempt to attract for commercial gain internet users to the Respondent’s website or other online location by creating a likelihood of confusion with the Complainant’s mark.
The Panel takes into account that the fact that the XFINITY marks fall into the category of famous marks that the Respondent had actual knowledge or should have known the marks.
The Panel also takes into account the evidence set out in the Complaint that the Respondent provided false contact information when registering the disputed domain name. It is well established that a registrant’s use of false contact information when registering may be further evidence of registration and use in bad faith.
The Panel finds, in the absence of contrary evidence that the Respondent has registered and is using the disputed domain name in bad faith within 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.
Clive Duncan Thorne
Sole Panelist
Date: July 29, 2019
Full & Egal Universal Law Academy