The Complainant is Cox Communications, Inc., United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Registration Private, United States. 2. The Domain Name and Registrar
The Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2020. On May 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 19, 2020, 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. The Center verified that the Complaint 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 May 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2020. The Center appointed Peter J. Dernbach as the sole panelist in this matter on June 23, 2020. 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 the registered owner of the following trademarks: (1) COX BUSINESS, United States trademark, registration No. 4807670 registered on September 8, 2015. Since 1998, Cox has offered and promoted its products and services online at the website “www.cox.com”. The Complainant also began providing comprehensive data transmission, communications, and access services to business under the mark COX BUSINESS SERVICES in 1998. To promote and sell these business services, the Complainant registered the domain name The Respondent registered the Disputed Domain Name on December 29, 2019. The Disputed Domain Name currently resolves to a page that cannot be reached. However, the Respondent once cloned part of the Complainant’s Cox Business website and launched its Disputed Domain Name with the cloned pages. 5. Parties’ Contentions A. Complainant The Complainant’s contentions could be summarized as follows: (i) The Disputed Domain Name is identical or confusingly similar to the COX and COX-formative marks in which the Complainant has rights. The Disputed Domain Name is confusingly similar to the Complainant’s marks because it adopts the Complainant’s COX BUSINESS trademark in its entirety, and this serves as the most salient portion of the Disputed Domain Name. The Disputed Domain Name only adds the non-distinguishing descriptor “cloud” to the Complainant’s marks. (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent has no intellectual property rights, or legitimate interests, in the Disputed Domain Name. The Respondent has not used the Disputed Domain Name for any bona fide offering of goods or services, and has no rights or legitimate interests in respect of the Disputed Domain Name. (iii) The Disputed Domain Name has been registered and is being used in bad faith. The Respondent was clearly aware of the Complainant’s COX BUSINESS mark and registered and used the Disputed Domain Name with the intention to divert consumers that are familiar with the Complainant’s marks, business, and websites. The Respondent cloned part of the Cox Business website and launched the Disputed Domain Name with the cloned pages. The Respondent registered the Disputed Domain Name for the purpose of setting up a fraudulent site that had virtually identical content, likely for use as a phishing site. By using the Disputed Domain Name for the purpose of diverting and disrupting the Complainant’s business, the Respondent’s actions are evidence of using the Disputed Domain Name in bad faith under paragraph 4(b)(iii-iv) of the Policy. The fact that the Disputed Domain Name currently resolves to a page that cannot be reached does not absolve the Respondent from a finding of bad faith. In summary, the Respondent registered and wrongfully used the Disputed Domain Name to trade upon and profit from the goodwill that the Complainant has built in its COX marks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Language of Proceeding Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registration Agreement for the Disputed Domain Name is in English. The Panel thus decides that the language of proceeding be English. 7. Discussion and Findings In accordance with paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case, transfer of the Disputed Domain Name), the Complainant must prove that each of the three following elements are present: (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 Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant alleges that the Disputed Domain Name is identical or confusingly similar to its COX BUSINESS mark and numerous COX-formative marks. The Complainant has established that it is the owner of the COX BUSINESS mark. The word element “cloud” is a dictionary term, and the addition of “cloud” does not avoid the confusing similarity between the Disputed Domain Name and the Complainant’s trademarks. In fact, even though more to the point under the third element of the Policy, the Panel notes here that it may likely cause Internet users to believe that the Disputed Domain Name designates a website operated by, or on behalf of, the Complainant or a subsidiary or associate of the Complainant. Therefore, the addition of the “cloud” element does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademarks. Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks and the condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interest in respect of the [disputed] domain name[.]” Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Complainant has established that it is the owner of the COX mark and COX-formative marks, and there is no evidence to show that the Respondent has any rights or legitimate interests in the Disputed Domain Name. The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. The Respondent did not submit any allegation or evidence to support a finding that the Respondent has rights or legitimate interests in the Disputed Domain Name. There is no evidence indicating that the Disputed Domain Name is used in connection with a bona fide offering of goods or services or for noncommercial or fair use; or, the Respondent is commonly known by the Disputed Domain Name or the name of “cox business” as demonstrated in paragraph 4(c) of the Policy. Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith”. Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, 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: “(iv) by using the domain name, [the respondent has] intentionally attempted 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 as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location”. The Complainant’s COX BUSINESS and other COX-formative marks have been registered in the United States for years. All of these registrations were made prior to the registration of the Disputed Domain Name. The Respondent chose the COX BUSINESS trademarks as the distinctive part of the Disputed Domain Name. The Respondent has not submitted any allegation or evidence suggesting that the Respondent selected the COX BUSINESS with the dictionary term “cloud” for any reason other than the reputation of the Complainant’s trademarks. The Panel finds that the Disputed Domain Name has been registered in bad faith. The Respondent cloned part of the Cox Business website and launched the Disputed Domain Name with the cloned pages. There is no evidence in the record to support a finding that this use has been for any reason other than the intent to attract Internet users for commercial gain. The Panel finds that the Respondent’s use of the Disputed Domain Name attempts to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion. This use of the Disputed Domain Name is in bad faith. Although the Disputed Domain Name currently resolves to a page that cannot be reached, the precedent indicates that “the Disputed Domain Name for the time being resolves to an inactive website is no bar to a finding of bad faith, as has been held on many occasions by other UDRP panels.” (Tommy Bahama Group, Inc. v. Registration Private, Domains by Proxy, LLC/Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-0197). Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy. 8. 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 Peter J. Dernbach
(2) COX BUSINESS, United States trademark, registration No. 4971484 registered on June 7, 2016.
(3) COX BUSINESS SECURITY SOLUTIONS, United States trademark, registration No. 4886616 registered on January 12, 2016.
(4) COX, United States trademark, registration No. 2189184 registered on September 15, 1998.
(5) COX SPORTS TELEVISION, United States trademark, registration No. 2928124 registered on February 22, 2005.
(6) COX WIFI, United States. trademark, registration No. 4614400 registered on September 30, 2014.
(7) COX WIFI, United States trademark, registration No. 4936875 registered on April 12, 2016.
Sole Panelist
Date: July 7, 2020
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