The Complainant is Comcast Corporation, United States of America (“United States” or “U.S”), represented by Wilkinson Barker Knauer, LLP, United States.
The Respondent is above_privacy, Hong Kong, China / Domain Administrator, Hong Kong, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2021. On September 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 2021, 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 September 27, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a first amended Complaint on September 28, 2021, and filed a second amended Complaint on September 28, 2021.
The Center verified that the Complaint together with the amended Complaints 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 September 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2021.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on October 29, 2021. 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.
The proceeding is conducted in English, this being the language of the disputed domain name’s registration agreement, as confirmed by the Registrar.
4. Factual BackgroundThe Complainant is a global telecoms conglomerate founded in 1981. It provides cable television broadcasting services, video-on-demand and streaming, Internet access, telecommunications, and home and business security services. On February 3, 2010, the Complainant rebranded all its products and services from “Comcast” to “Xfinity”1 .
The Complainant owns the following seven United States federal trademark and service mark registrations for XFINITY:
- No. 3,850,803, registered on September 21, 2010, with respect to services comprised in international class2 38;
- No. 3,944,290, registered on April 12, 2011, with respect to services comprised in international class 41;
- No. 3,951,529, regitered on April 26, 2011, with respect to services comprised in international class 42;
- No. 4,198,210, registered on August 28, 2012, with respect to services comprised in international class 38;
- No. 4,230,464, registered on October 23, 2012, with respect to services comprised in international classes 37 and 45;
- No. 4,522,145, registered on April 29, 2014, with respect to products comprised in international class 9; and
- No. 4,991,855, registered on July 5, 2016, with respect to services comprised in international class 41.
All these trademark/service mark registrations are in full force and effect, having been timely renewed where necessary.
The disputed domain name was registered on February 23, 2015, and has since resolved to a portal which contains pay-per-click links to third party websites.
On June 8, 2021, the Complainant sent a letter requesting the Respondent to surrender the disputed domain name, to no avail.
5. Parties’ Contentions A. ComplainantIn the Complaint, it is submitted that:
(i) The Complainant has spent over three billion dollars (USD) to advertise and promote its business, goods, and services under the XFINITY marks;
(ii) The XFINITY mark is one of the most valuable marks in the United States and worldwide, as evidenced by a number of rankings;
(iii) The XFINITY marks are undeniably famous and indicative of high quality and of origin associated exclusively with the Complainant;
(iv) The Complainant has incorporated its XFINITY mark in numerous other common law (unregistered) marks that are used or licensed for use for various goods and services, including, but not limited to XFINITY REWARDS and XFINITY REWARD CENTER, for providing perks, experiences and rewards to the Complainant’s customers;
(v) The disputed domain name is confusingly similar to the Complainant’s XFINITY marks, such as XFINITY REWARDS and XFINITY REWARD CENTER, with the only difference from the latter being the addition of the letter “s” to the word “reward” and omitting the word “center”;
(vi) UDRP panels have held that domain names are likely to be held confusingly similar to established marks if they incorporate the mark or a variation of the mark, including where, as here, a letter is added to the mark;
(vii) It is well accepted that an act of typosquatting is sufficient to render a domain name confusingly similar to an established mark under the Policy;
(viii) The addition of the generic Top-Level Domain (“gTLD”) “.com” to a trademark to create a domain name is irrelevant when considering the similarity of a domain name (which must have a “gTLD”) to the trademark;
(ix) The Respondent has never been authorized by the Complainant to use any of the XFINITY marks or any mark confusingly similar thereto as a mark or as part of a domain name;
(x) The Respondent does not make a bona fide offering of goods or services (within the meaning of paragraph 4(c)(i) of the Policy) under the disputed domain name, which redirects Internet users to other web pages;
(xi) The disputed domain name’s use is neither noncommercial nor fair use as the Respondent presumably receives compensation in the form of “click through” or web page impression revenues from the third parties to whom visitors are redirected;
(xii) Even if the Respondent claims not to receive compensation, UDRP panels have found that the presence of advertisements constitutes a commercial element that precludes a finding of fair use;
(xiii) Nothing in the Respondent’s WhoIs information or in any other information known about it implies that the Respondent has ever, much less prior to the registration of the disputed domain name, been commonly known by the name “XfinityRewards”;
(xiv) There is no evidence that the Respondent has any trademark rights corresponding to the disputed domain name;
(xv) The only evident reason for the Respondent to have registered the disputed domain name for a website was to attract Internet users looking for the Complainant’s XFINITY websites for its own commercial gain;
(xvi) The Complainant’s registration of its XFINITY marks provided the Respondent with constructive notice of the Complainant’s marks prior to the registration of the disputed domain name; and
(xvii) By registering and using the disputed domain name to operate a portal, which contains commercial links to the websites of competitors and non-competitors of the Complainant, and which presumably earns the Respondent referral or pay-per-click fees, the Respondent has sought to capitalize on the goodwill existing in the Complainant’s XFINITY marks, thus acting in bad faith as per the Policy.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove 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 disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly SimilarThe first element has a low threshold merely serving as a gateway requirement under the Policy. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), elucidating that “the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”.
The Complainant owns U.S. federal trademarks and service marks, the earliest of which was registered on September 21, 2010 (see section 4 supra).
Pursuant to section 1.8 of the WIPO Overview 3.0, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”.
The Complainant’s XFINITY mark is clearly recognizable within the disputed domain name. The addition of the term “rewards” does not prevent a finding of confusing similarity between the Complainant’s trademark and the disputed domain name.
The Panel therefore finds that the disputed domain name is confusingly similar to the XFINITY mark in which the Complainant has rights.
Ultimately, the Complainant has passed muster under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe second element under the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any 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 [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you [the respondent] of the dispute, your [the respondent’s] 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 [the respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you [the respondent] have acquired no trademark or service mark rights; or
(iii) you [the respondent] 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.”
As noted in section 2.1 of the WIPO Overview 3.0, the onus is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306).
The Complainant represents not having authorized the Respondent to use its XFINITY mark as a domain name or otherwise.
The Complainant also asserts that at the time of registration of the disputed domain name, the Respondent was not known by the name “xfinityrewards”.
The Panel lends credibility to these factual assertions, which at any rate remain uncontested by the Respondent.
Regardless, in the Panel’s view, the disputed domain name’s linking to a website featuring advertisements and hyperlinks redirecting users to third party loyalty programs and software, is neither bona fide, legitimate noncommercial, or fair use within the meaning of Policy paragraph 4(c) subsections (i) and (iii). See section 2.9 of the WIPO Overview 3.0 (applying Policy paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users).
All in all, the Respondent’s misappropriation of the Complainant’s XFINITY mark, as determined in section 6C infra, precludes the Respondent from claiming rights or legitimate interests in the disputed domain name as a matter of course. See section 2.15 of the WIPO Overview 3.0 (to support a claim to rights or legitimate interests under the UDRP, the use of a disputed domain name must in any event not be abusive of third-party trademark rights).
The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name within the meaning of the Policy.
The Complainant has fulfilled the second limb of Policy, paragraph 4(a).
C. Registered and Used in Bad FaithPursuant to Policy, paragraph 4(a)(iii), in order to be granted relief, the Complainant must show that the disputed domain name was registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth the following non-exhaustive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] 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 [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [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 your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
In the Policy context, bad faith is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See section 3.1 of the WIPO Overview 3.0.
The Complainant has demonstrated to own registered trademark rights in the United States for XFINITY, which is a fanciful mark. See Comcast Corporation v. linyanxiao,WIPO Case No. D2019-1461 (Xfinity is an invented word with no ordinary dictionary meaning other than as the Complainant’s brand). As such, the XFINITY mark coined by the Complainant enjoys the broadest scope of protection against unauthorized use.3
Thus, by registering the disputed domain name, which incorporates a term that is inextricably associated with the Complainant, the Respondent intended to impersonate the Complainant and misappropriate its XFINITY mark. IDP Education Ltd v. Transure Enterprise Ltd, Host Master,WIPO Case No. D2021-0183 (the respondent must have been aware of the complainant and the IELTS and IDP trademarks and intended, by registration of the domain name
Along this line, the disputed domain name’s use in connection with a website redirecting Internet users to customer loyalty programs and software which have nothing to do with the Complainant’s products and services, misleads the Complainant’s customers presumably for the Respondent’s own commercial gain.
Moreover, the addition of the term “‘rewards’” in the disputed domain name only bolsters its association with the Complainant’s inherently distinctive XFINITY mark because the Complainant actually has a customer loyalty program by the name of “Xfinity Rewards”4 . This is further evidence of the Respondent’s bad faith targeting of the Complainant.
Furthermore, the Respondent provided incomplete/false contact information at the time of registering the disputed domain name, as evidenced by the DHL’s tracking report, which shows that the shipment containing the Center’s Written Notice could not be delivered to the Respondent.
All these circumstances, taken together, persuade the Panel that the disputed domain name was registered in bad faith and has been used in bad faith.
The Complainant has discharged its burden in relation to paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Reynaldo Urtiaga Escobar
Sole Panelist
Date: November 22, 2021
1 See the Complainant’s Press Release at “https://corporate.comcast.com/comcast-voices/comcast-launches-xfinity”.
2 Established pursuant to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957).
3 A fanciful or coined mark is at the strongest end of the spectrum (sometimes called a hierarchy of marks) because it is inherently distinctive. See INTA’s Fact Sheet on “Trademark Strength” at “www.inta.org/fact-sheets/trademark-strength/”.
4 See “https://www.xfinity.com/rewards”.