Comcast
Corporation v. Comcast Broadband LLP
Claim Number: FA0109000099756
PARTIES
The Complainant is Comcast Corporation, Philadelphia, PA (“Complainant”) represented by Mitchell H. Stabbe, of Dow, Lohnes & Albertson, PLLC. The Respondent is Comcast Broadband LLP, a/k/a Com-Cast Broadband, a/k/a B. Evans, a/k/a Brian Evans, a/k/a I. Levin, a/k/a C. Inc., a/k/a Bry, Las Vegas, NV (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <comcastbroadband.com>, registered with Network Solutions.
PANEL
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Rodney C. Kyle as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on September 20, 2001; the Forum received a hard copy of the Complaint on September 20, 2001.
On September 25, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <comcastbroadband.com> is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 25, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 15, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@comcastbroadband.com by e-mail.
A timely response was received and determined to be complete on September 25, 2001.
Additional Submissions were received on October 2, 2001 (Complainant, timely), 17 October 2001 (Respondent, untimely), and October 18, 2001 (Complainant and Respondent, both untimely).
On
October 15, 2001, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum
appointed Rodney C. Kyle as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name registration be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant has in its Complaint made three main categories of contentions.
Firstly, Complainant contends that under Policy ¶ 4(a)(i) the domain name at issue, <comcastbroadband.com>, is virtually identical and confusingly similar to Complainant's COMCAST marks because that domain name merely adds the generic word “broadband” to COMCAST, which generic word “broadband”,
Complainant contends, describes the nature of many of Complainant’s products and services.
Secondly, Complainant contends that under Policy ¶ 4(a)(ii) Respondent has “no rights or legitimate interests” in respect of the domain name under Policy ¶ 4(c). More particularly, Complainant contends that
(i)
since as early as the date of registration of the first
mark of Complainant’s family of COMCAST marks in the United States Trademarks
Office (i.e. Registration No. 1,421,433 dated December 16, 1986), Respondent
had constructive notice of Complainant’s rights in the COMCAST marks as to
communications and broadband services and in any event has never been
authorized by Complainant to use the COMCAST mark in any way, so Respondent
cannot, before becoming aware of the dispute (e.g. on the WhoIs Directory date
for the domain name registration of
July 8, 2001 or on Respondent’s inconsistently asserted domain name
registration date of June 8, 1998 or on
Respondent’s inconsistently asserted domain name first use date of June 1995),
have made use of (or made demonstrable preparations to use) the disputed domain
name in connection with a bona fide offering of broadband goods or services;
(ii)
Respondent has never been commonly known by <comcastbroadband.com> and therefore
cannot establish rights or legitimate interests in the domain name; and
(iii)
on the same day as registering the disputed domain name
Respondent attempted to sell it for $12,500 (and eight days later for $5,500)
to Complainant and the current content
of the web site is “Welcome to comcastbroadband.com!”, and neither those
attempts nor such content are legitimate noncommercial, or fair, use of the
domain name without intent for commercial gain to misleadlingly divert
customers.
Thirdly, Complainant contends that under Policy ¶ 4(a)(iii) there has been registration, and use, of the domain name “in bad faith” attributable to the Respondent under at least either of both of Policy ¶¶ 4(b)(i) and 4(b)(iv): first by having had constructive or actual notice of Complainant’s rights in the COMCAST marks (as to communications and broadband services) yet suffixing COMCAST with the generic expression “broadband” and obtaining (and, so Respondent purports, using in association with broadband services) the domain name registration for that combination, second by having registered the domain name only in order to sell it to the Complainant at a price exceeding reasonable out-of-pocket expenses, and third by having provided false contact information and making efforts to disguise its identity and to distance itself from its actual offering of the domain name for sale. As to the first point, Complainant more particularly contends that Respondent, not being legitimately known as “Comcast Broadband”, must have (for its own commercial gain) registered the domain name for a retail web site featuring broadband products to attract users looking for Complainant’s web site. As to the second point, Complainant more particularly contends that
(i) unsolicited, Respondent emailed the Complainant and offered the domain name for $12,500 the very day Respondent registered it, and eight days later for $5,500; and
(ii) Respondent (a) knew of Complainant's bid (made the day of the $12,500 offer) to purchase AT&T Broadband, (b) falsely claimed that it had received offers from AT&T and “Comcast Germany” for the domain name and (c) therefore registered the domain and created the fictitious offers in an attempt to get the Complainant to buy the domain name registration at a price reflecting more than out-of-pocket costs.
As to the third point, Complainant more particularly contends that
(i) the false contact information was to the WhoIs Directory by submitting a Los Angeles phone number and Nevada address, especially since the phone number is not in service; and
(ii) the efforts to disguise and distance include refusing to provide a name and address in communications with Complainant’s attorney.
B. Respondent
In its response Respondent has, in addition to a general denial, made three main categories of contentions.
Firstly, Respondent contends that <comcastbroadband.com> is not confusingly similar to the Complainant's mark because other business entities use the word COMCAST in their marks that are on the United States Trademark register.
Secondly, Respondent contends that
(i) it has rights and legitimate interests in the <comcastbroadband.com> domain name because its company was formerly known as COM-CAST; and
(ii) neither is Complainant's use of the COMCAST mark exclusive to Complainant nor is the mark "famous," and as a result that Respondent has rights and legitimate interests in the domain name <comcastbroadband.com> like others who have marks including the word "Comcast".
Thirdly, Respondent contends that Respondent did not register the domain name in bad faith. More particularly, Respondent
(i) denies Complainant's allegations that Respondent attempted to sell the disputed domain name to Complainant for $12,500 and $5,500, and contends that instead a “trojan horse” did so; and
(ii) contends Respondent was known by COM-CAST, and intends to use the domain name, and hence that Respondent registered the <comcastbroadband.com> domain in good faith.
C. Additional Submissions
Complainant’s Additional Submission of October 2, 2001 complies with the Forum’s Supplemental Rule 7 and hence was considered by the Panel. In that Additional Submission, Complainant contends that Respondent's response of September 25, 2001
(i) was submitted in such extensive disregard of 5(b) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”)— i.e. the Rule 5(b) preamble and items “ii”, “iii”, “viii” and “ix” of Rule 5(b)— as well in such disregard of 5(c) of the Forum’s Supplemental Rules, that it should be stricken in its entirety and, under Rule 14(b), considered as giving rise to an inference of bad faith under Policy ¶ 4(a)(iii);
(ii) allegation that Complainant does not have exclusive rights in the COMCAST mark is irrelevant, in that Policy ¶ 4(a) does not require that Complainant prove that it has “exclusive” registration or use of the mark;
(iii) is unsupported by any evidence; and
(iv) includes continued efforts to disguise its identity and to distance itself (i.e. using different email accounts and signing the email with different names) from its actual offering of the domain name for sale, and that such efforts to shield Respondent’s identity further undercut Respondent’s credibility and should be taken as affirmative proof of Respondent’s bad faith under Policy ¶ 4(a)(iii).
Each of the following Additional Submissions did not comply with the Forum’s Supplemental Rule 7 and hence was not considered by the Panel:
(i) Respondent’s of October 17, 2001;
(ii) Complainant’s of October 18, 2001; and
(iii) Respondent’s of October 18, 2001.
FINDINGS
In
view of Complainant’s and Respondent’s contentions there are two procedural
issues, and three substantive issues, to be discussed and decided in these
reasons for decision.
The procedural issues are whether Respondent's response of September 25, 2001 was submitted in such violation of the Rules, and of the Forum’s Supplemental Rules, that the response should be
(1) stricken in its entirety; and
(2) taken,
under Rule 14(b), as giving rise to an inference of bad faith under Policy ¶
4(a)(iii).
The
substantive issues are:
(1) whether under Policy ¶ 4(a)(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) whether under Policy ¶ 4(a)(ii) Respondent has any rights or legitimate interests in respect of the domain name; and
(3) whether under Policy ¶ 4(a)(iii) the domain name has been registered and is being used in bad faith.
DISCUSSION
Paragraph
15(a) of the Rules instructs this Panel to “decide a complaint on the basis of
the statements and documents submitted and in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable.”
PROCEDURAL ISSUES
The Panel resolves the first procedural issue in the affirmative and as a result finds the allegations of fact contained in the Compliant to be conclusively admitted by Respondent. The Panel further finds that, whether or not the second procedural issue is resolved in the affirmative, the pleadings and evidence and arguments contained in the Complaint are sufficiently strong and sufficiently consistent (both internally and with one another and with the law) to accord with awarding the relief sought by Complainant, i.e., that the domain name registration be transferred from Respondent to Complainant.
The Panel also resolves the second procedural issue in the affirmative.
SUBSTANTIVE ISSUES
In case the Panel has erred in resolving either or both of the procedural issues, the Panel has proceeded to resolve the three substantive issues.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name registration be transferred to Complainant:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and;
(3) the domain name has been registered and is being used in bad faith.
As set out below, the Panel finds that all three of the elements listed in the immediately preceding paragraph have been proven in this proceeding.
Identical or
Confusingly Similar
There is a trademark COMCAST, and indeed a family of COMCAST marks, and Complainant has legal interests therein e.g., evidenced by the trademark registration materials submitted by Complainant. (See e.g., EAuto, Inc. v. Available-Domain- Names.com, Case No. D2000-0120 (WIPO Apr. 13, 2000).)
(For those legal interests to be within the meaning of the expression “rights” in Policy ¶ 4(a)(i) does not require they be for “exclusive” registration or use but rather be a bona fide basis for making the complaint, as in Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000).)
The domain name in dispute consists of one such mark, COMCAST, plus the generic term “broadband”.
It has been found that the addition of a generic word or term to another's mark is not sufficient to defeat a claim of confusing similarity. (See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term.) Moreover, in this case the domain name is confusingly similar to Complainant's mark because the generic term "broadband" is descriptive of Complainant's business. As a result there is a likelihood that the Internet user will associate <comcastbroadband.com> with Complainant. To similar effect see Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) finding that the <hoylecasino.net> domain name was confusingly similar to that complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which that complainant was engaged, did not take the disputed domain name out of the realm of confusing similarity; and Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark. (Similarly, see e.g. Fossil, Inc. v. NAS, FA92525 (Nat Arb. Forum Feb. 23, 2000) and General Electric Co. v. Normina Anstalt, Case No. D2000-0452 (WIPO July 10, 2000).)
In view of the immediately preceding four paragraphs, the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Rights or
Legitimate Interests
On the one hand, the following four paragraphs are in Complainant’s favor.
Just as there are “no rights or legitimate interest” in the non-use of a domain name that was a misspelling of a famous mark (Valigene Corp. v. MIC, FA 94860 (Nat. Arb. Forum Aug. 1, 2000)) so too in this case there are no “rights or legitimate interest” when a mark has added to it a generic term and Respondent has not used, and has made no demonstrable preparations to use, the disputed domain name in connection with a legitimate and bona fide offering of goods or services. As for why the use or preparations cannot have complied see the paragraphs (especially the first and third and fourth) under the heading of “Identical or Confusingly Similar” set out above as well as item “i” of the second main category of Complainant’s contentions set out above and the following decisions: Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., D2000-0090 (WIPO Apr. 11, 2000), Barney’s Inc. v. BNY Bulletin Board, D2000-0059 (WIPO Apr. 2, 2000), Cellular One Group v. Brien, D2000-0028 and CCA Industries, Inc. v. Bobby R. Dailey, D2000-0148 (WIPO Apr. 26, 2000).
Also, as in Guerlain S.A. v. SL, Blancel Web, D2000-1191 (WIPO Nov. 21, 2000) and Nilfisk-Advance A/S v. Leong Tak Lang, D2000-1299 (WIPO Dec. 27, 2000) so too in this case: there is pleaded by Complainant, and not specifically denied and affirmatively pleaded against and disproved by Respondent, a lack of authorization or license to use any of the Complainant’s family of marks and hence there is a prima facie case that Respondent has “no right or legitimate interest”. Respondent has not rebutted that prima facie case.
Moreover, as in Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) so too in this case: a respondent does not have “rights or legitimate interests” in a domain name when that respondent is not known by the mark corresponding to the domain name. Indeed, in this case it does not appear that the domain name at issue really reflects Respondent’s present or past company name. Instead it appears that such company name (whether present or past), and Respondent-purported variations thereof, were merely made up by Respondent for effecting the domain name registration and attempting to sell the domain name registration to Complainant.
Furthermore, “rights or legitimate interests” of a respondent do not exist when, as in this case (as per item “iii” of the second main category of Complainant’s contentions set out above), the Respondent has made no use of the website that is located at the domain name at issue other than as part of attempting to sell the domain name for profit. (See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000).)
On the other hand, the following two paragraphs are in Respondent’s favor.
VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) is to the effect that a respondent has “rights and a legitimate interest” in a domain name if that domain name reflects that respondent’s company name.
Goldline Int’l, Inc. v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001) is to the effect that a respondent could have a “legitimate interest” in developing a mark identical to complainant’s where that mark was weak and that respondent operated in an unrelated field.
However, the two cases referred to in the two immediately preceding paragraphs are distinguished from the present case. Firstly, as set out above in connection with Gallup Inc. v. Amish Country Store, in this case it does not appear that the domain name at issue really reflects Respondent’s present or past company name; instead it appears that such company name (whether present or past), and Respondent-purported variations thereof, were merely made up by Respondent for effecting the domain name registration and attempting to sell the domain name registration to Complainant. Secondly, Complainant’s mark is not weak and by Respondent’s own assertion (by e-mail, and fax, to Complainant) Respondent purportedly operated in a related field.
In view of the immediately preceding nine paragraphs, Respondent has no rights or legitimate interests in respect of the domain name.
On the one hand, the following three paragraphs are in Complainant’s favor.
As in this case, evidence of bad faith pursuant to Policy ¶ 4(b)(i) is indicated by apparent willingness of a respondent to sell a disputed domain name from the outset at other than a price reflecting only the costs of registering and maintaining the name: Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000), World Wrestling Federation Entertainment, Inc. v. Bosman, D1999-0001 (WIPO Jan. 14, 2000), Stella D’Oro Biscuit Co., Inc. v. The Patron Group, Inc., D2000-0012 (WIPO Feb. 17, 2000), Nabisco Brands Co. v. The Patron Group, Inc., D2000-0032 (WIPO Mar. 1, 2000) and Ronson Plc v. Unimetal Sanayi ve Tic.A.S., D2000-0011 (WIPO Apr. 11, 2000). That is especially so if (as in this case) there is a short time between that respondent’s registration and an unsolicited offer of sale to that Complainant: Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000), Viacom Int’l Inc. v. Bryan Dulsky, D2000-0961 (WIPO Dec. 5, 2000) and Gruner v. CPIC NET, D2000-1742 (WIPO, Feb. 13, 2001).
Moreover, evidence of bad faith pursuant to Policy ¶ 4(b)(iv) is indicated by activities such as those contended in the general and more particular parts of the “first” contention in Complainant’s third main category of contentions: Bennett Coleman & Co. v. Lalwani; Bennett Coleman & Co. v. Long Distance Telephone Co., D2000-0014 and D2000-0015 (WIPO Mar. 11, 2000), Yahoo! Inc. v. Zviely a/k/a Names Oz, D2000-0273 (WIPO June 14, 2000) and Fossil, Inc. v. NAS, FA92525 (Nat Arb. Forum Feb 23, 2000).
As well, Quixtar Inv., Inc. v. Smithberger & QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) and Home Director, Inc. v. Home Director, D2000-0111 (WIPO Apr. 11, 2000) are to the effect that evidence of bad faith, pursuant to the residual bases provided by the preamble of Policy ¶ 4(b), includes (as is present in this case) a respondent’s submission of false or misleading contact information in connection with registration of a domain name.
On the other hand, the following two paragraphs are in Respondent’s favor.
PRIMEDIA Special Interest Publ'n. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) is to the effect that a respondent does not register a domain name in bad faith if there is no evidence that the respondent intended to sell the domain names or disrupt the complainant’s business.
Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) is to the effect that the respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created.
However, the two cases referred to in the two immediately preceding paragraphs are distinguished from the present case. Firstly, as indicated above, Respondent attempted to sell the disputed domain name to Complainant for $12,500, and $5,500, and disruption of Complainant’s business must have been intended by Respondent. Secondly, Respondent's company was not known by COM-CAST, so the registration of the <comcastbroadband.com> domain was not in connection with a fair business interest and, as indicated above, likelihood of confusion was indeed created.
In view of the immediately preceding eight paragraphs, the domain name has been registered and is being used in bad faith.
DECISION
It is the decision of this Panel that the registration of the domain name at issue, <comcastbroadband.com>, be transferred from Respondent to Complainant.
Rodney C. Kyle, Panelist
Dated: October 29, 2001
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