Cox Communications, Inc. and Cox Enterprises, Inc. v. Ars Wenger
Claim Number: FA2210002015103
Complainant is Cox Communications, Inc. and Cox Enterprises, Inc. (“Complainant”), represented by Judith Powell of Kilpatrick Townsend & Stockton LLP, Georgia, USA. Respondent is Ars Wenger (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cox-holdings.com>, (‘the Domain Name’) registered with NameCheap, Inc..
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on October 6, 2022; Forum received payment on October 6, 2022.
On October 08, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <cox-holdings.com> Domain Name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 11, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cox-holdings.com. Also on October 11, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Complainant Cox Enterprises is the parent company of Cox Communications and they both own registered trademarks containing and/or consisting of the Complainant’s COX mark. As such the Panel find the Complainants have sufficient nexus and each has a claim to have rights to the Domain Name.
A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant owns the trade mark COX, registered, inter alia in the USA for distribution of television programming with use recorded as dating back to at least 1980.
The Domain Name registered in 2022 contains the Complainant’s mark in its entirety, adding the descriptive word ‘holdings’, a hyphen and the gTLD .com none of which is sufficient to prevent confusing similarity between the Domain Name and the Complainant’s COX mark.
Respondent is not affiliated with the Complainant in any way and is not commonly known by the Domain Name. The Domain Name has been used for a fraudulent e mail scheme to impersonate the Complainant using the Complainant’s mark and the name of its Chairman and CEO so there is no bona fide offering of goods and services or legitimate noncommercial fair use. Phishing is registration and use in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns the trade mark COX, registered, inter alia in the USA for distribution of television programming with use recorded as dating back to at least 1980.
The Domain Name registered in 2022 has been used for a fraudulent e mail scheme using the Complainant’s mark and name of the Complainant’s Chairman and CEO.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
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 should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Domain Name consists of the Complainant's COX mark (which is registered, inter alia, in the USA for distribution of television programming services with first use recorded since, at least, 1980), the generic term ‘holdings’, a hyphen and the gTLD .com.
Previous panels have found confusing similarity when a respondent merely adds a generic term and a hyphen to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). See Health Devices Corp. v Aspen STC, FA 158254 (Forum July , 2003)(The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4 (a)(i).) Accordingly the Panel holds that the addition of the generic term ‘holdings’ and a hyphen to the Complainant’s trade mark in the Domain Name does not prevent confusing similarity between the Domain Name and the Complainant’s mark.
The gTLD .com does not serve to distinguish a Domain Name from a Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s registered mark.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Domain Name has been used in a fraudulent e mail phishing scheme using the Complainant’s mark and the name of the Complainant’s Chairman and CEO. This is deceptive and confusing. As such it cannot amount to the bona fide offering of goods and services or a legitimate noncommercial or fair use. (See DaVita Inc. v Cynthia Rochelo FA 1738034 (Forum July 20, 2017) finding that ‘Passing off in furtherance of a fraudulent scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use’.)
The Respondent has not responded to this Complaint or provided any explanation to counter the prima facie case put forward by the Complainant as set out herein.
As such the Panelist finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The use of the Complainant’s mark and the name of the Complainant’s Chairman and CEO in the phishing e mail scheme in this case shows that the Respondent is aware of the Complainant, its rights, business and services. Impersonating a complainant by use of a complainant’s mark in a fraudulent phishing scheme is disruptive and evinces bad faith registration and use. See Microsoft Corporation v Terrence Green/ Whois Agent/Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr 4 2016)(finding that respondent’s use of the disputed domain name to send fraudulent e mails constituted bad faith registration and use pursuant to Policy 4 (b)(iii). )
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cox-holdings.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: November 7, 2022
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