Cox Communications, Inc. and Cox Enterprises, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2211002019532
Complainant is Cox Communications, Inc. and Cox Enterprises, Inc. ("Complainant"), United States, represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, United States. Respondent is Domain Administrator / Fundacion Privacy Services LTD ("Respondent"), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <benefithelpcoxinc.com>, <benefitshelpcox.com>, <benefitshelpcoxautoinc.com>, and <benefitshelpcoxinc.com>, registered with Media Elite Holdings Limited.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to Forum electronically on November 8, 2022; Forum received payment on November 8, 2022.
On Nov 09, 2022, Media Elite Holdings Limited confirmed by email to Forum that the <benefithelpcoxinc.com>, <benefitshelpcox.com>, <benefitshelpcoxautoinc.com>, and <benefitshelpcoxinc.com> domain names are registered with Media Elite Holdings Limited and that Respondent is the current registrant of the names. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 November 14, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registrations as technical, administrative, and billing contacts, and to postmaster@benefithelpcoxinc.com, postmaster@benefitshelpcox.com, postmaster@benefitshelpcoxautoinc.com, postmaster@benefitshelpcoxinc.com. Also on November 14, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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 registrations as technical, administrative, and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On December 13, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a large provider of cable television, broadband, and related services. Complainant and its predecessors, affiliates, and licensees have used COX and related marks in connection with communication-related services for more than 50 years. Complainant owns longstanding United States trademark registrations for COX in standard character and stylized form, and for various COX-formative marks.
Respondent registered the disputed domain names <benefithelpcoxinc.com>, <benefitshelpcox.com>, <benefitshelpcoxautoinc.com>, and <benefitshelpcoxinc.com> in August 2022. Complainant states that the domain names have been redirecting users to websites that disseminate malware, and that they are being offered for sale through Sedo with a minimum offer of $899 each. Complainant notes that Respondent has been involved in more than 100 adverse decisions under the Policy, indicating a pattern of bad faith registration and use. Complainant states further that Respondent is not commonly known by the disputed domain names, has no relationship with Complainant, and is not authorized to use Complainant's mark.
Complainant contends on the above grounds that each of the disputed domain names <benefithelpcoxinc.com>, <benefitshelpcox.com>, <benefitshelpcoxautoinc.com>, and <benefitshelpcoxinc.com> is confusingly similar to its COX mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Each of the disputed domain names <benefithelpcoxinc.com>, <benefitshelpcox.com>, <benefitshelpcoxautoinc.com>, and <benefitshelpcoxinc.com> incorporates Complainant's registered COX mark, adding the generic terms "benefit[s]," "help," "inc," and "auto" (possibly a reference to the automation or automotive services offered by Complainant) and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Cox Communications, Inc. & Cox Enterprises, Inc. v. Domains By Proxy, LLC / Ernest Medina, D2016-0652 (WIPO May 20, 2016) (finding <coxiinc.com> confusingly similar to COX); Accenture Global Services Ltd. v. Domain Administrator, Fundacion Privacy Services LTD, D2022-3223 (WIPO Nov. 1, 2022) (finding <canadahrbenefitsaccenture.com> confusingly similar to ACCENTURE). The Panel considers the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain names incorporate Complainant's registered mark without authorization, and their sole apparent use has been in connection with the dissemination of malware. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Morgan Stanley v. Ryan G Foo / PPA Media Services, FA 1682650 (Forum Aug. 11, 2016) (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "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 [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered four domain names incorporating Complainant's registered mark without authorization. The domain names are being offered for sale at a price likely far in excess of Complainant's out-of-pocket costs, and are being used to facilitate the dissemination of malware. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Laboratory Corp. of America Holdings v. Domain Administrator / Fundacion Privacy Services LTD, FA 1931836 (Forum Mar. 23, 2021) (finding bad faith in similar circumstances). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <benefithelpcoxinc.com>, <benefitshelpcox.com>, <benefitshelpcoxautoinc.com>, and <benefitshelpcoxinc.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: December 14, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page