Comcast Corporation v. SUBJECT TO DISPUTE
Claim Number: FA2305002042831
Complainant is Comcast Corporation (“Complainant”), represented by Timothy D. Pecsenye of Blank Rome LLP, Pennsylvania, USA. Respondent is SUBJECT TO DISPUTE (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xfinity10ghome.com> and <xfinity10gbusiness.com> (“Domain Names”), registered with Google LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on May 2, 2023; Forum received payment on May 2, 2023.
On May 8, 2023, Google LLC confirmed by e-mail to Forum that the <xfinity10ghome.com> and <xfinity10gbusiness.com> domain names are registered with Google LLC and that Respondent is the current registrant of the names. Google LLC has verified that Respondent is bound by the Google LLC 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 May 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2023 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@xfinity10ghome.com, postmaster@xfinity10gbusiness.com. Also on May 9, 2023, 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 June 2, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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 offers a wide variety of services including cable television services, retail and online retail services and entertainment services under the XFINITY mark and in February 2023 launched a new campaign for its XFINITY 10G services. Complainant has registered the XFINITY mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,230,464, registered Oct. 23, 2012). Respondent’s <xfinity10ghome.com> and <xfinity10gbusiness.com> domain names are confusingly similar to Complainant’s mark as they wholly incorporate the mark before adding the terms “10ghome” and “10gbusiness” as well as the “.com” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the <xfinity10ghome.com> and <xfinity10gbusiness.com> domain names. Respondent is not commonly known by the Domain Names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the XFINITY mark. Respondent does not use the Domain Names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent has linked the Domain Names to sites offering adult-oriented material and sent numerous unsolicited e-mails to Complainant offering the Domain Names for sale to Complainant for a sum greater than any likely out-of-pocket costs incurred in the registration of the Domain Names.
Respondent registered and uses the <xfinity10ghome.com> and <xfinity10gbusiness.com> domain names in bad faith. Respondent had actual knowledge of Complainant’s rights in the XFINITY mark prior to registration of the Domain Names as shortly after registration of the Domain Names, Respondent approached Complainant and offered to sell the Domain Names to it for a substantial fee.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the XFINITY mark. The Domain Names are confusingly similar to Complainant’s XFINITY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Names and that Respondent registered and uses the Domain Names 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 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”).
Complainant asserts rights in the XFINITY mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,230,464, registered Oct. 23, 2012). Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that the <xfinity10ghome.com> and <xfinity10gbusiness.com> domain names are confusingly similar to Complainant’s XFINITY mark because each incorporates Complainant’s mark in its entirety, adding only the descriptive terms “10g home” or “10g business” and the gTLD “.com”. Addition of generic or descriptive words and a gTLD does not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the XFINITY mark. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “SUBJECT TO DISPUTE” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names are presently inactive which by itself does not demonstrate rights or legitimate interests. Complainant provides evidence that prior to the commencement of the proceeding the Domain Names resolved to a website or websites offering commercial content unrelated to the Complainant’s business (namely adult content) or any descriptive meaning of the Domain Names. The use of a domain name to divert users, for commercial gain, to a website containing unrelated content such as adult content is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”). See also Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”)
Moreover, shortly after the Domain Names were registered Respondent sent several e-mails to Complainant seeking payment in exchange for transferring the Domain Names. Absent any other explanation, this indicates that the Domain Names were registered for the purpose of selling it to Complainant, for a sum in excess of any out-of-pocket costs that could have been incurred by Respondent. Absent any explanation by Respondent for its conduct, such conduct is not by itself a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time Respondent registered the Domain Names, April 14, 2023 and April 17, 2023 respectively, Respondent had actual knowledge of Complainant’s XFINITY mark. There is no obvious explanation, nor has one been provided, for an entity to register two domain names that wholly incorporate the XFINITY mark and words descriptive of a newly released offering by Complainant and redirect them to websites offering adult content (along with sending e-mails offering the Domain Names for sale to Complainant) other than to take advantage of Complainant’s reputation in the XFINITY Mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
Respondent has, without alternative explanation, registered two domain names that are confusingly similar to the XFINITY mark and offered them for sale to the Complainant for a sum greater than any likely out-of-pocket costs. An offer to sell a disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(i). See Campmor, Inc. v. GearPro.com, FA 197972 (Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”). In the present case, given the nature of the Domain Names, the content of the e-mails sent to Complainant, and the lack of alternative explanation provided by Respondent, the Panel finds that the Respondent registered and used the Domain Names in bad faith pursuant to Policy ¶ 4(b)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(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 <xfinity10ghome.com> and <xfinity10gbusiness.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: June 5, 2023
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