The Complainant is Comcast Corporation, United States of America (“United States”), represented by Wilkinson Barker Knauer, LLP, United States.
The Respondent is linyanxiao, China.
The disputed domain name <xfinitystore.com> (the “Domain Name”) is registered with 22net, Inc. (the “Registrar”).
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2019. On June 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 26, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On June 26, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on June 28, 2019. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint 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 in English and Chinses of the Complaint, and the proceedings commenced on July 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2019.
The Center appointed Karen Fong as the sole panelist in this matter on August 6, 2019. 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 Complainant is a media, entertainment and communications company based in the United States. It provides cable television, video-on-demand and streaming, Internet access, telephone, home and business security and related goods and services under the XFINITY trade mark since February 2010. The Complainant owns seven active United States federal registrations for the XFINITY trade mark. Six of the applications that resulted in the registrations were filed before January 16, 2013, the date which the Domain Name was registered. The earliest registration submitted in evidence was registered as at September 21, 2010, United States trade mark registration no. 3850803 (the “Trade Mark”). The Trade Mark is an invented word which has no ordinary dictionary meaning.
The Complainant also owns various domain names comprising the Trade Mark including <xfinity.com> and <xfinitystores.com>, with the latter resolving to “www.xfinity.com/local/store”. This webpage provides the locations of Complainant’s retail stores nearest to the user and also details of the various goods and services offered under the Trade Mark.
The Complainant has invested substantial time and resources to promote and advertise the Trade Mark in connection with its goods and services. This is estimated to be over USD 3 billion dollars. By January 16, 2013, when the Domain Name was registered, the Complainant had spent approximately USD 1.5 billion in media buys alone to advertise and promote its business, goods and services under the Trade Mark.
The Respondent is based in China. The Domain Name was registered on January 16, 2013. Prior to the filing of the Complaint, the Domain Name was connected to a website which states that “This domain name (xfinitystore.com) is for sale” and it instructed interested buyers to contact “www.4.cn”, a domain name escrow company in China to start the sale process which it stated needs “about five working days” to complete (the “Website”).
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Complainant first became aware of the Domain Name on or about February 7, 2018.
The Respondent did not reply to the Complainant’s contentions.
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
- the Domain Name is in English;
- the Website prominently displays the Complainant’s English language Trade Mark and the language of the Website is either in English or in English and Chinese;
- the Respondent is conversant in the English language as on March 13, 2018 there were several verbal discussions between the Complainant and the Respondent in English regarding the Complainant’s acquiring of the Domain Name. Thus, Respondent is conversant and proficient in English;
- all of the communications between WIPO and the Parties will be transmitted both in Chinese and English. If this proceeding is conducted in English, the prejudice to the Respondent, if any, would be minimal;
- The Complainant is a United States company with United States counsel. In addition, all of the Complainant’s exhibits are in English. If the language of this proceeding were in Chinese, the Complainant would be unduly disadvantaged as it would need to incur significant expense to engage a qualified translator to translate its Complaint and exhibits from English to Chinese and then any response and the decision from Chinese to English. This would also result in the proceeding being delayed.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
6.2 General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
6.3 Substantive Analysis
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Name contains the Complainant’s distinctive Trade Mark in its entirety and the descriptive word “store”. The addition of this term does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Name. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. v. wu bingjie aka bingjie wu/Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement.
The Panel finds that the Domain Name is identical or confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant submits that it has never authorized the Respondent to use the Trade Mark as a mark or as part of a domain name. Neither is the Respondent commonly known by the Domain Name or a name corresponding to the Domain Name prior to the registration of the Domain Name. The Respondent has not engaged in a bona fide offering of goods or services, because no goods or services were being offered on the Website. The offering of the Domain Name for sale on the Website is not a bona fide offering of goods or services to confer rights and legitimate interests. Neither does such activity amount to making a legitimate noncommercial or fair use of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any reasons why he chose to register a well-known Trade Mark which he has no connection to. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the requirement of paragraph 4(a)(ii) of the Policy therefore are fulfilled.
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when he registered the Domain Name. It is implausible that he was unaware of the Complainant when he registered the Domain Name. The Trade Mark is an invented word with no ordinary dictionary meaning other than as the Complainant’s brand. The substantial amount spent on advertising and promotions of the Trade Mark by the time the Domain Name would have made it well known.
In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.
The Domain Name is also being used in bad faith. UDRP panels have found that the linking of a domain name to a webpage announcing that the domain name is for sale to the general public with contact details to complete the sale constitutes an offer to sell the domain name and is evidence of circumstances indicated that the Respondent has registered the domain name for the purpose of selling, renting or otherwise transferring the domain name to the complainant or a competitor for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name under paragraph 4(b)(i) of the Policy (see Federated Western Properties, Inc. v. Mr. Faton Brezica aka “Its Me Haraqi” and “Its Me Pr” WIPO Case No. D2002-0083). Even if there is no direct evidence that the sale or transfer would be of valuable consideration in excess of documented out of pocket costs, a panel is able to infer this as there would have been very little economic purpose in putting the domain name for sale if it would not be profitable. This is a case where such an inference may be made.
In this case, the Complainant has alleged that on or about March 13, 2018, through an agent acting on its behalf, it contacted the Respondent to try to reach an agreement on assigning the registration for the Domain Name. The Respondent wanted a payment of USD 50,000 to transfer the Domain Name voluntarily. The agent offered to pay USD 7,500. The Complainant however did not submit in evidence any of this exchange or if this was not in writing a statement from the agent detailing these conversations.
Nevertheless, the fact of the Website with the general offer for sale is sufficient for these purposes of a finding of use in bad faith.
From the above, the Panel finds that the Respondent has registered and used the Domain Name in bad faith and the Complainant has succeeded in proving the third element.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <xfinitystore.com> be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: August 9, 2019