WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Comcast Corporation v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2020-0114

1. The Parties

The Complainant is Comcast Corporation, United States of America (“United States”), represented by Wilkinson Barker Knauer, LLP, United States.

The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <txfinity.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2020. On January 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 21, 2020, 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.

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 of the Complaint, and the proceedings commenced on January 31, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2020.

The Center appointed Mariya Koval as the sole panelist in this matter on March 18, 2020. 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.

4. Factual Background

The Complainant is one of the world’s leading media, entertainment and communications companies, which provides cable television, video-on-demand and streaming, Internet access and related privacy services, telephone, home and business security and related goods and services under the XFINITY trademark (“the XFINITY Trademark”). The Complainant has been using its XFINITY Trademark in commerce to promote and sell these services since at least as early as February 3, 2010.

The Complainant has invested substantial time and resources to promote and advertise its XFINITY Trademark. Conservatively, the Complainant has spent over three billion dollars to advertise and promote its business, goods and services under the XFINITY Trademark. The Complainant has thus developed valuable goodwill and an outstanding reputation in its XFINITY Trademark, which is among its most valuable assets.

The Complainant is the owner of numerous registrations for its XFINITY Trademark in different jurisdictions around the world, including Panama:

- United States Registration No. 3,850,803 in class 38, registered on September 21, 2010;
- United States Registration No. 3,944,290 in class 41, registered on April 12, 2011;
- United States Registration No. 3,951,529 in class 42, registered on April 26, 2011;
- United States Registration No. 4,198,210 in class 38, registered on August 28, 2012;
- United States Registration No. 4,230,464 in classes 37 and 45, registered on October 23, 2012;
- United States Registration No. 4,522,145 in class 9, registered on April 29, 2014;
- United States Registration No. 4,991,855 in class 41, registered on July 5, 2016;
- Panama Registration No. 245794 in class 38, registered on November 26, 2015;
- Panama Registration No. 245797 in class 41, registered on November 26, 2015.

The Complainant operates a domain name <xfinity.com> since January 22, 2003 for the promotion of its goods and services under the XFINITY Trademark.

The Disputed Domain Name was registered on November 16, 2018. At the date of this decision, the Disputed Domain Name resolves to a parking page, which displays different sponsored links related to, among others, services competitive with those provided by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the XFINITY Trademark is undeniably famous and indicative of high quality and of origin associated exclusively with its company.

The Complainant further contends that the Disputed Domain Name is confusingly similar to its XFINITY Trademark, with the only difference being the addition of the letter “t” prior to the XFINITY Trademark. The Complainant also notes that the addition of the generic Top-Level Domain (“gTLD”) to its Trademark to create the Disputed Domain Name is irrelevant when considering the similarity of a domain name (which must have a gTLD) to the trademark.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in view of the fact that the Respondent has never been authorized by the Complainant to use the XFINITY Trademark or any mark confusingly similar thereto as a mark or as part of a domain name.

The Complainant further alleges that the Respondent cannot establish rights in the Disputed Domain Name under Paragraph 4(c)(i) of the Policy as she has never made any use of, or demonstrable preparations to use, the Disputed Domain Name or any name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. The Complainant notes that the Disputed Domain Name variously resolves to different web pages. None of these uses of the Disputed Domain Name constitute a bona fide offering of services, namely, the Disputed Domain Name sometimes resolves to a website of a company offering services competitive with those of the Complainant and the Disputed Domain Name sometimes resolves to a portal website, which offers numerous links to third party sites, some of which are competitors of the Complainant provide the same or similar services as the Complainant. The Respondent presumably receives compensation in the form of “click through” or web page impression revenues from the third parties to whom visitors are redirected. This is not a bona fide offering of services. Also, the Disputed Domain Name redirects users to a webpage seeking to infect the computer with a virus or malware, but which is blocked by anti-virus software. This activity could harm the Complainant’s reputation and valuable goodwill in the XFINITY Trademark. Thus, it, too, cannot constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.

The Complainant contends that the Respondent has never been commonly known by the Disputed Domain Name and has not acquired trademark or service mark rights in the Disputed Domain Name.

The Complainant also contends that the only evident reason for the Respondent to register the Disputed Domain Name was to attract users looking for the Complainant’s website for its own commercial gain. Registration and use of the Disputed Domain Name in order to misdirect potential visitors to the Complainant’s website, display banner advertisements or links to third-party commercial websites, or subject users to unsolicited pop-up advertisements is evidence of bad faith under paragraph 4(b)(iv) of the Policy.

The Complainant further asserts that the Respondent’s registration and use of the Disputed Domain Name evidences bad faith under paragraph 4(b) of the Policy in view of the following:

- the Disputed Domain Name exploits the mistyping of a trademark, which is a “typosquatting”;

- the Respondent uses the Disputed Domain Name to direct visitors to websites containing viruses or malware in order to infect Internet users’ computers;

- the Complainant’s registrations of its XFINITY Trademark provided the Respondent with constructive notice of the Complainant’s marks prior to the registration of the Disputed Domain Name;

- even if the Respondent were known by the Disputed Domain Name (which she is not), it would only be a result of the Respondent’s bad faith intent to capitalize on the good will existing in the Complainant’s XFINITY Trademark;

- there is a gap of eight years between the registration and use of the Complainant’s XFINITY Trademark and the Respondent’s registration of the Disputed Domain Name (containing the Trademark); and

- the Respondent failed to respond to the Complainant’s demand letter requesting transfer of the Disputed Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three elements which have to be met for the Panel by the Complainant:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the Disputed Domain Name transferred to it, according to paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the XFINITY Trademark in view of various trademark registrations throughout the world and long use. Moreover, the Complainant’s XFINITY Trademark has been acknowledged as well-known by many previous UDRP panels, see. e.g., Comcast Corporation v. linyanxiao, WIPO Case No. D2019-1461; Comcast Corporation v. Domain Admin, Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante, WIPO Case No. D2019-1286.

The Complainant’s well-known XFINITY Trademark is included in the Disputed Domain Name in its entirety with addition of a letter “t” and the gTLD “.com”. The Disputed Domain Name is an example of typosquatting where the spelling of a trademark has been minimally altered by addition of one letter. The addition of one letter to the well-known XFINITY Trademark does not prevent a finding of confusing similarity. The gTLDs are typically not taken into account for the purposes of determining whether a mark and a domain name are identical or confusing similar under the Policy.

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s XFINITY Trademark and therefore, paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its XFINITY Trademark or to register any domain name incorporating its Trademark.

In accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name that has not been in any way rebutted by the Respondent.

The Panel is of opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the registration and use of the Disputed Domain Name for redirecting Internet users to a parking page, which displays different sponsored links related to, among others, services competitive with those provided by the Complainant does not constitute a bona fide use in these circumstances. Also, the Disputed Domain Name redirects users to a webpage seeking to infect the computer with a virus or malware, but which is blocked by anti-virus software. Such use of the Disputed Domain Name does not give evidence of a bona fide offering of goods or services.

The Panel considers it is likely that the Respondent was aware of the Complainant’s Trademark when registering the Disputed Domain Name, taking into account the notoriety and reputation of the Complainant’s XFINITY Trademark and the fact that the Respondent registered the Disputed Domain Name only in 2018.

The Panel also finds that there is no evidence that the Respondent is commonly known by the Disputed Domain Name.

In view of the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Accordingly, the Complainant has satisfied the requirements of the second element of the paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that indicate to bad faith conduct on the part of the respondent, namely:

“(i) circumstances indicating that the respondent has registered or has acquired the disputed domain name 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 the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.”

The Disputed Domain Name completely reproduces the Complainant’s well-known XFINITY Trademark. In accordance with the WIPO Overview 3.0, section 3.1.4, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. Also, typosquatting is further evidence of bad faith, see e.g., Wikimedia Foundation, Inc. v. Domain Admin, Whois Privacy Corp. / Ryan G Foo, PPA Media Services, WIPO Case No. D2015-1705.

The Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s well-known XFINITY Trademark and it was likely registered with the primary intention to disrupt the Complainant’s business or to confuse consumers. The Disputed Domain Name, reproducing the Complainant’s Trademark in its entirety, is evidently deceptive to consumers.

Moreover, as the Complainant has used its XFINITY Trademark in commerce for more than nine years prior to the registration of the Disputed Domain Name, it is likely that the Respondent was aware of the Complainant’s Trademark when she registered the Disputed Domain Name.

The fact that the Disputed Domain Name resolves to a parking website with different commercial links to the Complainant’s competitors and non-competitors for commercial gain evidences bad faith use of the Disputed Domain Name. Also, the Disputed Domain Name redirects users to a webpage seeking to infect the computer with a virus or malware, which does not constitute a good faith use.

Furthermore, the Respondent did not respond to the Complainant’s cease and desist letter in which the Complainant requested to transfer the Disputed Domain Name, accordingly the Respondent ignored the Complainant’s attempts to settle this dispute without initiation of this proceeding. Such Respondent’s behavior supports the Panel’s finding that the Respondent has registered and is using the Disputed Domain Name in bad faith.

In view of the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <txfinity.com> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: April 1, 2020