WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Comcast Corporation v. John Brandon Hawkins

Case No. D2001-0953

 

1. The Parties

The Complainant is Comcast Corporation, a Pennsylvania corporation with its principal place of business at 1500 Market Street, Philadelphia, Pennsylvania 19102, U.S.A. The Complainant is represented by Mitchell H. Stabbe, Esq., Dow, Lohnes & Albertson, PLLC, 1200 New Hampshire Avenue, N.W., Suite 800, Washington, D.C. 20036-6802, U.S.A.

The Respondent is John Brandon Hawkins, 821 West Cornelia Ave. Apt. 315, Chicago, Illinois 60657, U.S.A. The Respondent is represented by John W. Dozier, Jr., Esq., 4860 Cox Road, Suite 200, Richmond, Virginia 23060, U.S.A.

 

2. The Domain Name and Registrar

The domain name in dispute is <icomcast.com>.

The registrar for the disputed domain name is Easyspace Ltd.

 

3. Procedural History

This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).

The Complaint was filed on July 26, 2001, in hard copy. Also on July 26, 2001, the Center requested that the Registrar Easyspace Ltd. check and report back on the registrant for the domain name <icomcast.com>. On July 30, 2001, Easyspace Ltd. reported to the Center that the registrant was the Respondent in this proceeding.

On July 31, 2001, the Complainant submitted an electronic amendment to its Complaint in which it updated the Respondent's address.

On July 31, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and e-mail and this proceeding officially began. Respondent's Response was received by the Center electronically on August 17, 2001.

The Administrative Panel submitted a Declaration of Impartiality and Independence on August 22, 2001, and the Center proceeded to appoint the Panel on August 24, 2001. The Panel finds the Center has adhered to the Policy and the Rules in administering this proceeding.

This Decision is due by September 7, 2001.

 

4. Factual Background

Complainant is a provider of programming to cable television systems, a producer of cable television programs, and a provider of telecommunications. Complainantís systems clusters include the Mid-Atlantic (from northern New Jersey to greater Washington, D.C.), southeast Michigan (including the greater Detroit area), east Tennessee, west Florida, Indianapolis, and Albuquerque, New Mexico. Complainant also is a provider of Internet access through Comcast @Home.

The Respondent is a medical doctor. On June 23, 2000, the Respondent registered the disputed domain name <icomcast.com>.

By letter dated May 15, 2001, counsel for Complainant alleged trademark infringement and demanded that Respondent transfer the disputed domain name to it (Complaint Annex E) although the Respondent states he did not receive this letter. On June 14, 2001, the Complainant sent the Respondent an e-mail alleging trademark infringement and demanding the Respondent transfer the domain name to the Complainant (Complaint Annex F). Respondent replied by e-mail on June 28, 2001, and denied that he registered and was using the domain name in bad faith. Respondent cited his plans to use the domain name in connection with a medical profession website (Complaint Annex G). The Respondent refused to transfer the domain name and the Complainant now seeks transfer of the domain name in this proceeding.

 

5. The Parties' Contentions

Complainantís Contentions:

- Complainant and/or its affiliated entities have continuously and extensively used the COMCAST mark to identify, advertise and promote their products and services since April 1, 1969.

- Complainant has also used and federally registered a family of marks containing its house mark Comcast, Comcast Country, Comcast Digital and so on.

- Complainant has developed extremely valuable goodwill and an outstanding reputation in its Comcast marks which are associated exclusively with Complainant and/or its affiliated entities.

- Respondent is not a licensee of Complainant, nor is he authorized to use Complainantís Comcast mark. Respondent registered the <icomcast.com> domain name without the authorization, knowledge or consent of Complainant.

- The second level domain name of Respondentís <icomcast.com> domain name is virtually identical to Complainantís Comcast mark. Respondent simply appended the generic prefix "i" to Complainantís Comcast mark and registered the slightly altered trademark as a domain name.

- Respondentís <icomcast.com> domain name currently resolves to the Easyspace LTD registrarís website, which informs visitors that the domain name is "Registered for a Client."

- The Respondent has never been commonly known by the disputed domain name.

- The Respondent is holding the disputed domain name in bad faith. Given the distinctiveness of Complainantís Comcast mark and the amount of advertising and promotion associated with the mark, it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name in the future. Such passive holding constitutes bad faith.

- The Respondent also is in bad faith because he furnished inaccurate personal contact information to the registrar of the domain name.

- The Respondent attempted to sell the domain name back to the Complainant for more than he paid for it.

Respondent's Contentions:

- Respondent is a medical doctor and a resident anesthesiologist. He registered the <icomcast.com> domain name as an abbreviated reference to "Internet College of Medicine", a web site which is to become upon launch a venue for the education and exchange of information among medical professionals.

- At or about the time of the registration of the subject domain name, Respondent also registered <medpier.com>, <emedlist.com>, <meddeposit.com>, <medcircles.com>, <medmetro.com>, <medforward.com>, <medintern.com>, <medintern.org>, and <medresident.net>.

- In addition, Respondent is an antique car buff and has a great interest in restoring old cars. He also registered <carnetcast.com>, <carnetcast.net>, <icarcast.com> and <webcarcast.com> to preserve the names for another venture he is pursuing relating to automobile restoration.

- At the time the Respondent registered the disputed domain name, he was not aware of the Complainant (Response para 7).

- Respondentís medical website will provide information on cardiology and electrocardiogram reading, medications for pain management, ethical considerations related to dying patients, timeline and related requirements and guidance for medical students in their last two years and through residency relating to specializations such as anesthesia, cardiology, surgery, psychiatry and internal medicine, guidance on medical literary search methodology, basic physical exam procedures, downloadable palm pilot programs.

- Respondent has undertaken significant work on the development of the web site as well as completed a significant portion of the outlines for "lectures" well prior to any notice of this domain name dispute. It is clear that even perfunctory preparations have been held sufficient to establish the registrantís rights in, or legitimate interests to, a disputed domain name. In addition, the domain name and trademarks are generic in nature, comprised of two very common abbreviations.

- It is clear that Respondent has not acted in bad faith. Respondent has not acquired the domain name for resale.

- Respondent and the Complainant are in different industries and Respondent has no interest in luring consumers of services provided by Complainant.

- Respondentís contact details changed because Respondent moved to Chicago.

- While it initially may appear, without research or investigation, that this domain name is being passively held in the sense that it does not resolve to a launched site, many validly held domain names resolve to a registrarís web site when a company is in the development state.

- The claims brought by the Complainant are in bad faith and are an effort to Reverse Domain Name Hijack the <icomcast.com> domain name.

- The Panel should find the Respondent is the rightful owner of the disputed domain name.

 

6. Discussion and Findings

In order for Complainant to prevail and have the disputed domain name <icomcast.com> transferred to it, Complainant must prove the following (the Policy, para 4(a)(i-iii):

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith

Identical or Confusingly Similar

The Complainant has produced exemplary copies and a printout from the United States Patent and Trademark Officeís TESS database showing multiple registrations on the principal register for the Complainantís Comcast service mark. There is for example registration no. 1,421,433 dated December 16, 1986, in int. classes 103 and 104 for installation of sound reproducing systems (Complaint Annex B). In the face of this evidence that the Complainant's service mark is valid and subsisting, the Panel dismisses the Respondent's contention that the mark is generic.

In registering the disputed domain name, the Respondent merely added "i" to the Complainantís service mark. As the Complainant contends, in the context of the Internet, the "i" is generic. Thus the Panel finds the Respondent has registered a domain name, <icomcast.com>, that is confusingly similar to the Complainantís service mark. (See e.g. Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Lts., ICANN/WIPO Case No. D2000-0802, September 9, 2000, where <itoyota.com> was found confusingly similar to Toyota; Nike, Inc. v. Crystal International, ICANN/WIPO Case No. D2001-0102 February 2, 2001, where <inike.net> was found to be confusingly similar to Nike)

Legitimate Rights or Interests

The Complainant states the Respondent registered the disputed domain name "without the authorization, knowledge or consent of Complainant."

The Respondent contends he has long begun making plans to use the disputed domain name for a website that would be a forum for the exchange of medical information and also would offer lectures for medical students written by the Respondent among others (Response Annex A). The Respondent thus does not claim a non-commercial fair use but rather a bona fide offering of goods and services under the Policy at 4c(i).

The Respondent contends he registered "icomcast" to stand for "Internet College of Medicine". The Respondent says that he also registered <emedlist.com>, <meddeposit.com>, <medcircles.com>, <medmetro.com>, <medforward.com>, and <medintern.com> in the same context. The Panel does not believe the Respondentís contention: it does not in the least appear that "icomcast" stands for Internet College of Medicine, but instead that the Respondent contrived this argument ex post to use in this proceeding.

In his response to the Complainant's June 14, 2001 letter, the Respondent writes about using the domain name for a medical information website but does not mention the "Internet College of Medecine" (Complaint Annex G).

The Panel notes that all the other domain names have "med" in them, which allows the inference that they refer to medicine. Not so with the disputed domain name <icomcast.com>. Moreover, the Respondent has not shown a shred of proof, other than the unbelievable assertion that the disputed domain name stands for Internet College of Medicine, that he has begun preparations to carry out the offering of services he claims. The Respondent has exhibited a potpourri of medical information at his Annex A(4), but this does not at all comport with the ambitious web site plans the Respondent sketched out in the Response at para 8. The Respondent makes no copyright claim to authorship of the exhibited medical information, which could be downloaded from the web or scanned from a few books in a matter of minutes. Also, as the Respondent has just finished medical school and is doing his residency, i.e., is completing his own medical training, it seems unlikely he could already be preparing lecture courses for others for their last 2 years of medical school and for their residency (Response, Annex A, Respondent Affidavit, para 3).

The Panel finds the Respondent does not have legitimate rights or interests in the disputed domain name.

Registered and Used in Bad Faith

The Complainant contends the Respondent intended to violate the Policy at 4b(i) when he wrote to the Complainant in answer to the Complainant's June 14, 2001 letter: "My creative efforts had much to do with the choice of the name and I am not willing to give all of this up because of a mere threat of litigation. However, I would like to resolve these issues and I am willing to consider any alternatives you might propose." The Panel believes that, in the absence of an improbable explicit offer to sell a domain name, the offer to sell and the intent to seek profit in violation of the Policy at 4b(i) are increasingly obliquely phrased. It is thus necessary to look at the fact pattern of the Case as a whole to make a determination on the Respondent's intentions.

The Panel has already found the Respondent made no attempt to use the disputed domain name and has no legitimate rights or interests in the name. The Panel is in no doubt that, contrary to what the Respondent alleges, he was well familiar with the Complainant and its service mark when he registered the disputed domain name. Not only is the Respondent highly likely to have known about the Complainant and its service mark through the internet, but the Respondent also lived for 2 years in the Detroit area where the Complainant was offering its services (Response Annex A). It thus appears to the Panel that the only rational motive for the Respondent's registration of the disputed domain name was to sell it back to the Complainant. The Panel thus finds the Respondent has violated the Policy at 4a(iii) and 4b(iv).

The Panel also finds the Respondent is in bad faith for registering a well-known service mark and holding it with no demonstrable plans to use it, i.e., "warehousing" the domain name. This is not one of the enumerated non-exhaustive grounds for bad faith in the Policy at 4b(i-iv), but many panels have found bad faith in comparable circumstances and Rule 15a empowers panels to do so. (Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172, April 20, 2000; Dollar Fin Group Inc. v. Jewald & Assoc. Ltd., ICANN/NAF Case No. FA102000096676, April 6, 2001).

 

7. Decision

The Panel has found the disputed domain name <icomcast.com> is confusingly similar to the Complainant's Comcast service mark. The Panel next found the Respondent's asserted plans for a medical information and education website were not convincing, and did not constitute legitimate rights or interests in the domain name. And finally, the Panel determined the Respondent registered and was using the disputed domain name in bad faith in that he intended to sell the domain name back to the Complainant, and he was warehousing a domain name he knew contained Complainant's valuable service mark. In view of these findings, the Panel dismisses the Respondent's contention that the Complainant brought the Complaint in an attempt at reverse domain name hijacking (Rule 15e).

Hence, with reference to the Policy at para 4(i) and Rule 15, the Panel orders that the disputed domain name <icomcast.com> be transferred from the Respondent, John Brandon Hawkins, to the Complainant, Comcast Corporation.

 


 

Dennis A. Foster
Sole Panelist

Dated: September 6, 2001