WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Comcast Corporation v. Tonic Marketing Ltd.

Case No. D2015-1617

1. The Parties

Complainant is Comcast Corporation of Philadelphia, Pennsylvania, United States of America, represented by Wilkinson Barker Knauer, LLP, United States of America.

Respondent is Tonic Marketing Ltd. of Belize City, Belize, internally represented.

2. The Domain Names and Registrar

The disputed domain names <thexfinitycenter.com> and <xfinitytheatre.net> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2015. On September 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 18, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2015. The Response was filed with the Center on October 5, 2015.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 21, 2015. 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 submitted a supplemental filing on October 27, 2015.

4. Factual Background

Complainant is a leading media, entertainment and communications company located in the United States.

Complainant provides cable television, video-on-demand and streaming, Internet access, telephone, home and business security and related goods and services under the XFINITY trademark.

Complainant owns United States federal trademark registrations for XFINITY, dating back to at least 2010. Complainant additionally claims trademark rights in XFINITY CENTER and XFINITY THEATRE. These claimed rights appear to be common law in nature.

The disputed domain names <thexfinitycenter.com> and <xfinitytheatre.net> were registered on July 7, 2014 and March 5, 2014, respectively.

Respondent is using the disputed domain names to resolve to websites offering links to information, advertising and tickets sale platforms about the Xfinity Center and the Xfinity Theatre, two entertainment venues in the United States.

5. Parties’ Contentions

A. Complainant

Complainant has been using the XFINITY trademark in commerce in the United States since February 2010.

Complainant has also incorporated its XFINITY trademark in numerous other trademarks that are used or licensed for use for various goods and services, including, but not limited to the use of XFINITY CENTER since December 11, 2013, for an outdoor entertainment venue located in Mansfield, Massachusetts, United States, and XFINITY THEATRE since March 2014, for an outdoor/indoor entertainment venue in Hartford, Connecticut, United States.

With respect to the disputed domain names and its trademarks, Complainant states that:

- the disputed domain names are identical to Complainant’s XFINITY CENTER and XFINITY THEATRE trademarks, respectively. The Complaint also adds that the disputed domain names are confusingly similar to Complainant’s XFINITY trademark, with the only difference being the addition of the generic terms “the,” “center” and “theatre”.

With respect to Respondent rights or legitimate interests in relation of the disputed domain names, Complainant states that:

- Respondent has never been authorized by Complainant to use any of the XFINITY trademarks as a mark or as part of a domain name, which gives rise to a presumption that Respondent cannot establish that it has rights or legitimate interests in the disputed domain names.

- Respondent cannot establish rights in the disputed domain names based on its claim that it is merely operating fan websites and therefore has engaged in legitimate noncommercial or fair use of the XFINITY trademarks: to the contrary, the existence of sales and third-party advertising on Respondent’s websites unquestionably establishes that its claims to have noncommercial websites are nothing more than a pretext for commercial advantage.

- Previous UDRP decisions have consistently held that use of a domain name for a purported fan website, which, in fact, generates revenue, cannot give rise to any rights or legitimate interests in the domain name.

- Even if Respondent claims not to receive compensation, UDRP panels have found that the presence of advertisements constitutes a commercial element that precludes a finding of fair use.

- Use of a domain name reflecting a mark for a purported fan website, which, in fact, generates revenue is not a bona fide offering of goods or services and thus also cannot give rise to any rights or legitimate interests in the disputed domain name on that basis.

- In response to Complainant’s demands, an oblique offer to sell the disputed domain names was made: the use of a domain name for the purpose of soliciting offers for purchase of the domain name is also not a bona fide offering of goods or services under the terms of the Policy.

- Both Parties engage, directly or indirectly, in the sale of tickets to events at the respective venues. Respondent’s use of the disputed domain names constitutes an intentional effort to trade on Complainant’s well-known marks by luring Internet users to its websites, which offers services that are competitive with Complainant’s services.

- Even if Respondent asserts that it is not the party that is selling tickets, the disputed domain names resolve to websites displaying numerous links to third party sites, some of which provide the same or similar services as Complainant, e.g., selling tickets to events held at the respective venues. Respondent presumably receives compensation in the form of “click through” or web page impression revenues from the third parties to whom visitors are redirected. Prior UDRP decisions have consistently found that such conduct cannot constitute a bona fide offering of goods or services under the Policy.

- Respondent has not been commonly known by the disputed domain names.

With respect to the disputed domain names being registered and used in bad faith, Complainant states that:

- Respondent’s sites include advertising, links to commercial sites and pop-up ads: it is well established that where a respondent registers domain names to attract Internet users looking for Complainant’s website for its own commercial gain, the domain names were registered and are being used in bad faith.

- Despite Respondent’s effort to characterize its activities as operating fan websites, the pervasive advertising and links to advertising throughout the sites evidence bad faith use and registration.

- Respondent’s websites also promote goods and services that are very similar or identical to those offered under the XFINITY CENTER and XFINITY THEATRE marks, e.g. selling tickets to events at the respective venues. Respondent’s use of the disputed domain names in such circumstances supports an inference that Respondent registered the disputed domain names in bad faith in order to disrupt the business of Complainant.

- Respondent’s registration of two domain names that are identical to Complainant’s XFINITY CENTER and XFINITY THEATRE marks in a manner that prevents Complainant from using its marks as domain names may be deemed a pattern that supports a finding of bad faith.

- In addition to the two disputed domain names, Respondent or an individual who previously held the registrations for the disputed domain names before they were transferred to Respondent has registered at least a dozen other domain names that consist of or incorporate the name of entertainment venues and is using them in the same manner as the disputed domain names.

- Respondent’s actions in registering multiple domain names that infringe or are confusingly similar to the well-known marks of others constitutes a pattern of conduct indicative of bad faith under paragraph 4(b)(ii) of the Policy.

- Respondent’s inclusion of disclaimers on its web sites is insufficient to avoid a finding of bad faith.

Complainant requests the transfer of the disputed domain names.

B. Respondent

Respondent filed a one page explanation of its position.

Respondent argues that Complainant “rents naming rights for a particular musical venue”.

Respondent states that “[it has] a relationship with the entertainment venue[s] to operate a fansite to promote upcoming events and aid them in selling more tickets”. Respondent state that “[it has] occasionally receive[d] emails with announcements, event cancellations, and any other information to keep users informed. Respondent states that [it operates] as a free marketing tool for the venue called Xfinity Center”.

Respondent states that “Xfinity do not own the venue, they purely rent the naming rights. XFINITY do not have a say or influence over the venues marketing strategy. If the venue wants to use fansites as a means of free marketing that is the sole discretion of the venue owner. XFINITY has no place meddling with or disrupting practices of a venue it’s rented naming rights for”.

With respect to Complainant’s claimed trademark XFINITY CENTER, Respondent states that the trademark has not been registered for use with entertainment venues.

With respect to bad faith, Respondent states that Respondent operates as a fansite and has a good relationship with the venue. Respondent also argues that Complainant “goes to great deceptive lengths in an attempt to show the opposite”.

Respondent also enumerates the following elements in its defense:

- Meta data very clearly labels the websites as fansites.

- The footer of every page clearly states “made by fans, for fans”.

- The main header image on every single page clearly states “fansite”.

- There is a link to the disclaimer page on both the header and footer of each page.

- The main page text clearly states who owns the venue.

- The contact page clearly states that the sites are fansites and to contact the venue directly for any enquiries.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest Respondent of the disputed domain names, Complainant must demonstrate each of the following:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Complainant has sought to file a supplemental filing. Respondent was silent on this issue. Before addressing the substantive requirements under the Policy, therefore, the Panel addresses Complainant’s request to file its supplemental filing.

Admissibility of a supplemental filing is in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.

Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent’s position on a particular point was clear. The Panel had formed its own view about the issues from the Complaint and the Response and does not consider the purported supplemental filing adds sufficiently to the resolution of the dispute to warrant its admission.

Accordingly, the Panel does not admit Complainant’s supplemental filing into the record.

A. Identical or Confusingly Similar

There is no dispute that Complainant has trademark rights in XFINITY, nor is there any dispute that the disputed domain names <thexfinitycenter.com> and <xfinitytheatre.net> are confusingly similar to the trademark XFINITY if one discounts the generic domain name suffixes “.com” and “.net”, as is typically done for the purposes of the first element analysis.

The only difference with Complainant’s XFFINITY mark is the addition of the terms “the” and “center” in the disputed domain name <thexfinitycenter.com> and the generic term “theatre” in the disputed domain name <xfinitytheatre.net>.

The addition of these terms in the disputed domain names does not dispel confusion. Complainant is operating or has leased naming rights to entertainment venues under the names “Xfinity Center” and “Xfinity Theatre”. Thus, the addition of the terms “center” and “theatre” in the disputed domain names would clearly create confusion with Complainant’s trademarks.

Respondent stated that that Complainant’s trademarks have not been registered for use with entertainment venues. However, the Panel notes that the Policy does not require trademarks to be protected in certain classes.

Given this conclusion, it is not necessary to consider whether Complainant has unregistered trademark rights in XFINITY CENTER and XFINITY THEATRE.

The Panel concludes that the disputed domain names are confusingly similar to a trademark in respect of which Complainant has rights.

B. Rights or Legitimate Interests

The second requirement Complainant must prove is that Respondent has no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy lists certain circumstances in which a respondent may have rights or legitimate interests in a domain name. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or is likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

Complainant states that it has not authorized Respondent to use the disputed domain names and that Respondent is not affiliated with Complainant. Complainant has not licensed Respondent to use its trademarks. The disputed domain names are plainly not derived from Respondent’s name. From the available record, Respondent does not appear to hold any trademarks for the disputed domain names.

In these circumstances, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the burden of production on the second element shifts to Respondent.

Respondent purports to have a “relationship with the entertainment venue to operate a fansite to promote upcoming events and aid them in selling more tickets”. As stated, the burden of production is on Respondent to show any rights or legitimate interests. However, Respondent has not offered any evidence that there is such relationship. Without any supporting evidence, the Panel has no alternative but to find that Respondent has no rights or legitimate interests in respect of the disputed domain names.

With respect to Respondent’s claim that the disputed domain names are used in connection with fan sites, the WIPO Overview 2.0, paragraph 2.5, makes clear there are two competing views on whether use of a domain name for a fan website amounts to giving the respondent a right or legitimate interest in the domain name. One view is that a fan site operator does have a right or legitimate interest in a domain name containing a complainant’s mark, so long as the site is active, clearly noncommercial and clearly distinctive from any official site. The other view is that a fan web site operator does not have a right or legitimate interest in a domain name containing a complainant’s mark, because the respondent is misrepresenting itself as being that individual or entity and is preventing the mark owner from exercising its rights to the mark.

This Panel is inclined to consider that the second view represents the correct approach under the Policy.

In any event, given the commercial nature of the websites, the Panel does not consider that they give rise to rights or legitimate interests under either view.

The disputed domain name <thexfinitycenter.com> redirects to “www.mansfieldamp.com”. The website contains a menu with a “ticket info” tab with a hyperlink to the site located at “www.ticketliquidator.com” where it is possible to buy tickets for the Xfinity Center. Additionally, the website contains several apparent sponsored links.

The disputed domain name <xfinitytheatre.net> redirects to “www.hartfordtheatre.com”.

The website contains a menu with a “tickets info” tab with a hyperlink to the site located at “www.ticketmonster.com” where it is possible to buy tickets for the Xfinity Theatre. Additionally, the website contains several apparent sponsored links.

In light of the record, the Panel finds that Respondent does not succeed in showing rights or legitimate interests in the disputed domain names merely by using them as a forwarding platform to other sites consisting of platforms for the sale of tickets. The disputed domain names both offer indirectly sales and feature sponsored links. It is inconceivable to the Panel that the operator of those sites does not derive any commercial benefit from these activities.

The Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

With respect to bad faith registration, the Panel finds that the evidence shows that Respondent knew of Complainant’s trademarks at the time of registering the disputed domain names. This is evidenced by the fact that the websites to which the disputed domain names resolve contain references to Complainant’s trademarks and also information related to the venues of the Xfinity Center and the Xfinity Theatre where Complainant is using its trademarks. Finally, Respondent’s claim that the disputed domain names are fan sites establishes that Respondent was well and truly aware of Complainant’s trademarks when Respondent registered the disputed domain names.

With respect to bad faith use, the Panel concludes that the disputed domain names are being used in bad faith based on the following:

- the disputed domain names are being used for a commercial purpose as described in the previous section.

- At the time of filing the Complaint the disputed domain names contained metatags with Complainant’s trademarks (see Annex 9 of the Complaint). This is evidence of bad faith (see Monografías.com S.A., Fernando Julián Negro v. Nick Lozikov / Moniker Privacy Services, WIPO Case No. D2008-0140; Tata Sons Limited v. tataconnect, WIPO Case No. D2006-0572; Carolina Springs Academy v. Mark LeBelle, WIPO Case No. D2005-1187).

- Respondent’s registration of the two disputed domain names prevents Complainant from using its marks as domain names.

The Panel concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain names by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site pursuant to the paragraph 4(b)(iv) of the Policy.

The Panel does not consider that the disclaimers on the websites prevent this finding, as Internet users will have already experienced confusion before these are viewable.

Thus the Panel concludes that the disputed domain names were registered and are being use in bad faith.

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 names <thexfinitycenter.com> and <xfinitytheatre.net> be transferred to Complainant.

Pablo A. Palazzi
Sole Panelist
Date: November 10, 2015