WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Comcast Corporation v. Yan Wei

Case No. D2016-1167

1. The Parties

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

The Respondent is Yan Wei of Haikou, China.

2. The Domain Name and Registrar

The disputed domain name <x-finity.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2016. On June 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2016, 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. In response to a notification by the Center regarding the registrant information, the Complainant filed an amended Complaint on June 16, 2016.

The Center verified that the Complaint together with the amended 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 June 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2016.

The Center appointed James A. Barker as the sole panelist in this matter on July 12, 2016. 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.

On July 27, 2016, the Panel extended the due date for the decision until August 1, 2016, in accordance with paragraph 10 and 12 of the Rules.

4. Factual Background

The Complainant is the owner of registered marks for XFINITY (referred to below as the Complainant’s mark).

The Complainant is one of the world’s leading media, entertainment and communications companies. The 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 and service mark. The Complainant has been using its mark in commerce since at least as early as February 3, 2010, on which day the Complainant announced the launch of its XFINITY line of services.

In the absence of a Response from the Respondent, the Panel has otherwise accepted the facts laid out by the Complainant, as set out further below.

There is little information about the Respondent’s business. The Complainant says that the disputed domain name was registered in February 2010. The Registrar stated that the disputed domain name was transferred into its system in April 2016, but was not able to confirm the date on which the disputed domain name was registered by the Respondent. The relevant WhoIs does however reflect a creation date of February 4, 2010.

At the date of this decision, the disputed domain name reverted to a SEDO landing page, containing a number of links relating to a large number of subjects, under headings such as “Finance”, “Shopping”, “Lifestyle”, and “Games”. The page also states that the disputed domain name is for sale.

As noted by the Complainant, the Respondent appears to have also been an unsuccessful respondent in previous cases under the Policy. For example, Bank of America Corporation v. Yan Wei, WIPO Case No. D2010-2079 involved a domain name incorporating a well-known mark which, like in this case, referred to a landing page which also stated that the then disputed domain name was for sale.

5. Parties’ Contentions

A. Complainant

The Complainant says that it has invested substantial time and resources to promote and advertise its mark. Conservatively, the Complainant has spent over USD 3 billion to advertise and promote its business, goods and services under its mark. As a result, the Complainant says that its mark is undeniably famous and indicative of high quality and of origin associated exclusively with the Complainant. The Complainant has thus developed valuable goodwill and an outstanding reputation in its mark, which are among its most valuable assets.

On February 4, 2010, the day after the Complainant announced the launch of its use of its mark, the Respondent registered the disputed domain name without the authorization, knowledge or consent of the Complainant. The Respondent is not a licensee of the Complainant, nor is it authorized to use the Complainant’s mark.

The Complainant notes that the disputed domain name redirects visitors to the website located at “www.leading-consumer-surveys.com/us/sites/index.php”. On their initial visit, consumers are presented with a supposed survey about their experiences with the XFINITY service, which states that participants will be offered exclusive gifts that are worth at least USD 50. Consumers who see this survey are likely to assume that the survey is sponsored by, affiliated with or has some connection with the Complainant unless they read the “fine print” very carefully. A visitor who accepts the invitation to participate in the survey is then asked to answer six questions regarding their personal information.

The Complainant says that it is a common practice for entities, such as the Respondent, to use and register a domain name similar to a well-known trademark to attract Internet users to what appears to be a survey, purporting to be sponsored by the trademark owner and offering a prize to participants, in order to gather the users’ information for profit.

In addition, after the initial visit, users are then directed to various third-party websites. The Complainant says that the Respondent is presumably earning a fee for each “click-through” to each of these sites. Further, users who hit the “back” button are directed to a parking or pay-per-click (“PPC”) page located at “www.x-finity.com”, with links to pages on subject matters relating to services provided under the Complainant’s mark, such as “cinema.” For each user who clicks on one of these links, the Respondent receives a payment.

On the PPC page, the following statement appears: “The owner of x-finity.com is offering it for sale for an asking price of $8,000.” The disputed domain name is also listed in the WhoIs interface of Network Solutions as a “Premium Domain Name,” which “can be purchased for $8,000.”

The Complainant first became aware of the disputed domain name on or about January 11, 2016. On April 11, 2016, a demand letter was sent to the Respondent.

Against this background, the Complainant alleges that:

- Except for the addition of the hyphen, the disputed domain name is identical to its mark. The addition of a hyphen is insufficient to avoid a finding of confusing similarity.

- The fact that the Respondent has never been authorized by the Complainant to use the Complainant’s mark as a mark or as part of a domain name gives rise to a presumption that the Respondent cannot establish that it has rights or legitimate interests in the disputed domain name. The Respondent holds itself as conducting a survey about and on behalf of the Complainant, which offers prizes upon completion, presumably to gather Internet users’ information for profit. Such activity is not a bona fide offering of goods or services. The Respondent is offering to sell the domain name registration for an asking price of USD 8,000. The use of a domain name to solicit offers for purchase of the domain name is also not a bona fide offering of goods and services under the terms of the Policy. Finally, in light of the timing of the registration of the disputed domain name, namely, one day after the Complainant publicly announced the launch of its XFINITY-branded services, the Respondent must have registered the disputed domain name only because it read or saw the announcement and knew of the Complainant’s use of its XFINITY mark. The Complainant further says that the Respondent is not commonly known by the disputed domain name; is not making a legitimate noncommercial or fair use of the disputed domain name.

- For somewhat similar reasons, the Complainant alleges that the Respondent has registered and used the disputed domain name in bad faith.

The Complainant cites a number of previous panel decisions for support of these propositions. The Complainant also notes that the Respondent has been a respondent in at least six previous proceedings under the Policy, which found that the Respondent had engaged in bad faith registration and use of the then‑disputed domain names.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:

(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 was registered and has been used in bad faith.

In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below, immediately after the consideration of a procedural issue relating to the delay in bringing the Complaint.

A. Delay in bringing the Complaint

The Complainant claims, with little supporting evidence, that the disputed domain name was registered in 2010. With no evidence on this point, the Panel is prepared to accept the Complainant’s assertion, as it is not contested by the Respondent, and is not otherwise a matter which appears obviously self-serving. If it is correct, it raises the issue of whether the Complainant has delayed bringing proceedings, and whether this is a matter that counts against it.

The Panel does not consider that the time between the 2010 creation date of the disputed domain name and the filing of the Complaint in 2016 presents an undue delay. Even if it did, a delay in bringing a complaint does not provide a defense per se under the Policy: Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma, WIPO Case No. D2010-2256. Further, the Complainant says that it only became aware of the registration of the disputed domain name in January 2016.

B. Identical or Confusingly Similar

The disputed domain name is not identical to the mark in which the Complainant has rights. However, the Panel finds that it is confusingly similar for the purposes of paragraph 4(a)(i) of the Policy.

The disputed domain name is only trivially different to the Complainant’s XFINITY mark. The only relevant difference is the insertion of a hyphen in the disputed domain name. Previous cases under the Policy have found that the insertion of a hyphen does not avoid a finding of confusing similarity. See e.g., Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281.

In these circumstances, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) requires the Complainant to establish also that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with the Complainant. See e.g., Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

In this case, the Complainant has made out such a prima facie case against the Respondent by pointing to, for example, the nature of the Respondent’s website and relevant prior decisions under the Policy.

The Respondent has submitted no reply to the case against it. There is otherwise no evidence in the case file to suggest that the Respondent might have some rights or legitimate interests in the disputed domain name. The Panel also considers that the Respondent lacks such rights or legitimate interests in the circumstances of bad faith, set out below.

For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The third matter which the Complainant must provide is that the disputed domain name was registered and subsequently used in bad faith.

Paragraph 4(b)(iv) of the Policy sets out one example of bad faith registration and use, where:

“… by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your [the Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Panel finds that this is what the Respondent has done in this case. The Complainant provides evidence that its mark is well-known. On the Complainant’s account, the disputed domain name was registered very shortly after the launch of its XFINITY-branded services. The Complainant’s XFINITY mark also appears to have a particular association with the Complainant. In these circumstances, the Panel considers that it is very likely the Respondent was aware of the Complainant’s mark, registered and used the disputed domain name to create confusion with it, and to attract Internet users to its website. The Complainant’s evidence that the Respondent’s website linked to a page purporting to be a “survey” of the Complainant’s services strongly reinforces this view.

The Respondent has also been a respondent in previous cases under the policy, involving the registration of well-known marks that were directed to SEDO landing pages: see Bank of America, op cit. This suggests that the Respondent’s registration of the disputed domain name in similar circumstances as in this case demonstrates a similar pattern of behavior.

The Respondent’s offering of the disputed domain name for sale provides further evidence of bad faith, under paragraph 4(b)(i) of the Policy. The Complainant provides evidence that the disputed domain name was offered for sale for USD 8,000, which prima facie the Panel considers is an amount that would be in excess of the Respondent’s out-of-pocket costs. While the evidence does not clearly indicate whether the sale of the disputed domain name was the Respondent’s primary motivation, the use of the disputed domain name for profit clearly was. As such, the evidence also indicates that the primary motivation of the Respondent was to take unfair advantage of the Complainant’s mark, and hope for the sale of the disputed domain name in that connection. As such, the Panel also considers there is sufficient evidence of bad faith for the purpose of paragraph 4(b)(i) of the Policy.

For these reasons, the Panel finds that the disputed domain name has been registered and used in bad faith for the purpose of 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, <x-finity.com>, be transferred to the Complainant.

James A. Barker
Sole Panelist
Date: August 1, 2016