WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comcast Corporation v. Charles McKenna and Expiry Assignment Service, Afternic, LLC - On Behalf of Domain Owner
Case No. D2020-0496
1. The Parties
Complainant is Comcast Corporation, United States of America (“United States”), represented by Wilkinson Barker Knauer, LLP, United States.
Respondent is Charles McKenna, United States and Expiry Assignment Service, Afternic, LLC – On Behalf of Domain Owner, United States.
2. The Domain Names and Registrar
The disputed domain names <xfinitycellular.com> and <xfinityfiber.com> 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 February 29, 2020. On March 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 3, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 7, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 13, 2020. On March 15, 2020, March 17, 2020, and April 13, 2020, Respondent sent informal email communications to the Center.
The Center verified that the Complaint 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 Respondent of the Complaint, and the proceedings commenced on April 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2020. Respondent did not submit a formal response. Accordingly, the Center notified the Parties the commencement of panel appointment process on May 14, 2020.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on May 22, 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
Complainant, Comcast Corporation, is a media, entertainment and communications company. Complainant provides cable television, video-on-demand and streaming, Internet access and related privacy services (including fiber optic services), telephone, home and business security and related goods and services under the mark XFINITY. Complainant owns a number of trademark registrations for the XFINITY mark in the United States in connection with its good and services, the earliest of which issued to registration on September 21, 2010 (Registration No. 3,850,803).
Respondent Charles McKenna registered the disputed domain names on February 1, 2017. The <xfinityfiber.com> disputed domain name has at various time redirected a website at “www.lobstertube.com” that contains pornographic content. The <xfinitycellular.com> disputed domain name has redirected to a parked page which advised that the domain name was for sale.
On November 10, 2017, counsel for Complainant sent Respondent a demand letter regarding the disputed domain names. Respondent apparently thereafter ceased redirecting the <xfinityfiber.com> disputed domain name to the website at “www.lobstertube.com”. On December 23, 2019, Complainant wrote a second demand letter to Respondent when the <xfinityfiber.com> disputed domain name again redirected to a website with pornographic content. The Parties had subsequent communications regarding the disputed domain names in which Respondent offered to sell the disputed domain names to Complainant. There was some back and forth between the Parties and Respondent indicated that he would be willing to sell the disputed domain names for USD 2,500. The Parties did not reach an agreement.
As of February 10, 2020, both disputed domain names were still under the name of Respondent Charles McKenna. At some point after the Complaint was filed, the <xfinitycellular.com> disputed domain name appears to have expired. Complainant subsequently paid for the renewal of the <xfinitycellular.com> domain name so as the keep the name active in this proceeding. The Registrar then listed the registrant of the <xfinitycellular.com> domain name in its Whois records as Expiry Assignment Service, Afternic, LLC - On Behalf of Domain Owner.
For purposes of this proceeding, the Panel hereinafter refers to “Respondent” to mean Respondent Charles McKenna, the owner of the disputed domain names at the time the Complaint was filed on February 28, 2020.
5. Parties’ Contentions
Complainant asserts that it has used the XFINITY mark since 2010 and obtained trademark registrations for the XFINITY mark in the United States well before Respondent registered the disputed domain names on February 1, 2017. Complainant also contends that the XFINITY mark is well known in connection with Complainant’s services.
Complainant contends that the disputed domain names are confusingly similar to Complainant’s XFINITY mark as they each fully contain the XFINITY mark. Complainant further contends that the use of the generic terms “fiber” and “cellular” in the disputed domain names after the XFINITY mark does not distinguish the disputed domain names for purposes of analyzing the confusing similarity under the first element of the Policy.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names as Respondent (i) has never been authorized by Complainant to use the XFINITY mark, (ii) is not commonly known by the disputed domain names, and (iii) has not made any bona fide use or a legitimate non-commercial or fair use of the disputed domain names.
Lastly, Complainant asserts that Respondent registered and has used the disputed domain names in bad faith given Respondent’s attempts to sell the disputed domain names for profit and given Respondent’s use of the <xfinityfiber.com> disputed domain name to redirect web users to a pornographic website at “www.lobstertube.com”.
Respondent did not reply to Complainant’s contentions.
Respondent sent multiple informal email communications to the Center regarding the matter. On March 15, 2020 Respondent sent an email simply asking “What’s going on?”. Then on March 17, 2020, Respondent sent an email stating “I do not understand what is going on and why I’m being emailed about a domain I don’t even own.”; and on April 13, 2020 another email questioning “What’s going on here? Why do I keep receiving these emails?”. Respondent did not submit a formal response.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names are registered and are being used in bad faith.
Here, although Respondent has failed to respond to the complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns a number trademark registrations for the XFINITY mark in connection with it goods and services that predate Respondent’s registration of the disputed domain names.
With Complainant’s rights in the XFINITY mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top-Level Domain (“gTLD”) “.com”) are identical or confusingly similar with Complainant’s marks. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain names are confusingly similar to Complainant’s XFINITY mark as the disputed domain names each incorporate Complainant’s XFINITY mark in its entirety. The addition of the dictionary words “fiber” or “cellular” to the disputed domain names does not prevent a finding of confusing similarity as Complainant’s marks are identifiable in their entirety in such disputed domain names. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s XFINITY mark and in showing that the disputed domain names are confusingly similar to that trademark
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Based on the evidence submitted in this proceeding, none of which is contested by Respondent who has chosen not to file a formal response r, Respondent registered the disputed domain names after Complainant had already established rights and reputation in its XFINITY mark and services. Since registering the disputed domain names, Respondent has at various times used the <xfinityfiber.com> disputed domain name to redirect web users to a pornographic website at “www.lobstertube.com” and has used the <xfinitycellular.com> disputed domain name with a parked page that has offered that disputed domain name for sale. Such uses of the disputed domain names are essentially opportunistic and likely for profit and do not establish a legitimate use or interest, particularly in light of Complainant’s prior reputation in the XFINITY mark.
Given that Complainant has established with sufficient evidence that it owns rights in the XFINITY mark, and given Respondent’s above noted actions and failure to file a formal response, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
In view of Respondent’s actions noted above, and failure to contest Complainant’s contentions, the Panel finds that Respondent’s registration and use of the disputed domain names, which each consist of Complainant’s XFINITY mark, has been done in bad faith. Based on the evidence before the Panel, it seems more likely than not that Respondent opportunistically acquired the disputed domain names based on Complainant’s well-known XFINITY trademark for the purpose of using such to misleadingly redirect consumers to a pornographic website and/or to profit from a sale of the disputed domain names. There is little doubt that Respondent was well aware of Complainant and its brands when Respondent registered two disputed domain names based on the XFINITY mark with common words that expressly relate to the goods and services offered by Complainant under its XFINITY mark, and did so in bad faith to profit.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.
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 <xfinitycellular.com> and <xfinityfiber.com> be transferred to Complainant.
Date: June 5, 2020