WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Comcast Corporation v. ICS INC

Case No. D2020-0222

1. The Parties

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

Respondent is ICS INC, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <fxfinity.com> (“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 28, 2020. On January 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 30, 2020, 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 February 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 16, 2020.

The Center appointed Marina Perraki as the sole panelist in this matter on March 23, 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

Per Complaint, Complainant is one of the world’s leading media, entertainment and communications companies. It 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 mark, used since at least as early as February 3, 2010. Complainant has invested substantial resources to promote and advertise the XFINITY mark, with over 3 billion USD investment in advertising and promotion. The XFINITY mark was ranked as no. 19 and valued at over 47 billion USD on Kantar’s 2020 BrandZ Top 100 Most Valuable United States Brands.

Complainant holds trademark registrations consisting of or including the word XFINITY, such as the United States trademark XFINITY (word) registration No. 3,850,803, registered on September 21, 2010 for services in international class 38.

The Domain Name was registered on February 20, 2012.

The Domain Name directs visitors to various websites on different domains. At times the landing page is a portal with links to advertising for or websites of others, including competitors of Complainant and at times a website with content that has been determined to be unsafe to consumers, such as viruses or malware, and is blocked by a safety filter.

Complainant sent a cease and desist letter to Respondent on July 26, 2019 to which Respondent did not reply.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is 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 Domain Name; and

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

A. Identical or Confusingly Similar

The Domain Name incorporates Complainant’s trademark XFINITY in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The addition of the letter “f” in the beginning of the Domain Name does not avoid a finding of confusing similarity (Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302; mytheresa.com GmbH v. Domain Admin Private Registrations Aktien Gesellschaft, WIPO Case No. D2013-0904). Furthermore, such addition is an obvious or intentional misspelling of Complainant’s trademark XFINITY which further supports the finding of confusing similarity to such trademark WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9.

The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Name is confusingly similar to the XFINITY mark of Complainant.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.

Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant has demonstrated, the Domain Name sometimes resolves to a page displaying numerous links to third party sites, some of which are competitors of Complainant and/or provide the same or similar services as Complainant, and sometimes to a website containing viruses or malware.

As per Complainant, presumably Respondent received pay-per-click (“PPC”) fees from the linked websites that were listed at the Domain Name’s website and used the Domain Name for its own commercial gain . The use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with Complainants’ trademark (Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302; WIPO Overview 3.0 , section 2.9 ).

Furthermore, this indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry competitors (Safepay Malta Limited v. ICS Inc, WIPO Case No. D2015-0403). The diversion of Internet users to competitors of Complainant does not give rise to any rights or legitimate interests in the Domain Name on the part of Respondent within the meaning of paragraph 4(c) of the Policy.

In addition, the Domain Name incorporates in whole Complainant’s mark and thus carries a high risk of implied affiliation (WIPO Overview 3.0 , section 2.5.1 ).

Furthermore, use of a domain name for illegal activity (e.g., distributing malware) can never confer rights or legitimate interests on a respondent (WIPO Overview 3.0, section 2.13.1).

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith.

Because the XIFINITY mark was well known at the time of the Domain Name registration by Respondent, as repeatedly recognized (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 Panel finds likely that Respondent had Complainant’s mark in mind when registering the Domain Name (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Respondent could have searched the United States trademark registry and would have found Complainant’s prior registrations in respect of XFINITY (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).

Furthermore, the Domain Name incorporates in whole Complainant’s mark with the addition of the letter “f” thus typosquatting in bad faith on Complainant’s well-known trademark (WIPO Overview, sections 3.1 and 3.2).

As regards bad faith use, Complainant demonstrated that the Domain Name leads at times to a parking website displaying PPC links, including to websites of competitors of Complainant.

It has been recognized that such use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith (McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Volkswagen Aktiengesellschaft v. Robert Brodi, WIPO Case No. D2015-0299; WIPO Overview 3.0, section 3.5). Accordingly, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark.

Furthermore, registration of a disputed domain name for directing Internet users, including customers and potential customers of Complainant to the website of a competitor of Complainant, constitutes bad faith registration and use (item Industrietechnik GmbH v. Kevin Caulfield, WIPO Case No. D2015-0725; Safepay Malta Limited v. ICS Inc.,supra).

As Complainant demonstrated, Respondent also used the Domain Name to at times direct visitors to websites containing viruses or malware. This activity further evidences bad faith (Andrey Ternovskiy dba Chatroulette v. Transfer Service, Sedo.com, LLC, WIPO Case No. D2018-2510).

Lastly, as Complainant demonstrated, Respondent is a “systematic cybersquatter” engaged in a series of domain name registrations that infringe trademarks of third parties (Accenture Global Services Limited v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / I S, ICS INC, WIPO Case No. D2018-2726; Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC / I S, ICS INC, WIPO Case No. D2018-2532). Per Complainant, a search for prior UDRP decisions identified approximately 200 cases involving Respondent where a transfer was ordered.

This pattern supports a finding of bad faith registration (Dr. August Oetker Nahrungsmittel KG v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2007-1664; The Procter & Gamble Company v. Whoisguard, Inc. / Enzo Gucci, Xtremcare, Tony Mancini, USDIET, USDIET Ltd, WIPO Case No. D2016-1881).

The failure of Respondent to reply to the cease and desist letter of Complainant and to submit a Response are also further evidence of bad faith.

Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.

Complainant has established Policy paragraph 4(a)(iii).

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 Domain Name <fxfinity.com> be transferred to Complainant.

Marina Perraki
Sole Panelist
Date: April 6, 2020