Comcast Corporation v Jamal Kahn
Claim Number: FA1708001742874
Complainant is Comcast Corporation (“Complainant”), represented by Mitchell H. Stabbe of Wilkinson Barker Knauer PLLC, District of Columbia, USA. Respondent is Jamal Khan (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xfinitycarsales.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2017; the Forum received payment on August 7, 2017.
On Aug 03, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <xfinitycarsales.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@xfinitycarsales.com. Also on August 7, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 29, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, Comcast Corporation, is one of the world’s leading media, entertainment and communications companies. In connection with this business, Complainant uses the XFINITY mark to promote and sell cable television, video-on-demand and streaming, Internet access, telephone, home and business security, and related goods and services. Complainant also uses the mark in connection with and promote car racing events, including title sponsorship of the “NASCAR Xfinity Series.”
2. Complainant has rights in the XFINITY mark based upon multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,850,803, registered Sept. 21, 2010). See Respondent’s <xfinitycarsales.com>[1] is confusingly similar to Complainant’s mark, as the domain name contains the mark in its entirety, adding the words “car” and “sales” as well as the generic top-level domain name (“gTLD”) “.com” in order to form a domain name.
3. Respondent has no rights or legitimate interests in the <xfinitycarsales.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized or licensed Respondent to use the XFINITY mark for any reason.
4. While Respondent purports to be operating a physical “XFINITY Auto Sales” used car business, photographs of the purported location do not show any such business. Respondent’s use of the domain name is not sufficient to create rights or legitimate interests in the name. Rather, there is no evidence that Respondent is operating a used car business as it claims, and even if Respondent were doing so, using a domain name to direct Internet users to a web site promoting a business that is unrelated to Complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
5. Respondent has registered and used <xfinitycarsales.com> in bad faith. Respondent is using the domain name to attract Internet users for commercial gain. This effect is exacerbated by the fact that Respondent’s purported business is related to Complainant’s sponsored automotive events. Also, due to the fame of the XFINITY mark, Respondent clearly had knowledge of Complainant and its rights at the time it registered and subsequently used the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the XFINITY mark. Respondent’s domain name is confusingly similar to Complainant’s XFINITY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <xfinitycarsales.com> domain name and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the XFINITY mark based upon registration of the mark with the USPTO (e.g. Reg. No. 3,850,803, registered Sept. 21, 2010). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Complainant next claims that Respondent’s <xfinitycarsales.com> is confusingly similar to Complainant’s XFINITY mark, as the domain name contains the mark in its entirety, adding the words “car” and “sales” as well as the gTLD “.com” in order to form a domain name. Addition of generic or descriptive terms and a gTLD to a mark do not distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain). The Panel therefore finds Respondent’s <xfinitycarsales.com> is confusingly similar to Complainant’s XFINITY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <xfinitycarsales.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, Forum FA 873137 ( Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in <xfinitycarsales.com> as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the XFINITY mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Jamal Khan.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <xfinitycarsales.com> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <xfinitycarsales.com> domain name is shown by Respondent’s failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant has provided evidence that Respondent’s <xfinitycarsales.com> resolves to a website that purports to sell used cars. Use of a confusingly similar domain name to divert Internet users to a website unrelated to a complainant’s business does not amount to a use establishing rights or legitimate interests per Policy ¶¶ 4(c)(i) and (iii). See Vanderbilt Univ. v. U Inc., FA 893000 (Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).
Further, while Respondent lists the address for its used car business as 8351 Long Point Road, Houston, Texas, photographs of the location show no such business at that site. In a very similar case, the fact that a purported business was not located at a claimed site was used to determine that the domain name was not being used in connection with a bona fide offering of goods or services. See BGC Partners, Inc., BCG Partners, L.P. v. Bob Jenkins, D2009-0856 (WIPO Aug. 21, 2009 (in which evidence showing that Respondent’s address was an empty lot was used to determine Respondent was not making a bona fide offering of goods or services). The Panel holds that Respondent lacks rights and legitimate interests in the <xfinitycarsales.com> domain name as shown by its failure to use the domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s use of <xfinitycarsales.com> to divert Internet users for commercial gain indicates that it has registered and used the domain name in bad faith. Registration and use of a confusingly similar domain name to divert Internet users for profit can be evidence of bad faith per Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). Complainant further contends that due to Respondent’s inclusion of the XFINITY mark entirely in the <xfinitycarsales.com> domain name, as well as Complainant’s previous and continuing involvement in the automotive sports space, Internet users are likely to be diverted to Respondent’s website. This is further support for the Panel’s conclusion that Respondent acted in bad faith per Policy ¶ 4(b)(iv) in registering and using the domain name.
Complainant also contends that, due to the fame and notoriety of the XFINITY mark, Respondent clearly had actual knowledge of Complainant and its rights in the mark. The Panel agrees. This is further support for the Panel’s conclusion that Respondent registered the <xfinitycarsales.com> domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xfinitycarsales.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 6, 2017
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