Mediacom Communications Corporation v. Nguyễn Văn Lư
Claim Number: FA2001001877618
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski, Jr. of Dentons US LLP, United States. Respondent is Nguyễn Văn Lư (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mymediacomcc.com> and <mediacomcareers.com> (the “Disputed Domain Names”), registered with April Sea Information Technology Company Limited (the “Registrar).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 3, 2020; the Forum received payment on January 3, 2020. The Complaint was submitted in both Vietnamese and English.
On January 16, 2020, April Sea Information Technology Company Limited confirmed by e-mail to the Forum that the <mymediacomcc.com> and <mediacomcareers.com> Disputed Domain Names are registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the Disputed Domain Names. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company Limited 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 January 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 2020 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@mymediacomcc.com, postmaster@mediacomcareers.com. Also on January 20, 2020, 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 February 17, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 Disputed Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of America’s largest cable television companies. Through its interactive broadband network, Complainant provides its customers with a wide variety of telecommunications services, including high-definition cable television services, video-on-demand services, and high-speed Internet and telephone services. In addition, Complainant offers advertising services. Complainant offers its services to more than 1,500 communities across dozens of states throughout the United States.
Complainant is the owner of the “Mediacom” brand and is the owner of numerous MEDIACOM trademark registrations in the United States Patent and Trademark Office (the “USPTO) to identify and distinguish its various services, including Registration No. 2,544,829 for MEDIACOM, dated March 5, 2002; Registration No. 2,853,190 for MEDIACOM & Design, dated June 15, 2004; Registration No. 4,737,559 for MEDIACOM, dated May 19, 2015; Registration No. 5,029,768 for MEDIACOM, dated August 30, 2016; Registration No. 5,029,769 for MEDIACOM & Design, dated August 30, 2016; and Registration No. 5,620,795 for MEDIACOM Stylized, dated December 4, 2018 (collectively, the “MEDIACOM Mark”). The MEDIACOM Mark has been in continuous use in commerce in the United States since at least 1995.
Complainant has registered domain names incorporating the MEDIACOM Marks, namely <mediacomcable.com> and <mediacomcc.com>, both of which point to websites that contain information about MEDIACOM services and products. Complainant has used the aforementioned domain names since at least as early as November of 1999.
The Disputed Domain Names incorporate Complainant’s MEDIACOM Mark in its entirety, with the substitution of “cable” with the descriptive term ”careers” followed by the generic top-level domain (“gTLD”) “.com” in the <mediacomcareers.com> instance and the addition of the descriptive term “my” and the “.com” gTLD in the <mymediacomcc.com> instance.
Respondent has no rights or legitimate interests in the Disputed Domain Names, as Respondent is not commonly known by the Disputed Domain Names nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s MEDIACOM Mark(s). In addition, Respondent does not use the Disputed Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domains to display pay-per-click hyperlinks.
Respondent registered and used the Disputed Domain Names in bad faith. Specifically, the Complainant’s MEDIACOM Mark is contained in the Disputed Domain Names in its entirety. The use of a domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. Finally, bad faith may be found where the Respondent knew or should have known of the Complainant’s registration and use of the MEDIACOM Mark prior to registering the Disputed Domain Names. It strains credulity to believe that Respondent had not known of the Complainant or its MEDIACOM Mark when registering the Disputed Domain Names, especially since the Disputed Domain Names are a combination of Complainant’s aforementioned trademarks and domain names. In addition, Complainant informed Respondent of Complainant’s rights in the MEDIACOM Mark through cease and desist letters dated October 17, 2019, October 28, 2019 and November 26, 2019, through which Complainant demanded the transfer of the Disputed Domain Names. Respondent failed to respond to Complainant’s demands.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights in the MEDIACOM Mark. The Disputed Domain Names are confusingly similar to Complainant’s MEDIACOM Mark. Further, Complainant has established that Respondent lacks rights or legitimate interests in the use of the Disputed Domain Names and that Respondent registered and is using the Disputed Domain Names 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Preliminary Issue: Language of the Proceedings
Prior to discussing the three elements of the Policy, the Panel must decide on the language of the proceedings. The Registration Agreement is written in Vietnamese, thereby making the language of the proceedings Vietnamese.
Pursuant to UDRP Rule 11(a), the Panel has the authority to determine a different language for the proceedings, giving regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the Vietnamese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
In the present case, Respondent has chosen not to respond to the Complaint. The website to which the Disputed Domain Names resolve features various phrases in English including “my,” “media” and “careers”; further, the term “Mediacom”, which is the dominant portion of the Disputed Domain Names, does not carry any specific meaning in the Vietnamese language. Pursuant to Rule 11(a), giving regard to the circumstances of the case, the Panel determines that fairness and justice to both parties and due expedition are best satisfied by conducting the remainder of the proceedings in English. See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017); see also UBS AG v. ratzel laura, FA 1735687 (Forum July 14, 2017).
Furthermore, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
The Panel concludes that Complainant has shown to have rights in the MEDIACOM Mark based upon registration of the MEDIACOM Mark with the United States Patent and Trademark Office (“USPTO”), as referenced above. Registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel also concludes that the Disputed Domain Names are confusingly similar to the MEDIACOM Mark under the Policy ¶ 4(a)(i). The Disputed Domain Names incorporate Complainant’s MEDIAMCOM Mark in its entirety, with the substitution of “cable” for the descriptive term ”careers” followed by the gTLD “.com” in the <mediacomcareers.com> instance, and the addition of the descriptive term “my” and the “.com” gTLD in the <mymediacomcc.com> instance.
Additions of a generic and/or descriptive term and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and a mark under 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 a complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Complainant alleges that Respondent holds no rights or legitimate interests in the Disputed Domain Names. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Names. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the Disputed Domain Names as it did not respond to the Complaint, but given the facts of this case, the Panel finds Respondent would have been hard-pressed to furnish availing arguments, had it chosen to respond:
To wit, Respondent is not commonly known by the Disputed Domain Names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the MEDIACOM Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Where no response is filed, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name, even when the registrant appears to be associated with the complainant. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”).
Furthermore, Respondent fails to use the Disputed Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use, because each domain name resolves to a parked webpage containing competing and deceptive links through which Respondent presumably receives click-through referral fees. Such use suffices to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and ¶ 4(c)(iii).
In addition, use of a confusingly similar domain name to display competing hyperlinks is not a bona fide offering of goods or services or any legitimate noncommercial or fair use. See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business).
Here, Complainant supplied screenshots of the <mymediacomcc.com> and <mediacomcareers.com> resolving websites. Such websites display competing hyperlinks such as “Email Service,” “Check Email,” and “Payment Service,” “Bill Pay Service,” and “Mediacom Service” on the <mymediacomcc.com> resolving website, and links for “Full Time Jobs,” “Job Openings,” “Job Application,” “Apply Jobs,” and “Employment Application” on the <mediacomcareers.com> resolving website. In addition, other screenshots supplied by Complainant demonstrate that the Disputed Domain Names resolve to (i) a website containing pay-per-click links to sites promoting cable television and other telecommunications services offered by third parties and (ii) a website diverting traffic to job postings designed to similarly generate revenue via pay-per-click links.
Therefore, the Panel holds that Respondent has failed to use the Disputed Domain Names in connection with any bona fide offering of goods or services or any legitimate noncommercial or fair use, and thus the Respondent has no rights or legitimate interests in the Disputed Domain Names.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the Disputed Domain Names in bad faith.
First, the use of a domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, Respondent is attempting to attract Internet users for commercial gain by hosting third party hyperlinks to competing products on a pay-per-click basis. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Complainant provided a screenshot of the Disputed Domain Names’ resolving websites containing pay-per-click links to sites promoting cable television and other telecommunications services offered by third parties as well as a website diverting traffic to job postings designed to similarly generate revenue via pay-per-click links.
Lastly, the Panel finds that the Respondent knew or should have known of Complainant’s rights in its MEDIACOM Mark when registering the Disputed Domain Names. As noted above, the Complainant’s MEDIACOM Mark is widely known. Respondent registered the Disputed Domain Names in 2005 and 2007, years after the Complainant first obtained two of its trademark registrations for the MEDIACOM Mark, and years after Complainant first obtained registrations for the domain names <mediacomcable.com> and <mediacomcc.com> and made use of such domain names in November of 1999. It therefore strains credulity to believe that Respondent had not known of the Complainant or its MEDIACOM Mark when registering the Disputed Domain Names, especially since the Disputed Domain Names are a combination of Complainant’s aforementioned trademarks and domain names. Thus, as here, prior knowledge of a complainant’s trademarks prior to registering a domain name is sufficient to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it); 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 concludes that Respondent had actual knowledge of Complainant’s rights in the MEDIACOM Mark prior to registering the Disputed Domain Names, constituting bad faith under the Policy ¶ 4(a)(iii).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mymediacomcc.com> and <mediacomcareers.com> Disputed Domain Names be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: February 29, 2020
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