Mediacom Communications Corporation v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd
Claim Number: FA2006001899700
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski, Jr. of Dentons US LLP, Illinois, USA. Respondent is Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mediacomable.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 June 10, 2020; the Forum received payment on June 10, 2020.
On June 11, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <mediacomable.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 June 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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@mediacomable.com. Also on June 16, 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 July 8, 2020, 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, Mediacom Communications Corporation, is a cable television company that provides a variety of telecommunication services. Complainant has rights in the MEDIACOM mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,544,829, registered Mar. 5, 2002).
2. Respondent’s <mediacomable.com>[i] domain name is virtually identical and confusingly similar to Complainant’s MEDIACOM mark since it incorporates the mark in its entirety, merely adding a misspelling of the generic term “cable” and the “.com” generic top-level domain (“gTLD”).
3. Respondent does not have rights or legitimate interests in the <mediacomable.com> domain name because Respondent is not commonly known by the domain name and is not authorized to use Complainant’s MEDIACOM mark.
4. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the domain name to host pay-per-click links.
5. Respondent registered and uses the <mediacomable.com> domain name in bad faith. Respondent attracts users for commercial gain by displaying third-party commercial links.
6. Additionally, Complainant informed Respondent of its rights in the MEDIACOM mark and received no response.
7. Finally, Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MEDIACOM mark. Respondent’s domain name is confusingly similar to Complainant’s MEDIACOM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <mediacomable.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 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”).
Complainant has rights in the MEDIACOM mark based upon registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 2,544,829, registered Mar. 5, 2002). Therefore, Complainant has rights in the MEDIACOM mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <mediacomable.com> domain name is virtually identical and confusingly similar to Complainant’s MEDIACOM mark since it incorporates the mark in its entirety, merely adding a misspelling of the generic term “cable” and the “.com” gTLD. Addition of a generic or descriptive term and a gTLD is insufficient to negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Complainant contends that the added term “able” is a misspelling of the word “cable,” which is strongly related to Complainant’s business. Thus, the Panel agrees with Complainant and finds that the <mediacomable.com> domain name is identical or confusingly similar to the MEDIACOM mark per 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 <mediacomable.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, FA 873137 (Forum 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 does not have rights or legitimate interests in the <mediacomable.com> domain name because Respondent is not commonly known by the domain name and is not authorized to use Complainant’s MEDIACOM mark. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii), especially where a privacy service is engaged. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by a domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists the registrant as “Domain Admin / Domain Privacy Guard Soceidad Anonima Ltd,” and Complainant has provided evidence that it did not authorize Respondent’s use of the MEDIACOM mark. Therefore, Respondent is not commonly known by the <mediacomable.com> domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the <mediacomable.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead uses the domain name to host pay-per-click links. Redirection of Internet traffic by hosting commercial hyperlinks is not considered a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) when the domain name incorporates the mark of another. See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). Complainant provides a screenshot of the resolving webpage and has shown that Respondent attempts to capitalize on Complainant’s mark to gain revenue from click-through fees. Thus, the Panel finds this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered and uses the <mediacomable.com> domain name in bad faith since Respondent attracts users for commercial gain by displaying third-party commercial links. Use of a confusingly similar domain name to display pay-per-click links is evidence of bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). Complainant provides screenshots of the webpage resolving at the <mediacomable.com> domain. Complainant additionally notes that Respondent uses Complainant’s MEDIACOM mark in the displayed hyperlinks, putting internet users at risk of fraud, while falsely indicating an affiliation with Complainant’s brand. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant also claims that Respondent had actual knowledge of Complainant’s rights in the MEDIACOM mark at the time of registration. Actual knowledge may be found from the fame of a mark as well as the use a respondent makes of the domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (the “Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”). Complainant argues that Respondent certainly had knowledge of Complainant’s rights in the MEDIACOM mark based on Complainant’s widespread use of the mark as well as Respondent’s use of the domain name to host links such as “Mediacom Cable TV” and “Mediacom Modem.” The Panel agrees that actual knowledge exists, and that Respondent has engaged in bad faith registration and use under Policy ¶ 4(a)(iii).
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 <mediacomable.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 15, 2020
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