Mediacom Communications Corporation v. Host Master / Transure Enterprise Ltd
Claim Number: FA2007001903050
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski, Jr. of Dentons US LLP, Illinois. Respondent is Host Master / Transure Enterprise Ltd (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mediacommtoday.com>, registered with Above.com Pty Ltd.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 6, 2020; the Forum received payment on July 6, 2020.
On July 8, 2020, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <mediacommtoday.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 July 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 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@mediacommtoday.com.
Also on July 13, 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 August 6, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the MEDIACOM trademark and service mark acquired through its ownership of the portfolio of United States federal trademark and service mark registrations described below and the goodwill that it has established by its use of the mark in connection with the services it offers to more than 1,500 communities across dozens of states throughout the United States for over 20 years.
Complainant submits that the disputed domain name is virtually identical and certainly confusingly similar to Complainant’s MEDIACOM mark arguing that the disputed domain name incorporates the distinctive MEDIACOM mark in its entirety.
Moreover, Complainant submits that the disputed domain name combines Complainant’s MEDIACOM mark with the generic term “today,” which is used by Complainant for its official news website, <mediacomtoday.com>, merely adding the letter “m.”
Complainant argues that the addition of the single letter “m,” the generic term “today,” and the gTLD <.com> extension to Complainant’s trademark are insufficient to avoid confusion. See Mediacom Communications Corporation v. Ryan G Foo / PPA Media Services, FA1405001560467 (Forum July 8, 2014) (finding <meadiacom.com> to be a "typosquatted version" of complainant's MEDIACOM mark due to the addition of the letter “a” and the domain name to be confusingly similar to complainant's MEDIACOM mark).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Complainant’s trademark registrations evidence Complainant’s exclusive rights in the MEDIACOM mark which pre-date Respondent’s registration and use of the disputed domain name.
Complainant asserts that Respondent is not a licensee or subsidiary of Complainant and Respondent has never been authorized to use Complainant’s mark. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (lack of authorization from trademark owner for use of mark in domain name is a factor for finding that respondent has no legitimate interests in domain name).
Complainant adds that upon information and belief, Respondent has not made use of, or made any demonstrable preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, nor could Respondent do so in light of the well-known status of Complainant’s MEDIACOM mark and Complainant’s exclusive rights in that mark.
Complainant submits that Respondent instead uses the disputed domain name to resolve to a website which contains a set of pay-per-click hyperlinks as illustrated by the screenshots of the webpages to which the disputed domain name resolved as of July 6, 2020 and June 8, 2020, copies of which are exhibited in evidence in an annex to the Complaint.
Complainant submits that the disputed domain name was registered and is being used in bad faith arguing that there was no bona fide basis for the registration which Complainant alleges was done for the purposes of typosquatting in an attempt to capitalize unfairly on the goodwill of Complainant’s well-known MEDIACOM mark.
Complainant argues that given Complainant’s widespread use and registration of the MEDIACOM mark, Respondent certainly had actual notice of Complainant’s ownership of the MEDIACOM mark prior to registering the disputed domain name. Complainant argues that actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“…the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Complainant adds that use of a domain name that incorporates a widely used and registered mark may also be evidence of actual knowledge of a complainant’s rights in the mark per Policy ¶ 4(a)(iii). See 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 submits that Respondent is also blatantly engaged in typosquatting by adding “m” to Complainant’s official <mediacomtoday.com> domain name and website address attempting to divert traffic from consumers who double-type the letter “m” when trying to access Complainant’s official website.
Complainant submits that the screenshots of the website to which the disputed domain name resolves which are adduced in evidence in an annex to the Complainant shows that Respondent uses the disputed domain name to operate a website that contains pay-per-click links that refer persons to companies which provide cable television and other telecommunications services, activities from which Respondent likely derives substantial revenue.
Complainant submits that such use constitutes bad faith use and registration on the part of Respondent. See Kmart of Michigan, Inc. v. Azra Khan, NAF Case No. FA0210000127708 (finding that if Respondent profits from its diversionary use of Complainant’s mark when the domain name resolves to commercial websites, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides cable television transmission, high-speed Internet and telephone services in connection with which it uses the MEDIACOM trademark and service mark.
Complainant is the owner of the following United States federal trademark and service mark registrations:
· United States registered service mark MEDIACOM, registration number 2,544,829 registered on March 5, 2002 on the Principal Register for services in international class 38;
· United States registered service mark MEDIACOM & Design, registration number 2,853,190 registered on June 15, 2004 on the Principal Register for services in international class 38;
· United States registered service mark MEDIACOM registration number 4,737,559, registered on May 19, 2015 on the Principal Register for services in international classes 42 and 45;
· United States registered trademark MEDIACOM, registration number 5,029,768, registered on August 30, 2016 on the Principal Register for goods in international class 9;
· United States registered trademark MEDIACOM & Design, registration number 5,029,769 registered on August 30, 2016 for goods in international class 9;
· United States registered trademark and service mark MEDIACOM & Design, registration number 5,620,795, registered on December 4, 2018 on the Principal Register for goods and services in international classes 9, 38, 41, 42 and 45.
Complainant has an established Internet presence and maintains websites to which its domain names <mediacomcable.com>, registered on April 28, 1999, <mediacomcc.com> registered on November 9, 1999, and <mediacomtoday.com> registered on May 22, 2005 resolve.
The disputed domain name <mediacommtoday.com> was registered on February 27, 2010 and resolves to a website offering pay-per-click links to websites some of which offer services competing with Complainant.
Respondent availed of a privacy service to conceal its name on the published WhoIs and its identity was revealed by the Registrar in response to the FORUM’s request for verification of the details of the registration of the disputed domain name in the course of this proceeding.
In the absence of any Response or other communication from Respondent, there is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the FORUM’s request for verification of the registration details of the disputed domain name.
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 adduced uncontested clear and convincing evidence of its ownership of rights in the MEDIACOM trademark and service mark acquired through its ownership of the portfolio of United States federal trademark and service mark registrations described above. On the balance of probabilities Complainant has also acquired rights in the mark at common law established by its use of the mark in connection with the services it offers to more than 1,500 communities across dozens of states throughout the United States for over 20 years on the Internet and otherwise.
The disputed domain name <mediacommtoday.com> consists of Complainant’s distinctive MEDIACOM mark in its entirety in combination with the letter “m”, the word “today” and the generic Top Level Domain (gTLD) extension <.com>.
Complainant’s MEDIACOM mark is the initial, dominant and only distinctive element in the disputed domain name. Neither the letter “m” nor the word “today” adds any distinctive characteristic to the disputed domain name.
For the purposes of comparison, the gTLD <.com> extension may be ignored in the circumstances of this Complaint as a domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is confusingly similar to the MECIACOM trademark in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing
· that Complainant’s trademark registrations evidence Complainant’s exclusive rights in the MEDIACOM mark which pre-date Respondent’s registration and use of the disputed domain name;
· that Respondent is not a licensee or subsidiary of Complainant and Respondent has never been authorized to use Complainant’s mark;
· that upon information and belief, Respondent has not made use of, or made any demonstrable preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services;
· that in light of the well-known status of Complainant’s MEDIACOM mark and Complainant’s exclusive rights in that mark Respondent could not in any event use the disputed domain name in connection with a bona fide offering of goods or services;
· that Respondent uses the disputed domain name to resolve to a website which contains a set of pay-per-click hyperlinks as illustrated by the screenshots of the webpages to which the disputed domain name resolved as of July 6, 2020 and June 8, 2020, copies of which are exhibited in evidence in an annex to the Complaint.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Given Complainant’s pre-existing rights in the MEDIACOM mark and its use of the mark in connection with its services on the Internet prior to the registration of the disputed domain name <mediacommtoday.com>; and given that the disputed domain name which was registered on February 27, 2010 is almost identical to Complainant’s <mediacomtoday.com> registered on May 22, 2005, on the balance of probabilities the disputed domain name was registered with actual knowledge of Complainant’s pre-existing rights.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant’s mark in mind with the intention of taking predatory advantage of Complainant’s rights and goodwill in its name and mark and that the registrant of the disputed domain name was engaged in typosquatting by merely adding the letter “m” to Complainant’s established domain name and website address.
On the uncontested evidence adduced, the record shows that on the balance of probabilities the disputed domain name, which is confusingly similar to Complainant’s distinctive trademark, is being used as the address of a webpage which has pay-per-click links to third party websites some of which offer services competing with those of Complainant.
This Panel finds therefore that on the balance of probabilities, Respondent is using the disputed domain name in an intentional attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site and is thereof
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mediacommtoday.com> domain name be TRANSFERRED from Respondent to Complainant.
_____________________________________
James Bridgeman SC
Panelist
Dated: August 7, 2020
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