Mediacom Communications Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2105001945391
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski, Jr. of Dentons US LLP, Illinois, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mediacomtlday.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 17, 2021; the Forum received payment on May 17, 2021.
On May 18, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mediacomtlday.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 May 24, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2021 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@mediacomtlday.com. Also on May 24, 2021, 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 June 16, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) 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). The disputed domain name <mediacomtlday.com> is virtually identical and confusingly similar to Complainant’s MEDIACOM mark since it incorporates the mark in its entirety, merely adding the misspelled term “tlday” and the “.com” generic top-level domain (“gTLD”).
ii) Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and is not licensed to use Complainant’s MEDIACOM mark. Additionally, Respondent fails to use the disputed 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 advertise the sale of the domain name. Respondent also engages in typosquatting.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent offers the disputed domain name for sale in excess of costs associated with registration. Respondent also uses the disputed domain name to capitalize on the goodwill associated with Complainant’s mark. Additionally, Respondent’s registration of the disputed domain name is evidence of typosquatting. Finally, Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The disputed domain name was registered on November 2, 2020.
2. Complainant has established 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).
3. The disputed domain’s resolving website offers the disputed domain name for sale at the price of $999.00.
4. Respondent previously used the disputed domain to display commercial hyperlinks.
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 asserts rights in the MEDIACOM mark based upon registration with the USPTO. Registration with the USPTO is generally 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, the Panel finds that Complainant has rights in the MEDIACOM mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is virtually identical and confusingly similar to Complainant’s MEDIACOM mark since it incorporates the mark in its entirety, merely adding the misspelled term “tlday” and the “.com” gTLD. Minor additions to a mark such as generic terms and a gTLD are generally insufficient to negate confusing similarity under Policy ¶ 4(a)(i). See AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”). Complainant argues that the additional term “tlday” is a misspelled version of the word “today” and the disputed domain name differs from Complainant’s <mediacomtoday.com> domain name by a single letter. Thus, the Panel finds that the disputed domain name is identical and/or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and is not licensed 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 the disputed domain name under Policy ¶ 4(c)(ii). 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.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed 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 “Carolina Rodrigues / Fundacion Comercio Electronico” and Complainant contends that it did not authorize Respondent’s use of the MEDIACOM mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant claims that Respondent fails to use the disputed 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 advertise the sale of the domain name. Advertising a domain name’s sale is not considered a bona fide offering of goods or services per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides a screenshot of the “for sale” page resolving at the disputed domain and notes that no other use is currently made of the disputed domain name. Thus, the Panel finds that 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).
Complainant also argues that Respondent engages in typosquatting. Typosquatting evidences a lack of rights and legitimate interests per Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Assocation v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”). Complainant claims that Respondent’s registration of a domain name that fully incorporates Complainant’s mark and differs from Complainant’s own domain name by a single letter is evidence of typosquatting.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant claims that Respondent registered and uses the disputed domain name in bad faith because Respondent offers the disputed domain name for sale in excess of costs associated with registration. An offer to sell a disputed domain name in excess of out-of-pocket costs may be evidence of bad faith per Policy ¶ 4(b)(i). See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶ 4(b)(i).”). Complainant provides a screenshot of the page resolving at the disputed domain, which offers the disputed domain name for sale at the price of $999.00. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Complainant also claims that Respondent uses the disputed domain name to capitalize on the goodwill associated with Complainant’s mark. Use of a disputed domain name to benefit from the confusion created between a domain name and a Complainant’s mark may be evidence of bad faith per Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Complainant provides a screenshot from the disputed domain showing that Respondent previously used the disputed domain to display commercial hyperlinks, presumably for commercial gain. Therefore, the Panel finds Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent’s registration of the disputed domain name is evidence of typosquatting in bad faith. Typosquatting may independently support a finding of bad faith per Policy ¶ 4(a)(iii). See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). As previously noted, Complainant claims that Respondent’s registration of the disputed domain name that fully incorporates Complainant’s mark and differs from Complainant’s own domain name by a single letter is evidence of typosquatting. The Panel agrees and finds Respondent’s bad faith registration and use per Policy ¶ 4(a)(iii)
Finally, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the MEDIACOM mark at the time the disputed domain name was registered. Actual knowledge may be found from the fame of a mark as well as the use a respondent makes of a domain name incorporating the mark per Policy ¶ 4(a)(iii). 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 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). Complainant claims that actual knowledge is shown from the fame of Complainant’s mark as well as Respondent’s typosquatting behavior in an attempt to capitalize on Complainant’s goodwill. The Panel infers, due to the notoriety of Complainant’s mark and Respondent’s typosquatting behavior that Respondent had actual knowledge of Complainant’s rights in the MEDIACOM mark at the time the disputed domain name was registered, and thus it finds Respondent’s bad faith registration and use under 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 <mediacomtlday.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 21, 2021
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