Charter Communications Holding Company, LLC v. Dartes Kelly / Tech-Center
Claim Number: FA2106001950248
Complainant is Charter Communications Holding Company, LLC (“Complainant”), represented by Lian Ernette of Holland & Hart LLP, Missouri, USA. Respondent is Dartes Kelly / Tech-Center (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spectrum-enterprise.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on June 8, 2021; the Forum received payment on June 8, 2021.
On June 9, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <spectrum-enterprise.us> domain name (the 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of July 6, 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@spectrum-enterprise.us. Also on June 15, 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 formal Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
Complainant submitted an Additional Submission on July 6, 2021 in response to an email received from Respondent by the Forum.
On July 9, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a formal Response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a telecommunications company. It has rights in the SPECTRUM mark and various additional SPECTRUM-formative marks based on its registration of those marks with the United States Patent and Trademark Office (“USPTO”). Respondent’s <spectrum-enterprise.us> Domain Name is confusingly similar to Complainant’s SPECTRUM mark because it incorporates the entire SPECTRUM mark, simply adding the generic term “enterprise” and the “.us” county code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Complainant has not authorized Respondent to use the SPECTRUM marks and he is not commonly known by the Domain Name. Respondent does not use the Domain Name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the Domain Name to pass off as Complainant in emails and the Domain Name resolves to a pay-per-click web site. The Domain Name does not resolve to an active website.
Respondent registered or uses the Domain Name in bad faith. He had actual knowledge of Complainant’s rights in the SPECTRUM marks when he registered the Domain Name, he uses the Domain Name to pass off as Complainant in emails, and he uses the confusingly similar Domain Name to attract Internet users to his commercial pay-per-click web site.
B. Respondent:
Respondent did not submit a formal Response in this proceeding but shortly after the Complaint was served upon him the Forum received an email from him stating that Complainant does not own the trademark SPECTRUM ENTERPRISE, having relinquished it. He attached a screenshot of the Trademarkia web site stating that Complainant had voluntarily surrendered the trademark “SPECTRUM ENTERPRISE NAVISITE” on January 30, 2021. He then requested that the Complaint be dismissed and stated that he would continue to use the Domain Name.
C. Complainant Additional Submission:
Complainant has or had rights in the SPECTRUM ENTERPRISE NAVISITE mark. It previously owned that mark (USPTO Reg. 5,399,612), but sold its NAVISITE business, along with the mark in 2019. Complainant has further rights in the SPECTRUM ENTERPRISE mark through its continuous use of that mark on its website.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision, except where differences in the two policies require a different analysis.
The July 6, 2021 email sent by Respondent does not conform with the requirements of Rule 5. Further, even if all of the allegations in that email were true, those allegations would not constitute a defense to Complainant’s claims in this proceeding. The Panel does not consider that email to constitute a formal Response and does not address the allegations contained in it further.
In view of Respondent's failure to submit a formal Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The SPECTRUM mark was registered to Complainant with the USPTO (Reg. No. 6,311,602) on April 6, 2021 (Complaint Exhibit 3). Complaint Exhibit 3 also contains USPTO registration certificates for many SPECTRUM-formative trademarks dating from as early as 2016 (e.g., Reg. No. 5,028,677 for SPECTRUM BUSINESS). Complainant’s registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <spectrum-enterprise.us> Domain Name is confusingly similar to Complainant’s SPECTRUM mark because it incorporates that mark in its entirety, merely adding a hyphen, the generic term “enterprise,” and the “.us” ccTLD. These changes do not distingujish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark), Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)), Lockheed Martin Corp. v. Roberson, FA 323762 (Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity ”typically involves a side-by-side comparison of the domain name and the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the SPECTRUM mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) The respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(iii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iv) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Complainant has not authorized Respondent to use the SPECTRUM marks, (ii) Respondent is not commonly known by the Domain Name, (iii) Respondent does not use the Domain Name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use because he uses it to pass off as Complainant in emails and the Domain Name resolves to a pay-per-click web site, and (iv) the Domain Name does not resolve to an active website. These allegations are addressed below.
First, however, Complainant did not address or offer evidence specifically bearing upon the Policy ¶ 4(c)(i) factor stated above. Typically, Complainants in usTLD cases search one or more governmental trademark authorities and report negative results to establish a prima facie case as to Policy ¶ 4(c)(i). Complainant here offered no such evidence. Nevertheless, while Complainant should have offered evidence bearing specifically upon this element of the case, the evidence that is available is sufficient to establish an inference that Respondent is not the owner or beneficiary of a trade or service mark identical to the Domain Name. The registration certificates issued to Complainant by the USPTO evidence its rights in the SPECTRUM mark dating from 1993, the date of first use in commerce. The number of SPECTRUM-formative trademarks issued to Complainant by the USPTO (Complaint Exhibit 3) demonstrates that the USPTO is well-aware of Complainant and its rights to the SPECTRUM mark. The Domain Name was registered in January 2019 (Complaint Exhibit 1) and there is no evidence of any other use of that name by Respondent. On this evidence, and in the absence of any evidence to the contrary, it is extremely unlikely that the USPTO would have registered a trademark identical to <spectrum-enterprise.us> in the name of any person other than Complainant, one of its affiliates, or an authorized assignee, or that Respondent could under any circumstances be the owner or beneficiary of a valid common law trade or service mark identical to the Domain Name. The Panel finds there is a prima facie case that Respondent is not the owner or beneficiary of a valid common law trade or service mark identical to the Domain Name.
Complainant states that it has not authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The WHOIS information furnished to the Forum by the registrar lists “Dartes Kelly / Tech-Center” as the registrant of the Domain Name. Neither of these names bears any resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), 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). The Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(iii).
Complaint Exhibit 8 is a screenshot of the web site resolving from the Domain Name. It is a parked page with Go-Daddy containing a list of links with titles including “Spectrum-Business,” “Business Management Software,” “Management Software,” “Enterprises” and the like. It is a typical pay-per-click site. Using a confusingly similar domain name to attract Internet traffic to a webpage that offers pay-per-click links to goods and services, whether related or unrelated to a complainant’s business, is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iv). McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”), Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees), Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”).
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, as discussed above, the web site resolving from the domain name is a pay-per-click site. Pay-per-click sites are common on the Internet. Under the most common forms of business arrangements relating to these sites, when a visitor to the site clicks on one of the links which appear there, the site sponsor receives compensation from the various web site owners who are forwarded from the site. In most cases, the site sponsor receives compensation based upon the number of hits the downstream web site owners get from being linked to Respondent’s web site. AllianceBernstein LP v. Texas International Property Associates, Case No. D2008-1230 (WIPO, 2008) (the domain name resolved to a search directory site with links to third-party vendors and the panel inferred that the respondent received click-through-fees when site visitors clicked on those links), Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain). Respondent’s use of the Domain Name is commercial also because the sponsors of the various web sites forwarded from Respondent’s web site benefit from the subsequent interest and purchases of those who visit the sites. UDRP panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO, 2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Complainant alleges that Respondent is using the Domain Name for an email address from which he represents that he is affiliated with Complainant and offers Complainant’s services. In support, Complainant submitted Complaint Exhibit 10, which it states consists of excerpts from a deposition of Respondent taken at some unspecified time in connection with a matter the nature of which is not explained either. In any event, it appears that this Exhibit is genuine and in his deposition Respondent admits that he began using the email address dartes@spectrum-enterprise.us while employed by Complainant and has been using it as his personal email address since his employment there terminated. Cases of passing off typically involve other misconduct in addition to the impersonation, most typically attempts to defraud unsuspecting Internet users either by emails or purportedly offering goods or services for sale from a web site. In this case, however, no copies of any emails Respondent actually sent from this address are in evidence and there is nothing else in the record to support Complainant’s allegation that he is using this email address “for his own financial gain and reputational harm to Complainant, and to defraud Complainant’s vendors.” Nor is there any evidence that Respondent is using the Domain Name or his email address to compete with Complainant in any way. Nevertheless, the email address, in and of itself, does imply a relationship or affiliation between Respondent and Complainant which does not in fact exist. Under these circumstances the Panel finds that a case of passing off has been made. Passing off may not fall within any of the circumstances described in Policy ¶ 4(b), but that paragraph acknowledges that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The nonexclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith and using a confusingly similar domain name to misrepresent a non-existent affiliation with a complainant is dishonest and is evidence of bad faith, even in the absence of evidence of any other misconduct or unlawful behavior associated with the impersonation.
Respondent was employed by Complainant when he registered the Domain Name, but Complainant’s uncontested allegations that it never authorized Respondent to use any of its marks is persuasive evidence that that registration was wrongful and in bad faith at that time. Respondent’s continuing use of it after his employment terminated certainly is wrongful, in bad faith, and this alone is sufficient under the terms of Policy ¶ 4(a)(iii).
Finally, it is evident that Respondent had actual knowledge of Complainant and its mark when he registered the Domain Name in January 2019 (WHOIS report submitted as Complaint 1 shows creation date). It is undisputed that he was employed by Complainant at that time. Given the large number of SPECTRUM-formative trademarks registered by Complainant, Respondent is certain to have known about Complainant’s SPECTRUM mark, and the Panel has found that his registration of the Domain Name was not authorized, notwithstanding Respondent’s status as an employee. Again, given the nonexclusive nature of Policy ¶ 4(b), registering an identical or confusingly similar domain name with actual knowledge of a complainant’s rights in an incorporated mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <spectrum-enterprise.us> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
July 12, 2021
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