Cable One Inc. v. MM a/k/a M Morgan
Claim Number: FA1003001310629
Complainant is Cable One Inc. (“Complainant”), represented by Douglas
A. Rettew of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P., Washington, D.C., USA. Respondent is MM a/k/a M Morgan (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mymailcableone.net>, registered with eNom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 1, 2010.
On March 1, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <mymailcableone.net> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. verified that Respondent is bound by the eNom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2010, 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@mymailcableone.net. Also on March 1, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. The domain name that Respondent registered, <mymailcableone.net>, is confusingly similar to Complainant’s CABLE ONE mark.
2. Respondent has no rights or legitimate interests in the <mymailcableone.net> domain name.
3. Respondent registered and used the <mymailcableone.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cable One Inc.,
holds multiple trademark registrations for its CABLE ONE mark with the United
States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,280,714 issued September 28, 1999) in connection
with cable television and transmission services and communication services
providing information by means of a global online computer network on the
subjects of cable television and cable television programming, and also
providing access to a global online computer network.
Respondent, MM a/k/a M Morgan, registered the <mymailcableone.net> domain name January 25, 2004. The disputed domain name resolves to a pay-per-click website featuring links to commercial sites, some of which compete with Complainant’s business.
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."
Given 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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel finds appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant asserts rights in its CABLE ONE mark through its
holding of multiple trademark registrations for its CABLE ONE mark with the
USPTO (e.g.,
Reg. No. 2,280,714 issued September 28, 1999). The Panel finds that Complainant established
rights in the CABLE ONE mark under Policy ¶ 4(a)(i) through its registration
with the USPTO. See Expedia, Inc. v. Tan,
FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark
is registered with the USPTO, [the] complainant has met the requirements of
Policy ¶ 4(a)(i).”); see also Miller Brewing
Complainant argues that Respondent’s <mymailcableone.net> domain name is confusingly
similar to Complainant’s CABLE ONE mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name is confusingly
similar to Complainant’s protected mark because it incorporates Complainant’s
mark in its entirety, adds the words “my mail” and the generic top-level domain
(“gTLD”) “.net.” The Panel finds that
the addition of the generic terms “my mail” does not distinguish the disputed
domain name from Complainant’s mark but creates a domain name that is confusingly
similar to a mark in which Complainant has exclusive rights. See
Disney Enters. Inc.
v. McSherry, FA 154589 (Nat. Arb.
Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name
to be confusingly similar to Complainant’s DISNEY mark because it incorporated
Complainant’s entire famous mark and merely added two terms to it); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21,
2006) (finding that the <theotheraol.com> and <theotheraol.net>
domain names were confusingly similar to the AOL mark, as the addition of
common terms to a mark does not distinguish the domain names from the mark). The Panel also finds that the addition of a
gTLD to a registered mark is irrelevant in distinguishing a disputed domain
name from a mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation
of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Katadyn N. Am. v.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or
legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove that it does have such rights or legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint,
the Panel finds that Complainant established a prima facie case to support its contentions and that Respondent
failed to submit a Response to these proceedings. See
AOL LLC v. Gerberg, FA
780200 (Nat.
Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden
shifts to the respondent to show that it does have rights or legitimate
interest in the subject domain names.”); see
also Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name).
The WHOIS information for the disputed domain name lists the registrant as “MM a/k/a M Morgan.” Complainant asserts that it has not authorized Respondent to use its CABLE ONE mark in any way. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s disputed domain name resolves to a pay-per-click website
featuring links to commercial sites, some of which compete with Complainant’s
business. The Panel finds that
Respondent’s use is not a bona fide
offering of goods and services pursuant to Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Tesco
Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat.
Arb. Forum Feb.
13, 2007) (finding that the respondent was not using the
<tesco-finance.com> domain name in connection with a bona fide offering
of goods or services or a legitimate noncommercial or fair use by maintaining a
web page with misleading links to the complainant’s competitors in the
financial services industry); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding
that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services
or a legitimate noncommercial or fair use by redirecting Internet users to a
commercial search engine website with links to multiple websites that may be of
interest to the complainant’s customers and presumably earning “click-through
fees” in the process).
The Panel finds that Complainant
satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant also alleges that Respondent registered and used the disputed domain name in bad faith. The Panel finds that Respondent’s use of the disputed domain name to link Internet users to websites featuring links to Complainant’s competitors constitutes a disruption of Complainant’s business and supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
The Panel finds that Respondent is using the disputed domain name to intentionally attract Internet users and to profit monetarily through the receipt of pay-per-click fees. The Panel finds that Respondent’s use of the disputed domain name is further evidence to support findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
The Panel finds that Complainant satisfied the elements of ICANN 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 <mymailcableone.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 14, 2010
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