Mediacom Communications Corporation v. PrivacyProtect.org / Domain Admin
Claim Number: FA1108001403250
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski of Dorsey Whitney LLP, New York, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mediacomcabletv.com>, registered with Power Brand Center Corp.
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. The Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 12, 2011; the National Arbitration Forum received payment August 15, 2011.
After numerous requests, the Registrar, Power Brand Center Corp., has not confirmed to the National Arbitration Forum that the <mediacomcabletv.com> domain name is registered with Power Brand Center Corp. or that Respondent is the current registrant of the name. Power Brand Center Corp.’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On August 31, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2011, 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@mediacomcabletv.com. Also on August 31, 2011, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 28, 2011, 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 (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 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, <mediacomcabletv.com>, is confusingly similar to Complainant’s MEDIACOM mark.
2. Respondent has no rights to or legitimate interests in the <mediacomcabletv.com> domain name.
3. Respondent registered and used the <mediacomcabletv.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mediacom Communications Corporation, provides cable television, high-speed Internet, and telephone services. Complainant owns multiple trademark registrations for the MEDIACOM mark with the United States Patent and Trademark Office (“USPTO”), including the following:
Reg. No. 2,544,829 registered March 5, 2002 &
Reg. No. 2,853,190 registered June 15, 2004.
Respondent, PrivacyProtect.org / Domain Admin, registered the <mediacomcabletv.com> domain name November 4, 2004. The disputed domain name resolves to a webpage displaying pay-per-click links, some of which advertise competing providers of television, Internet, and phone services and some of which are unrelated to Complainant.
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 considers 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 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 owns multiple trademark registrations for the MEDIACOM mark with the USPTO, including the following:
Reg. No. 2,544,829 registered March 5, 2002 &
Reg. No. 2,853,190 registered June 15, 2004.
The Panel finds that evidence of registration with the USPTO conclusively proves Complainant’s rights in the MEDIACOM mark for the purposes of Policy ¶ 4(a)(i), although Respondent is located in Australia and not the United States. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant urges that Respondent’s <mediacomcabletv.com> domain name is confusingly similar to Complainant’s MEDIACOM mark because the disputed domain name merely combines Complainant’s mark with the descriptive terms “cable” and “tv” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding descriptive terms and a gTLD to Complainant’s distinctive and registered mark does not distinguish the disputed domain name but makes it confusingly similar. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). Therefore, the Panel finds that Respondent’s <mediacomcabletv.com> domain name is confusingly similar to Complainant’s MEDIACOM mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate its rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has adequately established a prima facie case in these proceedings. Since Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Complainant urges that Respondent is not commonly known by the <mediacomcabletv.com> domain name. The WHOIS information for the disputed domain name lists the registrant as “PrivacyProtect.org / Domain Admin,” which does not reflect any association between Respondent and the disputed domain name. Based on this information and the lack of other information in the record, the Panel finds that Respondent is not commonly known by the disputed domain name, and has not shown rights or legitimate interests under a Policy ¶ 4(c)(ii) analysis. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. 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 disputed domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent’s <mediacomcabletv.com> domain name resolves to a generic website listing pay-per-click links for various cable television and telecommunications services in competition with Complainant, along with other unrelated links. The Panel finds that Respondent’s maintenance of a website with no function other than listing presumed pay-per-click links is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of goods or services); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s <mediacomcabletv.com> domain name resolves to a website featuring many links to providers of telecommunications services in competition with Complainant. As Internet users being diverted to Respondent’s website may subsequently click on one of the links to a competitor, Respondent’s display of these links under Complainant’s mark disrupts Complainant’s business. The Panel finds this disruptive activity to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also 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).
Complainant contends that Respondent’s <mediacomcabletv.com> domain name makes prominent use of Complainant’s MEDIACOM mark. By incorporating Complainant’s mark in the disputed domain name, Respondent attempts to benefit from the goodwill associated with Complainant and draw in Internet users seeking Complainant’s services and products. Complainant also argues that Respondent endeavors to mislead Internet users into believing that the content on Respondent’s website is sponsored or endorsed by Complainant. Internet users arriving at Respondent’s website financially benefit Respondent whenever they click on one of the links since Respondent presumably receives “pay-per-click” fees. The Panel finds that Respondent’s activities have the goal of attracting Complainant’s business and creating confusion in order to profit, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website as proscribed in Policy ¶ 4(b)(iv).”); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; 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 <mediacomcabletv.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 10, 2011.
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