Mediacom Communications Corporation v. John Mancini
Claim Number: FA1110001412678
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski, Jr. of Dorsey & Whitney LLP, New York, USA. Respondent is John Mancini (“Respondent”), represented by Carl J. Lumley of Curtis, Heinz, Garrett & O'Keefe, P.C., Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mediacomcablemodem.com>, <mediacomcablemodems.com>, and <themediacombundle.com>, registered with GoDaddy.com, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 21, 2011; the National Arbitration Forum received payment on October 24, 2011.
On October 24, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <mediacomcablemodem.com>, <mediacomcablemodems.com>, and <themediacombundle.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 October 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@mediacomcablemodem.com, postmaster@mediacomcablemodems.com, and postmaster@themediacombundle.com. Also on October 24, 2011, 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 November 10, 2011, Complainant and Respondent requested a Stay to the Administrative Proceeding until December 25, 2011. The Forum granted the Stay on November 10, 2011.
Complainant requested that the Stay be lifted on December 22, 2011, and the Forum granted an Order lifting the Stay on December 22, 2011.
On January 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mediacomcablemodem.com>, <mediacomcablemodems.com>, and <themediacombundle.com> domain names are confusingly similar to Complainant’s MEDIACOM mark.
2. Respondent does not have any rights or legitimate interests in the <mediacomcablemodem.com>, <mediacomcablemodems.com>, and <themediacombundle.com> domain names.
3. Respondent registered and used the <mediacomcablemodem.com>, <mediacomcablemodems.com>, and <themediacombundle.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mediacom Communications Corporation, offers cable television transmission, high-speed Internet and telephone services. Complainant owns numerous trademark registrations for the MEDIACOM and related marks with the United States Patent and Trademark Office (“USPTO”):
Mark Reg. No. Registration Date
MEDIACOM 2,544,829 March 5, 2002;
MEDIACOM DIGITAL 2,843,861 May 18, 2004;
MEDIACOM 2,853,190 June 15, 2004;
MEDIACOM ON DEMAND 2,882,896 September 7, 2004;
MEDIACOM ONLINE 2,941,544 April 19, 2005;
MEDIACOM PHONE 3,437,688 May 27, 2008;
MEDIACOM PHONE SERVICE 3,437,689 May 27, 2008;
MEDIACOM PHONE SERVICE 3,493,871 August 26, 2008; &
MEDIACOM PHONE 3,596,562 March 24, 2009.
Respondent, John Mancini, registered the <themediacombundle.com>, <mediacomcablemodems.com>, and <mediacomcablemodem.com> domain names on August 18, 2011. The disputed domain names all resolve to websites containing a number of pay-per-click links advertising various cable television and other telecommunications services from Complainant’s competitors, among other unrelated companies and websites.
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."
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(e), 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 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 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.
Complainant owns numerous trademark registrations for the MEDIACOM and related marks with the USPTO:
Mark Reg. No. Registration Date
MEDIACOM 2,544,829 March 5, 2002;
MEDIACOM DIGITAL 2,843,861 May 18, 2004;
MEDIACOM 2,853,190 June 15, 2004;
MEDIACOM ON DEMAND 2,882,896 September 7, 2004;
MEDIACOM ONLINE 2,941,544 April 19, 2005;
MEDIACOM PHONE 3,437,688 May 27, 2008;
MEDIACOM PHONE SERVICE 3,437,689 May 27, 2008;
MEDIACOM PHONE SERVICE 3,493,871 August 26, 2008; &
MEDIACOM PHONE 3,596,562 March 24, 2009.
The Panel finds that these trademark registrations prove Complainant’s rights in the MEDIACOM mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <themediacombundle.com>, <mediacomcablemodems.com>, and <mediacomcablemodem.com> domain names are confusingly similar to Complainant’s MEDIACOM mark because each disputed domain name contains the MEDIACOM mark, supplemented with the generic top-level domain (“gTLD”) “.com” and one or more of the following generic or descriptive terms: “the,” “bundle,” “cable,” “modems,” and/or “modem.” Adding generic or descriptive terms to a complainant’s mark does not sufficiently distinguish a disputed domain name for the purposes of Policy ¶ 4(a)(i). See 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); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Furthermore, an attached gTLD is of no consequence to a Policy ¶ 4(a)(i) analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel accordingly finds that Respondent’s <themediacombundle.com>, <mediacomcablemodems.com>, and <mediacomcablemodem.com> domain names are confusingly similar to Complainant’s MEDIACOM mark pursuant to Policy ¶ 4(a)(i).
The
Panel deems Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and 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 or 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. Because 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 [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] 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.”). The Panel, however, elects to consider the evidence in the record in light of the Policy ¶ 4(c) factors to determine if Respondent has any rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent is not commonly known by the any of the disputed domain names. The WHOIS information, identifying the registrant as “John Mancini,” provides evidence for this claim as it reveals no apparent association between Respondent and the disputed domain names. Without other affirmative evidence showing that Respondent has been commonly known by the disputed domain names prior to their registration, the Panel concludes that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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 respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent’s disputed domain names resolve to a website featuring pay-per-click advertising links for cable television and other telecommunications services from Complainant’s competitors, as well as other generic, unrelated pay-per-click links. Complainant argues that Respondent receives click-through revenue from these links and that using Complainant’s mark to profit in this way does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii), and the Panel agrees on the same grounds. See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant makes no specific allegations under Policy ¶ 4(b)(iii) regarding Respondent’s use of the disputed domain name, but it does argue that the disputed domain names all host pay-per-click links advertising competing cable television and telecommunications services provided by Complainant’s competitors. The Panel finds that these advertisements for competitors disrupt Complainant’s business by marketing competitors under Complainant’s mark and diverting consumers away from Complainant. The Panel concludes that Respondent’s activities in connection with the disputed domain names therefore indicate bad faith registration and use according 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)).
Complainant contends that Respondent registered the disputed domain names containing Complainant’s MEDIACOM mark in order to “free ride” on the fame of Complainant’s mark and divert Complainant’s intending customers to Respondent’s resolving websites hosting pay-per-click directories. Complainant argues that Respondent aimed to create a false impression that its websites were affiliated with Complainant in order to increase traffic to the resolving pay-per-click websites and consequently raise its revenue from the resulting pay-per-click fees. The Panel agrees with Complainant and determines that Respondent’s efforts to attract and mislead consumers with its unauthorized use of Complainant’s mark for purposes of Respondent’s own commercial gain indicate bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v Bond, FA 680624 (Nat. Arb. 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 Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant’s rights in the MEDIACOM mark prior to registration of the domain names because of Complainant’s widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant’s mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel deems Complainant has satisfied 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 <mediacomcablemodem.com>, <mediacomcablemodems.com>, and <themediacombundle.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 9, 2012
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