Mediacom Communications Corporation v. Antonio Panzironi
Claim Number: FA1201001425687
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski of Dorsey & Whitney LLP, New York, USA. Respondent is Antonio Panzironi (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mediacomadv.com>, registered with Tucows, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 19, 2012; the National Arbitration Forum received payment on January 20, 2012.
On January 20, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <mediacomadv.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 January 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2012 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@mediacomadv.com. Also on January 24, 2012, 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 February 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant provides cable television and telecommunication services under its MEDIACOM service mark.
Complainant owns trademark registrations for its MEDIACOM service mark, on file with with the United States Patent and Trademark Office (“USPTO”) (includ-ing Reg. No. 2,544,829, registered March 5, 2002).
Respondent registered the disputed <mediacomadv.com> domain name on December 13, 2011.
Respondent uses the <mediacomadv.com> domain name to attempt to pass itself off as Complainant, with extensive use of Complainant’s MEDIACOM mark and logo design and which creates the false impression among Internet users that the resolving website is associated with, and owned by, Complainant..
Respondent’s <mediacomadv.com> domain name is confusingly similar to Complainant’s MEDIACOM mark.
Respondent is not commonly known by the <mediacomadv.com> domain name.
Complainant has not authorized Respondent to use its MEDIACOM service mark, whether in a domain name or otherwise.
Respondent does not have any rights to or legitimate interests in the domain name <mediacomadv.com>.
Respondent both registered and uses the <mediacomadv.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in its MEDIACOM service mark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering them with the USPTO); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that in which Respondent resides or operates. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purposes of ¶ 4(a)(i) of the Policy whether a complainant’s mark is registered in a country other than that of a respondent’s place of business).
The <mediacomadv.com> domain name is confusingly similar to Complainant’s MEDIACOM service mark because the domain name contains Complainant’s entire mark combined with the letters “a,” “d,” and “v,” which appears to be an abbreviation for the descriptive term “advertisement” together with the generic top-level domain (“gTLD”) “.com.” These additions to the mark in forming the domain name fail to distinguish the domain from the mark under the standards of the Policy. See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding <kelsonmd.com> confusingly similar to a complainant’s registered KELSON service mark); see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding the <zamazon.com> domain name confusingly similar to a complainant’s AMAZON.COM mark); further see Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
See also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” to the mark of another in creating a disputed domain name is insufficient to differentiate the domain name from the mark).
Therefore, the Panel concludes that Respondent’s <mediacomadv.com> domain name is confusingly similar to Complainant’s MEDIACOM service mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights to or legitimate interests in the <mediacomadv.com> domain name. Once Complainant makes out a prima facie showing in support of its allegations under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove that it does have such rights or interests. See, for example, 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.
Complainant has made out a sufficient prima facie case under this head of the Policy. Respondent’s failure to respond to the Complaint filed in this proceeding therefore permits us to infer that Respondent does not have rights to or legitimate interests in the <mediacomadv.com> domain name. Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence).
We begin by noting that Complaint contends, and Respondent does not deny, that Respondent is not commonly known by the <mediacomadv.com> domain name, and that Complainant has not authorized Respondent to use its MEDIACOM service mark, whether in a domain name or otherwise. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Antonio Panzironi,” which does not resemble the disputed domain name. On this record, we conclude that Respondent is not commonly known by the <mediacomadv.com> domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no claim of rights to or legitimate interests in that domain under Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name under Policy ¶ 4(c)(ii) where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name).
We also observe that Complainant alleges, without objection from Respondent, that Respondent uses the <mediacomadv.com> domain name to pass itself off as Complainant in that the website makes extensive use of Complainant’s MEDIACOM mark and logo design, which creates the false impression among Internet users that the resolving website is associated with, and owned by, Complainant. In the circumstances here presented, we may comfortably presume that Respondent attempts to profit from its pretense of being Complainant. This use of the contested domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a respondent’s attempt to pass itself off as a complainant online, via unauthorized use of that complainant’s mark, was evidence that that respondent had no rights to or legitimate interests in a disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007):
Because respondent in this case is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds … respondent is not using the <mortgageresearchcenter.org> domain name for 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 thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration and use of the contested domain name in the manner alleged in the Complaint, and for its presumed commercial benefit, stands as evidence that Respondent both registered and uses the domain name in bad faith within the contemplation of Policy ¶ 4(b)(iv). See, for example, 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 a respondent diverted to its own website Internet users searching for the website of a complainant, likely profiting in the process); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).
For this reason, the Panel finds that Complainant has met its obligation of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <mediacomadv.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 2, 2012
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