Mediacom Communications Corporation v. Mediakom Advertising S.R.L. Societa/Ditta
Claim Number: FA1201001425689
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski of Dorsey & Whitney LLP, New York, USA. Respondent is Mediakom Advertising S.R.L. Societa/Ditta (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mediakomadvertising.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 <mediakomadvertising.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@mediakomadver-tising.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 is the owner of the MEDIACOM service mark, which it uses in connection with the marketing of telecommunication services such as high-definition cable, video-on-demand, high-speed Internet, telephone and advertising services.
Complainant has registered the MEDIACOM service mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,544,829, registered March 5, 2002).
Respondent registered the disputed domain name on February 20, 2010.
The <mediakomadvertising.com> domain name resolves to a website presented in the Italian language which displays links to the website of Complainant and also to the websites of other providers of telecommunication goods and services.
Respondent’s <mediakomadvertising.com> domain name is confusingly similar to Complainant’s MEDIACOM mark.
Respondent has not been commonly known by the <mediakomadvertising.com> domain name.
Complainant has not authorized Respondent to use its MEDIACOM service mark in the contested domain name.
Respondent does not have any rights to or legitimate interests in the disputed domain name.
Respondent registered and uses the <mediakomadvertising.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 the MEDIACOM service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations).
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 of Respondent’s residence or place of operations. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence).
The <mediakomadvertising.com> domain name is confusingly similar to the MEDIACOM service mark. The mark has been incorporated in the domain name in its entirety, with the exception that the letter “c” has been replaced with a “k.” This misspelling of the mark in creating the domain name fails to distinguish the domain name from the mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but leaves the domain name confusingly similar to the mark); see also Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar).
Similarly, Respondent’s addition of the descriptive term “advertising” to Com-plainant’s mark in forming the domain name does not distinguish the domain from the mark under the standards of the Policy. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to a complainant’s AIG mark failed to differen-tiate the domain name from the mark under Policy ¶ 4(a)(i) because the appended term related to that complainant’s business); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the addition of the term “batteries,” which described a complainant’s products, to the DURACELL mark of that complainant in forming the <Duracell-batteries.com> domain name, was insufficient to distinguish the domain name from the mark).
Finally, the addition of the generic top-level domain (“gTLD”) to Complainant’s mark in creating the contested domain name is irrelevant to a Policy ¶ 4(a)(i) determination. 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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to the mark of another).
The Panel therefore finds that Respondent’s <mediakomadvertising.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 disputed domain name. Policy ¶ 4(a)(ii) requires that Com-plainant present a prima facie case in support of this assertion, whereupon the burden shifts to Respondent to prove that it has such rights or legitimate interests. See, for example, Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
See also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that, once a prima facie case is established by a com-plainant under Policy ¶ 4(a)(ii), the burden shifts to a respondent to demonstrate that it has rights to or legitimate interests in a disputed domain name).
Complainant has made a prima facie showing in support of its contentions under this head of the Policy. Therefore, and because Respondent has failed to submit a response to the Complaint filed in the proceeding, we are free to presume that Respondent has no such rights or interests. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000):
Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.
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.
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.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, and that Complainant has not authorized Respondent to use its MEDIACOM service mark in the <mediakomadvertising.com> domain name. Moreover, although the pertinent WHOIS record lists the domain name registrant as “Mediakom Advertising S.R.L. Societa/Ditta,” there is no evidence in the record to suggest that Respondent has ever been commonly known by the contested domain name. For these reasons, and having in mind that Respondent registered the disputed domain name as recently as 2010, we conclude that Respondent is not commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that a respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”).
We next observe that Complainant contends, without objection from Respondent, that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use, in that the domain name resolves to a website presented in the Italian language which displays links to the website of Complainant and also to the websites of other providers of telecommunication goods and services. This is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncom-mercial or fair use of the domain under Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website, but features links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007):
Respondent is using the … domain name to display a list of hyper-links, 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 thus finds that Policy ¶ 4(a)(ii) has been satisfied.
It is evident from the record that the disputed domain name is being used to disrupt Complainant’s business. This demonstrates that the domain name was registered and is being used in bad faith within the contemplation of Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used a disputed domain name to operate a search engine with links to the websites of a complainant’s commercial competitors); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using a disputed domain name to operate a search engine with links to websites offering the products of a complainant and to others associated with complainant’s commercial competitors).
For this reason, the Panel finds that Complainant has met its obligations 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 <mediakomadvertising.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F.Peppard, Panelist
Dated: March 2, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page