Mediacom Communications Corporation v. Telos Chamir
Claim Number: FA1201001426352
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski of Dorsey & Whitney LLP, New York, USA. Respondent is Telos Chamir (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mediacom.info>, registered with Key-Systems GmbH (R124-LRMS).
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2012; the National Arbitration Forum received payment on February 27, 2012. The Complaint was submitted in both German and English.
On February 28, 2012, Key-Systems GmbH (R124-LRMS) confirmed by e-mail to the National Arbitration Forum that the <mediacom.info> domain name is registered with Key-Systems GmbH (R124-LRMS) and that Respondent is the current registrant of the name. Key-Systems GmbH (R124-LRMS) has verified that Respondent is bound by the Key-Systems GmbH (R124-LRMS) 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 March 2, 2012, the Forum served the German language Complaint and all Annexes, including a German language Written Notice of the Complaint, setting a deadline of March 22, 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@mediacom.info. Also on March 2, 2012, the German language 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 April 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the German language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a. Complainant owns rights in its MEDIACOM mark through its many registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,544,829 registered March 5, 2002).
b. Complainant operates a national television company, providing customers with telecommunications services, video-on-demand, high-speed Internet, telephone services and advertising services.
c. As a result of extensive advertising, promotion and sales, the MEDIACOM mark has become well-known.
d. Respondent, Telos Chamir, registered the <mediacom.info> domain name on September 29, 2011.
e. The disputed domain name corresponds to a pay-per-click website that displays hyperlinks for websites whose businesses are competitors of Complainant’s business.
f. Respondent’s domain name is identical to Complainant’s MEDIACOM mark.
g. Respondent does not have authorization to use the MEDIACOM mark, and is not affiliated with Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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."
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.
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.”).
Complainant owns rights to the MEDIACOM mark through its multiple registrations of the mark with the USPTO (e.g., Reg. No. 2,544,829 registered March 5, 2002). Complainant is not required to register its mark in the same country where Respondent resides and operates for the purposes of Policy ¶ 4(a)(i). See 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).
The <mediacom.info> domain name is identical to the MEDIACOM mark, because Respondent uses the entire MEDIACOM mark, and adds only the generic top-level domain (“gTLD”) “.info.” As the only change made to the mark is the addition of the gTLD “.info,” the disputed domain name is identical to Complainant’s mark. See Microsoft Corp. v. Zournas, FA 1093928 (Nat. Arb. Forum Dec. 10, 2007) (“the Panel finds that Respondent’s <windows.info> domain name is identical to Complainant’s WINDOWS mark as the addition of a gTLD is a necessary addition in the creation of any domain name and therefore an indistinguishing characteristic under Policy ¶ 4(a)(i).”). Thus, this Panel determines that the disputed domain name is confusingly similar to Complainant’s mark within the meaning of Policy ¶ 4(a)(i).
Complainant submits that Respondent is not commonly known by the <mediacom.info> domain name because the WHOIS information identifies the domain registrant as “Telos Chamir,” which Complainant asserts does not demonstrate an association between Respondent and the disputed domain name. Complainant further asserts that Respondent does not have authorization to use the MEDIACOM mark, including use in a domain name. Based upon, and accepting, this evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that when the respondent’s WHOIS information does not support that the respondent is commonly known by the disputed domain name, Policy ¶ 4(c)(ii) does not apply).
Complainant claims, and this Panel accepts, that Respondent’s web page associated with the domain name displays nothing but hyperlinks to businesses who offer cable television and telecommunication services in competition with Complainant’s services, for which Respondent earns “click-through” revenue from visiting Internet users. The Panel finds that Respondent’s use of the domain name to offer web page visitors competing hyperlinks is not a bona fide offering of goods or services and does not constitute legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(i) or 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent failed to offer any goods or services on its website other than 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)).
The Panel therefore finds that Policy ¶ 4(a)(ii) has also been satisfied.
The Panel finds that Respondent had actual notice of Complainant's mark due to the notoriety of said mark, and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See 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”).
Complainant argues that Respondent’s use of the disputed domain name disrupts Complainant’s business by “depriving it of the right to host a website” at the domain name to advertise its services to the public. The Panel finds that Respondent’s use of the domain name to host its own website and attract Internet traffic for its own gain is evidence of bad faith use under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel further determines that Respondent’s use of the disputed domain name to confuse Internet users, attract them to the corresponding website, and offer competing hyperlinks from which Respondent presumably derives revenue, is evidence of bad faith use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (stating that the respondent was involved in bad faith registration and use when it used a confusingly similar domain name to offer hyperlinks to third-party sites whose services were similar to the complainant’s services).
The Panel therefore finds that Policy ¶ 4(a)(iii) has also been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mediacom.info> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: April 16, 2012
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