Mediacom Communications Corporation v. ICS INC.
Claim Number: FA1203001436208
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski of Dorsey & Whitney LLP, New York, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mediacomonlinemessage.com>, registered with TUCOWS, INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 23, 2012; the National Arbitration Forum received payment on March 26, 2012.
On Mar 26, 2012, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <mediacomonlinemessage.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 March 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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@mediacomonlinemessage.com. Also on March 30, 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 April 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 name be transferred from Respondent to Complainant.
A. Complainant
Since in or about 1995, Complainant has used and/or registered the name and mark “MEDIACOM,” by itself and as the dominant component of other marks (collectively, the “MEDIACOM Mark”), in the United States in connection with a number of services, including, cable television transmission, high-speed Internet and telephone services. Complaint has also used the MEDIACOM Mark with advertising services for many years. Complainant Mediacom owns the following valid and subsisting U.S. trademark registrations for the MEDIACOM Mark: Registration No. 2,544,829 for MEDIACOM, dated March 5, 2002;
Registration No. 2,853,190 for MEDIACOM & Design, dated June 15, 2004; Registration No. 2,843,861 for MEDIACOM DIGITAL & Design, dated May 18, 2004; Registration No. 3,493,871 for MEDIACOM PHONE SERVICE, dated August 26, 2008; Registration No. 3,437,689 for MEDIACOM PHONE SERVICE, dated May 27, 2008; Registration No. 3,596,562 for MEDIACOM PHONE & Design, dated March 24, 2009; Registration No. 2,837,255 for MEDIACOM DIGITAL, dated April 27, 2004; Registration No. 3,096,359 for MEDIACOM HDTV HIGH DEFINITION TELEVISION, dated May 23, 2006; Registration No. 2,882,896 for MEDIACOM ON DEMAND, dated September 7, 2004; Registration No. 2,941,544 for MEDIACOM ONLINE & Design, dated April 19, 2005; and Registration No. 3,437,688 for MEDIACOM PHONE, dated May 27, 2008. Registration Nos. 2,544,829, 2,853,190, 2,843,861, 2,837,255, 2,882,896 and 2,941,544 are incontestable pursuant to Section 15 of the Lanham Act, 15 U.S.C. § 1065.
Moreover, Complainant Mediacom owns a registration for the domain <mediacomcc.com>, which it has used since at least as early as November, 1999, to operate a website through which it promotes its services.
FACTUAL AND LEGAL GROUNDS
a. Complainant’s Well Established Rights in the MEDIACOM Mark
Complainant is one of America’s largest cable television companies. Through its interactive broadband network, Complainant provides its customers with a wide variety of telecommunications services, including high-definition cable television services, video-on- demand services, and high-speed Internet and telephone service. In addition, Complainant offers advertising services. Complainant offers its services to more than 1,500 communities across dozens of states throughout the United States. Complainant has used the MEDIACOM Mark to identify and distinguish its various services for over 15 years. As indicated above, Complainant owns numerous trademark registrations for the MEDIACOM Mark.
Complainant has spent enormous sums of time, effort and money on the development, advertising and promotion of the services offered and sold under or in connection with the MEDIACOM Mark. Millions of dollars have been expended in advertising and promoting services under the MEDIACOM Mark throughout the United States. These efforts have been met with hundreds of millions of dollars in sales of services sold under the MEDIACOM Mark.
As a result of the supervision and control exercised by Complainant over the nature and quality of the services offered and sold in connection with the MEDIACOM Mark, and the extensive advertising, promotion, sale and public acceptance thereof, the MEDIACOM Mark has become well-known and accrued immense goodwill in the United States. Given its fame and celebrity, the MEDIACOM Mark has also become an asset of enormous, if not incalculable, value to Complainant.
b. The Domain Name Is Identical or Confusingly Similar to the Trademark in Which Complainant Has Rights – Rule 3(b)(ix)(1); Policy ¶4(a)(i).
Respondent’s Domain Name is identical and certainly confusingly similar to Complainant’s MEDIACOM Mark, as it incorporates Complainant’s distinctive MEDIACOM Mark in its entirety. The primary element of the <mediacomonlinemessage.com> domain name is identical to Complainant’s MEDIACOM Mark. The only difference between the <mediacomonlinemessage.com> domain name and the MEDIACOM Mark is the addition of the generic term “onlinemessage.”
Given the notoriety of Complainant’s MEDIACOM Mark, the fact that Respondent’s Domain Name incorporates that mark in its entirety and that the Domain Name resolves to a website containing pay-per-click links to sites promoting and/or offering cable television and other telecommunications services offered by Complainant’s competitors, there can be no doubt that the Domain Name is likely to confuse consumers into believing that Respondent’s website is affiliated with, endorsed or authorized by Complainant. See Dell Computer Corp. v. Logo Excellence, WIPO Case No. D2001-0361.
c. Respondent Has No Rights or Legitimate Interests with Respect to the Domain Name – Rule 3(b)(ix)(2); Policy ¶4(a)(ii).
Respondent cannot demonstrate that it has any rights or legitimate interests in the Domain Name. Noting the difficulty of proving a negative, prior panels have found that a complainant’s burden of proof on this element is light. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Complainant’s use of and registrations for the MEDIACOM Mark pre-date Respondent’s registration and use of the Domain Name by more than a decade. Such trademark registrations evidence Complainant’s exclusive rights in the marks, and Complainant has not authorized Respondent to use same. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (lack of authorization from trademark owner for use of mark in domain name is a factor for finding that respondent has no legitimate interests in domain name).
Upon information and belief, Respondent has not made use of, or demonstrable preparations to use, the Domain Name or names corresponding to the Domain Name in connection with a bona fide offering of goods or services, nor could Respondent do so in light of the notoriety of Complainant’s MEDIACOM Mark and Complainant’s exclusive rights in that mark.
In addition, upon information and belief, Respondent (as an individual, business or organization) has not been commonly known by the Domain Name. In order for Respondent to show that it has legitimate rights in the Domain Name based upon a claim that it is commonly known by the Domain Name, Respondent must provide adequate extrinsic proof that a corresponding group of consumers who are likely to access the website associate the Domain Name with Respondent rather than with Complainant. See Dell Computer Corp. v. Logo Excellence, WIPO Case No. D2001-0361. Given the widespread notoriety enjoyed by Complainant’s MEDIACOM Mark, it is impossible for Respondent to meet that burden. Indeed, the WHOIS information for the Domain Name, identifying the registrant as “Contact Privacy Inc. – Customer 0130060832,” provides evidence that there is no apparent association between Respondent and the Domain Name. 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). As such, there is no legitimate justification for Respondent’s registration of the subject domain.
Moreover, Respondent is also not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to divert consumers misleadingly or to tarnish the trademarks at issue. As discussed further below, upon information and belief, Respondent operates a website at <http://www.mediacomonlinemessage.com> that is clearly attempting to capitalize on a close similarity between the disputed domain name and the MEDIACOM trademark. The website contains a number of pay-per-click advertising links from which Respondent presumably derives revenue based upon the number of times visitors click on the links. Further, Respondent’s website features a number of links advertising various cable television and other telecommunications services, including services of Complainant’s competitors. Such use of the MEDIACOM Mark by Respondent to misleadingly divert consumers to their website constitutes commercial use. See Black and Decker Corp. v. Clinical Evaluations, NAF Case No. FA0205000112629 (holding that Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 (holding that Respondent does “… not have the right to use Complainant’s trademark in the domain name to sell products of Complainant’s competitors, especially using a domain name that suggests that Complainant is the source”
thereof). Rather, such use infringes upon Complainant’s trademark rights, as discussed in further detail below, and is not a legitimate use of the Domain Names under the Policy. See Chanel v. Estco, WIPO Case No. D2000-0413 (“[I]n order for Respondent’s Internet business to be ‘legitimate’ under the Policy, it must make non-infringing use of Complainant’s world famous trademark.”); see also Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446.
Furthermore, Respondent’s use of the Domain Name constitutes a breach of Tucows.com Co. Registration Agreement, as well as the Policy, under which Respondent warranted that, to the best of its knowledge and belief, neither the registration of the Domain Name nor the manner in which it intended to use the Domain Name would directly or indirectly infringe the legal rights of a third party. See copy of Tucows.com Co.’s Registration Agreement, attached as Exhibit 8. Respondent’s breach of that warranty divested it of any rights or interests in the Domain Name that it may have had. See Milwaukee Radio Alliance, L.L.C. v. WLZR-FM Lazer 103, WIPO Case No. D2000-0209.
In sum, Complainant owns trademark rights in and to the MEDIACOM Mark. Respondent has no rights to or legitimate interests in the Domain Name and, on information and belief, has not made use of or demonstrable preparations to use the Domain Name with a bona fide offering of goods or services. Furthermore, there is no evidence that Respondent is commonly known by the name MEDIACOMONLINEMESSAGE, or is making a legitimate noncommercial or fair use of the Domain Name. As such, there is no legitimate justification for Respondent’s registration of the subject domain.
d. Respondent Registered and Is Using the Domain Name in Bad Faith – Rule 3(b)(ix)(3); Policy ¶4(a)(iii).
Respondent registered the Domain Name without a bona fide basis for such registration in an attempt to capitalize unfairly on the goodwill of Complainant’s famous MEDIACOM Mark.
It has been widely held by previous Panels that evidence of bad faith registration “includes actual or constructive knowledge of a commonly known mark at the time of registration.” Credit Suisse Group on behalf of Winterthur Insurance v. Pal-Ex Kft, NAF Case No. FA0112000102971; see also Victoria’s Secret et al v. Sherry Hardin, NAF Case No. FA0102000096694 (holding that actual or constructive knowledge of a famous mark at the time the disputed domain name was registered constitutes bad faith); Samsonite Corp. v. Colony Holding, NAF Case No. FA0003000094313 (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (finding of bad faith appropriate where Respondent was aware or should have been aware of Complainant’s trademark prior to registration).
Given Complainant’s widespread use and registration of the MEDIACOM Mark, Respondent certainly had actual or constructive notice of Complainant’s ownership of the MEDIACOM Mark prior to registering the Domain Name. Accordingly, it can be presumed that Respondent registered the Domain Name in bad faith.
Not only has Respondent registered the Domain Name in bad faith, it is also using the Domain Name in bad faith. As referenced above, upon information and belief, Respondent uses the Domain Name to operate a website that contains pay-per-click links and refers persons to companies which provide cable television and other telecommunications services, activities from which Respondent likely derives substantial revenue.
Under the circumstances, there can be no question that the primary reason Respondent registered and uses the Domain Name is to deceive the public into believing that the site is associated with Complainant in some manner so as to free ride on Complainant’s famous MEDIACOM Mark and divert Internet traffic intended for Complainant. Such use constitutes bad faith use and registration on the part of Respondent. See, e.g., Kmart of Michigan, Inc. v. Azra Khan, NAF Case No. FA0210000127708 (finding that if Respondent profits from its diversionary use of Complainant’s mark when the domain name resolves to commercial websites, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶4(b)(iv)); Dollar Rent A Car Inc. v. Albert Jackson, NAF Case No. FA187421 (finding of bad faith appropriate where respondent operates pay-per-click website using domain name that incorporates complainant’s trademark); Credit Industriel et Commercial S.A. v. Richard J., WIPO Case No. D2005-0569; Société Air France v. Bing G Glu, WIPO Case No. D2006-0834; Société Air France v. WWW Enterprise, Inc., WIPO Case No. D2005-1160; WPT Enterprises, Inc. v. Kaneoka Senuchi, WIPO Case No. D2005-1144; Dr. Ing h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov, WIPO Case No. D2004-0311; The Black and Decker Corporation v. Clinical Evaluations, NAF Case No. FA0205000112629; Yahoo! Inc. v. Web Master a/k/a MedGo, NAF Case No. FA0210000127717; Lowermybills.com v. Michele Dinoia, NAF Case No. FA0308000183728. See also Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (bad faith use and registration found because “‘VEUVECLICQUOT.ORG’ is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”); Northwest Airlines, Inc. v. Mario Koch, FA9000095688 (NAF October 27, 2000) (“[T]he selection of a domain name [northwestairlines.com] which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith.”).
The only conceivable reason Respondent registered and uses the Domain Name is to intentionally attract Internet users to its website by creating the false impression that the site is affiliated with or sponsored by Complainant. For the reasons described above, this appears to have been done for commercial gain. Respondent had knowledge of the fame and value of Complainant’s MEDIACOM Mark at the time it registered and commenced use of the Domain Name. Under the circumstances, there can be no explanation that would rebut the presumption of bad faith.
Respondent’s bad faith is also exemplified by the fact that it was officially informed of Complainant’s rights in the MEDIACOM Mark through correspondence dated February 7, 2012 requesting the transfer of the Domain Name to Complainant. Complainant re-sent its correspondence to Respondent several times. However, Respondent has failed to comply with Complainant’s request.
Furthermore, Respondent’s use and registration of the Domain Name disrupts Complainant’s business by depriving it of the right to host a website at <http://www.mediacomonlinemessage.com> to promote its services to the public. Such acts of Respondent constitute bad faith use and registration of the Domain Name, as illustrated by the examples set forth in paragraph 4(b) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to cancel or transfer a domain name:
(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 claims rights in the MEDIACOM mark pursuant to Policy ¶4(a)(i) based on its registrations of the mark with the USPTO (e.g., Reg. No. 2,544,829 registered March 5, 2002). The Panel notes previous panels have found a complainant’s registration of a mark with the USPTO is sufficient to confer rights in the mark under Policy ¶4(a)(i). 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 Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”). Accordingly, the Panel finds Complainant has established rights in the MEDIACOM mark through its registration with the USPTO.
Complainant urges the Panel to find Respondent’s <mediacomonlinemessage.com> domain name confusingly similar to Complainant’s MEDIACOM mark and MEDIACOM ONLINE mark within the meaning of Policy ¶4(a)(i). The disputed domain name includes Complainant’s primary mark, while adding the generic terms “online” and “message” and affixing the generic top-level domain (“gTLD”) “.com.” The disputed domain name includes one of Complainant’s marks (Mediacom online®), while adding the generic term “message” and affixing the generic top-level domain (“gTLD”) “.com.” Past panels have found neither the addition of generic terms (especially ones that are common in the industry) nor the affixation of a gTLD is sufficient to create unique, wholly distinctive domain name under 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 Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also 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.”). The Panel notes Complainant would be expected to provide on-line messaging services in its line of business.
The disputed domain name is therefore confusingly similar to Complainant’s marks under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii), and then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known by the <mediacomonlinemessage.com> domain name for the purposes of Policy ¶4(c)(ii). Complainant has not authorized Respondent’s use of the MEDIACOM marks in any manner, including in the disputed domain name. The relevant WHOIS information now identifies Respondent as “ICS INC.” (although the original contact information was “Contact Privacy, Inc. Customer 0130060832”). There is no similarity between “ICS INC.” and the <mediacomonlinemessage.com> domain name. Once again, there is no similarity between “Contact Privacy, Inc. Customer 0130060832” and the <mediacomonlinemessage.com> domain name. Respondent is not commonly known by the disputed domain as envisioned by Policy ¶4(c)(ii). The record lacks any evidence to refute Complainant’s claim Respondent is not commonly known by the <mediacomonlinemessage.com> domain name.
Based on this analysis, the Panel finds Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); 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 claims Respondent’s use of the disputed domain name cannot qualify as 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). Complainant claims the disputed domain name resolves to a website containing pay-per-click links to sites promoting cable television and other telecommunications services offered by Complainant’s competitors. The Panel finds a web site featuring competing hyperlinks does not satisfy either Policy ¶4(c)(i) or Policy ¶4(c)(iii). See 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)); 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 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 Respondent’s 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 Policy ¶4(a)(ii) satisfied.
Respondent’s use of the disputed domain name to display links to Complainant’s competitors evidences disruption of Complainant’s business in bad faith under Policy ¶4(b)(iii). Previous panels have found bad faith registration and use where a respondent takes advantage of a confusingly similar domain name to advertise products or services which compete with the complainant’s business. See 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)); see also 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 concludes Respondent’s registration and use of the disputed domain name is in bad faith under Policy ¶4(b)(iii).
Complainant argues the primary reason for Respondent’s registration and use of the disputed domain name is to deceive the public into believing the domain name is associated with Complainant, allowing Respondent to divert Internet traffic intended for Complainant. Respondent realizes a commercial gain through the operation of its website, likely through the collection of click-through fees. The Panel finds the impetus for Respondent’s registration and use of the confusingly similar domain name was to create confusion as to Complainant’s affiliation with the disputed domain name, allowing Respondent to use this confusion for commercial gain. This type of operation exhibits bad faith registration and use under Policy ¶4(b)(iv). See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶4(b)(iv).”); see also 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).
Complainant claims it is inconceivable Respondent could have registered the <mediacomonlinemessage.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark in light of the fame and notoriety of Complainant's MEDIACOM mark. Bad faith arguments based on constructive notice are not sufficient because UDRP case precedent generally declines to find bad faith because of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds actual knowledge is adequate evidence of bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
In addition, Respondent was using a nominee to hold title to the domain name (commonly called a privacy service) when this proceeding commenced. While this Panel is willing to concede the legitimacy of using a nominee in certain personal circumstances, such a practice does not make sense in a commercial context. It creates the presumption of bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <mediacomonlinemessage.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, April 24, 2012
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