Mediacom Communications Corporation v. Contact Privacy Inc. / Customer 0131242461
Claim Number: FA1206001448843
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M Wasnofski of Dorsey & Whitney LLP, New York, USA. Respondent is Contact Privacy Inc. / Customer 0131242461 (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mediacomcabletoday.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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2012; the National Arbitration Forum received payment on June 15, 2012.
On June 15, 2012, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <mediacomcabletoday.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 June 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 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@mediacomcabletoday.com. Also on June 18, 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 July 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 makes the following assertions:
1. Respondent’s <mediacomcabletoday.com> domain name is confusingly similar to Complainant’s MEDIACOM mark.
2. Respondent does not have any rights or legitimate interests in the <mediacomcabletoday.com> domain name.
3. Respondent registered and used the <mediacomcabletoday.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the owner of United States Patent and Trademark Office (“USPTO”) registrations for the MEDIACOM mark (e.g., Reg. No. 2,544,829 registered March 5, 2002.)
Respondent registered the <mediacomcabletoday.com> domain name on May 15, 2012, and uses it to resolve to a website which displays pay-per-click links to Complainant’s competitors.
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.”).
The Panel finds that Complainant has rights in the MEDIACOM mark under Policy ¶ 4(a)(i) based on its USPTO registrations of the mark. Previous panels have found that the registration of a mark, regardless of the location of the parties, establishes rights in the mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also 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).
Respondent’s <mediacomcabletoday.com> domain name is confusingly similar to the MEDIACOM mark, as Respondent merely added the following elements: the descriptive term “cable,” the generic term “today,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of generic and descriptive terms does not distinguish the <mediacomcabletoday.com> domain name from the MEDIACOM mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The addition of a gTLD 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). Therefore, the Panel finds that Respondent’s <mediacomcabletoday.com> domain name is confusingly similar to the MEDIACOM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have 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 contends that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant argues that Respondent is not commonly known by the <mediacomcabletoday.com> domain name. The WHOIS record for the <mediacomcabletoday.com> domain name lists “Contact Privacy Inc. / Customer 0131242461” as the domain name registrant, which bears no similarity to the domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Therefore, the Panel finds that Respondent is not commonly known by the <mediacomcabletoday.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s uses the <mediacomcabletoday.com> domain name to resolves to a website which displays pay-per-click links to competing cable television and other telecommunications services. Previous panels have found that this use of a disputed domain name is not protected under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)). Therefore, the Panel finds that Respondent’s use of the <mediacomcabletoday.com> domain name is not a Policy ¶ 4(c)(i) and bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that the <mediacomcabletoday.com> domain name is disruptive to Complainant’s business when it is deprived of the Internet users who reach the disputed domain name. The Panel agrees and finds that this interrupts the expected consumer traffic for Complainant and thus was registered and is being used in bad faith pursuant to Policy ¶ 4(b)(iii). 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)).
The
screenshots provided of the <mediacomcabletoday.com> domain name’s
resolving website show links under headings such as “Digital Channel Lineup”
and “Cable Television.” No doubt the Respondent is compensated for redirecting
Internet users through these links and thus profits from the mistakes Internet
users make with the belief that the <mediacomcabletoday.com>
domain name is affiliated with Complainant. Therefore, the Panel finds that
Respondent registered and is using the <mediacomcabletoday.com>
domain name in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v.
Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶
4(b)(iv) where the respondent’s domain name resolved to a website that offered
links to third-party websites that offered services similar to the
complainant’s services and merely took advantage of Internet user mistakes).
Complainant contends that Respondent registered and began using the <mediacomcabletoday.com> domain name with actual and/or constructive knowledge of Complainant’s rights in the MEDIACOM mark. Complainant contends that its extensive public use of its MEDIACOM mark and its trademark registrations for said mark make it inconceivable that Respondent could be unaware, actually or constructively, of Complainant’s rights. The Panel agrees and finds that Respondent’s knowledge of Complainant’s rights in the mark is additional evidence of bad faith under Policy ¶ 4(a)(iii). See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of 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 finds that 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 <mediacomcabletoday.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 24, 2012
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