national arbitration forum

 

DECISION

 

Mediacom Communications Corporation v. Bruce Boggio

Claim Number: FA1208001457178

 

PARTIES

Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski of Dorsey & Whitney LLP, New York, USA.  Respondent is Bruce Boggio (“Respondent”), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <mediacom-communications-corporation.info>, <mediacom-communications-corporation.org>, and <mediacomcommunicationscorporation.info>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2012; the National Arbitration Forum received payment on August 9, 2012.

 

On August 10, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <mediacom-communications-corporation.info>, <mediacom-communications-corporation.org>, and <mediacomcommunicationscorporation.info> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 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-communications-corporation.info, postmaster@mediacom-communications-corporation.org, and postmaster@mediacomcommunicationscorporation.info.  Also on August 10, 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 September 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Respondent’s <mediacom-communications-corporation.info>, <mediacom-communications-corporation.org>, and <mediacomcommunicationscorporation.info>domain name, the domain names at issue, are confusingly similar to Complainant’s MEDIACOM mark.

 

Respondent does not have any rights or legitimate interests in the domain names at issue.

 

Respondent registered and used the domain names at issue in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant uses the MEDIACOM mark in connection with the provision of cable television transmission, high speed Internet, and telephone services and owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MEDIACOM mark (e.g., Reg. No. 2,544,829 registered March 5, 2002). The  <mediacom-communications-corporation.info>, <mediacom-communications-corporation.org>, and <mediacomcommunicationscorporation.info> domain names at issue are confusingly similar to Complainant’s MEDIACOM mark.  The disputed domain names resolve to parked websites featuring pay-per-click links advertising the services of Complainant’s competitors.  Respondent commercially benefits from the operation of its website.  Respondent is not commonly known by any of the disputed domain names. Respondent must have had constructive and/or actual notice of Complainant's rights in the MEDIACOM mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO.  Respondent did not respond in this proceeding.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Previous panels have agreed that registration of a mark with the USPTO is sufficient to establish rights in the mark for the purposes of Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Complainant presents registrations of its MEDIACOM mark with the USPTO (e.g., Reg. No. 2,544,829 registered March 5, 2002). These trademark registrations confer rights in the MEDIACOM mark to Complainant pursuant to Policy ¶ 4(a)(i).

 

The <mediacom-communications-corporation.info>, <mediacom-communications-corporation.org>, and <mediacomcommunicationscorporation.info> domain names are confusingly similar to Complainant’s MEDIACOM mark under Policy ¶ 4(a)(i). The Panel notes that the affixation of a generic top-level domain name (“gTLD”) such as “.info” or “.org” has been held to be irrelevant to confusingly similar analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).  Each disputed domain name also adds the descriptive terms “communications” and “corporation” to Complainant’s mark. These terms are descriptive of Complainant’s business, as Complainant uses the MEDIACOM mark in connection with the advertisement of various communications services it provides through a business entity which was incorporated for that purpose. The addition of descriptive terms is insufficient to distinguish the disputed domain name from Complainant’s mark. 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 the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business).  The introduction of hyphens in the <mediacom-communications-corporation.info> and <mediacom-communications-corporation.org> domain names is not sufficient to negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). In view of this analysis, the <mediacom-communications-corporation.info>, <mediacom-communications-corporation.org>, and <mediacomcommunicationscorporation.info> domain names are confusingly similar to Complainant’s MEDIACOM mark under Policy ¶ 4(a)(i). 

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that 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 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.”).

 

Respondent is not commonly known by the <mediacom-communications-corporation.info>, <mediacom-communications-corporation.org>, or <mediacomcommunicationscorporation.info> domain names pursuant to Policy ¶ 4(c)(ii), since the WHOIS information identifies Respondent as “Bruce Boggio,” which provides evidence that there is no association between Respondent and the domain names. Respondent has failed to present the Panel with any evidence that it is in fact commonly known by the disputed domain name. Accordingly, Respondent is not commonly known by the <mediacom-communications-corporation.info>, <mediacom-communications-corporation.org>, or <mediacomcommunicationscorporation.info> domain names pursuant to Policy ¶ 4(c)(ii). 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).

 

The <mediacom-communications-corporation.info>, <mediacom-communications-corporation.org>, and <mediacomcommunicationscorporation.info> domain names are not being used in accordance with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii). The disputed domain names resolve to parked websites featuring pay-per-click links to third-party sites, some of which provide services that compete with those provided by Complainant. Previous panels have refused to recognize rights or legitimate interests where a disputed domain name is being used to house pay-per-click links to third-party sites. 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 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)).  Accordingly, Respondent in the instant case is neither using the <mediacom-communications-corporation.info>, <mediacom-communications-corporation.org>, and <mediacomcommunicationscorporation.info> domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a noncommercial or fair use under Policy ¶ 4(c)(iii).

 

The Panel finds that Policy ¶ 4(a)(ii) has been established. 

 

 

Registration and Use in Bad Faith

Respondent’s registration and use of the disputed domain names exhibits attraction for commercial gain in bad faith under Policy ¶ 4(b)(iv).  Respondent derives a commercial benefit from the operation of each site through the collection of click-through revenues and Respondent’s use of a confusingly similar domain name for each site suggests an intent to create confusion among Internet users as to whether Respondent’s sites are affiliated with, or endorsed by, Complainant. Respondent uses this confusion to wrongfully associate itself with Complainant’s business, benefitting from Complainant’s goodwill.  Respondent’s creation of confusion as to its affiliation with Complainant in order to realize a commercial gain constitutes attraction evidencing bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).

 

Respondent must have had constructive and/or actual notice of Complainant's rights in the MEDIACOM mark prior to registration of the disputed domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See 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."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").

 

The Panel finds that Policy ¶ 4(a)(iii) has been established. 

 

 

DECISION

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-communications-corporation.info>, <mediacom-communications-corporation.org>, and <mediacomcommunicationscorporation.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

James A. Carmody, Esq., Panelist

Dated:  September 10, 2012

 

 

 

 

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