Mediacom Communications Corporation v. Kiyoshi Kanda
Claim Number: FA1210001467049
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski of Dorsey & Whitney LLP, New York, USA. Respondent is Kiyoshi Kanda (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mediacomkr.com>, registered with GMO Internet, Inc. d/b/a onamae.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2012; the National Arbitration Forum received payment on October 26, 2012. The Complaint was submitted in both English and Japanese.
On October 28, 2012, GMO Internet, Inc. d/b/a onamae.com confirmed by e-mail to the National Arbitration Forum that the <mediacomkr.com> domain name is registered with GMO Internet, Inc. d/b/a onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a onamae.com 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 October 29, 2012, the Forum served the Japanese language Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of November 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@mediacomkr.com. Also on October 29, 2012, the Japanese language 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 December 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
1.Complainant has rights in the MEDIACOM mark. The mark is used in connection with a number of services, including cable television transmission and high-speed Internet and telephone services. Complainant uses the <mediacomcc.com> domain name to market its services.
2.Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the MEDIACOM (Reg. No. 2,544,829 registered March 5, 2002). Complainant has registered a multitude of related marks with the USPTO, including the following: MEDIACOM PHONE (Reg. No. 3,437,688 registered May 27, 2008); MEDIACOM ON DEMAND (Reg. No. 2,882,896 registered September 7, 2004); MEDIACOM HDTV HIGH DEFINITION TELEVISION (Reg. No. 3,096,359 registered May 23, 2006); MEDIACOM PHONE SERVICE (Reg. No. 3,437,689 registered May 27, 2008); and more.
3.The <mediacomkr.com> domain name is confusingly similar to the MEDIACOM mark.
4. Respondent has no rights or legitimate interests in respect of the domain name.
5.Respondent is not commonly known by the <mediacomkr.com> domain name. Complainant did not authorize Respondent to use the MEDIACOM mark in a domain name. Complainant’s widespread notoriety in association with the MEDIACOM mark obviates the possibility the Respondent could be commonly known by the <mediacomkr.com> domain name.
6. The domain name has been registered and is being used in bad faith.
7.The <mediacomkr.com> domain name does not resolve to an active website.
8.Respondent’s registration and use of the disputed domain name was meant to prevent Complainant from registering the domain name and promoting its services.
9.Respondent is attempting to capitalize unfairly on the goodwill of Complainant’s well-known MEDIACOM mark.
10.Respondent had actual and/or constructive knowledge of Complainant’s rights in the MEDIACOM mark when Respondent registered the <mediacomkr.com> domain name. Complainant’s registration of the MEDIACOM mark predates Respondent registration of the domain name by over a decade, and the MEDIACOM mark enjoys fame in association with Complainant’s offerings.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company and 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, video-on demand, high-speed Internet, telephone and advertising services.
2.Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the MEDIACOM (Reg. No. 2,544,829 registered March 5, 2002) and other trademarks embodying the MEDIACOM mark.
3. Respondent registered the <mediacomkr.com> domain name on August 20, 2012.
4.The domain name does not resolve to an active website.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS.
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings Japanese. The Panel has reviewed the applicable rules on language of the proceedings under the UDRP.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it has rights in the MEDIACOM mark. Complainant states that the mark is used in connection with a number of services, including cable television transmission and high-speed Internet and telephone services. Complainant notes that it uses the <mediacomcc.com> domain name to market its services. Complainant provides the Panel with evidence that Complainant is the owner of the USPTO registration for the MEDIACOM (Reg. No. 2,544,829 registered March 5, 2002). See Complainant’s Exhibit 4. Complainant also demonstrates that it has registered a multitude of related marks with the USPTO, including the following: MEDIACOM PHONE (Reg. No. 3,437,688 registered May 27, 2008); MEDIACOM ON DEMAND (Reg. No. 2,882,896 registered September 7, 2004); MEDIACOM HDTV HIGH DEFINITION TELEVISION (Reg. No. 3,096,359 registered May 23, 2006); MEDIACOM PHONE SERVICE (Reg. No. 3,437,689 registered May 27, 2008); and more. See Complainant’s Exhibit 4. Panels have found that registration of a mark with the USPTO sufficiently demonstrates that the owner of the registration has rights in the mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). Panels have expanded the sufficiency of such rights by holding that trademark registration satisfies Policy ¶ 4(a) (i) regardless of whether the respondent lives or operates within the jurisdiction where the mark is registered. 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). Given the findings of prior panels and Complainant’s demonstration of trademark registration, the Panel finds that Complainant has rights in the MEDIACOM mark pursuant to Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MEDIACOM mark. Complainant asserts that the <mediacomkr.com> domain name is confusingly similar to the MEDIACOM mark. The Panel notes that the disputed domain name differs from the MEDIACOM mark only in the addition of the letters “kr” and the attachment of the generic top-level domain (“gTLD”) “.com.” In Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002), the panel held that the addition of extra letters to a mark does not distinguish the mark from the domain name it is incorporated within. The panel in Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), determined that, as a required element of all domain names, the addition of a generic top-level domain (“gTLD”) is irrelevant to a Policy ¶ 4(a) (i) analysis. Therefore, the Panel finds that Respondent’s <mediacomkr.com> domain name is confusingly similar to Complainant’s MEDIACOM mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MEDIACOM trademark and to use it in its domain name, adding only the letters “kr”, thus enhancing the confusing similarity between the domain name and the trademark;
(b) Respondent has not used the domain name to resolve to an active website, raising the suggestion that it did not register the domain name for a legitimate purpose or one that gave rise to rights on behalf of Respondent ;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant contends that Respondent is not commonly known by the <mediacomkr.com> domain name. Complainant asserts that it did not authorize Respondent to use the MEDIACOM mark in a domain name. Complainant argues that its widespread notoriety in association with the MEDIACOM mark obviates the possibility the Respondent could be commonly known by the <mediacomkr.com> domain name. Additionally, the Panel notes that the WHOIS record for the <mediacomkr.com> domain name lists “Kiyoshi Kanda” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <mediacomkr.com> domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
(e) Complainant next alleges that Respondent’s non-use of the <mediacomkr.com> domain name demonstrates that Respondent lacks rights and legitimate interests. Complainant notes that the <mediacomkr.com> domain name resolves to an inactive website. Panels have held that failure to associate content with a domain name makes clear that the respondent does not have rights or legitimate interests. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Therefore, the Panel finds that Respondent’s use of the <mediacomkr.com> domain name by causing it to resolve to a non-active website is neither a Policy ¶¶ 4(c)(i) or 4(c)(iii) bona fide offering of goods or services nor a legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims Complainant asserts that Respondent registered and uses the <mediacomkr.com> domain name in bad faith because Respondent’s registration and use of the disputed domain name were meant to prevent Complainant from registering the domain name and promoting its services. The Panel finds that Respondent’s registration and use of the <mediacomkr.com> domain name was meant to deprive Complainant of the opportunity to register the disputed domain name itself. Policy ¶ 4(b)(ii) requires a pattern of bad faith and as there appears to be only a single disputed domain name involving Complainant’s mark, the case is not strictly one falling within that provision. However, Respondent’s conduct in this regard is clearly inappropriate, raises the inference that Respondent was motivated by ill-will towards Complainant and constitutes a factor to be taken into account in determining the issue of bad faith. Having done so, the Panel finds that Respondent has registered and used the domain name in bad faith.
Secondly, Complainant contends that Respondent is attempting to capitalize unfairly on the goodwill of Complainant’s well-known MEDIACOM mark. In that regard, the Panel finds that Respondent is attempting to profit from having registered the inactive <mediacomkr.com> domain name and the Panel thus determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Thirdly, Complainant contends that Respondent had actual and/or constructive knowledge of Complainant’s rights in the MEDIACOM mark when Respondent registered the <mediacomkr.com> domain name. Complainant claims that its registration of the MEDIACOM mark predates Respondent registration of the domain name by over a decade and that the MEDIACOM mark enjoys fame in association with Complainant’s offerings. Panels have come to a consensus that constructive knowledge alone will not justify a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). As, however, the Panel finds that Respondent registered the <mediacomkr.com> domain name with actual knowledge of Complainant’s rights, which it must have had because of the fame of Complainant’s trademark and business name, the Panel finds bad faith under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).
Fourthly, in addition to the precise provisions of those parts of the Policy dealing with the issue of bad faith and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the famous MEDIACOM mark and in all the circumstances, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mediacomkr.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 5, 2012
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