Mediacom Communications Corporation v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1405001561964
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski of Dorsey & Whitney LLP, New York, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mediacomcabel.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.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 May 29, 2014; the National Arbitration Forum received payment on May 30, 2014.
On May 30, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <mediacomcabel.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 June 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 2014 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@mediacomcabel.com. Also on June 4, 2014, 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 June 2, 2014, 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
Complainant made the following contentions
i. Complainant, Mediacom Communications Corporation, uses the MEDIACOM mark in connection with a number of services, including cable television transmission, high-speed Internet, and telephone services.
ii. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MEDIACOM mark (e.g., Reg. No. 2,544,829, registered March 5, 2002).
iii. Respondent’s disputed domain name is confusingly similar to Complainant’s mark.
i. Respondent has no rights or legitimate interests in the disputed domain name.
ii. Respondent is not commonly known by the disputed domain name.
iii. Respondent uses the disputed domain name to resolve to a website which contains a set of pay-per-click hyperlinks.
i. Respondent registered and is using the disputed domain name in bad faith.
ii. Respondent registered the disputed domain name with the intent to receive compensation in exchange for the domain name.
iii. Respondent is using the disputed 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.
iv. Respondent certainly had actual or constructive notice of Complainant’s ownership of the MEDIACOM mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of services including cable television transmission, high-speed Internet, and telephone services.
2. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MEDIACOM mark (e.g., Reg. No. 2,544,829, registered March 5, 2002).
3. Respondent registered the <mediacomcabel.com> domain name on May 17, 2006.
4. Respondent is using the disputed domain name to operate a website that contains pay-per-click links and refers internet users to companies which provide cable television and other telecommunications services.
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 alleges that it uses the MEDIACOM mark in connection with a number of services, including cable television transmission, high-speed Internet, and telephone services. Complainant contends that it owns trademark registrations with the USPTO for the MEDIACOM mark (e.g., Reg. No. 2,544,829, registered March 5, 2002). See Complainant’s Exhibit 4. The Panel observes that Respondent resides in Saint Vincent and the Grenadines. However, the Panel finds that it is irrelevant under Policy ¶ 4(a)(i) whether Complainant registers its mark in the country of Respondent’s residence. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel determines that Complainant’s USPTO registration of the MEDIACOM mark demonstrates that it has rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MEDIACOM trademark. Complainant asserts that Respondent’s <mediacomcabel.com> domain name is confusingly similar to Complainant’s mark. Complainant contends that Respondent adds the blatantly-misspelled term “cabel” to Complainant’s mark in the disputed domain name. The Panel holds that Respondent’s inclusion of a descriptive term to Complainant’s mark does not differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Complainant claims that Respondent’s addition of a generic top-level domain (“gTLD”) such as “.com” is not relevant to a confusingly similar analysis. The Panel agrees and holds that Respondent’s addition of a gTLD is irrelevant under a Policy ¶ 4(a)(i) determination. See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). Accordingly, the Panel concludes that Respondent’s <mediacomcabel.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 word “cabel”;
(b) Respondent is using the disputed domain name to operate a website that contains pay-per-click links and refers internet users to companies which provide cable television and other telecommunications services;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant alleges that Respondent is not commonly known by the <mediacomcabel.com> domain name. Complainant argues that it is not a licensee or subsidiary of Complainant. Complainant contends that Respondent has never been authorized to use Complainant’s mark. The Panel notes that the WHOIS record indicates that “Domain Admin / Private Registrations Aktien Gesellschaft” is the registrant of the disputed domain name. See Complainant’s Exhibit 2. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel concluded that respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that respondent was commonly known by that domain name, including the WHOIS information as well as complainant’s assertion that it did not authorize or license respondent’s use of its mark in a domain name. Therefore, the Panel finds that Respondent is not commonly known under the <mediacomcabel.com> domain name according to Policy ¶ 4(c)(ii);
(e) Complainant argues that Respondent uses the <mediacomcabel.com> domain name to resolve to a website which contains a set of pay-per-click hyperlinks. See Complainant’s Exhibit 7. Complainant urges that some of the links listed on the disputed domain name, such as “Cheap Cable Television,” resolve to pages that feature additional hyperlinks which, when clicked, lead a user to a site such as <dish.com>, where the user can obtain competing television and telecommunication services. Id. As the Panel finds that Respondent is using the disputed domain name for a website providing competing links, the Panel concludes that Respondent is not using the <mediacomcabel.com> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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)).
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 that Respondent registered the <mediacomcabel.com> domain name with the intent to receive compensation in exchange for the domain name. Complainant asserts that the website to which the disputed domain name includes a prominent solicitation stating “Inquire about this domain,” and when clicked, the link leads to a page encouraging the submission of an offer for purchase of the disputed domain name. See Complainant’s Exhibit 9. Complainant asserts that it submitted an offer to purchase the disputed domain name for $100, well in excess of Respondent’s documented out-of-pocket costs for the disputed domain name, for which it has not received any response. As the Panel finds that Respondent is attempting to sell the <mediacomcabel.com> domain name for a price in excess of its out-of-pocket costs, the Panel determines that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Secondly, Complainant asserts that Respondent is using the <mediacomcabel.com> 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. See Complainant’s Exhibit 7. Complainant alleges that Respondent likely derives substantial revenue for its linked websites listed on the disputed domain name. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel held that “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.’” Accordingly, the Panel determines that Respondent has registered and is using the <mediacomcabel.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent certainly had actual or constructive notice of Complainant’s ownership of the MEDIACOM mark prior to registering the <mediacomcabel.com> domain name given Complainant’s widespread use and registration of the MEDIACOM mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's MEDIACOM mark and rights and therefore determine that Respondent registered the <mediacomcabel.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); 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").
Fourthly, in addition 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 MEDIACOM mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it 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 <mediacomcabel.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 27, 2014
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