Mediacom Communications Corporation v. KATHY JOHNSON
Claim Number: FA1509001638597
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski of Dorsey & Whitney LLP, New York, USA. Respondent is KATHY JOHNSON (“Respondent”), Idaho, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mediacom-us.com>, registered with Register.com, Inc..
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 18, 2015; the Forum received payment on September 18, 2015.
On September 21, 2015, Register.com, Inc. confirmed by e-mail to the Forum that the <mediacom-us.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 September 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 2015 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-us.com. Also on September 23, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 19, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 uses the MEDIACOM mark in connection with its business as a provider of cable television, high-speed internet, and telephone services. Complainant has rights in the MEDIACOM mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,544,829, registered March 5, 2002). Respondent’s disputed <mediacom-us.com> domain name is confusingly similar to Complainant’s MEDIACOM mark because the domain includes the mark in its entirety and adds a hyphen, the geographic modifier “us,” and the generic top-level domain (“gTLD”) “.com.” The addition of these minor changes to Complainant’s mark do not remove the disputed domain from the realm of confusing similarity.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the domain name based on WHOIS information showing that Respondent registered the domain name using the name “KATHY JOHNSON.” Further, Respondent has used the disputed domain to display advertisements for Complainant’s cable television and telecommunications services and those of Complainant’s competitors, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s registration of a confusingly similar domain name and use of said domain name to host advertisements for competing services shows that Respondent has attracted and confused internet users for commercial gain. In addition, Respondent’s use of the domain name and Complainant’s extensive use and registration of the MEDIACOM mark indicates that Respondent had actual knowledge of Complainant’s MEDIACOM mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Mediacom Communications Corporation, uses the MEDIACOM mark in connection with its business as a provider of cable television, high-speed internet, and telephone services. Complainant has rights in the MEDIACOM mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,544,829, registered March 5, 2002).
Respondent, KATHY JOHNSON, registered the <mediacom-us.com> domain name on July 5, 2015. Respondent has used the disputed domain to display advertisements for Complainant’s cable television and telecommunications services and those of 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.”).
Respondent’s <mediacom-us.com> domain name is confusingly similar to the MEDIACOM mark. The disputed domain name only differs from the MEDIACOM mark through the addition of a hyphen, the geographic modifier “us,” and the gTLD “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent to use its MEDIACOM mark. Respondent is not commonly known by the <mediacom-us.com> domain name under Policy ¶ 4(c)(ii). The WHOIS information lists “KATHY JOHNSON,” as the registrant. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent’s use of the <mediacom-us.com> domain name, to host pay per click links for Complainant’s and Complainant’s competitor’s services, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent has used the disputed domain name to host click through links with titles such as, “Mediacom Internet Services,” “Mediacom Phone,” “Cheap Cable TV Service,” “Cable TV Service In My Area,” and “Cable and Internet Services.” Panels have found that using a disputed domain that is confusingly similar to another’s trademark for the purposes of displaying commercial hyperlinks is not a bona fide bona fide offering of goods or services or a legitimate noncommercial or fair use. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, 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)).
Respondent had actual knowledge of Complainant's MEDIACOM mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See 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).
Complainant 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-us.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 2, 2015
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