Mediacom Communications Corporation v. ORM LTD / ORM Ltd.
Claim Number: FA1509001640219
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski of Dorsey & Whitney LLP, New York, USA. Respondent is ORM LTD / ORM Ltd. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwmediacomcc.com>, registered with Tucows Domains 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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 30, 2015; the Forum received payment on September 30, 2015.
On October 2, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <wwwmediacomcc.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 October 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 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@wwwmediacomcc.com. Also on October 6, 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 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 its MEDIACOM mark by itself and as the dominant component of other marks in the United States in connection with a number of services, including cable television services, video-on-demand services, and high-speed Internet and telephone service. In addition, Complainant offers advertising services. Complainant has registered the MEDIACOM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,544,829, registered March 5, 2002), which demonstrates Complainant’s rights in its mark. The <wwwmediacomcc.com> domain name is confusingly similar to Complainant’s mark as it merely adds the prefix “www,” the suffix “cc,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any derivative of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain name contains a number of pay-per-click advertising links from which Respondent presumably derives revenue based upon the number of times visitors click on the links. Further, Respondent’s website features a number of links advertising various television and other telecommunications services, including services offered by third parties.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent has demonstrated a pattern of bad faith registration and use through its involvement in previous UDRP cases, wherein Respondent was ordered to transfer the disputed domain names to the complainants. Second, Respondent has engaged in bad faith by using the disputed domain name to promote products and services that compete directly with Complainant. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain name on September 4, 2012.
As the Respondent has failed to file a response in this matter, the Panel shall make its determination based on the reasonable and undisputed allegations of the Complainant. As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent engaged in bad faith use and registration of the disputed domain name.
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.”).
Complainant’s registered trademark evidences sufficient rights in the trademark to bring this Complaint. The Panel finds that the disputed domain name is confusingly similar to this trademark as it merely adds the prefix “www,” the suffix “cc,” and the generic top-level domain (“gTLD”) “.com.”
The Panel further finds that the Respondent has no rights or legitimate interests in or to the disputed domain name. The Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Respondent has no license or authorization to use Compldainant’s mark. The the WHOIS information merely lists “ORM LTD / ORM Ltd.” Respondent has failed to submit any evidence for the Panel’s consideration to counter the conclusion that it is not commonly known by the disputed domain name. There is no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
The Panel further finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Specifically, Respondent’s disputed domain name contains a number of pay-per-click advertising links from which Respondent presumably derives revenue based upon the number of times visitors click on the links. Further, Respondent’s website features a number of links advertising various television and other telecommunications services, including services offered by competitors like Dish Network. See Attached Exhibit 7 for copies of representative pages from Respondent’s website. There is not a bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent’s disputed domain name resolves to a website that displays links to products and services that compete directly with the complainant.
Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) and, therefore, has no rights or legitimate interests in or to the disputed domain name.
The Panel agrees with Complainant’s allegation that Respondent has demonstrated a pattern of bad faith registration and use through its involvement in previous UDRP cases, wherein Respondent was ordered to transfer the disputed domain names to the complainants. Specifically, Complainant references two previous UDRP cases where Respondent was ordered to transfer the disputed domain name to the complainant: Maker Studios, Inc. v. ORM LTD/Contact Privacy Inc. Customer 0137258808, WIPO Case No. D2014-0918 and Thierry Mugler v. ORM LTD/Contact Privacy Inc., WIPO Case No. D2014-0615. Bad faith registration and use exists under Policy ¶ 4(b)(ii) where a respondent has been subject to previous UDRP rulings and was ordered to transfer the disputed domain name to the complainant.
Accordingly, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(ii).
The Panel further agrees with Complainant when it adequately demonstrates that Respondent has engaged in bad faith by using a confusingly similar disputed domain name to promote products and services that compete directly with Complainant. Bad faith registration and use per Policy ¶ 4(b)(iv) exists where a respondent uses a confusingly similar domain name to divert Internet traffic from the complainant’s website to its own website for commercial gain. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
As such, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant alleges that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. In so arguing, Complainant asserts that its widespread use and registration of the MEDIACOM mark makes it clear that Respondent had actual knowledge of Complainant’s mark at the time the disputed domain name was registered. Further, Complainant argues that the categories featured on the main webpage to which the domain name currently resolves, including “Broadband and “WiFi,” are the very same or related to the services provided by Complainant under its MEDIACOM mark. Past panels have found bad faith registration under Policy ¶ 4(a)(iii) where it is clear that a respondent was well-aware of a complainant’s mark. 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).
Accordingly, given the totality of the circumstances, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark pursuant to 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 <wwwmediacomcc.com> domain name be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: October 31, 2015
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