Charter Communications Holding Company, LLC v. Amir Malik / Graviti360
Claim Number: FA1808001800635
Complainant is Charter Communications Holding Company, LLC (“Complainant”), represented by Madelon Lapidus of Holland & Hart LLP, Colorado, USA. Respondent is Amir Malik / Graviti360 (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spectrum-bundles.com>, registered with GoDaddy.com, LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 8, 2018; the Forum received payment on August 8, 2018.
On August 9, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <spectrum-bundles.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 2018 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@spectrum-bundles.com. Also on August 9, 2018, 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 August 31, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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, Charter Communications Holding Company, LLC, is a telecommunications company providing services to over 26 million customers in the United States. Complainant uses its CHARTER SPECTRUM mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s <spectrum-bundles.com> domain name is confusingly similar to Complainant’s mark as it merely eliminates the first term of the mark, “CHARTER,” and appends a hyphen, the generic term “bundles” and the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <spectrum-bundles.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its CHARTER SPECTRUM mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Amir Malik / Graviti360” as the registrant. Respondent is not using the <spectrum-bundles.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to pass itself off as Complainant by resolving to a website that mimics Complainant’s own <www.spectrum.com> website.
Respondent registered and is using the disputed domain name in bad faith. Respondent attempts to create confusion with Complainant’s CHARTER SPECTRUM mark for commercial gain by resolving to a website that mimics Complainant’s website and offers services that directly compete with Complainant’s telecommunications business. Further, Respondent registered the domain name with actual and constructive knowledge of Complainant’s rights in the CHARTER SPECTRUM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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(f), 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 (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 contends that it has rights in the CHARTER SPECTRUM mark through actual use and through registration with the USPTO (e.g., Reg. No. 4,618,726, registered Oct. 7, 2014). Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). As such, the Panel holds that Complainant established rights in the CHARTER SPECTRUM mark under Policy ¶ 4(a)(i).
Next, Complainant alleges that Respondent’s <spectrum-bundles.com> domain name is confusingly similar to Complainant’s mark as it merely eliminates the first term of the mark, “CHARTER,” and appends a hyphen, the generic term “bundles” and the gTLD “.com.” The elimination of part of a mark may not sufficiently distinguish a disputed domain name from a mark. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”). It is worth noting that the word “bundles” may actually enhance confusion with Complainant’s mark as it directly relates to the bundles of cable TV services offered by the Complainant. Dell Inc. v. Asri Fahmi / drivers.inc, FA 1799045 (Forum August 11, 2018) (where complainant sells computers, hard drives, printers, and other peripherals, “the addition of the word ‘drivers’ in the disputed domain name adds to the confusion with Complainant’s trade mark.”) Further, the addition of a hyphen, generic or descriptive term and a gTLD may not negate confusing similarity between a disputed domain name and a mark. See Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
Accordingly, the Panel concludes that Respondent’s <spectrum-bundles.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel is reminded 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name. It is alleged that Respondent uses the <spectrum-bundles.com> domain name to pass itself off as Complainant by resolving to a website that mimics Complainant’s own website. Under Policy ¶¶ 4(c)(i) and 4(c)(iii), use of a domain name to pass oneself off as a complainant may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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)). Complainant provides screenshots of the <spectrum-bundles.com> website and Complainant’s <www.spectrum.com> website, which indicate that both sites feature Complainant’s SPECTRUM logo and information about Complainant’s telecommunications business including various “TV, Internet, and Phone” packages that are offered under the CHARTER SPECTRUM mark. The Panel holds that such mimicry indicates that Respondent has failed to use the domain name in connection with a bona fide offering of goods or services.
Even if the Respondent does actually offer Complainant’s services at the <spectrum-bundles.com> website, the website contains no indication of the lack of any relationship with Complainant. Rather, it contains fine-print notices at the bottom relating to the provision of telecommunications services followed by the notice “© 2018 www.spectrum-bundles.com. All Rights Reserved.” This fails to meet the test set out in the seminal case of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO, November 6, 2001) for the reason that Respondent’s website contains no mention or other indication of its lack of a relationship with Complainant. The site’s notice does quite the opposite – it conveys the false impression that Respondent is, in fact, Complainant. Finally, such overt commercial activity does not constitute a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii) as it does not fit within any recognized category of fair use such as commentary, news reporting, education, etc., and the word “spectrum” in the domain is not used for its ordinary generic meaning.
Next, Complainant asserts that Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its CHARTER SPECTRUM mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the <spectrum-bundles.com> domain name lists “Amir Malik / Graviti360” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by the <spectrum-bundles.com> domain name.
For the reasons stated above, and in the absence of any evidence, argument, or other response, the Panel concludes that Respondent does not have any rights or legitimate interests in the <spectrum-bundle.com> domain name under Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered the <spectrum-bundles.com> domain name with actual and constructive knowledge of Complainant’s rights in the CHARTER SPECTRUM mark. According to the significant body of guidance that has developed in UDRP decisions, arguments of bad faith based on constructive notice are dependent on whether the respondent is located in a jurisdiction whose laws accept such a concept. See Limited Stores, LLC v. Infinite Wireless, D2013-1269 (WIPO August 29, 2013) ("As to the contention that the Respondent has constructive notice of the Complainant’s trade mark registration, this argument, when it works, generally only works when a respondent is located in the United States.") In the present case, Respondent lists an address in Pakistan and there is no evidence or argument before the Panel that the concept of constructive notice is applied in the law of that jurisdiction.
Nevertheless, evidence of a respondent’s actual knowledge of a complainant's rights in a mark prior to registering the disputed domain name is adequate to underpin a finding of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Here, through its extensive use, Complainant’s CHARTER SPECTRUM mark has developed significant good will and consumer recognition and, according to the evidence presented in this case, has been used by Complainant since at least 2014[i]. Furthermore, the simple fact that Complainant’s <www.spectrum.com> website is mimicked by Respondent at its <spectrum-bundles.com> website clearly indicates that Respondent had actual knowledge of Complainant’s rights when the disputed domain name was registered and subsequently used.
Complainant claims that Respondent attempts to create confusion with Complainant’s CHARTER SPECTRUM mark for commercial gain by resolving to a website that mimics Complainant’s website and offers services that directly compete with Complainant’s telecommunications business. Per Policy ¶ 4(b)(iv), use of a domain name to attract Internet users and create confusion as to the source, sponsorship, affiliation or endorsement of the content therein for commercial gain may evidence bad faith. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As previously mentioned Complainant provided screenshots of both the <spectrum-bundles.com> website and Complainant’s website, which indicate that the sites feature Complainant’s SPECTRUM logo, multiple uses of the CHARTER SPECTRUM mark, and information regarding Complainant’s telecommunications business. Complainant alleges that Respondent purports to sell Complainant’s TV, phone, and internet services at the <spectrum-bundles.com> website, without Complainant’s authorization and for commercial gain. In the absence of any evidence, argument, or response to the contrary, the Panel accepts this allegation and holds that Respondent registered and used the <spectrum-bundles.com> domain name in bad faith under Policy ¶ 4(b)(iv).
For the foregoing reasons, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under 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 <spectrum-bundles.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: September 1, 2018
[i] The Complaint variously states that “Since at least as early as 1994, Complainant has used the SPECTRUM Marks”, and “As reflected by the first use dates in Complainant’s trademark registrations, Complainant first began using and developing rights in the SPECTRUM Marks in the United States at least as early as 1994”. However, the Panel notes that the first mention of the SPECTRUM name in a timeline submitted into evidence by Complainant is 2013 and all of the submitted trademark registrations claim first use dates of 2014 or later.
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