Charter Communications Holding Company, LLC v. Hamza Khan
Claim Number: FA1904001841060
Complainant is Charter Communications Holding Company, LLC (“Complainant”), represented by Madelon Lapidus of Holland & Hart LLP, Colorado, USA. Respondent is Hamza Khan (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <charterspectrums.com>, registered with Domain.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 29, 2019; the Forum received payment on April 29, 2019.
On April 30, 2019, Domain.com, LLC confirmed by e-mail to the Forum that the <charterspectrums.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 May 7, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2019 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@charterspectrums.com. Also on May 7, 2019, 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 May 30, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is a telecommunications company. Complainant has rights in its CHARTER SPECTRUM mark through its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,618,726, registered Oct. 7, 2014). See Compl. Ex. 3. Respondent’s <charterspectrums.com> is confusingly similar to Complainant’s marks as it merely adds the letter “s”, and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interest in the <charterspectrums.com> domain name. Respondent is not commonly known by the disputed domain name, nor has been authorized, licensed, or otherwise given permission to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Rather, Respondent was attempting to pass off as an affiliate of Complainant’s for Respondent’s own commercial gain.
Respondent’s <charterspectrums.com> domain name was registered and used in bad faith. Respondent’s use was an attempt to confuse internet users by purporting a false affiliation with Complainant done for commercial gain. Further, Respondent had actual knowledge of Complainant’s right in its CHARTER SPECTRUM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States telecommunications company.
2. Complainant has established its trademark rights in its CHARTER SPECTRUM mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,618,726, registered Oct. 7, 2014).
3. Respondent registered the <charterspectrums.com> domain name on May 30, 2018.
4. Respondent has used the domain name to attempt to pass itself off as an affiliate of Complainant’s for Respondent’s own commercial gain.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the CHARTER SPECTUM mark through its registration of the mark with the USPTO (e.g. Reg. No. 4,618,726, registered Oct. 7, 2014). See Compl. Ex. 3. Registration of a mark with the USPTO is sufficient to establish rights in a mark, under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the CHARTER SPECTUM 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 CHARTER SPECTUM mark. Complainant argues that Respondent’s <charterspectrums.com> domain name is identical or confusingly similar to Complainant’s CHARTER SPECTRUM mark, as the disputed domain name fully incorporates the mark, merely removing a space, adding the letter “s”, and adding a “.com” gTLD. Removing a space and adding a gTLD is not sufficient to distinguish a disputed domain name from a complainant’s mark, under Policy ¶ 4(a)(i). See Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“Complainant also asserts that Respondent’s <researchnow.host>, <researchnow.top> and <researchnow.club> domain names are confusingly similar to Complainant’s mark because each merely eliminates the space and appends a gTLD to the fully incorporated mark. The addition of a gTLD and elimination of spacing are both considered irrelevant when distinguishing between a mark and a domain name.”). Further, adding the letter “s” is not sufficient to distinguish a disputed domain name from a complainant’s mark, under Policy ¶ 4(a)(i). See PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name “merely adds the letter ‘s’ to Complainant’s mark”). Here, Respondent’s <charterspectrums.com> domain name removes the space between Complainant’s CHARTER SPECTUM mark, adds an “s” to SPECTRUM, and adds the “.com” gTLD. Therefore, the Panel finds Respondent’s <charterspectrums.com> domain name is confusingly similar to Complainant’s CHARTER SPECTRUM 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), 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”).
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 CHARTER SPECTUM trademark and to use it in its domain name, adding the letter “s” that does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <charterspectrums.com> domain name on May 30, 2018;
(c) Respondent has used the domain name to attempt to pass itself off as an affiliate of Complainant’s for Respondent’s own commercial gain;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the <charterspectrums.com> domain name, nor has it been authorized or licensed by Complainant to use Complainant’s CHARTER SPECTRUM mark. Relevant information such as WHOIS information can be used to determine if a respondent is commonly known by a disputed domain name, under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, Complainant provides the WHOIS information of the <charterspectrums.com> domain name, showing the registrant’s name has been redacted, and a screenshot of the website to which the disputed domain name resolves, showing that the Respondent is claiming to be an authorized retailer of Complainant’s services, which Complainant rebuts. See Compl. Ex. 1 and 6. However, the Panel notes that the WHOIS privacy was lifted upon these proceedings to reveal the registrant as “Hamza Khan.” Therefore, the Panel finds that Respondent is not commonly known as the <charterspectrums.com> domain name, nor has been authorized or licensed by Complainant to use Complainant’s CHARTER SPECTRUM mark under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent has no rights or legitimate interest in the <charterspectrums.com> domain name as Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Complainant contends that Respondent is offering goods or services in a false affiliation with the Complainant. Use of a disputed domain name where the respondent attempts to pass off or claim affiliation with the complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). 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).”). Here, the Complainant provides a screenshot of the website to which the <charterspectrums.com> domain name resolves, showing that the Respondent offers internet cable packages and claims affiliation with the Complainant. See Compl. Ex. 6. Therefore, the Panel finds Respondent has no rights or legitimate interest in the <charterspectrums.com> domain name as Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (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 argues that Respondent’s <charterspectrums.com> domain name was registered and used in bad faith, as Respondent is claiming to be affiliated with Complainant and is doing so for commercial gain. Attempts to confuse internet users into believing respondent is affiliated with the complainant can be evidence of bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here, Complainant provides a screenshot of the website to which the <charterspectrums.com> domain name resolves, showing that Respondent claims to be a “Spectrum Authorized Retailer,” offering similar goods or services to those that Complainant offers. Therefore, the Panel finds that Respondent’s <charterspectrums.com> domain name was registered and used in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent’s <charterspectrums.com> domain name was registered and used in bad faith, as Respondent has actual or constructive knowledge of Complainant CHARTER SPECTUM mark. The Panel disregards arguments of bad faith based on constructive notice as UDRP decisions generally decline to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). However, the Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant provides evidence of its right in the CHARTER SPECTRUM mark, and contends that Respondent’s full incorporation of Complainant’s mark in the <charterspectrums.com> domain name shows that Respondent had actual notice of Complainant’s mark. Therefore, the Panel finds that Respondent’s <charterspectrums.com> domain name was registered and used in bad faith under Policy ¶ 4(a)(iii).
Finally, 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 CHARTER SPECTRUM mark and in view of the conduct that Respondent has engaged in when using the disputed 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 <charterspectrums.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 3, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page