DECISION

 

Charter Communications Holding Company, LLC v. Julio Montezuma / Global Signal LLC

Claim Number: FA1912001877220

 

PARTIES

Complainant is Charter Communications Holding Company, LLC

(“Complainant”), represented by Lian Ernette of Holland & Hart LLP, United States. Respondent is Julio Montezuma / Global Signal LLC (“Respondent”), United States.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <spectrumtvs.com>, registered with 1&1 IONOS SE.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 30, 2019; the Forum received payment on December 30, 2019.

 

On January 2, 2020, 1&1 IONOS SE confirmed by e-mail to the Forum that the <spectrumtvs.com> domain name is registered with 1&1 IONOS SE and that Respondent is the current registrant of the name. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 January 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 2020 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@spectrumtvs.com.  Also on January 3, 2020, 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 January 24, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, Charter Communications Holding Company, is a telecommunications company providing TV, internet, and voice services. Complainant has rights in the CHARTER SPECTRUM and SPECTRUM TV marks (“Spectrum Marks”) based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,618,726, registered Oct. 7, 2014, and Reg. No. 5,420,855, registered Mar. 13, 2018). See Compl. Ex. 3. Respondent’s <spectrumtvs.com> domain name is identical or confusingly similar to Complainant’s marks since it includes the SPECTRUM Marks and simply adds a generic term and a generic top-level domain (“gTLD”).

2.    Respondent does not have rights or legitimate interests in the <spectrumtvs.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark. Additionally, Respondent fails to use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to claim association with Complainant by passing off as an authorized retailer of Complainant.

3.    Respondent registered and uses the <spectrumtvs.com> domain name in bad faith because Respondent uses the disputed domain name to promote the sale of Complainant’s products for commercial gain. Additionally, Respondent has actual knowledge of Complainant’s rights in the SPECTRUM Marks.

 

B.   Respondent

1.    Respondent did not submit a response to this proceeding.

 

FINDINGS

1.    Respondent’s <spectrumtvs.com> domain name is confusingly similar to Complainant’s CHARTER SPECTRUM and SPECTRUM TV marks.

2.    Respondent does not have any rights or legitimate interests in the <spectrumtvs.com> domain name.

3.    Respondent registered or used the <spectrumtvs.com> domain name in bad faith.

 

DISCUSSION

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”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the SPECTRUM Marks based upon registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 4,618,726, registered Oct. 7, 2014, and Reg. No. 5,420,855, registered Mar. 13, 2018). See Compl. Ex. 3. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <spectrumtvs.com> domain name is identical or confusingly similar to Complainant’s mark since it simply adds a generic term and a gTLD to the mark. Confusing similarity is not mitigated by adding generic terms and a gTLD to a complainant’s mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Complainant argues that Respondent simply adds the generic term “tvs” and the “.com” gTLD to its mark to create a domain name. The Panel finds that the disputed domain name is confusingly similar to Complainant’s SPECTRUM Marks under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 argues that Respondent does not have rights or legitimate interests in the <spectrumtvs.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s marks. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization from a complainant to use a mark suggests that the respondent lacks rights and legitimate interests. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The WHOIS information of record lists the registrant as “Julio Montezuma,” and Complainant contends that it did not authorize Respondent’s use of the mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy  ¶ 4(c)(ii).

 

Additionally, Complainant argues that Respondent fails to use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead uses the disputed domain name to claim association with Complainant by passing off as an authorized retailer of Complainant. Attempts to pass off as a complainant by offering the complainant’s products for sale is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products.  The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Complainant provides a screenshot of Respondent’s webpage and notes that Respondent displays Complainant’s marks and logos, and offers Complainant’s products and services for sale. See Compl. Ex. 6. Therefore, the Panel agrees with Complainant that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the <spectrumtvs.com> domain name in bad faith because Respondent uses the disputed domain name to promote the sale of Complainant’s products for commercial gain. Offering competing or identical services and suggesting an affiliation with a complainant is evidence of bad faith under Policy 4(b)(iv). See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”). Here, Complainant provides a screenshot of Respondent’s webpage and notes that Respondent is commercially benefitting from the domain name regardless of whether Respondent actually provides the products and services listed. See Compl. Ex. 6. Thus, the Panel finds bad faith registration and use under Policy 4(b)(iv).

 

Additionally, Complainant claims that Respondent has actual knowledge of Complainant’s rights in the Spectrum Marks. Actual knowledge may be shown through a respondent’s use of a complainant’s marks to pass itself off as the complainant under Policy ¶ 4(a)(iii). Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Complainant argues that Respondent uses Complainant’s marks, logos, and color scheme in its attempt to suggest association with Complainant and therefore has actual knowledge of Complainant’s rights in the Spectrum Marks. See Compl. Ex. 6. Thus, the Panel finds that Respondent registered and uses the <spectrumtvs.com> domain name in bad faith under Policy ¶ 4(a)(iii).

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <spectrumtvs.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  February 5, 2020