Mediacom Communications Corporation v. Hulmiho Ukolen / Poste restante / Stick Pohlavson
Claim Number: FA2007001904241
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski, Jr. of Dentons US LLP, United States. Respondent is Hulmiho Ukolen / Poste restante / Stick Pohlavson (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwwmediacomtoday.com> and <mymediacomtoday.com>, registered with Gransy, s.r.o..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Preliminary Issue: Multiple Respondents
Complainant alleges that the disputed domain names are effectively controlled by the same person or entity, operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant demonstrates that the disputed domain names share nearly every possible feature in common with each other including the registrar, the name servers, the contact information (email address and phone number), and they resolve to similar adware or malware sites. The Panel finds that the evidence is sufficient to establish that the domain name registrants are the same, and will refer to them as Respondent.
Complainant submitted a Complaint to the Forum electronically on July 14, 2020; the Forum received payment on July 14, 2020.
On July 17, 2020, Gransy, s.r.o. confirmed by e-mail to the Forum that the <wwwmediacomtoday.com> and <mymediacomtoday.com> domain names are registered with Gransy, s.r.o. and that Respondent is the current registrant of the names. Gransy, s.r.o. has verified that Respondent is bound by the Gransy, s.r.o. 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 July 28, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 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@wwwmediacomtoday.com, postmaster@mymediacomtoday.com. Also on July 28, 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 August 18, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <wwwmediacomtoday.com> and <mymediacomtoday.com> domain names are confusingly similar to Complainant’s MEDIACOM mark.
2. Respondent does not have any rights or legitimate interests in the <wwwmediacomtoday.com> and <mymediacomtoday.com> domain names.
3. Respondent registered and uses the <wwwmediacomtoday.com> and <mymediacomtoday.com> domain names in bad faith.
B. Respondent failed to submit a response in this proceeding.
Complainant, Mediacom Communications Corporation, is a cable television company that provides a variety of telecommunication services. Complainant holds a registration for the MEDIACOM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,544,829, registered Mar. 5, 2002).
Respondent registered the <mymediacomtoday.com> domain name on July 2, 2006, and the <wwwmediacomtoday.com> domain name on July 28, 2006, and uses them to host pay-per-click links and spread malware.
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 Panel finds that Complainant has rights in the MEDIACOM mark under Policy ¶ 4(a)(i) based upon registration with the USPTO. 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)).
Respondent’s <wwwmediacomtoday.com> and <mymediacomtoday.com> domain names use the MEDIACOM mark and add the abbreviation “www” and/or the generic terms “my” and “today,” as well the “.com” gTLD. Slight variations to a mark such as abbreviations, generic terms, and gTLDs are insufficient to distinguish a domain name from a mark. See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Citizens Financial Group, Inc. v. Paul Taylor, FA 1714579 (Forum Mar. 14, 2017) (“Similarly, addition of the letters “www” to the beginning of a mark in order to from a domain name does not distinguish the domain name for the purposes of a Policy ¶ 4(a)(i) analysis for confusing similarity.”). Accordingly, the Panel finds that Respondent’s <wwwmediacomtoday.com> and <mymediacomtoday.com> domain names are confusingly similar to Complainant’s MEDIACOM mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 <wwwmediacomtoday.com> and <mymediacomtoday.com> domain names because Respondent is not commonly known by the disputed domain names. Respondent is not authorized to use Complainant’s MEDIACOM mark. The WHOIS information of record lists the registrants as “Hulmiho Ukolen” and “Stick Pohlavson.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant also argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead uses the domains to host pay-per-click links and spread malware. The use of a confusingly similar domain name to redirect users to commercial webpages via hyperlinks is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). The use of a confusingly similar domain name to attempt to install malicious software on users’ computers is also not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Hilton Hotels Corp. v. Padonack, FA 1043687 (Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name). Complainant provides the links displayed at Respondent’s webpages and demonstrates that the disputed domain names redirect users to suspected malware. The Panel finds that Respondent does not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus does not have rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <wwwmediacomtoday.com> and <mymediacomtoday.com> domain names in bad faith because Respondent attracts users for commercial gain by displaying third-party commercial links. The use of a confusingly similar domain name to display third-party commercial hyperlinks is evidence of bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). Complainant provides screenshots of the webpages at the disputed domain names, showing links such as “Online News,” “News Update,” and “Local News,” which are similar to those on Complainant’s website. The Panel therefore finds bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant also claims that Respondent registered and uses the disputed domain names in bad faith because Respondent redirects users to suspected malware. The use of a disputed domain name in connection with the spread of malware evinces bad faith under Policy ¶ 4(a)(iii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”). Complainant provides evidence that the disputed domains resolve to malware dissemination sites. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant argues that Respondent certainly had knowledge of Complainant’s rights in the MEDIACOM mark based on Complainant’s widespread use of the mark, as well as Respondent’s use of the domain names to host links relating to Complainant’s business. The Panel agrees and finds bad faith registration and use under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”).
The Panel finds that Complainant has satisfied 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 <wwwmediacomtoday.com> and <mymediacomtoday.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 21, 2020
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