Charter Communications Holding Company, LLC v. asset manager / gv, llc
Claim Number: FA2103001936073
Complainant is Charter Communications Holding Company, LLC (“Complainant”), represented by Lian Ernette of Holland & Hart LLP, Colorado, USA. Respondent is asset manager / gv, llc (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chartercomm.com>, (‘the Domain Name’) registered with TurnCommerce, Inc. DBA NameBright.com;.
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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 10, 2021; the Forum received payment on March 10, 2021.
On March 10, 2021, TurnCommerce, Inc. DBA NameBright.com; confirmed by e-mail to the Forum that the <chartercomm.com> domain name is registered with TurnCommerce, Inc. DBA NameBright.com; and that Respondent is the current registrant of the name. TurnCommerce, Inc. DBA NameBright.com; has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.com; 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 March 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 2021 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@chartercomm.com. Also on March 11, 2021, 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.
Respondent replied via email on April 1, 2021 after the response deadline, which may be deficient under ICANN Rule 5.
On April 6, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 timely response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant owns the trademarks CHARTER COMMUNICATIONS and CHARTER registered in the USA for telecommunications services since 1997 with first use in commerce and common law rights dating back to 1994.
The Domain Name registered in 1996 is confusingly similar to the Complainant’s trade mark adding only the gTLD “.com” which are insufficient to prevent said confusing similarity.
The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by the Domain Name, and is not authorized by the Complainant.
The Domain Name is being offered for sale for sums in excess of USD$10,000 and has been used in a phishing e mail scam using the Complainant’s logo. This cannot be a bona fide offering of goods or services or a legitimate noncommercial or fair use. It is registration and use in bad faith.
Phishing is bad faith per se. The Domain Name is also being offered for sale for a sum far in excess of costs of registration.
B. Respondent
The Respondent did not provide a formal response, but made the following arguments in correspondence out of time.
Charter is generic and could mean fishing or travel charters.
The Domain Name was registered one year before the Complainant’s trade mark was registered so the Complaint is abusive.
The Domain Name was not registered or used in bad faith.
There are no comments re the offer for sale of the Domain Name or the evidence that the Domain Name has been used in an e mail phishing scam.
The Complainant’s contentions can be summarized as follows:
The Complainant owns the trademarks CHARTER COMMUNICATIONS and CHARTER registered in the USA for telecommunications services since 1997 with first use in commerce and common law rights dating back to 1994.
The Domain Name registered in 1996 has been offered for sale for a sum over USD$10,000 and has been used in an email phishing scam using the Complainant’s logo.
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 timely 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 Complainant is the owner of common law rights in the marks CHARTER and CHARTER COMMUNICATIONS with first use in commerce recorded as 1994.
The Domain Name was registered in 1996 two years after the Complainant began using its mark in trade and had common law rights. The Domain Name is confusingly similar to the Complainant’s mark being an abbreviated version of CHARTER COMMUNICATIONS plus the gTLD “.com”. It is also confusingly similar to the Complainant’s CHARTER mark which is the distinctive part of the Domain Name. The Complainant’s marks are still recognizable in the Domain Name.
The gTLD “.com” does not serve to distinguish a domain name from a complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s CHARTER COMMUNICATIONS and CHARTER marks.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its marks. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. 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).
The Domain Name has been used in a fraudulent phishing attempt using the Complainant’s logo. This is deceptive and confusing and amounts to passing off. As such it cannot amount to the bona fide offering of goods and services or a legitimate noncommercial or fair use. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (finding that ‘Passing off in furtherance of a fraudulent scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use’).
The Domain Name has been offered for sale generally for USD$10,000. A general offer for sale may provide additional evidence of a lack of rights and legitimate interests in a domain name. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name).
As such the Panelist finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Impersonating a complainant by use of a complainant’s mark in a fraudulent phishing attempt is disruptive and evinces bad faith registration and use. See Microsoft Corporation v. Terrence Green/ Whois Agent/Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding that respondent’s use of the disputed domain name to send fraudulent e mails constituted bad faith registration and use pursuant to Policy 4(b)(iii)). The use of the Complainant’s logo in the fraudulent phishing activity shows that the Respondent is aware of the Complainant, its rights, business and services.
Bad faith registration and use of a domain name may be found, under Policy ¶ 4(b)(i), where a respondent offers it for sale at a price well in excess of its cost to acquire. See Airbnb, Inc. v. 张昕 / 何青玉, FA 1786279 (Forum June 18, 2018) (“Complainant provides a screenshot of the disputed domain name’s resolving webpage, where Respondent offers to sell the domain name for €9,999 [. . .] The Panel therefore finds that Respondent registered and is using the <airbnb.pro> domain name in bad faith per Policy ¶ 4(b)(i).”).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under ¶¶ 4(b)(i) and (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 <chartercomm.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: April 6, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page