Mediacom Communications Corporation v. [unknown holder]
Claim Number: FA2104001942213
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski, Jr. of Dentons US LLP, Illinois, USA. Respondent is [unknown holder] (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mediacomccs.com>, registered with eNom, 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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2021; the Forum received payment on April 20, 2021.
On April 21, 2021, eNom, LLC confirmed by e-mail to the Forum that the <mediacomccs.com> domain name (the Domain Name) is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 April 27, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of May 17, 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@mediacomccs.com. Also on April 27, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 19, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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. Complainant also requests that the Panel redact Respondent’s name from its posted decision, for the reasons stated below.
PRELIMINARY ISSUE: FALSE REGISTRATION OF DOMAIN NAME
Complainant alleges that the WHOIS information listed for the Domain Name is false, that the person named as Respondent in this case is in fact the Founder, Chair, and CEO of Complainant, and that he did not register the Domain Name. Complainant requests the Panel to redact his name from its public Decision. Complaint Exhibit 12 is a biographical article on Rocco Commisso identifying him as the Founder, Chair and CEO of the Complainant. Complaint Exhibit 13 is a screenshot of Google Maps stating that it cannot find the address listed by the registrar for the registrant. Paragraph 4(j) of the the Policy provides for portions of a decision to be redacted in a proper case. Forum Supplemental Rule 15(b) provides that any request to have a portion of a decision redacted must be made in the Complaint, the Response, or an Additional Submission. It is obvious from Complaint Exhibits 12 and 13 that the person who registered the Domain Name did so using false information. For this reason, pursuant to Policy ¶ 4(j) and in accord with the action of other UDRP panels, the Panel orders the name of the named Respondent to be redacted from the case caption of this Decision. Capital One Financial Corp. v. [Unknown Holder], Case No. FA1607001684338 (Forum Aug. 23, 2016) (“Respondent contends that it has been the victim of identity theft. Specifically, on July 28, the Forum received email communications from Respondent stating that ‘Someone has apparently used my name without my knowledge or permission’. . . . The information supplied in that e-mail communication makes the claim of identity theft plausible, and Complainant does not contest this assertion. Accordingly, this Panel finds that it is in the interests of justice that the identity of the Respondent named in the Complaint be redacted from this decision to protect the identity of that person.”).
All references to “Respondent” in the Findings and Decision below mean and refer to the person who actually registered the Domain Name, who is identified as “[unknown holder]” in the case caption, and not Mr. Commisso.
A. Complainant
Complainant provides cable television, Internet, and telephone services. It has rights in the MEDIACOM mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <mediacomccs.com> Domain Name is confusingly similar to Complainant’s MEDIACOM mark, differing only by the addition of the letters “ccs” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the Domain Name. Respondent provided false information to the registrar, Respondent is not using the Domain Name for any bona fide offering of goods or services or for any legitimate noncommercial or fair use because it resolves to an inactive web site, Respondent is not commonly known by the Domain Name, and Respondent has engaged in typosquatting.
Respondent registered and uses the Domain Name in bad faith. Respondent fails to make any active use of the Domain Name. It registered the Domain Name using false WHOIS information. The Domain Name is a typosquatted version of Complainant’s own domain name <mediacomcc.com>, and Respondent had actual notice of Complainant’s mark when it registered the Domain Name. Finally, Respondent registered a domain name incorporating Complainant’s mark without itself having any connection with Complainant.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The MEDIACOM mark was registered to Complainant with the USPTO (Reg. 2,544,829) on March 5, 2002 (Complaint Exhibit 4). Complainant’s registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”).
Respondent’s <mediacomccs.com> Domain Name is identical or confusingly similar to Complainant’s MEDIACOM mark. It incorporates the mark in its entirety, merely adding the letters “ccs” and the “.com” gTLD. These changes do not distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the MEDIACOM mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) the person or entity that registered the Domain Name provided false information about its identity and contact information to the registrar, (ii) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the web site resolving from it is inactive, (iii) Respondent is not commonly known by the Domain Name, and (iv) Respondent has engaged in typosquatting. These allegations are addressed as follows:
As discussed above, the person who registered the Domain Name did not provide its name or contact information to the registrar. Registering a domain name in the name of another person and providing no accurate contact information is strong evidence of an intent on the part of that person not to claim or hold any rights or legitimate interests in the domain name.
Since the identity and contact information of the person who registered the Domain Name are unknown, it is not possible to compare that person’s name with the Domain Name for the purposes of determining whether the Respondent has been commonly known by the Domain Name. Nevertheless, by registering the Domain Name as it did, the Respondent effectively abandoned any claim it might have to rights or legitimate interests in the Domain Name, and from this it can reasonably be presumed that the Respondent has not been commonly known by the Domain Name. The Panel so finds.
Complaint Exhibit 9 is a screenshot of the web site resolving from the Domain Name. It is a Google page stating that the URL for the Domain Name could not be found on its server. It is clear from this that Respondent is making no active use of the Domain Name. Passive holding of an infringing domain name does not confer rights under Policy ¶¶ 4(c)(i) or (iii), as it does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use. Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”).
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use. First, providing false WHOIS information to the registrar is evidence of bad faith registration and use. This does not fall within any of the circumstances described in Policy ¶ 4(b), but that paragraph acknowledges that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The nonexclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith and registering a domain name with false WHOIS information is evidence of bad faith. CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”).
Second, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in May 2016 (Complaint Exhibit 11 shows creation date). Complainant’s MEDIACOM mark has been used by it in commerce since at least as early as 1995 (Complaint Exhibit 4). It is unique and whimsical in nature, yet Respondent copied it exactly into the Domain Name. It also knew enough about Complainant to use the name of its Chair and CEO when it registered the Domain Name. Given the nonexclusive nature of Policy ¶ 4(b), registering an identical or confusingly similar domain name with actual knowledge of a complainant’s rights in an incorporated mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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).
Finally, by adding the letter “s” immediately before the gTLD in the Domain Name, Respondent is guilty of typosquatting, which is the intentional misspelling of a protected trademark to take advantage of typing errors made by Internet users seeking the web sites of the owners of the mark. It is true that the letter “s” was not added to Complainant’s protected MEDIACOM mark, and this Panel has previously held that misspellings of generic terms added to a mark within a domain name do not qualify as typosquatting. Nevertheless, the “s” in this case was added at the end of the domain name used by Complainant for its web site at <mediacomcc.com>. Complainant has used this web site since as least as early as 1999 (Complaint Exhibit 5) and as such it has become associated with Complainant. This association is sufficiently close to warrant a finding of typosquatting in this case. Again, the nonexclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith and typosquatting has, in and of itself, been held to be evidence of bad faith registration and use. Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mediacomccs.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
May 28, 2021
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