Charter Communications Holding Company, LLC v. yogendra singh
Claim Number: FA2108001961467
Complainant is Charter Communications Holding Company, LLC (“Complainant”), represented by Lian Ernette of Holland & Hart LLP, Colorado, USA. Respondent is yogendra singh (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spectrum-net-selfinstall.com>, registered with GoDaddy.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 27, 2021; the Forum received payment on August 27, 2021.
On August 30, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <spectrum-net-selfinstall.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 August 31, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 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@spectrum-net-selfinstall.com. Also on August 31, 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 September 27, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the mark SPECTRUM based on its portfolio of service mark registrations for marks incorporating the word SPECTRUM described below and at common law through extensive use of the SPECTRUM mark in its telecommunications business providing services to over 26 million customers in the United States.
Complainant states that it considers itself America’s fastest growing TV, internet, and voice company with 94,000 employees and service in 41 states and submits that as a result of its substantial use and promotion the term, SPECTRUM has become associated with Complainant as evidenced by the fact that typing the term SPECTRUM into the Google search engine produces Complainant’s websites or websites referring to Complainant in the search results.
Complainant submits that the disputed domain name is confusingly similar to its SPECTRUM mark arguing that it incorporates the mark in its entirety, together with the terms “net,” “self install” and the top-level domain “.com.”
Complainant argues that given the generic nature of the terms “net” and “self-install” in reference to Complainant, its services and website, this addition is insufficient to distinguish the disputed domain name from Complainant’s SPECTRUM marks.
Complainant adds that these elements only contribute to the confusion as Complainant uses the Internet address <spectrum.net/selfinstall> to allow its customers to activate Complainant’s services and create an account. See Charter Communications Holding Company, LLC v. Chandon Kumar, FA1808001800569 (finding <charterspectrumtvdeals.org> confusingly similar to Complainant’s CHARTER SPECTRUM mark and noting “the [respondent’s] inclusion of the terms ‘tv’ and deals’ (or simply ‘tvdeals’) only add to the confusion between the two since the terms of suggestive of Complainant’s television related business.”
Complainant further contends that the addition of a generic Top-Level Domain (“gTLD”) extension <.com> is irrelevant for purposes of ascertaining confusing similarity. See Charter Communications Holding Company, LLC v. Webdesk Two, FA1800636 (Forum Sept. 5, 2018) (“The addition of a descriptive term and a gTLD is not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis.”).
Complainant then submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that there is no evidence that Respondent is commonly known by the disputed domain name. See Charter Communications Holding Company, LLC v. Jason Malone/Corporate Services Direct, FA1810001813790 (Forum Dec. 6, 2018) (finding respondent was not commonly known by the disputed domain name where no evidence in the record showed that respondent was commonly known by that name, including the WhoIs information and Complainant’s statement that it had not authorized respondent’s use of its mark).
Complainant notes that Respondent registered the disputed domain name without the consent of Complainant on August 17, 2020, long after Complainant first began use of and registered its service marks.
Complainant further asserts that Respondent is not, and has never been, associated or affiliated with Complainant and Complainant has never authorized Respondent to use the SPECTRUM Marks or any variations thereof.
Complainant asserts that Respondent is not authorized to use the SPECTRUM marks, nor is Respondent an authorized licensee, vendor, supplier, distributor, or customer relations agent for Complainant’s services.
Complainant further submits that Respondent’s actions are not a bona fide offering of goods or services, nor is Respondent engaged in a legitimate noncommercial or fair use of the disputed domain name, arguing that to the contrary, Respondent is using the disputed domain name to generate a website that suggests an association with Complainant in violation of U.S. copyright, trademark, unfair competition, and consumer deception laws and the laws of other jurisdictions. See Charter Communications Holding Company, LLC v. Chandon Kumar¸ FA180801800637 (Forum Sept. 7, 2018) (“The disputed domain name incorporated Complainant’s registered mark without authorization, and is being used for a website that mimics Complainant’s website in a manner obviously designed to mislead Internet users. Such use does not give rise to rights or legitimate interests under the Policy.”).
In this regard Complainant refers to screen captures of the web locations to which the disputed domain name has resolved, which are exhibited in annexes to the Complaint. The earlier website contained content describing Complainant’s services, whereas more recently the disputed domain name resolves to the Registrar’s parking page with links to third party content.
Complainant argues that to the extent Respondent uses the disputed domain name to provide accurate information about Complainant, such use is insufficient to give Respondent rights to or legitimate interests in the disputed domain name. American Express Marketing & Development Corp. v. Crown Insurance Partners, FA0904001255638 (Forum May 13, 2009) (finding respondent had no rights in the disputed domain name where it displayed “information on Complainant’s gift card products and advertises such products as well as those of Complainants competitors.”).
Complainant adds that the disputed domain name does not link to a mere “informational” site. Rather, Respondent is using the disputed domain name to advertise its offering of Complainant’s services, thereby suggesting an affiliation or authorization by Complainant. Panels have consistently held that when a domain name resolves to a website which purportedly offers information about Complainant’s services, as well as advertised links that redirect Internet users, such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant further argues that previous panels have held that there can be no rights or legitimate interest under Policy ¶ 4(c)(ii) when a respondent had notice that a complainant possesses strong trademark rights in a mark identical or similar to the disputed domain name. See Charter Communications Holding Company v. Hostpane Web Hosting/Hostpane.com, FA1904001841062 (Forum May 24, 2019) (finding that registration of <charterspectrum-internet.com> demonstrated that respondent had notice of complainant’s strong trademark rights in CHARTER and CHARTER SPECTRUM). In the present case, Complainant first began using and developing rights in the SPECTRUM marks in the United States since at least as early as 2014 – several years prior to Respondent’s registration of the disputed domain name.
Complainant then argues that the disputed domain name was registered and is being used in bad faith submitting that registration of a domain name that is confusingly similar to another’s mark, despite actual or constructive knowledge of the mark holder’s rights, constitutes bad faith registration and use pursuant to ¶ 4(a)(iii). See Charter Communications Holding Company v. MIZHAR salem, FA 1803001774836 (Forum Apr. 4, 2018) (finding bad faith in registration of <charterspectrumonline.com> because “[a]ctual knowledge of a complainant’s rights in a mark prior to registering a confusingly similar domain name can evidence bad faith under Policy ¶ 4(a)(iii).”).
Complainant submits that at the time the disputed domain name was registered, Respondent likely had actual notice of Complainant’s registrations for the SPECTRUM marks due to Complainant’s numerous and incontestable trademark registrations and Complainant’s longstanding use. See Belo Corp. v. George Latimer, D2002-0329 (WIPO May 16, 2002) (finding that registration of <providencejournal.com> demonstrated that respondent had notice of complainant’s strong trademark rights in THE PROVIDENCE JOURNAL and PROVIDENCE JOURNAL).
Complainant adds that Respondent’s website advertises its offering of Complainant’s services but falsely implies it is affiliated with Complainant. Potential or existing customers who encounter the disputed domain name are likely to believe Respondent is an authorized retailer of Complainant’s services due to Respondent’s use of SPECTRUM and Respondent’s claim that it provides Complainant’s services. Further, potential customers who are searching for Complainant’s website may instead find Respondent’s website due to the confusingly similar domain name. This is especially true since Complainant uses the URL <spectrum.net/selfinstall>.
Complainant contends that such misleading use of the disputed domain name to directly compete with Complainant is evidence of Respondent’s bad faith registration and use under Policy 4(b)(iv).
Complainant adds that Respondent’s use of the disputed domain name is also intended to trade on Complainant’s reputation and is likely to confuse Internet users into believing that Respondent’s website is licensed by or affiliated with Complainant, when it is not, which constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Charter Communications Holding Company, LLC v. Ido Talmon, FA1904001841056 (Forum May 25, 2019) (finding respondent’s registration of <spectrum.com> was in bad faith where respondent displayed the complainant’s mark, information on the complainant, and intended to confuse consumers into believing respondent was affiliated with complainant).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a telecommunications company and owns a large portfolio of registered trademarks incorporating the word SPECTRUM, including the following United States service mark registrations:
· SPECTRUM BUSINESS TV registration number 4,952,769 registered on the Principal Register on May 3, 2016, for services in international class 38;
· SPECTRUM GUIDE registration number 4,956,860 registered on the Principal Register on May 10, 2016, for services in international class 38;
· SPECTRUM REACH registration number 5,098,471 registered on the Principal Register on December 13, 2016 for services in international classes 35 and 41;
· SPECTRUM VOICE registration number 5,098,473 registered on the Principal Register on December 13, 2016 for services in international classes 37 and 38;
Complainant has an established Internet presence and owns numerous domain names consisting of the term SPECTRUM, including <spectrum.co> which resolves to its principal website. Complainant’s domain name <spectrum.net> uses the URL <spectrum.net/selfinstall> to redirect users to <activate.spectrum.net>.
The disputed domain name <spectrum-net-selfinstall.com> was registered on August 17, 2020 and until recently resolved to a website purporting to offer the services of Complainant.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name in the course of this proceeding. The WhoIs records that Respondent is the registrant of the disputed domain name.
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”).
Complainant has provided clear and uncontested evidence of its rights in a number of service marks incorporating the word “spectrum” and has convincingly argued that it has acquired common law trademark rights in the word SPECTRUM through its extensive use as a mark in its telecommunications business providing services to over 26 million customers in its TV, internet, and voice business in the United States with 94,000 employees across in 41 states.
The disputed domain name consists of the element “spectrum” together with the terms “net,” “self install” and the generic Top-Level Domain extension <.com>.
The word element “spectrum” is the common law mark in its entirety and the distinctive element of Complainant’s registered service marks mark. SPECTRUM is the principal, dominant and only distinctive element in both the disputed domain name and Complainant’s marks. The terms “net” and “self-install” are generic and descriptive and together or individually are insufficient to distinguish the disputed domain name from Complainant’s SPECTRUM marks. In the circumstances of the present Complaint the generic Top-Level Domain <.com> has no distinguishing character as it would be perceived by Internet users as a necessary technical element for a domain name registration.
This Panel finds therefore that the disputed domain name is confusingly similar to the service marks SPECTRUM BUSINESS, SPECTRUM BUSINESS TV, SPECTRUM GUIDE and SPECTRUM REACH in which Complainant has registered service mark rights. This Panel finds therefore that the disputed domain name is confusingly similar to the trademark in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that:
· there is no evidence that Respondent is commonly known by the disputed domain name;
· Respondent registered the disputed domain name, which is confusingly similar to its abovementioned marks, on August 17, 2020, well after Complainant acquired its registered service mark rights in the marks;
· the disputed domain name was registered without Complainant’s permission or consent. Respondent is not and has never been associated or affiliated with Complainant;
· Respondent is not affiliated with Complainant in any way, nor is Respondent authorized to use Complainant’s marks;
· Respondent is not an authorized licensee, vendor, supplier, distributor, or customer relations agent for Complainant’s services;
· Respondent’s actions are not a bona fide offering of goods or services;
· Respondent is not engaged in a legitimate noncommercial or fair use of the disputed domain name, but to the contrary, Respondent has used the disputed domain name to resolve to a website that suggests an association with Complainant in violation of U.S. copyright, trademark, unfair competition, and consumer deception laws and the laws of other jurisdictions;
· a screen capture of the website to which the disputed domain name currently resolves, exhibited with the Complaint, shows that the disputed domain name resolves to a parked page with links to third party content;
· the screen capture illustrates that the disputed domain name is being used to advertise an offering of Complainant’s services while falsely implying that it is affiliated with Complainant and such use is insufficient to give Respondent rights to or legitimate interests in the domain name;
· the fact that Respondent is not affiliated with Complainant also means that if Respondent were to offer any services using the disputed domain name as a trademark, such use would be neither legitimate nor bona fide; and
· there can be no rights or legitimate interest under Policy ¶ 4(c)(ii) because Respondent had notice that Complainant possesses strong trademark rights which pre-date the registration of the disputed domain name.
It is well established that once a complainant has made out a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to establish the existence of such rights or interests.
Respondent failed to discharge the burden of production or provide any evidence of his rights or legitimate interests in the disputed domain name. This Panel must therefore find that Complainant has proven on the balance of probabilities that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name was registered on August 17, 2020, long after Complainant established its rights in the trademarks incorporating the word “SPECTRUM”. The elements in the disputed domain name <spectrum-net-selfinstall.com> clearly reference an installation of services and an association with Complainant. In fact, the evidence adduced shows that Respondent has actually used the disputed domain name to offer Complainant’s services to the public on a website that mimics that of Complainant, without permission or license.
This Panel finds therefore that on the balance of probabilities the registrant of the disputed domain name was aware of Complainant, its name, its business and its website to which its domain name <spectrum.net> resolves, when the disputed domain name was registered. This Panel further finds that on the balance of probabilities the disputed domain name was therefore registered in bad faith in order to reference and take predatory advantage of Complainant, its goodwill and reputation.
The evidence shows that the disputed domain name is currently inactive, resolving to the Registrar’s parking page with links to third party content.
Complainant has adduced evidence that on August 8, 2021 the disputed domain name resolved to a website, that provided information about Complainant’s services, whilst not in any way providing information about Respondent and in general giving the misleading and false impression that Respondent’s website was in some way affiliated with Complainant.
This Panel finds therefore that on the balance of probabilities, by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of his web site. Such use constitutes bad faith under the Policy.
Furthermore, Respondent has recently ceased active use of the disputed domain name and has permitted it to resolve to a parking page with links to third party content. This Panel finds that such use of the confusingly similar domain name will confuse Internet users and is likely to misdirect Internet traffic intended for Complainant which is also a bad faith use of the disputed domain name.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith.
As Complainant has succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) it is therefore entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <spectrum-net-selfinstall.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: September 29, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page