Mediacom Communications Corporation v. bangyan Li
Claim Number: FA2209002012387
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski, Jr. of Dentons US LLP, Illinois, USA. Respondent is bangyan Li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mediacommobile.com>, registered with DOMAINNAME FWY, INC.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on September 16, 2022. Forum received payment on September 16, 2022.
On September 20, 2022, DOMAINNAME FWY, INC. confirmed by e-mail to Forum that the <mediacommobile.com> domain name is registered with DOMAINNAME FWY, INC. and that Respondent is the current registrant of the name. DOMAINNAME FWY, INC. has verified that Respondent is bound by the DOMAINNAME FWY, INC. registration agreement, which is in Chinese, 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 September 26, 2022, Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of October 17, 2022 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@mediacommobile.com. Also on September 26, 2022, the Chinese and English language 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, Forum transmitted to the parties a Notification of Respondent Default.
On October 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
As noted, the DOMAINNAME FWY, INC. registration agreement is in Chinese. Pursuant to Rule 11(a), the language of the proceeding in relation to the <mediacommobile.com> domain name shall be Chinese unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Complainant requests that the proceeding be conducted in English, contending that Respondent registered the <mediacommobile.com> domain name with knowledge of the renown of Complainant’s MEDIACOM trademark, an English-language mark used in connection with goods and services for which the vast majority of the consumer base resides in the United States and speaks English. Complainant provides services only in the United States. The success of the pay-per-click ads at the website depend upon visitors recognizing the MEDIACOM trademark and associating it with Complainant and its goods and services, an association that occurs entirely in English. By registering the domain name and resolving it to the website, Respondent demonstrates a clear grasp of the English language. Therefore, Respondent would suffer no real prejudice if these proceedings were conducted in English. In contrast, Complainant lacks fluency in Chinese and would have to incur substantial costs to engage a commercial translation service to translate documents submitted in this proceeding. As such, requiring translation to Chinese would impose an undue burden on Complainant and result in unnecessary delay.
In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be proficient in English and that there would be no undue prejudice to Respondent if English were the language of the proceeding. Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant, Mediacom Communications Corporation, is one of America’s largest cable television companies. Through its interactive broadband network, Complainant provides its customers with a wide variety of telecommunications services, including high-definition cable television services, video-on-demand services, and high-speed Internet and telephone service. Complainant has rights in the MEDIACOM mark based upon registrations with the United States Patent and Trademark Office (“USPTO”). The <mediacommobile.com> domain name is confusingly similar to Complainant’s mark.
Respondent does not have rights or legitimate interests in the <mediacommobile.com> domain because Respondent is not commonly known by the domain name; is not authorized to use Complainant’s MEDIACOM mark; and fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain resolves to a parked webpage.
Respondent registered the <mediacommobile.com> domain name in bad faith with actual knowledge of Complainant’s rights in the MEDIACOM mark and uses it in bad faith to attract Internet users for commercial gain. In addition, Respondent failed to comply with Complainant’s cease and desist letter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 shown that it has rights in the MEDIACOM mark based upon registrations with the USPTO (e.g. Reg. No. 2,544,829, registered March 5, 2002). The Panel finds Respondent’s <mediacommobile.com> domain name to be confusingly similar to Complainant’s mark because it incorporates the entire mark, adding the descriptive word “mobile”, which does nothing to distinguish the domain name from the mark, and the inconsequential gTLD “.com”, which may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent 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; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <mediacommobile.com> domain name was registered on October 13, 2021, many years after Complainant has shown that its MEDIACOM mark had become well-known. It resolves to a website which displays pay-per-click hyperlinks that refer persons to third-party websites, including a gambling website and an adult website.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <mediacommobile.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was aware of Complainant’s well-known MEDIACOM mark when Respondent registered the <mediacommobile.com> domain name and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s website and of the goods and services promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
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 <mediacommobile.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: October 28, 2022
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