Mediacom Communications Corporation v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2212002024394
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski,Jr. of Dentons US LLP, Illinois. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), PA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mediacomyourside.com> and <mediacomcomcable.com>, registered with Media Elite Holdings Limited.
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 Forum electronically on December 16, 2022; Forum received payment on December 16, 2022.
On December 20, 2022, Media Elite Holdings Limited confirmed by e-mail to Forum that the <mediacomyourside.com> and <mediacomcomcable.com> domain names are registered with Media Elite Holdings Limited and that Respondent is the current registrant of the names. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 December 21, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2023 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@mediacomyourside.com, postmaster@mediacomcomcable.com. Also on December 21, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 11, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims ownership of the MEDIACOM mark established through its ownership of the portfolio of registered trademarks and service marks described below, and the extensive use of the mark in the provision of media services.
Complainant asserts that since in or about 1995, it has used and/or registered the name and mark MEDIACOM by itself and as the dominant component of other marks in the United States in connection with a number of services, including, cable television transmission, high-speed Internet and telephone services and uses the marks to offer its services to more than 1,500 communities across dozens of states throughout the United States.
Complainant submits that as a result of the supervision and control exercised by Complainant over the nature and quality of the services offered and sold in connection with the MEDIACOM mark, and the extensive advertising, promotion, sale and public acceptance thereof, the MEDIACOM mark has become well-known and has accrued immense goodwill in the United States. Complainant adds that given its well-known status, the MEDIACOM mark has also become an asset of enormous, if not incalculable, value to Complainant.
Complainant alleges that each of the disputed domain names is virtually identical and certainly confusingly similar to Complainant’s MEDIACOM mark as each incorporate Complainant’s distinctive mark in its entirety.
Specifically, the disputed domain name <mediacomyourside.com> adds the term “your side” to Complainant’s MEDIACOM mark, which is identical to Complainant’s own domain name <mediacomonyourside.com> but for the absence of the word “on”.
The disputed domain name <mediacomcomcable.com> adds the descriptive terms “com” and “cable” to Complainant’s MEDIACOM mark.
Complainant submits that the addition of the elements “yourside”, in regard to <mediacomyourside.com>, and “com” and “cable” in regard to <mediacomcomcable.com>, are insufficient to avoid confusion. See Mediacom Communications Corporation v. ORM LTD / ORM Ltd., FA1509001640219 (NAF Oct. 31, 2015) (“The Panel finds that the disputed domain name is confusingly similar to this trademark as it merely adds the prefix ‘www,’ the suffix ‘cc,’ and the generic top-level domain (‘gTLD’) .com.’”).
Complainant argues that given the well-known status of Complainant’s MEDIACOM mark, the fact that the disputed domain names incorporate that mark in its entirety and that each combines same with descriptive terms that Complainant uses for its own domain names, there can be no doubt that the disputed domain names are likely to confuse consumers into believing that Respondent’s websites are affiliated with, endorsed by, or authorized by Complainant.
Complainant next alleges that Respondent has no rights legitimate interests in the disputed domain names arguing that there is no evidence to show that Respondent is commonly known by the disputed domain names, and the WHOIS information supports this finding. 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.).
Complainant adds that it’s use of and ownership of the MEDIACOM trademark and service mark registrations, which evidence Complainant’s exclusive rights in the mark, precede the registration and use of the disputed domain names.
Moreover, Complainant asserts that it has not licensed or otherwise authorized Respondent to use the MEDIACOM mark. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (lack of authorization from trademark owner for use of mark in domain name is a factor for finding that respondent has no legitimate interests in domain name).
Additionally, Complainant asserts that upon information and belief, Respondent has not made use of, or demonstrable preparations to use, the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services, nor could Respondent do so in light of the well-known status of Complainant’s MEDIACOM mark and Complainant’s exclusive rights in that mark.
Complainant adds that Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services, but instead merely uses the disputed domain names to resolve to websites which contain a set of pay-per-click hyperlinks as shown in screen captures of Respondent’s websites which are exhibited in evidence in an annex to the Complaint.
Complainant argues that Respondent is clearly attempting to capitalize on a close similarity between the disputed domain names, on one hand, and on the other hand the MEDIACOM mark and Complainant’s legitimate domain names (including <mediacomonyourside.com> and <mediacomcable.com>), presumably to gain revenue from each Internet user that clicks on one of the links on the website to which the disputed domain names resolve.
Complainant submits that Respondent’s use of the disputed domain names to gain revenue via pay-per-click links is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii). See Tropicana Entm’t Holdings, LLC v. Transure Enter. Ltd., FA0902001246025 (NAF Mar. 19, 2009).
Complainant adds that Respondent's typosquatting also evidences its lack of rights and legitimate interests in the disputed domain names. See Mediacom Communications Corporation v. Ryan G Foo / PPA Media Services, FA1405001560467 (Forum Jul. 8, 2014).
Complainant next alleges that the disputed domain names were registered and are being used in bad faith, arguing that they were each registered without any bona fide basis for the registration and an attempt to capitalize unfairly of the goodwill of Complainant’s well-known MEDIACOM mark.
It is contended that given Complainant’s widespread use and registration of the MEDIACOM mark, Respondent certainly had actual notice of Complainant’s ownership of the mark prior to registering the disputed domain names, and Complainant argues that such actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain names is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014)(“…the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Furthermore, it is argued that use of a domain name that incorporates a widely-used and registered mark may be evidence of actual knowledge of a complainant’s rights in a complainant’s mark per Policy ¶ 4(a)(iii). See 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”).
Alleging that the disputed domain names are being used in bad faith, Complainant refers to the exhibited screen captures of the websites to which each of the disputed domain names resolve, which illustrate that each website contains pay-per-click links that refer persons to third-party websites, an activity from which Respondent likely derives substantial revenue.
Complainant argues that the pay-per-click links on Respondent’s websites include the MEDIACOM mark in its entirety or terms that are related to the very services that Complainant promotes and sells under its MEDIACOM mark (e.g., “INTERNET”, “PHONE”), while leading to unaffiliated search results and websites, thus putting Internet users At risk of fraud, all while falsely indicating an affiliation with Complainant. It is submitted that such acts constitute bad faith use and registration on the part of Respondent. See Kmart of Michigan, Inc. v. Azra Khan, FA0210000127708 (NAF Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant’s mark when the domain name resolves to commercial websites, it may conclude that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Complainant adds that Respondent is also blatantly engaged in typo-squatting Complainant’s own domain names, as it is clearly attempting to divert traffic from consumers who type “mediacomyourside” or “mediacomcomcable” when trying to access Complainant’s websites, <mediacomonyourside.com> and <mediacomcable.com>, respectively. See Mediacom Communications Corporation v. Ryan G Foo / PPA Media Services, FA1405001560467 (Forum Jul. 8, 2014) (“Respondent’s typosquatting is evidence of bad faith”).
There can be no question that the primary reason that Respondent registered and uses the disputed domain names is to deceive the public into believing that the corresponding websites are associated with Complainant in some manner so as to free ride on Complainant’s well-known MEDIACOM mark, to divert Internet traffic intended for Complainant, and to derive revenue from dissemination of pay-per-click links. Under these circumstances, Complainant alleges there can be no explanation that would rebut the presumption of bad faith.
Furthermore, it is a nature that Respondent’s use and registration of the disputed domain names disrupts Complainant’s business by depriving it of the right to host a website using the disputed domain names to promote its services to the public, and Complainant argues that such acts constitute bad faith use and registration of the disputed domain names by Respondent, as illustrated by the examples set forth in paragraph 4(b) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000- 0003.
Complainant adds that Respondent’s bad faith is also exemplified by the fact that it was officially informed of Complainant’s objections to the use and registration of the disputed domain names on multiple occasions, as shown by copies of correspondence from Complainant’s representatives which are submitted in evidence in an annex to the Complaint.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant carries on business providing cable television transmission, high-speed Internet and telephone services using the MEDIACOM trademark and service mark for which it owns the following United States federal trademark and service mark registrations:
· United States registered service mark MEDIACOM, registration number 2,544,829 registered on March 5, 2002, on the Principal Register for services in international class 38;
· United States registered service mark MEDIACOM & Design, registration number 2,853,190 registered on June 15, 2004, on the Principal Register for services in international class 38;
· United States registered service mark MEDIACOM registration number 4,737,559, registered on May 19, 2015, on the Principal Register for services in international classes 42 and 45;
· United States registered trademark MEDIACOM, registration number 5,029,768, registered on August 30, 2016, on the Principal Register for goods in international class 9;
· United States registered trademark MEDIACOM & Design, registration number 5,029,769 registered on August 30, 2016, for goods in international class 9;
· United States registered trademark and service mark MEDIACOM & Design, registration number 5,620,795, registered on December 4, 2018, on the Principal Register for goods and services in international classes 9, 38, 41, 42 and 45.
Complainant has an established Internet presence and owns a registration for the domain name <mediacomonyourside.com>, which it has used since at least as early as December, 2011, to provide information about its cable channel line-up and also owns and has used the domain names <mediacomcable.com> and <mediacomcc.com>, since at least as early as November, 1999.
The disputed domain name <mediacomyourside.com> was registered on August 2, 2022, and the disputed domain name <mediacomcomcable.com> was registered on July 29, 2022. Each resolves to a website that offers pay-per-click links to Internet visitors.
This no information available about Respondent except for that which is provided in the Complaint, on the Registrar’s WHOIS, and the details of the registration of the disputed domain names provided by the Registrar in response to the request by the Forum in the course of 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 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 convincing, uncontested evidence that it has rights in the MEDIACOM mark, established by the ownership of the portfolio of trademark and service mark registrations described above and its long and extensive use of the mark in its business providing cable television transmission, high-speed Internet and telephone services, providing services to more than 1,500 communities across dozens of states throughout the United States.
The disputed domain name <mediacomyourside.com> consists of Complainant’s MEDIACOM mark in its entirety, albeit with the additional element “yourside”. The element “yourside” has no meaning in the context of the disputed domain except as being a misspelling of Complainant’s own <mediacomonyourside.com> mark.
Complainant’s MEDIACOM mark is the initial, dominant, and only distinctive element in the disputed domain name and so the additional element “yourside” does not prevent a finding that the disputed domain name <mediacomyourside.com> is confusingly similar to Complainant’s mark.
The disputed domain name <mediacomcomcable.com> similarly consists of Complainant’s MEDIACOM mark in its entirety in combination with the nonsense term “comcom” and the descriptive term “cable”. Again, Complainant’s MEDIACOM mark is the initial, dominant, and only distinctive element in the disputed domain name <mediacomcomcable.com> and so the additional elements do not prevent finding of confusing similarity with Complainant’s mark
In the context of this Complaint, in each case the generic Top Level Domain (“gTLD”) extension <.com> would be considered a necessary technical requirement for a domain name registration,
This Panel finds therefore that each of the disputed domain names is confusingly similar to the MEDIACOM mark in which Complainant has rights and Complainant has therefore 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 legitimate interests in the disputed domain name arguing that
· there is no evidence to show that Respondent is commonly known by the disputed domain names, and the WHOIS information supports this finding;
· Complainant’s use of, and ownership of, the trademark and service mark registrations for the MEDIACOM mark, which evidence its exclusive rights in the mark, precede the registration and use of the disputed domain names, and Complainant has not licensed or otherwise authorized Respondent to use the MEDIACOM mark;
· upon information and belief, Respondent has not made use of, or demonstrable preparations to use, the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services, nor could Respondent so do in light of the well-known status of Complainant’s MEDIACOM mark and Complainant’s exclusive rights in that mark;
· Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services, but instead merely uses the disputed domain names to resolve to websites which contain a set of pay-per-click hyperlinks as shown in screen captures of Respondent’s websites which are exhibited in evidence in an annex to the Complaint;
· Respondent is clearly attempting to capitalize on a close similarity between the disputed domain names, on the one hand, and on the other hand the MEDIACOM mark and Complainant’s legitimate domain names (including <mediacomonyourside.com> and <mediacomcable.com>), presumably to gain revenue from each Internet user that clicks on one of the links on the website to which the disputed domain names resolve;
· Respondent’s use of the disputed domain names to gain revenue via pay-per-click links is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii).
· Respondent is engaged in typosquatting also evidences its lack of rights and legitimate interests in the disputed domain names. See Mediacom Communications Corporation v. Ryan G Foo / PPA Media Services, FA1405001560467 (Forum Jul. 8, 2014).
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find 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).
Complainant has adduced clear and convincing, uncontested evidence that it has trademark and service mark rights in the MEDIACOM mark which predate the registration and first use of the disputed domain names on August 2, 2022, and July 29, 2022 respectively.
The record shows that Complainant has a long- and well-established reputation and goodwill in the cable television transmission, high-speed Internet and telephone services using the MEDIACOM trademark and service mark.
Given the distinctiveness of the MEDIACOM mark, and the fact that the disputed domain names each contain Complainant’s mark in its entirety, while adding elements that closely similar to domain names which are owned and used by Complainant, namely <mediacomonyourside.com>,<mediacomcable.com>, prove on the balance of probabilities that the registrant of the disputed domain names was actually aware of Complainant, its MEDIACOM mark, and its websites, when each of the disputed domain names was chosen and registered.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant, it mark and in mind, with the intention of taking predatory advantage of Complainant’s goodwill and reputation by creating in the minds of Internet users a non-existent association between the disputed domain names and Complainant.
The uncontested evidence adduced by Complainant shows that each of the disputed domain names is being used to attract and confuse Internet users, and misdirect Internet traffic, diverting it to resolve to webpages from which Respondent is accruing pay-per-click revenue.
Such use of the disputed domain names for the purposes confusing and misdirecting unsuspecting Internet users constitutes use in bad faith for the purposes of the Policy.
As this Panel has found that the disputed domain names were each registered and are being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4a)(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 <mediacomyourside.com> and <mediacomcomcable.com> domain name be TRANSFERRED from Respondent to Complainant.
____________________________________
James Bridgeman SC
Panelist
Dated: January 13, 2023
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