Charter Communications Holding Company, LLC v. Wu Yu
Claim Number: FA2301002028885
Complainant is Charter Communications Holding Company, LLC (“Complainant”), represented by Julie Kent of Holland & Hart LLP, Colorado. Respondent is Wu Yu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spectrumguide.net>, registered with Dynadot, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to Forum electronically on January 24, 2023; Forum received payment on January 24, 2023.
On January 25, 2023, Dynadot, LLC confirmed by e-mail to Forum that the <spectrumguide.net> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 January 26, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 15, 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@spectrumguide.net. Also on January 26, 2023, 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 February 21, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
A. Complainant
Complainant, Charter Communications Holding Company, LLC is in the telecommunications business. Complainant asserts rights in the SPECTRUM mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,956,860, registered May 10, 2016). Respondent’s <spectrumguide.net> domain name is confusingly similar to Complainant’s SPECTRUM trademark because it includes the mark in its entirety and adds the generic or descriptive term “guide”, and the “.net” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <spectrumguide.net> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the SPECTRUM mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to display pay-per-click (“PPC”) advertisements to related and unrelated webpages. In addition, Respondent uses the resolving webpage to offer the disputed domain name for sale. Finally, Respondent created MX records likely using emails associated with the disputed domain name to pass off as Complainant in the furtherance of a phishing scheme.
Respondent registered and uses the <spectrumguide.net> domain name in bad faith. First, Respondent uses the disputed domain name’s webpage to offer the domain name for sale. Additionally, Respondent has displayed a pattern of bad faith registration and use of domain names. Also, Respondent uses the disputed domain name to display advertisements to competing and unrelated webpages. Further, Respondent uses the confusingly similar nature of the disputed domain name to send fraudulent phishing emails, attempting to pass off as Complainant for commercial gain. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SPECTRUM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Charter Communications Holding Company, LLC is in the telecommunications business. Complainant has rights in the SPECTRUM mark based upon registration with the USPTO (e.g., Reg. No. 4,956,860, registered May 10, 2016). Respondent’s <spectrumguide.net> domain name is confusingly similar to Complainant’s SPECTRUM trademark.
Respondent registered the <spectrumguide.net> domain name on January 14, 2023.
Respondent does not have rights or legitimate interests in the <spectrumguide.net> domain name.
Respondent registered and uses the <spectrumguide.net> domain name in bad faith.
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 asserts rights in the SPECTRUM mark based upon registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015).
Respondent’s <spectrumguide.net> domain name is confusingly similar to Complainant’s mark as it includes Complainant’s SPECTRUM mark in its entirety, together with the generic or descriptive term “guide” and the gTLD “.net”.
Respondent has no rights or legitimate interests in the <spectrumguide.net> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the SPECTRUM mark. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). A privacy service was used by Respondent but was lifted as a result of the commencement of this proceeding. The WHOIS information of record identifies Respondent as“Wu Yu.” Additionally, lack of evidence in the record to indicate that a complainant authorized respondent to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Therefore, Respondent is not commonly known by the <spectrumguide.net> domain name under Policy ¶ 4(c)(ii).
Respondent’s use of <spectrumguide.net> also does not qualify as a bona fide offering or legitimate noncommercial or fair use. The disputed domain name resolves to a site containing pay-per-click hyperlinks and advertisements. Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Here, Complainant provides a screenshot in which third-party links are prominent.
Further, the disputed domain is being offered for sale. Where a disputed domain is offered for sale to the public, previous Panels have found lack of rights in a disputed domain. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”).
The likelihood that Respondent is not using the <spectrumguide.net> domain name for any legitimate purpose is further supported by the fact that the disputed domain name has active mail exchangers (“MX”) records, indicating that the disputed domain name is configured to send and receive email communications. Generally, e-mail capabilities are not necessary for domain name registrants who are not using the domain name to host a legitimate business website. The fact that Respondent has not set up a website for the disputed domain name but is currently using the disputed domain name for email purposes leads to an inference that Respondent intends to use (or is already using) the disputed domain name to send emails from email addresses hosted by the disputed domain name and to pass itself off as Complainant in an effort to defraud Complainant’s customers and/or its business associates. Complainant is concerned that such emails would be part of an illegal phishing scheme designed to extract payments and/or sensitive personal and financial information for Complainant’s customers and business partners, and thereby divert revenue to Respondent.
Further, the existence of MX records for the disputed domain name suggests that Respondent actively uses the disputed domain name to send email communications. This evidence suggests that Respondent likely intends to use the disputed domain name to host email addresses and send emails impersonating Complainant, likely for the purpose of conducting phishing schemes and defrauding Complainant’s business partners and/or customers. Such conduct does not create rights or legitimate interests under the Policy. See Maplebear Inc. DBA Instacart v. Host Master / Transure Enter. Ltd, FA1895548 (Forum June 24, 2020) (“While Complainant offers no evidence that Respondent is using the disputed domain name to pass off as Complainant, [it] notes that the domain name has been set up with an email enabling MX record. Based upon this, Complainant contends that Respondent likely intends to use email addresses hosted by the disputed domain name to confuse or defraud Internet users. Considering the facts and arguments provided by the Complainant, the Panel agrees, and finds that Respondent does not use the domain name for 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).”); Bank of Am. Corp. v. Sato, FA1870116 (Forum Dec. 3, 2019) (“Additionally, Respondent’s domain name has been setup with an email enabling MX record. Respondent likely uses or intends to use email addresses hosted by the domain name, taking the general form name@merrilynchbofa.com, to confuse internet users into believing they are dealing with Complainant when they are not. Respondent’s likely intent to use email from the at-issue domain name to pass itself off as Complainant is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).”). See also Time Warner Inc. v. Yang, FA1700364 (Forum Dec. 12, 2016) (“Using a domain name for … a phishing scam does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Respondent registered and uses the <spectrumguide.net> domain in bad faith as Respondent makes an offer of sale of the disputed domain to the public. An offer for a sale with a lack of right may demonstrate bad faith. See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith).
Respondent has demonstrated bad faith by engaging in a pattern of conduct of registering numerous domain names that are based on third-party trademarks and brand names. See Sony Kabushiki Kaisha v. Anderson, FA198809 (Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant where respondent had previously registered domain names incorporating well-known third-party marks). Respondent has been the subject of numerous domain name disputes—all of which found Respondent to have registered and used the at-issue domains in bad faith.
Respondent registered and uses the <spectrumguide.net> domain name in Policy ¶ 4(b)(iv) bad faith, to attract Internet users with a false impression of association with Complainant. Past panels have found bad faith pursuant to Policy ¶ 4(b)(iv) when a respondent used a confusingly similar domain name to attract Internet users to a webpage that displays sponsored links. See Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links).
Also, Respondent registered and uses the <spectrumguide.net> domain name to disrupt users for commercial gain in bad faith by passing off as Complainant via phishing emails. Using email accounts associated with the disputed domain name to send fraudulent emails supports a finding of bad faith per Policy ¶ 4(b)(iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Complainant provides evidence that Respondent uses an email account associated with the disputed domain name to pass itself off as Complainant in order to facilitate a phishing scheme.
Furthermore, Respondent registered the <spectrumguide.net> domain name with actual knowledge of Complainant’s rights in the SPECTRUM mark. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding “actual knowledge through the name used for the domain and the use made of it.”). Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through incorporation of a well-known/registered mark into a domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Respondent incorporated Complainant’s entire SPECTRUM mark in the <spectrumguide.net> domain name.
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 <spectrumguide.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 6, 2023
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