CHARTER COMMUNICATIONS HOLDING COMPANY, LLC v. Muhammad Shoaib / XMart Host
Claim Number: FA2303002036964
Complainant is CHARTER COMMUNICATIONS HOLDING COMPANY, LLC (“Complainant”), represented by Corsearch, Inc., Texas, USA. Respondent is Muhammad Shoaib / XMart Host (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spectrumbillpaynumber.com>, registered with GMO Internet Group, Inc. d/b/a Onamae.com.
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 Neil Anthony Brown KC Panelist.
Complainant submitted a Complaint to Forum electronically on March 22, 2023; Forum received payment on March 22, 2023.
On Mar 23, 2023, GMO Internet Group, Inc. d/b/a Onamae.com confirmed by e-mail to Forum that the <spectrumbillpaynumber.com> domain name is registered with GMO Internet Group, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet Group, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet Group, Inc. d/b/a Onamae.com 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 March 28, 2023, Forum served the Complaint and all Annexes, including a Japanese and English language Written Notice of the Complaint, setting a deadline of April 17, 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@spectrumbillpaynumber.com. Also on March 28, 2023, the Japanese 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 April 25, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 PROCEEDING
The Panel notes that this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Japanese language Registration Agreement, which is the language of the proceeding unless the Panel finds in all the circumstances that another language is more appropriate.
It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining whether there is another language in which it would be more appropriate to conduct the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Complainant’s understanding of the Japanese language in which the Registration Agreement is written. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel will weigh the relative time and expense in enforcing the Japanese language agreement, which might result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Here, Complainant notes that the <spectrumbillpaynumber.com> domain name contains the SPECTRUM mark and other English words. The resolving website also purports to pass itself off as Complainant and to target American consumers. In addition, Respondent owns multiple other domain names consisting of English words. See Compl. Exhibit I.
Having regard to those matters and all the circumstances, the Panel finds that persuasive evidence has been adduced by Complainant to show that the Respondent is conversant and proficient in the English language and also finds that the proceeding should be conducted in the English language. The matter may therefore go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant, Charter Communications Holding Company, LLC, is a telecommunications company. Complainant has rights in numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) that include the word SPECTRUM, (e.g., CHARTER SPECTRUM Reg. No. 4,618,726, which was registered on October 7, 2014 and SPECTRUM Reg. No. 6,311,602, which was registered on April 6, 2021), hereinafter referred to collectively as “the SPECTRUM mark”. See Compl. Exhibit E. Respondent’s <spectrumbillpaynumber.com> domain name is confusingly similar to the SPECTRUM mark as it includes the entire mark and merely add the generic terms “bill”, “pay” , and “number”, as well as the generic top-level domain (“gTLD”) “.com” to form the disputed domain name.
Respondent lacks rights or legitimate interests in the <spectrumbillpaynumber.com> domain name since Respondent is not licensed or authorized to use Complainant’s SPECTRUM mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent diverts users to a site that passes itself off as Complainant. Respondent is also conducting a phishing scheme.
Respondent registered and uses the <spectrumbillpaynumber.com> domain name in bad faith by offering competing services. Respondent also causes consumer confusion by falsely affiliating itself with Complainant. In addition, Respondent is engaged in phishing. Finally, Respondent registered the disputed domain name with a privacy service and had actual knowledge of Complainant’s rights in the SPECTRUM mark when it registered the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is engaged in the telecommunications industry.
2. Complainant has established its trademark rights in the SPECTRUM mark.
3. Respondent registered the <spectrumbillpaynumber.com> domain name on October 3, 2022.
4. Respondent has caused the disputed domain name to be used to divert internet users to a site that passes itself off as Complainant and to conduct a phishing scheme.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the SPECTRUM mark through multiple trademark registrations with the USPTO (e.g., CHARTER SPECTRUM Reg. No. 4,618,726, which was registered on October 7, 2014; SPECTRUM Reg. No. 6,311,602, which was registered on April 6, 2021). See Compl. Exhibit E. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant provides evidence of registration of the SPECTRUM mark with the USPTO, the Panel finds that Complainant has established its rights in the SPECTRUM mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SPECTRUM mark. Complainant argues that the <spectrumbillpaynumber.com> domain name is confusingly similar to its SPECTRUM mark since it uses the entire mark, simply adding the generic terms “bill,” “pay” and “number” and the “.com” gTLD. When a disputed domain name wholly incorporates another’s mark, Panels have found additional terms insufficient to defeat a finding of confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Similarly, gTLDs are irrelevant for purposes of Policy ¶ 4(a)(i) analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Given that Respondent adds only generic terms and a gTLD to Complainant’s SPECTRUM mark, the Panel finds that the <spectrumbillpaynumber.com> domain name is confusingly similar to Complainant’s SPECTRUM mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
(a) Respondent has chosen to take Complainant’s SPECTRUM trademark and to use it in its domain name, adding the generic words “bill,” “pay” and “number”, which do not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on October 3, 2022;
(c) Respondent has caused the disputed domain name to be used to divert internet users to a site that passes itself off as Complainant and to conduct a phishing scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <spectrumbillpaynumber.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has never licensed rights to or authorized Respondent to use the SPECTRUM mark. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).The WHOIS information for <spectrumbillpaynumber.com> lists the registrant as “Muhammad Shoaib” with the organization “XMart Host.” See Registrar Email Verification. Further, there is no evidence to suggest Respondent was authorized, licensed rights to, or otherwise permitted to use the SPECTRUM mark. Therefore, the Panel finds that Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant contends that Respondent confuses and diverts Internet traffic to a site that passes itself off as Complainant. Previous Panels have found that use of a domain name to mislead and divert customers away from a complainant does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). In addition, Panels have declined to find a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name when a respondent diverts traffic to a site that imitates a complainant. See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). In this case, Complainant provides evidence that <spectrumbillpaynumber.com> resolves to a screen that prominently features the SPECTRUM mark and logo and purports to offer the same services as Complainant. Compare Compl. Exhibit H (disputed domain name’s resolving page) with Compl. Exhibit K (Complainant’s legitimate website). As the Panel agrees that Respondent appears to be passing itself off as Complainant and confusing customers by mimicking Complainant’s website, the Panel finds that Respondent lacks a bona fide offering of goods or services and legitimate noncommercial or fair use of the <spectrumbillpaynumber.com> domain name under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant also argues that Respondent uses the <spectrumbillpaynumber.com> domain name for phishing. Phishing has consistently been held not to satisfy Policy ¶¶ 4(c)(i) or (iii). See, e.g., DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides evidence of MX records, submitting that the disputed domain name is set up to send and receive emails with which Respondent can use to defraud Complainant’s consumers or vendors. See Compl. Exhibit P. As the Panel finds that Respondent is engaging in illegal phishing, it also finds additional evidence that Respondent lacks rights or legitimate interests in the <spectrumbillpaynumber.com> domain name under Policy ¶ 4(c)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith or has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <spectrumbillpaynumber.com> domain name in bad faith by offering competing products and services. When a respondent uses a disputed domain name to offer for sale the same or similar goods or services to those of a complainant, Panels have found bad faith disruption of a complainant’s business. See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Respondent offers Internet service packages, the same business offerings as Complainant. See Compl. Exhibit H. As the Panel agrees that Respondent is offering competing services, it finds bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant also contends that Respondent uses the <spectrumbillpaynumber.com> domain name and its resolving site to cause consumer confusion. When a disputed domain name is found to be confusingly similar to and incorporate a well-known mark, Panels have often concluded that a respondent seeks to mislead consumers and attract them in bad faith for commercial gain. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Panels have also found Policy ¶ 4(b)(iv) bad faith when a respondent impersonates and passes itself off as a complainant. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). As noted, Respondent uses the SPECTRUM mark, logo, and services on the resolving site. See Compl. Exhibit H. As the Panel agrees, it finds bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent uses the <spectrumbillpaynumber.com> domain name for phishing. Phishing has been used as independent evidence of bad faith. See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA 1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). Complainant provides evidence that Respondent has set up MX records for the disputed domain name. See Compl. Exhibit P. As the Panel finds that Respondent is using the domain name for phishing, it also finds bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant submits that Respondent’s registration of the <spectrumbillpaynumber.com> domain name with a privacy service shows bad faith. A respondent’s use of a privacy service in an attempt to conceal its identity may support a finding of bad faith. See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). The publicly available WHOIS information, provided in Compl. Exhibit I, shows Respondent registered the domain name with a privacy shield. As the Panel agrees, it finds that Respondent’s use of a privacy service as evidence of bad faith under Policy ¶ 4(a)(iii).
Fifthly, Complainant submits that Respondent had actual knowledge of Complainant’s rights in the SPECTRUM mark when registering <spectrumbillpaynumber.com>. Actual knowledge is sufficient to establish a respondent’s bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). To support this submission, Complainant also submits that the identical SPECTRUM mark is used in the disputed domain name and on the resolving website. As the Panel finds that Respondent had actual knowledge, it also finds bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the SPECTRUM mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <spectrumbillpaynumber.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: April 27, 2023
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