Mediacom Communications Corporation v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2305002046159
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski, Jr. of Dentons US LLP, Illinois, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mediacommail.com> (the “disputed domain name”), registered with Media Elite Holdings Limited (the”Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to Forum electronically on May 25, 2023; Forum received payment on May 25, 2023.
On June 2, 2023, the Registrar confirmed by e-mail to Forum that the <mediacommail.com> disputed domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. The Registrar 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 June 2, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@mediacommail.com. Also on June 2, 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 June 28, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun 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 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 services. In addition, Complainant offers advertising services. Complainant offers its services to more than 1,500 communities across dozens of states throughout the United States.
Complainant is the owner of the “Mediacom” brand and is the owner of numerous MEDIACOM trademark registrations in the United States Patent and Trademark Office (the “USPTO) to identify and distinguish its various services, including Registration No. 2,544,829 for MEDIACOM, dated March 5, 2002; Registration No. 2,853,190 for MEDIACOM & Design, dated June 15, 2004; Registration No. 4,737,559 for MEDIACOM, dated May 19, 2015; Registration No. 5,029,768 for MEDIACOM, dated August 30, 2016; Registration No. 5,029,769 for MEDIACOM & Design, dated August 30, 2016; and Registration No. 5,620,795 for MEDIACOM Stylized, dated December 4, 2018 (collectively, the “MEDIACOM Mark”). The MEDIACOM Mark has been in continuous use in commerce in the United States since at least 1995.
Complainant also has registered domain names incorporating the MEDIACOM Mark, namely, <mediacomcable.com>, <mediacomcc.com>, and <mediacomtoday.com>, each of which points to websites that contain information about Complainant’s services and products. Complainant has used the aforementioned domain names since at least as early as November of 1999.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s MEDIACOM Mark because it incorporates the MEDIACOM Mark in its entirety, adding the term “mail”, followed by the“.com” generic Top-Level Domain (“gTLD”).
Complainant also claims that Respondent has no legitimate interests in the disputed domain name since Respondent is not commonly known by the disputed domain name, Complainant has not authorized or licensed Respondent to use the MEDIACOM Mark, and the disputed domain name resolves to a webpage with pay-per-click (“PPC”) third-party sponsored links, demonstrating that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use.
Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith as it had actual knowledge of the MEDIACOM Mark, and used the disputed domain name to resolve to a landing page displaying PPC third-party sponsored hyperlinks. Moreover, Complainant’s counsel sent two cease-and-desist letters to Respondent on November 2, 2022 and November 9, 2022, but received no response.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights in the MEDIACOM Mark. The Panel finds that the disputed domain name is confusingly similar to Complainant’s MEDIACOM Mark, that Respondent lacks rights or legitimate interests in the use of the disputed domain name, and that Respondent registered and is using the disputed 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 Panel finds that Complainant has shown that it has rights in the MEDIACOM Mark based upon the registration of the MEDIACOM Mark with the USPTO, as referenced above. Registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the Policy paragraph 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel also concludes that the disputed domain name is confusingly similar to the MEDIACOM Mark under Policy paragraph 4(a)(i). The disputed domain name incorporates Complainant’s MEDIACOM Mark in its entirety, merely adding the term “mail”, followed by the gTLD “.com” in the <mediacommail.com> disputed domain name. The addition of a generic and/or descriptive term and a gTLD to the entirety of a complainant’s mark does not negate any confusing similarity between a disputed domain name and a trademark under Policy paragraph 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where a disputed domain name contains a complainant’s entire mark and differs only by the addition of a generic or descriptive term and generic Top-Level Domain).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been established by Complainant.
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”). In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not respond to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard-pressed to furnish availing arguments had it chosen to respond:
Specifically, Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the MEDIACOM Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. The Panel notes that Respondent is known as “Domain Administrator / Fundacion Privacy Services LTD” and therefore finds that Respondent is not commonly known by the <mediacommail.com> disputed domain name under Policy paragraph 4(c)(ii).
Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use, because each the disputed domain name resolves to a parked webpage containing PPC sponsored links through which Respondent presumably receives click-through referral fees. Such use does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy paragraph (c)(i) and paragraph (c)(iii). See Provide Commerce, Inc. v. e on Craze, FA1506001626318 Forum Aug. 11, 2015) (holding that respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where respondent was using the disputed domain name to host PPC links to third-party websites, some of which directly competed with complainant’s business). Here, Complainant provided screenshots of the website to which the disputed domain name resolved. The PPC competing links displayed on that webpage included “Check My Email”, “Mediacom Internet” and “My Email”. In sum, and based on the foregoing, Respondent has no rights or legitimate interests in the disputed domain name.[i]
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been established by Complainant.
Registration and Use in Bad Faith
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith as set forth below.
First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location is evidence of registration and use in bad faith. Bad faith under Policy paragraph 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, Respondent is attempting to attract Internet users for commercial gain by hosting third-party sponsored PPC links. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (Respondent’s hosting of PPC links demonstrates bad faith registration and use of the disputed domain name). In so doing, there can be no doubt that the disputed domain name in this proceeding is likely to confuse consumers into believing that Respondent’s website is affiliated with, endorsed by, or authorized by Complainant.
Third, the Panel finds that Respondent had actual knowledge of Complainant’s rights in its MEDIACOM Mark when registering the disputed domain name. As noted above, the Complainant’s MEDIACOM Mark is well known. It therefore strains credulity to believe that Respondent had not known of the Complainant or its MEDIACOM Mark when registering the disputed domain name, especially since the disputed domain name contains the MEDIACOM Mark in its entirety, only adding the term “mail” followed by the gTLD “.com”. Prior knowledge of a complainant’s trademarks prior to registering a domain name is sufficient to find bad faith under Policy paragraph 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it); Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel concludes that Respondent had actual knowledge of Complainant’s rights in the MEDIACOM Mark prior to registering the disputed domain name, constituting bad faith under Policy paragraph 4(a)(iii).
Finally, Respondent’s failure to respond to Complainant’s cease-and-desist and reminder letters indicates Respondent’s bad faith. Bad faith may be found when a Respondent does not reply to a cease-and-desist letter. See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith).
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been established by 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 <mediacommail.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: July 7, 2023
[i] As of the writing of this Decision, the PPC links changed to the following: “Hubspot Sms Integration”. “Market Analysis”, and “Market Research Company”. The Panel’s analysis in this section, however, remains unchanged.
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