Mediacom Communications Corporation v. Nguyễn Văn Lư
Claim Number: FA2306002047293
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski, Jr. of Dentons US LLP, Illinois, USA. Respondent is Nguyễn Văn Lư (“Respondent”), Việt Nam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medicomcc.com>, registered with April Sea Information Technology Company 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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on June 2, 2023; Forum received payment on June 2, 2023.
On June 12, 2023, April Sea Information Technology Company Limited confirmed by e-mail to Forum that the <medicomcc.com> domain name is registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the name. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company 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 14, 2023, Forum served the Complaint and all Annexes, including a Vietnamese and English language Written Notice of the Complaint, setting a deadline of July 5, 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@medicomcc.com. Also on June 14, 2023, the Vietnamese 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 July 13, 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 THE PROCEEDING
Complainant requests that the language of this administrative proceeding should be the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Vietnamese language Registration Agreement and submits that English is a more appropriate language. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of 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 Respondent’s understanding of the Vietnamese language included in the Registration Agreement. 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 may weigh the relative time and expense in enforcing the Vietnamese language agreement, which would 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.”).
In support of its request, Complainant submits as follows:
“In these proceedings, the domain name at issue, (“Domain Name”), is in the English language and resolves to a website at http://medicomcc.com/ (“Website”) that is written entirely in English, with absolutely no trace of Vietnamese. As alleged in the Complaint, Respondent registered the 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. 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. Respondent would suffer no real prejudice if these proceedings were conducted in English.”
The Panel agrees with those submissions and finds them very persuasive.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to show that the Respondent is probably conversant and proficient in the English language. After considering all of the circumstance of the present case, the Panel decides that the proceeding should be conducted in English.
A. Complainant
Complainant made the following contentions.
Complainant is a cable television company that provides 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 through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,544,829, registered on March 5, 2002). See Compl. Ex. 4. Respondent’s <medicomcc.com> domain name is identical or confusingly similar to Complainant’s MEDIACOM mark and official <mediacomcc.com> domain name as it merely deletes the letter “a” and adds the “.com” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests in the <medicomcc.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the MEDIACOM mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name to redirect users to a website that contains pay-per-click hyperlinks.
Respondent registered and uses the <medicomcc.com> domain name in bad faith. Respondent’s website disrupts Complainant’s business as Respondent registered the disputed domain name to resolve to a website with pay-per-click hyperlinks for Respondent’s financial gain. Further, Respondent had actual knowledge of Complainant’s rights to the MEDIACOM mark prior to registering the disputed domain name. Finally, Respondent failed to respond to Complainant’s objections on multiple occasions.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of telecommunications and related services.
2. Complainant has established its rights in the MEDIACOM trademark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,544,829, registered on March 5, 2002).
3. Respondent registered the disputed <medicomcc.com> domain name on August 19, 2004.
4. Respondent has caused the disputed domain name to be used to redirect internet users to a website that contains pay-per-click hyperlinks.
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 MEDIACOM trademark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 2,544,829, registered on March 5, 2002). See Compl. Ex. 4. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has demonstrated rights in the MEDIACOM 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 MEDIACOM mark. Next, Complainant argues Respondent’s <medicomcc.com> domain name is identical or confusingly similar to Complainant’s MEDIACOM mark and official <mediacomcc.com> domain name as it merely deletes the letter “a” and adds the “.com” generic top-level-domain name ("gTLD"). The domain name also adds the letters “cc” to the trademark. The deletion of a letter from and the minor addition of letters to, a trademark and adding a gTLD fails to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per 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 MEDIACOM trademark and to use it in its domain name, deleting the letter “a” from the trademark and adding two letters to it, which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed <medicomcc.com> domain name on August 19, 2004;
(c) Respondent has caused the disputed domain name to be used to redirect internet users to a website that contains pay-per-click hyperlinks;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <medicomcc.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the MEDIACOM mark. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by 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 the disputed domain name lists the registrant as “Nguyễn Văn Lư” and Complainant asserts that there is no other evidence to suggest that Respondent was authorized to use the MEDIACOM mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <medicomcc.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent’s disputed domain name resolves to a website featuring pay-per-click links. Using a disputed domain name to resolve to a website containing pay-per-click links may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows 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).”). Complainant provides screenshots of Respondent’s website resolving to a page featuring pay-per-click links. See Compl. Ex. 9. Complainant argues that Respondent generates click-through fees and benefits financially when users click on the links. The Panel therefore finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
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 and 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 contends that Respondent registered and uses the <medicomcc.com> domain name in bad faith as Respondent registered the disputed domain name to resolve to a website that contains pay-per-click links for Respondent’s financial gain. Registration of a confusingly similar domain name with the intent to generate click-through-fees can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). As the Panel recalls, Complainant provides a screenshot of Respondent’s resolving website featuring pay-per-click links. See Compl. Ex. 9. Complainant argues that Respondent likely derives revenue from this website. As the Panel agrees, it finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent registered the <medicomcc.com> domain name with actual knowledge of Complainant’s rights in the MEDIACOM mark. Use of a mark to divert Internet traffic to a disputed domain name where a respondent offers pay-per-click links for financial gain can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant argues that given the widespread use and registration of the MEDIACOM mark, Respondent likely had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name. As the Panel agrees, it finds that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
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 <medicomcc.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: July 14, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page