DECISION
Mediacom Communications Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2308002057503
PARTIES
Complainant is Mediacom Communications Corporation ("Complainant"), represented by Robert M. Wasnofski,Jr. of Dentons US LLP, Illinois, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico ("Respondent"), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mediaconbusiness.com> and <medicombusiness.com>, registered with GoDaddy.com, LLC.
PANEL
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.
Hon. Karl v. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on August 14, 2023; Forum received payment on August 14, 2023.
On August 15, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <mediaconbusiness.com> and <medicombusiness.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 August 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 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@mediaconbusiness.com and postmaster@medicombusiness.com. Also on August 21, 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.
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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
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 service. 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 has used the MEDIACOM Mark to identify and distinguish its various services for over 20 years. Complainant owns numerous trademark registrations for the MEDIACOM Mark as well as numerous domain names that include the MEDIACOM Mark.
Respondent's <mediaconbusiness.com> and <medicombusiness.com> domain names are identical or confusingly similar to Complainant's MEDIACOM mark.. The <mediaconbusiness.com> domain name differs from Complainant's MEDIACOM mark and official domain name by the misspelling of Complainant's MEDIACOM mark, i.e., the letter "n" has replaced the letter "m" in "MEDIACOM." The <medicombusiness.com> domain name differs from Complainant's MEDIACOM Mark and official domain name by the misspelling of Complainant's MEDIACOM mark, i.e., the letter "a" is missing from "MEDIACOM". Complainant has rights in the MEDIACOM mark through numerous trademark registrations, including Complainant's registration of the mark with the USPTO (e.g. Reg. No. 2,544,829, registered March 5, 2002).
Respondent lacks rights or legitimate interests in the <mediaconbusiness.com> domain name registered on June 1, 2022, and the <medicombusiness.com> domain name registered on December 17, 2021. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to use the MEDIACOM mark. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services as Respondent passes off as Complainant by intentionally mimicking Complainant's legitimate website.
Respondent registered and uses the <mediaconbusiness.com> and <medicombusiness.com> domain names in bad faith. Respondent is engaged in typo-squatting Complainant's domain name, as it is clearly attempting to divert traffic from consumers who mistakenly misspell "MEDIACOM" when trying to access Complainant's website. The websites associated with the disputed domain names feature pay-per-click links. Respondent had actual knowledge of Complainant's rights to the MEDIACOM mark prior to registering the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <mediaconbusiness.com> and <medicombusiness.com> domain names.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").
Identical and/or Confusingly Similar
Complainant argues that its registration of the MEDIACOM mark with the USPTO (e.g. Reg. No. 2,544,829, registered March 5, 2002), establishes Complainant's rights to the mark, as "the registration of a mark with a legitimate governmental authority is sufficient under the Policy to allow a rebuttable presumption of rights in the mark." See Target Brands, Inc. v. JK Internet Services, FA410000349108 (Forum Dec. 14, 2004). The Panel finds that Complaint has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that misspellings of the MEDIACOM Mark and/or the addition of the generic term "BUSINESS" do not prevent confusing similarity between the domain names and the Complainant's mark. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant's mark under Policy 4(a)(i)); See also Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) ("Therefore, the Panel concludes that the addition of a term descriptive of Complainant's business, the addition of a hyphen, and the addition of the gTLD '.com' are insufficient to distinguish Respondent's domain name from Complainant's mark.").
Complainant also argues Respondent is engaged in typo-squatting, as it deliberately misspelled Complainant's MEDIACOM Mark and added the term "BUSINESS" hoping that internet users will either inadvertently type the malformed string when searching for Complainant's official website (https://mediacombusiness.com) and/ or confuse the Domain Names with its target trademark. See Amazon Technologies, Inc. v. Carolina Rodrigues/Fundacion Comercio Electronico, FA1811001819070 (Forum Dec. 27, 2018). The additions of the generic prefix, i.e., "www", the gTLD ".com", and the obvious misspelling of "MEDIACOM" are insufficient to avoid confusion. See Mediacom Communications Corporation v. ORM LTD/ORM Ltd., FA1509001640219 (Forum 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.'").
The Panel finds that the disputed domain names are confusingly similar to Complainant's MEDIACOM mark.
Complainant has proved this element.
Rights or Legitimate Interests
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"). The Panel finds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <mediaconbusiness.com> and <medicombusiness.com> domain names. Where a response is lacking, relevant information includes the WHOIS information and any other assertions by a complainant regarding the nature of its relationship with a respondent. 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). The registrar's verification states that the registrant's name for each domain name is Carolina Rodrigues, the Respondent. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the MEDIACOM mark or the disputed domain name. Panels may use these assertions as evidence of a lack of rights or legitimate interests. 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. The Panel finds that Respondent is not commonly known by the <mediaconbusiness.com> and <medicombusiness.com> domain names under Policy ¶ 4(c)(ii).
Complainant also argues that there is no legitimate reason for Respondent to incorporate Complainant's MEDIACOM mark in the disputed domain names because Respondent does not offer Complainant's products or product bearing Complainant's MEDIACOM mark on its website. See Fossil Group, Inc. v. Client Care / Web Commerce Communications Ltd., FA 1967582 (Forum Nov. 15, 2021)(finding lack of rights or interests in similar circumstances).The Panel finds that Respondent has failed to make a bona fide use, or a legitimate non-commercial or fair use of the disputed domain names and Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has proved this element.
Registration and Use in Bad Faith
Complainant argues that Respondent is engaged in typo-squatting Complainant's domain name, as it attempts to divert traffic from consumers who mistakenly misspell "MEDIACOM" when trying to access Complainant's website. See Mediacom Communications Corporation v. Ryan G Foo / PPA Media Services, FA1405001560467 (Forum Jul. 8, 2014) ("Respondent's typo-squatting is evidence of bad faith.").
Complainant also claims that Respondent had actual knowledge of Complainant's rights in the MEDIACOM mark prior to registration of the disputed domain names. Actual knowledge is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). 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."). Actual knowledge can be determined in an analysis of the totality of the circumstances surrounding the registration and subsequent use per Policy ¶ 4(a)(iii). 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."). The Panel finds that Respondent had actual knowledge of Complainant's rights in the MEDIACOM mark prior to registration of the disputed domain names based upon the name used for the disputed domain names, the fame of the mark, and the use made of them.
The Panel finds that Respondent registered and uses the domain names in bad faith.
Complainant has proved this element.
DECISION
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 <mediaconbusiness.com> and <medicombusiness.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
September 27, 2023
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