DECISION

 

Mediacom Communications Corporation v. DNS Admin / Buntai LTD

Claim Number: FA2404002092499

PARTIES

Complainant is Mediacom Communications Corporation ("Complainant"), represented by Robert M. Wasnofski, Jr. of Dentons US LLP, Illinois, USA. Respondent is DNS Admin / Buntai LTD ("Respondent"), International.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <meciacombb.net>, registered with Key-Systems GmbH.

 

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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 9, 2024; Forum received payment on April 9, 2024.

 

On April 10, 2024, Key-Systems GmbH confirmed by e-mail to Forum that the <meciacombb.net> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 April 11, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of May 6, 2024 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@meciacombb.net. Also on April 11, 2024, 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 May 7, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister 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 a Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant provides telecommunications services, including high-definition cable television, high-speed internet and telephone services. It has rights in the MEDIACOM mark based upon its registration of that mark with the United States Patent and Trademark Office (USPTO). Respondent's domain name is identical or confusingly similar to Complainant's mark in that it fully incorporates the mark, albeit misspelled, merely adding the letters "bb" and a generic top-level domain.

 

Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name, Complainant has not authorized or licensed Respondent to use its mark, Respondent is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead is currently making no active use of it, and Respondent is guilty of typosquatting.

 

Respondent registered and uses the domain name in bad faith. It registered the domain name with actual knowledge of Complainant and its mark, it is currently making no active use of the domain name, and Respondent failed to respond to cease-and-desist demands sent by Complainant.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)       the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)       the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 as true unless the evidence is clearly contradictory. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true). Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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"), WIPO Overview 3.0, at ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case.").

 

The Panel finds as follows with respect to the matters at issue in this proceeding:

 

Identical and/or Confusingly Similar

The MEDIACOM mark was registered to Complainant with the USPTO (Reg. No. 2,544,829) on March 5, 2002 (USPTO registration certificate included in Complaint Exhibit 4). Complainant's ownership of this USPTO registration demonstrates its rights in the MEDIACOM mark for the purposes of Policy ¶ 4(a)(i).  DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i)."). 

 

Respondent's domain name is identical or confusingly similar to Complainant's mark. It fully incorporates the MEDIACOM mark, with a misspelling, and adds the letters "bb" at the end of the mark and the ".net" generic top-level domain ("gTLD"). These changes do not distinguish the domain name from Complainant's mark for the purposes of Policy ¶ 4(a)(i).  Nutramax Laboratories, Inc. v. GRUPO SA Ltd Co / Grupo S.A. Ltd. Co., FA 1985605 (Forum March 30, 2022) ("Many panels have held that minor mis-spellings of complainants' marks constitute typosquatting and support a finding of confusing similarity"), Maxim Integrated Products v. liao jian jia, FA2059513 (Forum September 22, 2023) ("[the] Domain Name is identical or confusingly similar to Complainant's mark.  It fully incorporates the mark, . . . , merely adding a hyphen, the letters "ic," . . ., and a gTLD"). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the domain name.

 

For the reasons set forth above, the Panel finds that the domain name is identical or confusingly similar to the MEDIACOM mark, in which Complainant has substantial and demonstrated rights. 

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in a domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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"). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      Before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii)                      The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii)                      The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain name because (i) it is not commonly known by the domain name, (ii) Complainant has not authorized or licensed Respondent to use its mark, (iii) Respondent is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead is currently making no active use of it, and (iv) Respondent is guilty of typosquatting.  These allegations are addressed as follows:

 

The information furnished to Forum by the registrar lists the named Respondent as the registrant of the domain name. That name bears no resemblance to the domain name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a name other than the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. 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), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that the Respondent has not been commonly known by the domain name.

 

Complainant states that it has not authorized or licensed Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.").

 

Next, by registering the domain name with a misspelling of Complainant's mark, i.e., substituting adding the letter "c" for the letter "d," Respondent is guilty of typosquatting, which is the intentional misspelling of a protected trademark to take advantage of typing errors made by Internet users seeking the web sites of the owners of the mark. Registering a typosquatted domain name evidences a lack of rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii). Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) ("Users might mistakenly reach Respondent's resolving website by misspelling Complainant's mark. Taking advantage of Internet users' typographical errors, known as typosquatting, demonstrates a respondent's lack of rights or legitimate interests under Policy ¶ 4(a)(ii).").  

 

Complaint Exhibit 7 is a screenshot of the parking page to which the domain name currently points. Its only substantive content is a message reading "Hmmm…Can't reach this page."  Respondent is currently making no active use of the domain name but instead is passively holding it. This is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) ("both Domain Names resolve to a web site that shows the words, 'Not Found, The requested URL / was not found on this server.'  Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).").

 

Complainant has made its prima facie case. On the evidence discussed above, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

 

Registration and Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)         by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's web site or location or of a product of service on the respondent's web site or location.

 

The evidence of Respondent's conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use. First, Respondent is guilty of typosquatting. This does not fit precisely within any of the scenarios listed in Policy ¶ 4(b) but that paragraph recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and typosquatting has, in and of itself, been held to be evidence of bad faith registration and use. Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant's mark with small typographical errors introduced therein).

 

Next, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the domain name in June 2023 (WHOIS printout submitted as Complaint Exhibit 2 shows creation date).  Complainant had by that time been using the MEDIACOM mark at least since the 1995 first use date shown on a USPTO registration certificate for that mark included in Complaint Exhibit 4.  The MEDIACOM mark is a unique, coined term that has no meaning apart from its association with Complainant. More tellingly, Respondent had sufficient awareness of Complainant to imitate Complainant's <mediacomcc.com> domain name, which it uses in connection with its cable services, by substituting the "cc" letters in Complainant's domain name with the letters "bb" in the domain name. There is no question that Respondent had actual knowledge of Complainant and its mark when it registered the domain name. Given the non-exclusive nature of Policy ¶ 4(b), registering and using a confusingly similar domain name with actual knowledge of a complainant's rights in a mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).  Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

As discussed above, Respondent is currently passively holding the domain name, making no active use of it, and this can, under certain circumstances, demonstrate bad faith registration and use. Given the non-exclusive nature of Policy ¶ 4(b), passively holding a confusingly similar domain name can be evidence of bad faith for the purposes of Policy ¶ 4(a)(iii).  Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).

 

The concept of bad faith as illustrated in the four subparagraphs of Policy ¶ 4(b) necessarily involves a subjective intent on the part of a respondent knowingly to trade upon the goodwill of the complainant. Such subjective intent in turn requires that the respondent actually knew of the complainant and its rights in the relevant mark when it registered the domain name. As discussed above, it is clear that Respondent registered the domain name with actual knowledge of Complainant and its mark.

 

The Policy requires a complainant to prove both registration and a continuing use in bad faith. The Policy requirement, "is being used in bad faith," can include passive use. Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. 2000-0003 (".. . the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept."). In this case, there is no evidence that Respondent's passive holding of the domain name fits within any of the specific circumstances listed in Policy ¶ 4(b), so the question arises whether the facts in this case support a finding of continuing bad faith use on some other basis.

 

The Panel has already concluded that Respondent had actual knowledge of Complainant and its rights in the MEDIACOM mark when it registered the domain name, and that knowledge and resulting bad faith certainly continues. Also, Respondent is holding a domain name which is confusingly similar to Complainant's mark, without itself having any legitimate connection with Complainant or its products, which in and of itself has been held to be evidence of bad faith.  Google LLC v. Noboru Maruyama / Personal, FA 2001001879162 (Forum March 3, 2020) ("the registration and use of domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith.").  Finally, it is not possible to conceive of a plausible legitimate use of the domain name that would not infringe on Complainant's rights. Respondent's passive holding of the domain name constitutes a continuing use in bad faith within the meaning and for the purposes of Policy ¶ 4(a)(iii).

 

Finally, on December 28, 2023, Complainant's counsel sent a cease-and-desist demand to Respondent (copy of correspondence submitted as Complaint Exhibit 8). Respondent did not reply to that communication, or to a follow-up message sent on January 4, 2024 (Id.). This is further evidence of bad faith registration and use. Bloomberg Finance L.P. v. Thomas Hampson / ClickTech Solutions Ltd., FA 1850421 (Forum Aug. 19, 2019) ("the Panel acknowledges that Respondent's failure to respond to Complainant's cease and desist letter supports a finding of bad faith, especially where, as in this case, the trademark in question has substantial goodwill and reputation.").

 

For the reasons set forth above, the Panel finds that Respondent registered and is using the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

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 <meciacombb.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Charles A. Kuechenmeister, Panelist

May 10, 2024