Charter Communications Holding Company, LLC v. Travis Smith
Claim Number: FA1912001877235
Complainant is Charter Communications Holding Company, LLC (“Complainant”), represented by Holland & Hart LLP, USA. Respondent is Travis Smith (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chartertvinternet.com>, registered with Web Commerce Communications Limited dba WebNic.cc.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 30, 2019; the Forum received payment on December 30, 2019.
On December 31, 2019, Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to the Forum that the <chartertvinternet.com> domain name is registered with Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited dba WebNic.cc has verified that Respondent is bound by the Web Commerce Communications Limited dba WebNic.cc 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 January 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 2020 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@chartertvinternet.com. Also on January 3, 2020, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On January 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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.
A. Complainant
Complainant, Charter Communications Holding Company, is a telecommunications company providing TV, internet, and voice services. Complainant has rights in the trademark CHARTER, and variations thereon including CHARTER SPECTRUM TV and CHARTER SPECTRUM INTERNET, based upon use in commerce dating back to 1994 and registration with the United States Patent and Trademark Office (“USPTO”) dating back to 1997. Respondent’s <chartertvinternet.com> domain name, registered on September 27, 2019, is confusingly similar to Complainant’s CHARTER marks as Respondent merely adds the descriptive terms “tv” and “internet” along with the “.com” generic top-level domain (“gTLD”) to Complainant’s mark. These descriptive terms actually add to the confusion as they suggest Complainant’s television and internet services.
Respondent does not have rights or legitimate interests in the <chartertvinternet.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s CHARTER mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to falsely purport to be an authorized retailer of Complainant.
Respondent registered and uses the <chartertvinternet.com> domain name in bad faith because Respondent uses the disputed domain name to pass itself off as Complainant in order to commercially benefit by offering competing services. Additionally, Respondent had actual or constructive knowledge of Complainant’s rights in the CHARTER mark prior to the registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 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”).
Complainant claims rights in a number of marks that contain the term “Charter” based upon registration with the USPTO. These include CHARTER, CHARTER SPECTRUM TV and CHARTER SPECTRUM INTERNET. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registration certificates for the above-mentioned CHARTER marks. Therefore, the Panel finds that Complainant has rights in the CHARTER marks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <chartertvinternet.com> domain name is confusingly similar to Complainant’s mark since it includes the CHARTER mark in its entirety, simply adding descriptive terms and a gTLD. Additions of a generic and/or descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant notes that Respondent simply adds the descriptive terms “tv” and “internet,” along with the “.com” gTLD to the CHARTER mark to create the disputed domain name and it asserts that the use of these words increase confusion as they directly relate to Complainant’s services. See Spy Optic Inc. v. WhoisGuard Protected / Thomas, Thomas Jones, D2013-1649 (WIPO Nov. 14, 2013) (spyopticssunglasses.org ordered transferred with the Panel noting that “the addition of ‘sunglasses’ only serves to enhance the likelihood of confusion. As noted, the Trademarks are registered for sunglasses”). The Panel agrees and finds that the disputed domain name is confusingly similar to Complainant’s CHARTER marks under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <chartertvinternet.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s CHARTER marks. In considering this issue, WHOIS information can support a finding that a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a mark suggests that the respondent lacks rights and legitimate interests. See 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.”). The WHOIS information of record lists the registrant as “Travis Smith,” and Complainant contends that Respondent is not associated with Complainant or otherwise authorized to use its CHARTER marks. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also contends that Respondent fails to use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead uses the disputed domain name to falsely purport to be an authorized retailer of Complainant. Using a disputed domain name to falsely claim association with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of that domain name per Policies ¶¶ 4(c)(i) & (iii). See Charter Communications Holding Company, LLC v. Chandon Kumar, FA1808001800637 (Forum Sept. 7, 2018) (“The disputed domain name incorporates Complainant’s registered mark without authorization, and it is being used for a website that mimics Complainant’s website in a manner obviously designed to mislead Internet users. Such use does not give rise to rights or legitimate interests under the Policy.”) Here, Complainant provides a screenshot of Respondent’s website and contends that Respondent is explicitly holding itself out to be affiliated with Complainant through its prominent use of a modified version of Complainant’s registered SPECTRUM AUTHORIZED RETAILER Logo, which is reserved only for authorized, licensed retailers of Complainant’s telecommunication services. Even assuming, arguendo, that the Respondent is actually promoting Complainant’s cable television and internet services as an unauthorized distributor, its use does not meet the standard for such activity as set out in the seminal decision of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO, November 6, 2001). Specifically, the <chartertvinternet.com> website contains nothing which indicates its lack of a relationship with the Complainant. Quite the opposite, the site clearly seeks to convey the impression that Respondent is an authorized distributor of Complainant’s services. Accordingly, in the absence of any Response or other submission by Respondent, the Panel finds that Respondent attempts to pass itself off as Complainant and fails to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant claims that Respondent has actual or constructive knowledge of Complainant’s rights in the CHARTER marks. While constructive knowledge is most often insufficient, actual knowledge of a complainant’s rights in a mark is sufficient to create a foundation upon which to build a finding of 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.”); see also 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 contends that Respondent had actual knowledge of Complainant’s CHARTER mark due to Respondent’s mimicry of Complainant’s website, including use of Complainant’s Spectrum Authorized Retailer Logo. Having reviewed the screenshot of Respondent’s website, the Panel determines that it conclusively shows that Respondent had actual knowledge of Complainant’s rights to the CHARTER marks.
Complainant argues that Respondent registered and uses the <chartertvinternet.com> domain name in bad faith. Specifically, Complainant claims Respondent attempts to pass itself off as Complainant and attract, for commercial gain, users to the disputed domain name which offers services in direct competition with Complainant. Using a confusingly similar domain name to pass off as a complainant in order to commercially benefit via, competing services can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Charter Communications Holding Company, LLC v. Danish Michael, FA1809001805686 (Forum Oct. 5, 2018) (“Respondent attempts to commercially gain by passing off as Complainant and offering competing goods and services. Use of a domain name to pass off as complainant and offer competing goods and services is evidence of bad faith under Policy ¶ 4(b)(iv).”) Here, Complainant contends that Respondent’s confusingly similar domain name is intended to mislead Internet users and divert Internet traffic away from Complainant’s site to Respondent’s website. Complainant then claims that Respondent’s website purports to sell CHARTER-branded telecommunications services, falsely claiming it has been authorized by Complainant to do so. Complainant provides a screenshot of Respondent’s use of the domain name’s resolving webpage to support its allegations. Based upon the evidence presented, and in the absence of a Response or other submission by Respondent, the Panel finds that Respondent seeks to pass itself off as the Complainant (or being lawfully affiliated with Complainant) and has thus engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chartertvinternet.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: January 28, 2020
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