Charter Communications Holding Company, LLC v. Mari Jessecal
Claim Number: FA2005001898059
Complainant is Charter Communications Holding Company, LLC (“Complainant”), represented by Lian Ernette of Holland & Hart LLP, Colorado, USA. Respondent is Mari Jessecal (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spectrumiptv.com>, registered with GoDaddy.com, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 28, 2020; the Forum received payment on May 28, 2020.
On May 29, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <spectrumiptv.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 June 1, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@spectrumiptv.com.
Also on June 1, 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 June 23, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the SPECTRUM TV marks acquired through its ownership of the portfolio of trademark registrations described below and extensive use of the mark in its telecommunications business. Complainant asserts that it provides services to over 26 million customers in the United States with 94,000 employees across 41 states.
Complainant submits that the disputed domain name is identical or confusingly similar to Complainant’s SPECTRUM TV marks arguing that the disputed domain name includes Complainant’s famous SPECTRUM mark in its entirety, together with the generic term “IPTV” and the generic top-level domain <.com>.”
Complainant argues that given the generic nature of the term “IPTV” in reference to Complainant’s Internet, television, and streaming services, the addition of this element is insufficient to distinguish the disputed domain name from Complainant’s marks. In fact, this addition only adds to the confusion as Complainant offers IPTV streaming services under its SPECTRUM TV marks. See Charter Communications Holding Company, LLC v. Chandon Kumar, FA1808001800569 (finding <charterspectrumtvdeals.org> confusingly similar to Complainant’s CHARTER SPECTRUM mark and noting “the [respondent’s] inclusion of the terms ‘tv’ and deals’ (or simply ‘tvdeals’) only add to the confusion between the two since the terms of suggestive of Complainant’s television related business.”.
Furthermore, Complainant submits that the addition of a generic top-level domain extension such as <.com> is irrelevant for purposes of ascertaining confusing similarity. See Charter Communications Holding Company, LLC v. Webdesk Two, FA1800636 (Forum Sept. 5, 2018) (“The addition of a descriptive term and a gTLD is not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis.”);
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that there is no evidence that Respondent is commonly known by the disputed domain name. See Charter Communications Holding Company, LLC v. Jason Malone/Corporate Services Direct, FA1810001813790 (Forum Dec. 6, 2018) (finding respondent was not commonly known by the disputed domain name where no evidence in the record showed that respondent was commonly known by that name, including the WhoIs information and Complainant’s statement that it had not authorized respondent’s use of its mark).
Complainant asserts that Respondent is not and has never been associated or affiliated with Complainant and Complainant has never authorized Respondent to use the SPECTRUM TV marks or any variations thereof. Complainant argues that Respondent registered the disputed domain name on May 16, 2018, without Complainant’s permission or consent, long after Complainant first began using and registered its SPECTRUM TV trademarks and service marks.
Complainant adds that Respondent is not an authorized licensee, vendor, supplier, distributor, or customer relations agent for Complainant’s services.
Complainant submits that Respondent’s actions are neither a bona fide offering of goods or services, nor is Respondent engaged in a legitimate noncommercial or fair use of the disputed domain name. In contrast, Complainant alleges that Respondent uses the disputed domain name to mislead users into paying for TV streaming services, including content from Complainant’s own IPTV services offered under its SPECTRUM marks. Complainant argues that such use of a confusingly similar domain name to pass off as Complainant and to offer competing services evinces a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See ESPN, Inc. v. Omer Sharif/Flex Marketing Group, FA1902001831471 (Forum Apr. 15, 2019) (finding Respondent’s competing use of the disputed domain names to stream sports content evinced Respondent’s lack of rights and legitimate interests).
Complainant adds that previous panels have held that there can be no rights or legitimate interest under Policy ¶ 4(c)(ii) when a respondent had notice that a complainant possesses strong trademark rights in a mark identical or similar to the disputed domain name. See Charter Communications Holding Company v. Hostpane Web Hosting/Hostpane.com, FA1904001841062 (Forum May 24, 2019) (finding that registration of <charterspectruminternet.com> demonstrated that respondent had notice of complainant’s strong trademark rights in CHARTER and CHARTER SPECTRUM).
Complainant asserts that it first began using and developing rights in the SPECTRUM marks in the United States since at least as early as 2014 – several years prior to the registration of the disputed domain name and submits that at the time the disputed domain name was registered, the registrant likely also had actual notice of Complainant’s registrations for the SPECTRUM TV marks which constitutes bad faith registration and use pursuant to ¶ 4(a)(iii). See Charter Communications Holding Company v. MIZHAR salem, FA 1803001774836 (Forum Apr. 4, 2018) (finding bad faith in registration of <charterspectrumonline.com> because “[a]ctual knowledge of a complainant’s rights in a mark prior to registering a confusingly similar domain name can evidence bad faith under Policy ¶ 4(a)(iii).”).
Referring to screenshots of the website to which the disputed domain name resolves, Complaint submits that Respondent uses the disputed domain name to sell IPTV streaming services falsely implying it is affiliated with Complainant.
Complainant argues that potential customers who encounter the disputed domain name are likely to believe it is somehow affiliated with Complainant due to the Respondent’s use of Complainant’s SPECTRUM TV mark. Complainant adds that to the extent the disputed domain name actually provides these services, those services were not authorized by complainant and are therefore offered in direct competition with Complainant. Furthermore, potential customers searching for Complainant’s website may instead find Respondent’s website due to the confusingly similar domain name.
Respondent’s website prominently displays the word “SPECTRUM” at the top and purports to offer competing streaming services and so Internet users may decide to wrongfully use such services in place of Complainant’s IPTV services. Complainant alleges that such use of the disputed domain name to directly compete with Complainant and/or suggest an affiliation with Complainant when none exists is further evidence of bad Respondent’s bad faith registration and use under Policy 4(b)(iv). See Orange Brand Services Ltd. v. WhoisGuard Protected, WhoisGuard, Inc./ImadZerhouni, Orange IPTV, WIPO Case No. D2019-2202 (WIPO Oct. 18, 2019) (finding bad faith where the disputed domain name was used to “advertise and offer Respondent’s IPTV services and compete with television offerings of the Complainant’s in many of the same country (and at prices that suggest possible piracy, as the Complainant infers).”).
Complainant argues that Respondent’s use of the disputed domain name is intended to trade on the reputation of Complainant’s marks and is likely to confuse Internet users into believing that Respondent’s website is licensed by or affiliated with Complainant, when it is not. This use of the disputed domain name in this manner shows bad faith registration and use under Policy ¶ 4(b)(iv). See Charter Communications Holding Company, LLC v. Ido Talmon, FA1904001841056 (Forum May 25, 2019) (finding respondent’s registration of <spectrum.com> was in bad faith where respondent displayed the complainant’s mark, information on the complainant, and intended to confuse consumers into believing respondent was affiliated with complainant).
Complainant concludes by arguing that Respondent’s use of the disputed domain name in bad faith is also evidenced by Respondent’s attempt to conceal her identity and incomplete WhoIs information was provided to the Registrar when the disputed domain name was registered. Specifically Complainant submits that the zip code provided by Respondent is comprised of only four numbers instead of the required five. See Park Place Entertainment Corporation v. Bowno, WIPO Case No. D.2001-1410 (WIPO Jan. 29, 2002) (providing erroneous and incomplete contact information constitutes bad faith).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a telecommunications company and is the owner of a portfolio of registered trademarks incorporating the word SPECTRUM, the most relevant for the purposes of this proceeding are:
· United States trademark registration SPECTRUM TV registration number 5420855, registered on March 13, 2018, pursuant to an application filed on October 9, 2015 and claiming first use in commerce on July 6, 2015, for services in International class 38;
· United States trademark registration SPECTRUM TV registration number 5627956, registered on December 11, 2018, pursuant to an application filed on June 18, 2018 and claiming first use in commerce on April 30, 2015, for goods in International class 9;
· United States trademark registration SPECTRUM NEWS NY1 registration number 5706650, registered on March 26, 2019, pursuant to an application filed on April 12, 2017 and claiming first use in commerce on November 15, 2016, for services in international Classes 41 and 42.
The disputed domain name was registered on May 16, 2018 and resolves to a website that appears to be an incomplete work-in-progress which purports to offer IP TV services.
There is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WhoIs, and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name. Respondent avails of a proxy service to conceal her identity on the published WhoIs and in said response to the Forum’s verification request, the Registrar disclosed Respondent’s identity and confirmed that Respondent is the registrant of the disputed domain name.
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 has provided evidence of its rights in the SPECTRUM TV trademark and service mark acquired through its ownership of the registrations described above and its extensive use of the mark in its telecommunications business.
The disputed domain name consists of the word “spectrum” together with the term “iptv” and the generic top-level domain extension <.com>
The word “spectrum” is the initial and dominant element of both the disputed domain name and Complainant’s SPECTRUM TV trademark. The term “iptv” is descriptive.
For the purposes of comparison the gTLD <.com> extension may be ignored in the circumstances of this Complaint as a domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is confusingly similar to Complainant’s SPECTRUM TV mark. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name alleging that there is no evidence that Respondent is commonly known by the disputed domain name; that Respondent is not and has never been associated or affiliated with Complainant; that Complainant has never authorized Respondent to use the SPECTRUM TV marks or any variations thereof; that Respondent registered the disputed domain name on May 16, 2018, without Complainant’s permission or consent, well after Complainant first began using and registered trademarks and service marks; that Respondent is not an authorized licensee, vendor, supplier, distributor, or customer relations agent for Complainant’s services; that Respondent’s actions are neither a bona fide offering of goods or services, nor is Respondent engaged in a legitimate noncommercial or fair use of the disputed domain name; that the disputed domain name is being used to mislead users into paying for TV streaming services, including content from Complainant’s own IPTV services offered under its SPECTRUM marks.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove her rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden.
In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name and Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant established its rights in the SPECTRUM TV mark and had an established business with an Internet presence when the disputed domain name was registered. It is improbable that the registrant of the disputed domain name was unaware of Complainant, its business and its use of the SPECTRUM TV mark when the disputed domain name was chosen and registered. The combination of the distinctive name SPECTRUM and the letters and concept “iptv” by the registrant in the disputed domain name leads to the finding that the disputed domain name was registered in bad faith in order to take predatory advantage of Complainant’s goodwill and reputation.
The screenshots of the website to which the disputed domain name resolves, shows that Respondent is purporting to use the disputed domain to offer services which are in direct competition. The website appears to be incomplete or under construction.
The record shows and this Panel finds therefore that on the balance of probabilities, the disputed domain name is being used by Respondent in an intentional attempt to attract Internet users to her website and divert Internet traffic, for commercial gain, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of Respondent’s web site and is therefore using the disputed domain name in bad faith.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <spectrumiptv.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: June 24, 2020
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