Charter Communications Holding Company, LLC v. Shahbaz Ali / WebSols Pakistan
Claim Number: FA2011001919533
Complainant is Charter Communications Holding Company, LLC (“Complainant”), represented by Lian Ernette of Holland & Hart LLP, Colorado, USA. Respondent is Shahbaz Ali / WebSols Pakistan (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <panoramacharter.xyz>, registered with NameCheap, Inc..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 4, 2020; the Forum received payment on November 4, 2020.
On November 5, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <panoramacharter.xyz> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 November 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 27, 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@panoramacharter.xyz. Also on November 6, 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 December 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is a telecommunications company that provides services to over 26 million customers in the United States.
Complainant has rights in the CHARTER mark through its registrations with the United States Patenet and Trademark Office (“USPTO”).
Respondent’s <panoramacharter.xyz> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the generic or descriptive word “panorama”, along with the “.xyz” generic top-level domain (“gTLD”). “Panorama” is is a term Complainant uses in conjunction with CHARTER internally to refer to an intranet website servicing Complainant’s employees.
Respondent lacks rights and legitimate interests in the <panoramacharter.xyz> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed Respondent to use its CHARTER mark in the domain name. Respondent does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to pass itself off as Complainant and addresses a website presenting competing or related pay-per-click links, and is further designed to trick visitors into downloading malware on to their devices.
Respondent registered and uses the <panoramacharter.xyz> domain name in bad faith. Respondent attracts internet users for commercial gain to the at-issue domain name’s website, where Respondent passes itself off as Complainant and hosts competing or related pay-per-click links, along with malware. Respondent registered the at-issue domain name with actual knowledge of Complainant’s rights in the CHARTER mark. Respondent’s disclaimer does not mitigate its bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CHARTER trademark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the CHARTER trademark.
Respondent uses <panoramacharter.xyz> to attempt to pass itself off as Complainant and in furtherance thereof hosts a similar website to one officially offered by Complainant on Complainant’s intranet. Respondent’s website displays competing or related pay-per-click links and appears as a bill pay and employee login portal modules of the sort available on Complainant’s legitimate internet website, however Respondent’s website secretes a trap designed to install malware on website visitors’ devices.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its CHARTER trademark and Complainant’s registration of its CHARTER mark is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s CHARTER domain name contains Complainant’s CHARTER trademark, preceded by the descriptive term “panorama” ‑a term which Complainant uses internally in conjunction with CHARTER‑ with all followed by a domain name-necessary top-level name, here “.xyz”. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <panoramacharter.xyz> domain name from Complainant’s CHARTER trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <panoramacharter.xyz> domain name is confusingly similar to Complainant’s trademark. The inclusion of the suggestive term “panorama” within the domain name only adds to such confusion. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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, AbbVie Inc. v. Konayem Temirtassova, FA 1604178 (Forum Mar. 12, 2015) (“Complainant is correct that Respondent cannot escape responsibility for using a well-known and registered trademark of another by simply adding the gTLD .xyz . . .”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
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 for the at-issue domain name identifies the domain name’s registrant as “Shahbaz Ali” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <panoramacharter.xyz> domain name. The Panel therefore concludes that Respondent is not commonly known by the <panoramacharter.xyz> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Respondent uses the <panoramacharter.xyz> to direct internet users to its <panoramacharter.xyz> website where Respondent, inter alia, attempts to trick such visitors into installing malware on their devices. Respondent’s use of the confusingly similar <panoramacharter.xyz> domain name to distribute malware indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <panoramacharter.xyz> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses the at-issue domain name to try to pass itself off as Complainant by having the website masquerade as one of Complainant’s sanctioned intranet websites. Respondent’s use of the confusingly similar domain name thus creates the impression that Respondent’s confusingly similar domain name and website are sponsored by, or affiliated with, Complainant when there is no such sponsorship or affiliation. Respondent’s use of <panoramacharter.xyz> in this manner demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Further, some of the links displayed on Respondent’s website direct the link’s visitors to Complainant’s competition as well as to unrelated entities; yet another indication of Respondent’s bad faith. See also 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).
Next and as mention above regarding rights and legitimate interests, Respondent uses the confusingly similar domain name and its associated website to infect third-party connected devices with malware. Respondent’s use of the domain name to aid in the intentionally attempt to tamper with third-party computing devices connected to its <panoramacharter.xyz> website is a clear indicator of Respondent’s bad faith under Policy ¶ 4(a)(iii). See eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been registered, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”); see also, Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”).
Finally, Respondent registered <panoramacharter.xyz> knowing that Complainant had trademark rights in the CHARTER mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of the domain name to pass itself off as Complainant as discussed elsewhere herein. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark independently indicates that Respondent registered and used the <panoramacharter.xyz> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <panoramacharter.xyz> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 2, 2020
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