Charter Communications Holding Company, LLC v. Vrinda Softwares
Claim Number: FA2011001920167
Complainant is Charter Communications Holding Company, LLC (“Complainant”), represented by Lian Ernette of Holland & Hart LLP, Missouri, USA. Respondent is Vrinda Softwares (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestspectrumplans.com>, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 10, 2020; the Forum received payment on November 10, 2020.
On November 10, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <bestspectrumplans.com> 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 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@bestspectrumplans.com. Also on November 12, 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. Respondent however sent informal correspondence to the Forum as set out below:
“First of All, I want to say that i am a freelance web developer. I am working for my selected or assorted Client. I don't know and this domain not belongs to me.
if you want to delete that domain, You can I don't have any issue otherwise i will delete that domain my side..
Thanks
Vrinda Softwares”
On December 3, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in SPECTRUM and submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it has no trademark rights; is not known by the domain name; and the domain name has not been used for a bona fide purpose.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith aware of Complainant and its trademark.
B. Respondent
No formal Response was submitted.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a telecommunications company providing cable television, internet, telephone, and wireless services to customers in the US;
2. the disputed domain name was registered on March 4, 2020 and resolves to an internet landing page which has features which mimic Complainant’s
web presence; and
3. there is no relationship between the parties.
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."
Preliminary Issue: Respondent Correspondence
The Panel should say something of the correspondence sent by Respondent to the Forum. It is difficult to make much sense of the statements for various reasons but what is clear enough is that they do not amount to Respondent’s consent to transfer of the disputed domain name. Nor could the name be “deleted” by Respondent since in consequence of these proceedings the Registrar has placed a hold on Respondent’s account as it is so required. Moreover, the Forum is not itself empowered to “delete” or cancel a disputed domain name. It follows that in these circumstances the Panel should apply the Policy and make a finding based on the evidence before it.
Substantive Issues
Moving on, 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark. The Complainant’s submission appears to be that the disputed domain name is confusingly similar to SPECTRUM, a word in which it asserts trademark rights. Complainant states that it:
“… owns numerous trademark registrations worldwide, including, but not limited to, the following United States Patent and Trademark Office (“USPTO”) trademark registrations including the mark SPECTRUM (collectively, and together with its common law rights, the ‘SPECTRUM Marks’)”
This definition of the ‘SPECTRUM Marks’ is then self-servingly used as the requisite ‘proof’ of rights in SPECTRUM when in fact there is no evidence of a single USPTO (or other national) trademark registration for SPECTRUM, nor any developed argument of common law rights in that word.
It is well established that a trademark registered with a national authority is evidence of trademark rights (see, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)). Complainant holds a number of trademark registrations with the USPTO for SPECTRUM––formative marks including, for example, SPECTRUM INTERNET (Reg. 5,098,550, registered December 13, 2016); SPECTRUM VOICE (Reg. 5,098,473, also registered December 13, 2016) and SPECTRUM TV (Reg. 5,627,956, registered December 11, 2018). However, an open question arises as to whether the disputed domain name is confusingly similar to any of those registered marks.
Nonetheless, paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights and at another point the Complaint states that the disputed domain name “includes Complainant’s famous SPECTRUM mark in its entirety”. As stated above, there is no developed argument as to how SPECTRUM might be famous. The Panel observes that Complainant’s name, Charter Communications Holding Company, LLC, is reflected in at least one of its USPTO trademark registrations, namely, CHARTER SPECTRUM (Reg. 4,618,726, registered October 7, 2014). What the evidence does show is that this registration date corresponds with Complainant’s rebranding of its cable television, internet and telephone offering from beneath the trade name, ‘Charter Communications’, to the name, ‘Charter Spectrum’. Prior to that there appears to have been no use of SPECTRUM.
How Complainant may have trademark rights in the word SPECTRUM is said to be supported by two earlier UDRP cases in which it had been involved. The first, Charter Communications Holding Company, LLC v. Chandon Kumar, FA1808001800569, found <charterspectrumtvdeals.org> confusingly similar to Complainant’s CHARTER SPECTRUM mark. That decision is of little guidance to the Panel since it concerned reproduction of the registered mark referenced in the preceding paragraph. The other case, Charter Communications Holding Company v. Khurram Khan, FA1803001775735, is more illuminating insofar as the panellist there, David Sorkin, came to the view that the at-issue domain name, <spectrumbundleoffer.com>, took the distinctive component of Complainant’s registered marks. That reasoning is consistent with the Panel’s observation here that Complainant’s USPTO registrations listed above all carry endorsements disclaiming exclusive rights to the descriptive terms – TV, INTERNET, or VOICE – appended to the word SPECTRUM.
What can be said of the matter is that should Complainant be unwilling or unable to obtain a national registration for SPECTRUM solus, proof of common law trademark rights in that word should have been a routine exercise. Albeit that use appears to be limited to the past six years and sometimes in conjunction with the word ‘Charter’ and sometimes not, Complainant nevertheless states that it has 94,000 employees, a US customer base of 26 million people spread over 41 States, and services all promoted from a website at <www.spectrum.com>.
However, on balance, it is not for the Panel to make that argument for Complainant when there exists at least a justifiable finding that the disputed domain name is confusingly similar to any of USPTO Reg. Nos. 5,098,550, 5,098,473 or 5,627,956. The disputed domain name takes the essential, distinctive, component of those trademarks and only adds descriptive words and the non-distinctive gTLD, “.com”. The Panel finds that the disputed domain name is confusingly similar to each and all of those registered trademarks.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000 0624 (WIPO Aug. 21, 2000).
Neither the publicly available WHOIS information which shielded the name of the true registrant, nor the name of the underlying domain name holder disclosed by the Registrar, provide any prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. There is no relationship between the parties and no evidence that Complainant has given Respondent permission to use the trademark SPECTRUM. Moreover, the domain name resolves to a landing page which mimics Complainant’s website presentation and uses the factually inaccurate expression, “SPECTRUM Authorized Reseller”, itself a registered trademark owned by Complainant.
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or interests in the disputed domain name (see, for example, Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”)
The onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, that prima facie case is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith. Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(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 who 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 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, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) has direct application. The Panel has already found the compared terms to be confusingly similar and the Panel finds that the resolving website exists for commercial gain in some form or another. In terms of the Policy, the Panel finds that Respondent’s registered and used a confusing similar domain name intending to create the requisite confusion described by paragraph 4(b)(iv).
The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy (see, for example, DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); 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.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bestspectrumplans.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett Gordon Lyons, Esq., Panelist
Dated: December 14, 2020
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