Charter Communications Holding Company, LLC v. Timothy Minasian
Claim Number: FA2103001936490
Complainant is Charter Communications Holding Company, LLC (“Complainant”), represented by Lian Ernette of Holland & Hart LLP, Missouri, USA. Respondent is Timothy Minasian (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chartercomms.com>, registered with Porkbun 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 12, 2021; the Forum received payment on March 12, 2021.
On March 15, 2021, Porkbun LLC confirmed by e-mail to the Forum that the <chartercomms.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 March 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 2021 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@chartercomms.com. Also on March 16, 2021, 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 April 7, 2021, 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 is a telecommunications company providing services to over 26 million customers in the United States. With 94,000 employees and service in 41 states, Complainant considers itself America’s fastest growing TV, internet, and voice company. Complainant has rights in the trademark CHARTER and variations thereof (e.g., CHARTER COMMUNICATIONS, CHARTER CABLE TV, CHARTER DUO, etc.) through its use in commerce dating back to 1994 and its registration of such marks with the United States Patent and Trademark Office (“USPTO”), the earliest of which issued in 1997. Respondent’s <chartercomms.com> domain name, registered on October 26, 2020, is confusingly similar to Complainant’s marks as it incorporates Complainant’s CHARTER mark its entirety and merely adds the generic term “COMMS”, and the generic top-level domain (“gTLD”) “.com”.
Respondent lacks rights or legitimate interests in the <chartercomms.com> domain name. Respondent is not commonly known by the domain name nor has Respondent been authorized by Complainant to use the CHARTER marks. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services nor has it made a legitimate non-commercial or fair use thereof as Respondent fails to make any active use of the disputed domain name for a website. Additionally, Respondent uses the disputed domain name in an email address to impersonate an actual employee of the Complainant in order to defraud Complainant’s vendors.
Respondent registered and used the disputed domain name in bad faith. Respondent fails to make use of the disputed domain name for a website. Additionally, Respondent formerly used the disputed domain name to redirect users to the Complainant’s own legitimate webpage, but now redirects users to a non-resolving webpage. It also uses the domain name to impersonate Complainant in emails seeking to defraud Complainant’s vendors. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CHARTER mark.
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 same 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 and evidence 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 and supported 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 asserts rights in the CHARTER marks through its registration thereof with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant has submitted into evidence copies of a number of its USPTO registration certificates.[i] Therefore, the Panel finds that Complainant has demonstrated rights in the CHARTER marks per Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s marks as it incorporates Complainant’s CHARTER mark in its entirety and merely adds the generic term “COMMS” and the gTLD “.com”. The addition of a, generic term and a gTLD most often fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain names] 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 names and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). As the disputed domain name incorporates the entirety of the CHARTER mark and uses a truncated version of the CHARTER COMMUNICATIONS mark, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 names and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the domain name nor has Complainant authorized or licensed to Respondent any rights in the CHARTER marks. In considering this issue, WHOIS information can be used to help determine whether or not a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA 1617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays”, “Linda Haley”, and “Edith Barberdi” as the respective registrants). Additionally, lack of authorization to use a complainant’s mark can support a conclusion that the respondent is not commonly known by the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the disputed domain name where the WHOIS information bore no resemblance to the domain name and nothing else in the record suggested that Respondent was authorized to use the Complainant’s mark). Here, the WHOIS information for the disputed domain name provided by the concerned Registrar identifies the Registrant as “Timothy Minasian”. Additionally, there is no evidence to suggest that Respondent was authorized to use the CHARTER mark and Complainant contends that it never gave any permission or authorization to the Respondent regarding the use of the mark. As Respondent has filed no Response nor made any other submission in this case, the Panel finds no evidence to support a conclusion that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use thereof as it does not resolve to any website content and Respondent has sent emails, using the disputed domain name, to impersonate one of the Complainant’s employees in an attempt to defraud the Complainant’s vendors.
A Respondent failing to make use of a confusingly similar domain name in relation to a website typically indicates the lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message ‘website coming soon!’”). See also Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). Here, Complainant asserts that the disputed domain does not resolve to any web content and it supports a screenshot of a website displaying the message “This site can’t be reached”.[ii]
Further, using a confusingly similar domain name to impersonate an employee of a Complainant in an attempt to defraud its vendors is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”). Here, Complainant submits a copy of a phishing email that the Respondent sent using an address which incorporates the disputed domain name. This was sent to one of the Complainant’s vendors and Respondent poses as one of Complainant’s an actual employees – a procurement manager – seeking to have the vendor provide availability and pricing information for an urgent purchase of 18 laptop computers. The email uses a signature block that displays Complainant’s CHARTER COMMUNICATIONS logo as well as the name and postal address of Complainant’s employee. Complainant makes the reasonable assertion that this email was used by Respondent in an attempt to defraud Complainant’s vendors and Respondent has not denied this.
As Complainant has made out a prima facie case that has not been rebutted by Respondent, upon a preponderance of the available evidence the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent had actual or constructive knowledge of Complainant’s CHARTER Marks at the time it registered the <chartercomms.com> domain name. Arguments of bad faith based on constructive notice are typically disfavored in UDRP case precedent. 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.”). However, actual knowledge of a complainant’s mark does adequately create a foundation upon which to support a finding of bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant contends that, given Respondent’s use of the <chartercomms.com> domain name to send phishing emails to Complainant’s vendors, which also display Complainant’s logo and impersonate one of Complainant’s actual employees, Respondent had actual knowledge of Complainant’s rights in the CHARTER Marks when it registered the disputed domain name. The Panel agrees with Complainant and finds a near certainty that Respondent did have actual knowledge of Complainant’s marks at that time.
Next, Complainant argues that Respondent registered the disputed domain name in bad faith as Respondent uses the domain name to attempt to defraud the Complainant’s vendors through the impersonation of Complainant and one of its actual employees. Using a confusingly similar domain name to impersonate an employee of a complainant and attempting to defraud that complainant’s vendors strongly signals the existence of bad faith per Policy ¶¶ 4(b)(iii) and/or (iv). See Chevron Intellectual Property, LLC v. Jack Brooks, FA 1635967 (Forum Oct. 6, 2015) (finding that Respondent’s use of <chevron-corps.com> to impersonate an executive of Complainant in emails is in opposition to Complainant and is therefore in bad faith under Policy ¶ 4(b)(iii)). See also Google Inc. v. Domain Admin, FA 1605239 (Forum Mar. 22, 2015) (finding that use of the disputed domain name to aid illegal activities “unfairly capitalizes on the goodwill established in Complainant’s mark, exploits the consumer confusion that it ultimately created and thus demonstrates its own bad faith under Policy ¶ 4(b)(iv).”). Here, Complainant argues that Respondent used the disputed domain name to pose as one of the Complainant’s actual procurement managers in an attempt to elicit private financial information and place illegitimate orders with the Complainant’s vendors. The submitted email from Respondent, in which it uses Complainant’s logo for its signature block, supports this contention. As Respondent has not participated in this case it has offered no alternative explanation for its actions. Therefore, the panel finds that Respondent registered and uses the <chartercomms.com> domain name to disrupt Complainant’s business and to seek commercial gain based upon a likelihood of confusion with the CHARTER mark in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant further argues that Respondent registered and uses the disputed domain name in bad faith as Respondent fails to make an active use of the disputed domain name for any website content. A Respondent allowing a confusingly similar domain name to remain passive may signal bad faith per Policy ¶ 4(b)(iii). See Hewlett-Packard Co. v. Martineau, FA 95359 (Forum Aug. 30, 2000) (“Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that Respondent registered and uses the domain name in bad faith.”). Here, the Complainant argues that the disputed domain name simply resolves to an inactive website, with no accessible content or functionality. It screenshot of Respondent’s site simply shows the message “This site can’t be reached”. The panel finds this provides further support for the conclusion that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the disputed domain names in bad faith as it formerly redirected internet users to the Complainant’s corporate webpage, but now redirects them to a passive website. However, as noted above, no evidence of this redirection has been provided and so the Panel cannot adequately consider this issue.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chartercomms.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: April 8, 2021
[i] One of the registration certificates identifies its owner as an entity whose name does not match that of the Complainant in this case and no evidence of an assignment is provided. However, as the other registration certificates do identify the named Complainant in this case as their owners, the Panel does not consider this omission to be a fatal flaw.
[ii] Complainant also makes the repeated claim that the disputed domain name formerly redirected users to Complainant’s own <charter.com> website. However, as no evidence of the redirection has been provided, the Panel is unable to consider this claim.
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