Charter Communications Holding Company, LLC v. Hasan Iqbal
Claim Number: FA2204001992121
Complainant is Charter Communications Holding Company, LLC (“Complainant”), represented by Lian Ernette of Holland & Hart LLP, Colorado, USA. Respondent is Hasan Iqbal (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <panoramacharter.net>, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 12, 2022; the Forum received payment on April 13, 2022.
On April 13, 2022, Porkbun LLC confirmed by e-mail to the Forum that the <panoramacharter.net> 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 April 14, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 2022 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.net. Also on April 14, 2022, 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 May 9. 2022, 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 is a telecommunications company with 94,000 employees providing services to over 26 million customers across 41 of the United States of America.
Complainant claims rights in the CHARTER service mark, relying on its international portfolio of registered marks described below and its extensive use of the CHARTER service mark and other marks incorporating the element “CHARTER”, in connection with the provision of cable television and related services since at least as early as 1994.
Of particular relevance to this Complaint, Complainant states that it also owns the domain name <charter.com> as evidenced by a copy of the WhoIs details submitted in an annex to the Complaint.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s CHARTER mark as it includes the trademark in its entirety, together with the term “panorama” and the generic top-level domain “net.”
Complainant argues that its CHARTER mark and the disputed domain name are confusingly similar on their face.
Complainant submits that it uses the terms “PANORAMA” and “CHARTER” in connection with its corporate intranet. Complainant refers to a screen capture of the login page of its intranet, adduced in an annex to the Complaint, and explains that it uses a sub-domain <panorama.charter.com> as the address of an intranet accessible only to it’s own employees. Complainant contends that therefore the addition of the element “Panorama” insufficient to distinguish the disputed domain name from Complainant’s CHARTER mark. See American Airlines, Inc. v. ICS INC., FA1304001495044 (Forum May 28, 2013) (finding <jetnet-aa.com> be confusingly similar to complainant’s sub-domain <jetnet.aa.com>, used to host its internal employee database, where complainant enjoyed strong rights in its AA mark).
In addition, Complainant refers to a screen capture of a disclaimer which Respondent has posted on the website to which the disputed domain name resolves, and submits that the disclaimer is also insufficient to dispel confusion.
Finally, Complainant submits that the addition of a generic top-level domain such as <.net> in the present case, is irrelevant for purposes of ascertaining confusing similarity. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA1784643 (Forum June 18, 2018) (“a TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”)
Complainant next alleges that Respondent has no rights and legitimate interests in the disputed domain name because 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).
Additionally, Complainant asserts that Respondent is not an authorized licensee, vendor, supplier, distributor, or customer relations agent for Complainant’s services, nor has Complainant consented to Respondent’s use of the CHARTER mark. Complainant argues that such lack of consent supports a finding that Respondent has no legitimate interests in the disputed domain name. Again, citing Charter Communications Holding Company, LLC v. Jason Malone/Corporate Services Direct, FA1810001813790 (Forum Dec. 6, 2018) (“Complainant states that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent to use the mark in any manner. The Panel here finds that Respondent is not commonly known by the <spectrumdealsus.com> name under Policy ¶ 4(c)(ii).”).
Complainant refers to screen captures of the website to which the disputed domain name resolves which have been exhibited in annexes to the Complaint and further alleges that they show that Respondent’s actions are not a bona fide offering of goods or services, nor is Respondent engaged in a legitimate noncommercial or fair use of the disputed domain name. Complainant contends that to the contrary, the screen captures show that Respondent was using the disputed domain name to generate a website that suggests an association with Complainant in violation of U.S. copyright, trademark, unfair competition, and consumer deception laws and the laws of other jurisdictions.
Complainant further argues that the screen captures show that Respondent presents the website to which the disputed domain name resolves, as an “informational” site for Complainant’s PANORAMA CHARTER service and alleges that Respondent thereby falsely claims affiliation with Complainant.
Complainant contends that even to the extent Respondent uses the disputed domain name to provide accurate information about Complainant, such use is insufficient to give Respondent rights to or legitimate interests in the disputed domain name. Citing American Express Marketing & Development Corp. v. Crown Insurance Partners, FA0904001255638 (Forum May 13, 2009) (finding respondent had no rights in the disputed domain name where it displayed “information on Complainant’s gift card products and advertises such products as well as those of Complainant’s competitors.”).
Finally in this regard, Complainant submits that previous panels established under the Policy 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 domain name at issue. See Charter Communications Holding Company v. Hostpane Web Hosting/Hostpane.com, FA1904001841062 (Forum May 24, 2019) (finding that registration of <charterspectrum-internet.com> demonstrated that respondent had notice of complainant’s strong trademark rights in CHARTER and CHARTER SPECTRUM).
Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that bad faith is reflected by registration of the disputed domain name long after Complainant first used the CHARTER mark as evidence by the copy certificates of said trademark registration and in particular, Complainant draws the Panel’s attention to the claimed dates of first use of the marks in commerce, dating back as early as 2014, several years prior to Respondent’s registration of the disputed domain name.
Complainant submits that therefore at the time the disputed domain name was registered, Respondent likely had actual notice of Complainant’s registrations for the CHARTER marks. See Belo Corp. v. George Latimer, D2002-0329 (WIPO May 16, 2002) (finding that registration of <providencejournal.com> demonstrated that respondent had notice of complainant’s strong trademark rights in THE PROVIDENCE JOURNAL and PROVIDENCE JOURNAL).
Complainant adds that Respondent also had constructive notice of Complainant’s prior trademark rights in the CHARTER mark due to Complainant’s federal U.S. trademark registrations, which are incontestable.
Complainant contends that therefore bad faith registration pursuant to ¶ 4(a)(iii) is established by Respondent’s use and registration of the confusingly similar disputed domain name notwithstanding that it had actual or constructive knowledge of the mark holder’s rights. 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).”).
Complainant adds that by maintaining what purports to be an “informational” site for Complainant’s PANORAMA CHARTER service, Respondent is falsely claiming affiliation with Complainant. Complainant argues that such use of the disputed domain name to directly compete with Complainant and/or suggest affiliation with Complainant, where none exists, is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Charter Communications Holding Company, LLC v. MIZHAR salem, FA1803001774836 (Forum Apr. 4, 2018) (finding bad faith in registration of <charterspectrumonline.com> and <spectrumcable.info> because “[u]sing a disputed domain name to trade upon the goodwill of a complainant for commercial gain, even where a respondent does not actively use the domain name, can evidence bad faith under Policy ¶ 4(b)(iv).”).
Complainant additionally argues that Respondent’s use of the disputed domain name is also intended to trade on Complainant’s famous CHARTER mark and is likely to confuse internet users into believing that Respondent’s website is licensed by or affiliated with Complainant when it is not. The 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. 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).”).
Complainant finally submits there initial interest confusion to Internet users caused by the similarity between the mark and the disputed domain name and argues that the confusion is not dispelled or remedied by the disclaimer which is posted on Respondent’s website as shown in the screen capture annexed to the Complaint. Complainant argues that by the time a user has navigated to the website associated with the disputed domain name, he or she has already been confused. Panels have found such initial interest confusion to be a basis for finding a violation of Complainant’s rights. See, e.g., Disney Enterprises, Inc. v. Take Stage, FA 1310568 (Forum Apr. 14, 2010) (“a disclaimer or the inclusion of the word ‘unofficial’ does not mitigate confusion between the disputed domain name and Complainant’s mark”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant a large telecommunications company providing services across the United States of America, and is the owner of a portfolio of trademark registrations for and incorporating the word CHARTER which includes:
United States registered service mark CHARTER, registration number 3,899,216, registered on January 4. 2011 for service sin international class 38.
In addition to the Charter mark, Complainant also uses the SPECTUM brand in providing its services to over 26 million customers in the United States and also uses the CHARTER mark on its own domain name <charter.com>, which was created on July 29, 1996 and which it uses inter alia as an address for a website it has established for its employees by creating a sub-domain at <panorama.charter.com>.
The disputed domain name <panoramacharter.net>, was registered on August 10, 2021 and resolves to a website which purports to provide information about Complainant’s said employee Intranet with its eponymous address <panorama.charter.com>.
There is no information available about Respondent, except for that provided in the Complaint, the Registrar’s WhoIs, and the Registrar’s response to the request by the Forum for verification of the registration details of the disputed domain name in the course of this proceeding.
Respondent did not respond to this Complaint; Respondent availed of a privacy service to conceal his identity on the published WhoIs, and the Registrar has 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 convincing evidence that it has rights in the CHARTER mark, established by its ownership of the United States trademark registrations described above and extensive use of the mark in commerce including on the Internet.
The disputed domain name <panoramacharter.net> consists of Complainant’s mark in its entirety, in combination with the word “panorama” and the generic Top Level Domain “(gTLD”) extension <.net>.
Complainant’s mark is clearly recognizable within the disputed domain name.
The question arises as to whether the addition of the element “panorama” which is a dictionary word with no obviously descriptive character in the disputed domain name is sufficient to prevent a finding of confusing similarity between the disputed domain name and Complainant’s mark.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) is of assistance as to the test to be met by Complainant to establish confusing similarity, and more specifically in the present case, as to whether the combination of another word element with a trademark will sufficiently distinguish the domain name at issue from a mark.
At ¶ 1.7 the WIPO Jurisprudential Overview 3.0 addresses the question:
…“[w]hat is the test for identity or confusing similarity under the first element?”
and reports inter alia that
“It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name….”
It adds:
“…[w]hile each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing….”
Then at ¶ 1.7, the Overview addresses the question:
“Is a domain name consisting of a trademark and a descriptive or geographical term confusingly similar to a complainant’s trademark?”
and reports that panels have found;
“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements. The gTLD extension <.net> add any distinguishing character. It would be considered by Internet users as a necessary technical requirement for a domain name.”
Applying these principles, Complainant’s CHARTER mark is clearly recognizable in the disputed domain name <panoramacharter.net> and the term “panorama” can be categorized as being “meaningless, or otherwise”.
Noting that it is well established that the first element of the test in Policy ¶ 4(a)(i) places a relatively low bar for a complainant to surmount, this Panel finds therefore that the disputed domain name is confusingly similar to the CHARTER mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
In reaching this conclusion this Panel is finds that on the balance of probabilities in the circumstances of this case Internet users are likely to consider the gTLD <.net> extension to be merely a necessary technical necessity with no distinguishing character.
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· there is no evidence that Respondent is commonly known by the disputed domain name;
· Respondent is not an authorized licensee, vendor, supplier, distributor, or customer relations agent for Complainant’s services;
· Complainant did not consent to Respondent’s use of the CHARTER mark and such lack of consent supports a finding that respondent has no legitimate interests in the disputed domain name;
· the screen captures of the website to which the disputed domain name resolves which are exhibited in an annex to the Complaint show that Respondent’s actions are not a bona fide offering of goods or services’
· Respondent is not engaged in a legitimate noncommercial or fair use of the disputed domain name, but on the contrary, the screen captures show that Respondent was using the disputed domain name to generate a website that suggests an association with Complainant in violation of U.S. copyright, trademark, unfair competition, and consumer deception laws and the laws of other jurisdictions;
· the content of Respondent’s website which purports to be an “informational” site for Complainant’s PANORAMA CHARTER service shows that Respondent falsely claims affiliation with Complainant;
· even to the extent that Respondent uses the disputed domain name to provide accurate information about Complainant, such use is insufficient to give Respondent any rights to, or legitimate interests in, the disputed domain name;
· previous panels established under the Policy have held that there can be no rights or legitimate interest under Policy ¶ 4(c)(ii) when as in the present case, a respondent had notice that a complainant possesses strong trademark rights in a mark that is identical or similar to the domain name at issue.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
On the balance of probabilities this Panel finds that the disputed domain name was registered in bad faith with the intention of targeting Complainant’s business activities and in particular the Intranet that Complainant has established to communicate with its 94,000 employees across 41 of the United States of America.
The uncontested evidence shows that Respondent is using the disputed domain name as the address of a website that purports to offer information about Complainant’s Intranet. There is no suggestion that the registrant of the disputed domain name had any connection with Complainant and the evidence shows that Respondent has no connection with Complainant.
Complainant has not authorized Respondent to register the disputed domain name which on the balance of probabilities was registered to refer to Complainant’s eponymous intranet. It is unlikely that the combination of Complainant’s trademark and the word “panorama” was chosen and registered for any reason other than to refer to Complainant and its Intranet and to take predatory advantage of Complainant’s business, name, mark and domain name.
As to the manner in which the disputed domain name is, and has been used, the evidence shows that Respondent is using the disputed domain name to purport to provide Complainant’s employees with information about Complainant’s own Intranet.
It is of concern that Respondent is inviting the employees to register with Respondent for more information, as Complainant has explained that employees are required to provide login information when accessing the Intranet.
Respondent’s website also appears to contain an active link to third party competitors of Complainant with an advertisement which states prominently “Best offers are online! Fiber Internet with Unlimited Data Plans starting at $50/mo”.
There is a disclaimer on Respondent’s website also: “Copyright 202—21 I Disclaimer: This website is not associated with Panorama Charter”.
Given Respondent’s attempt at remaining anonymous and his apparent lack of any bona fide business, Respondent’s invitation to employees to register on Respondent’s website is suspicious. The publication on Respondent’s website, of what appear to be links to competitors of Complainant, is damaging to Complainant’s business and the disclaimer notice is likely to confuse unsuspecting employees who have been misdirected to Respondent’s website by Respondent’s use of Complainant’s CHARTER trademark and the name of Complainant’s Intranet.
This Panel finds that such intentional use of the disputed domain name in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the services purported to be offered by Respondent on his web site constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
This finding is supported by the fact that Responded availed of a privacy service to conceal his identity on the published WhoIs, has not responded to the Complaint.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in 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.net> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman, Panelist
Dated: May 11, 2022
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