Mediacom Communications Corporation v. KimYunjung
Claim Number: FA1405001560468
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski of Dorsey & Whitney LLP, New York, USA. Respondent is KimYunjung (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mediacomm.com>, registered with Megazone Corp., dba HOSTING.KR.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2014; the National Arbitration Forum received payment on May 21, 2014.
On May 20, 2014, Megazone Corp., dba HOSTING.KR confirmed by e-mail to the National Arbitration Forum that the <mediacomm.com> domain name is registered with Megazone Corp., dba HOSTING.KR and that Respondent is the current registrant of the name. Megazone Corp., dba HOSTING.KR has verified that Respondent is bound by the Megazone Corp., dba HOSTING.KR 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 May 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 2014 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@mediacomm.com. Also on May 27, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Respondent belatedly submitted an unofficial Response on June 21, 2014 past the due date.
On June 25, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. The Panel will refer to the Respondent’s belatedly filed unofficial response only to the extent fair to both parties as there was no opportunity for Complainant for a rebuttal.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a) Complainant has rights in the MEDIACOM mark, used in connection with television transmission, high-speed Internet, and telephone services. Complainant owns registrations for the MEDIACOM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,544,829 registered March 5, 2002).
b) Respondent’s <mediacomm.com> domain name is confusingly similar to Complainant’s MEDIACOM mark. The disputed domain name differs from Complainant’s mark only by the addition of the letter “m” to the end of Complainant’s mark, as well as adding the generic top-level domain (“gTLD”) “.com.”
c) Respondent does not have any rights or legitimate interests in the <mediacomm.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its MEDIACOM mark in any way.
b. Respondent is using the <mediacomm.com> domain name to host a pay-per-click website featuring links to Complainant’s competitors, including a link titled “Timewarner Cable Offers.” See Complainant’s Exhibit 7.
d) Respondent registered and is using the <mediacomm.com> domain name in bad faith.
a. The resolving website includes a prominent solicitation stating: “Click here to buy mediacomm.com for your website name!” See Complainant’s Exhibit 7. Complainant used this advertisement, which resolved to a third-party broker’s website, to place an offer of $100. Complainant received an e-mail response from the third-party domain name broker stating that Respondent’s “expectations are $35,000.00 USD.” See Complainant’s Exhibit 9.
b. Respondent is disrupting Complainant’s business.
c. Respondent is deceiving the public into believing that Respondent’s pay-per-click website is affiliated with Complainant so as to trade on the goodwill associated with Complainant’s MEDIACOM mark. See Complainant’s Exhibit 7.
d. Respondent had knowledge of Complainant’s mark prior to registering the <mediacomm.com> domain name because of Complainant’s widespread use of the MEDIACOM mark and the links on the page indicate a familiarity with Complainant and its industry. See Complainant’s Exhibit 7.
B. Respondent
a) The Panel notes that Respondent registered the <mediacomm.com> domain name on May 9, 2003.
b) Respondent did not submit a formal response by the designated due date in this proceeding.
c) The Panel notes that the FORUM received an email Response in the Korean language from Respondent on June 21, 2014 past the due date. In this correspondence, Respondent makes the following contentions:
i) The disputed domain name is not a typo domain name. There are a good number of companies or organizations using the trade name ‘mediacomm’ because the term is an abbreviation of ‘media communication’ or ‘media community.’
ii) Respondent purchased the disputed domain name via legitimate procedure 12 years ago. The registration of disputed domain name is not for the purpose of sales but for use in the Respondent’s business in relation to advertisement. As the intended advertisement business was withdrawn, the disputed domain name is now for sale. It is not illegal to sell the disputed domain name purchased by Respondent.
iii) Respondent entrusted a domain name sales broker the sale of the disputed domain name as well as its use for advertisement. The disputed domain name is a generic name referring to “media communication”, and thus any company can use it for advertisement.
iv) Respondent has not been aware of the Complainant for the last 12 years.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 an official response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel will refer to the Respondent’s belatedly filed unofficial response to the extent fair to both parties as there was no opportunity for Complainant for a rebuttal.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Korean, thereby making the language of the proceedings in Korean. Complainant requested that these proceedings be conducted in English in its May 22, 2014 correspondence to the FORUM. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent an official Response by the designated due date, determines that the remainder of the proceedings shall be conducted in English.
Complainant contends it has rights in the MEDIACOM mark, used in connection with television transmission, high-speed Internet, and telephone services. Complainant states it owns registrations for the MEDIACOM mark with the USPTO (e.g., Reg. No. 2,544,829 registered March 5, 2002). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registration; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant owns a registration in a different country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the MEDIACOM mark under Policy ¶ 4(a)(i) because Complainant holds a valid trademark registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <mediacomm.com> domain name is confusingly similar to Complainant’s MEDIACOM mark. Complainant observes that the disputed domain name differs from Complainant’s mark only by the addition of the letter “m” to the end of Complainant’s mark, as well as adding the gTLD “.com.” First, the Panel finds a disputed domain name that differs from a trademark by a single letter does not negating a finding of confusing similarity. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). Next, the Panel finds that the addition of gTLD is irrelevant for the purposes of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <mediacomm.com> domain name is confusingly similar to Complainant’s MEDIACOM mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends Respondent does not have any rights or legitimate interests in the <mediacomm.com> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its MEDIACOM mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “KimYunjung” as the domain name registrant. Past panels have looked into the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the MEDIACOM mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <mediacomm.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent is using the <mediacomm.com> domain name to host a pay-per-click website featuring links to Complainant’s competitors, including a link titled “Timewarner Cable Offers.” See Complainant’s Exhibit 7. Past panels have found that using a confusingly similar domain name to host links of a complainant’s competitors fails to demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii) because the <mediacomm.com> domain name displays pay-per-click links to promoting Complainant’s competitors.
Respondent contends that the disputed domain name is a generic name referring to “media communication”, and thus any company can use it for advertisement implying that it has rights or legitimate interests in the disputed domain name. However, the Panel is of the view that the combination of the word “MEDIA” and the part “COMM” is not a generic term in its entirety, and thus the Panel determines that Respondent’s such contention does not have merits.
Complainant contends Respondent registered and is using the <mediacomm.com> domain name in bad faith. Complainant asserts that the resolving website includes a prominent solicitation stating: “Click here to buy mediacomm.com for your website name!” See Complainant’s Exhibit 7. Complainant explains that it used this advertisement, which resolved to a third-party broker’s website, to place an offer of $100. Complainant states that it received an e-mail response from the third-party domain name broker stating that Respondent’s “expectations are $35,000.00 USD.” See Complainant’s Exhibit 9. In prior cases, panels have determined that an offer to sell for more than out-of-pocket costs incurred in obtaining and maintaining the disputed domain name is indicative of bad faith under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Therefore, the Panel finds that Respondent registered and is using the <mediacomm.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i) because Respondent displayed a general offer to sell on the resolving website and made an offer of $35,000 through a third-party broker.
Complainant claims Respondent is disrupting Complainant’s business. The Panel notes that the <mediacomm.com> domain name displays links to Complainant’s competitors, including “Timewarner Cable Offers” and “Cable Broadband Providers.” See Complainant’s Exhibit 7. Past panels have found that such conduct does indeed constitute a bad faith disruption pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent is disrupting Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii) because Respondent is displaying competing hyperlinks on the website connected to the <mediacomm.com> domain name.
Complainant alleges that Respondent is deceiving the public into believing that Respondent’s pay-per-click website is affiliated with Complainant so as to trade on the goodwill associated with Complainant’s MEDIACOM mark. See Complainant’s Exhibit 7. Previous panels have found that using a confusingly similar domain name to operate a pay-per-click website demonstrates bad faith via attraction for commercial gain under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). Therefore, the Panel finds that Respondent registered and is using the <mediacomm.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is hosting a pay-per-click website.
Respondent seems to assert that it is not responsible for the use of the disputed domain name by saying that Respondent entrusted a domain name sales broker the sale of the disputed domain name as well as its use for advertisement. However, the Panel is of the view that Respondent has full responsibilities for the use of the disputed domain name including control over and supervision of the entrusted broker.
Complainant argues that Respondent had knowledge of Complainant’s mark prior to registering the <mediacomm.com> domain name because of Complainant’s widespread use of the MEDIACOM mark and the links on the page indicate a familiarity with Complainant and its industry. See Complainant’s Exhibit 7. Respondent contends that Respondent has not been aware of the Complainant for the last 12 years. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, the Panel determines Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name in light of the manner of use of the disputed domain name, e.g., the links on the page resolved by the disputed domain name indicate Respondent’s familiarity with Complainant and its industry. As such, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mediacomm.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq. Panelist
Dated: July 7, 2014
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