Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners
Claim Number: FA1810001814475
Complainant is Charter Communications Holding Company, LLC (“Complainant”), represented by Madelon Lapidus of Holland & Hart LLP, Colorado, USA. Respondent is Taha Shaikh / Tskdesigners (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spectrumfeature.com>, registered with GoDaddy.com, 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 October 31, 2018; the Forum received payment on October 31, 2018.
On November 2, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <spectrumfeature.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 November 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 2018 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@spectrumfeature.com. Also on November 2, 2018, 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 November 24, 2018, 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 cable television, internet, and voice communications company. Complainant has rights in a variety of trademarks that incorporate the word “Spectrum” such as CHARTER SPECTRUM, SPECTRUM NEWS NY1, SPECTRUM TV, SPECTRUM GUIDE, and these marks are registered with the United States Patent and Trademark Office (“USPTO”). Complainant has used the word SPECTRUM as a trademark since at least as early as 1994. Respondent’s <spectrumfeature.com> domain name is identical or confusingly similar to Complainant’s marks as it contains the SPECTRUM portion of Complainant’s marks and appends the generic term “feature” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <spectrumfeature.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to replicate Complainant’s own website without permission or authorization.
Respondent registered and uses the <spectrumfeature.com> domain name in bad faith. Respondent’s use of the disputed domain name is intended to trade on Complainant’s CHARTER SPECTRUM 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. Further, given Respondent’s use of the <spectrumfeature.com> domain name, Respondent had actual and constructive knowledge of Complainant’s rights in the CHARTER SPECTRUM mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to multiple trademarks 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 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 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 (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.”).
Complainant claims rights in a variety of trademarks that incorporate the word “Spectrum” in relation to cable television, internet, voice communications, and related telecommunications services. These include CHARTER SPECTRUM, SPECTRUM NEWS NY1, SPECTRUM TV, SPECTRUM GUIDE (herein referred to collectively as the “SPECTRUM Marks”). Such rights are claimed based on Complainant’s actual use of these marks as well as its registration thereof with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”) Complainant claims that it has used some form of its SPECTRUM Marks “since at least as early as 1994” “[a]s reflected by the first use dates in Complainant’s trademark registrations” However, upon review of the trademark registration certificates submitted into evidence, the earliest date of first use found by the Panel is March 24, 2014. Complainant also submits a “Company Profile” page at the Charter.com website which mentions the founding of Charter Communications, Inc. in 1993. Regardless of the actual date on which some form of the CHARTER Marks were first used, the Panel finds that, for the purposes of Policy ¶ 4(a)(i), Complainant has established rights in such marks and that these rights existed prior to the August 30, 2018 creation of Respondent’s <spectrumfeature.com> domain name.
Complainant next asserts that Respondent’s <spectrumfeature.com> domain name is identical or confusingly similar to Complainant’s mark as it contains the SPECTRUM portion of Complainant’s mark and appends the generic term “feature” and the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.).
The Panel therefore finds that the <spectrumfeature.com> domain name is confusingly similar to the CHARTER SPECTRUM mark under the threshold standard of 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). 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 name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <spectrumfeature.com> domain name under Policy ¶ 4(c)(ii) as Respondent is not commonly known by the domain. Where a response is lacking, relevant information may include the WHOIS record and any other assertions by a complainant regarding the nature of its relationship with a respondent. 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). The WHOIS record submitted into evidence here identifies the registrant of the <spectrumfeature.com> domain name as “Taha Shaikh / Tskdesigners”. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately affiliated with Complainant, has ever been known by the domain name prior to its registration, or that Complainant has ever given Respondent permission to use the mark in any manner. Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). As the Respondent has not filed a Response or made any other submission in this case there is nothing in record to indicate that the Complainant’s assertions are unfounded or inaccurate. Accordingly, the Panel finds that Respondent is not commonly known by the <spectrumfeature.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant claims Respondent uses the domain name to replicate Complainant’s own website without permission or authorization. Using a confusingly similar domain name to pass oneself off as a complainant can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the resolving webpage associated with the disputed domain name, which shows that Respondent uses Complainant’s logo, layout, type-font, and colors in what appears to be an effort to mimic Complainant’s own website and solicit the sale of Complainant’s television and Internet services to end-use customers. It is unclear, from the evidence presented, whether Respondent’s goal is to earn affiliate revenue from the sale of Complainant’s services or to collect personal information from visitors to its website without actually providing any services at all. Even assuming, arguendo, that the Respondent is actually promoting Complainant’s cable television, internet, and voice communication services as an unauthorized distributor, its use does not meet the standard for such activity as set out in the seminal decision of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO, November 6, 2001). Specifically, the <spectrumfeature.com> website contains nothing which indicates its relationship (or lack thereof) with the Complainant. In fact, the notations “Time Warner Cable is a trademark of Time Warner Inc. used under license” and “Official deals site” appear, among others, at the bottom of the page. This, combined with the fact that the site clearly seeks to mimic Complainant’s own website, indicates that the Respondent is seeking to convey the impression that it is, itself, the Complainant rather than simply a distributor (either authorized or otherwise) of Complainant’s services. Accordingly, the Panel finds that Respondent attempts to pass itself off as Complainant and fails to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
In light of the above, and in the absence of any submission by the Respondent, the Panel therefore determines that Respondent does not have rights or legitimate interests in the <spectrumfeature.com> domain name.
Complainant argues that Respondent had actual or constructive knowledge of Complainant’s CHARTER Marks at the time it registered the <spectrumfeature.com> domain name. However, the Panel may disregard arguments of bad faith based on constructive notice as UDRP case precedent typically declines to find bad faith as a result of constructive knowledge. 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.”). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the SPECTRUM Marks prior to registering the disputed domain name and finds that actual knowledge 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 January 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 <spectrumfeature.com> domain name to offer Complainant’s cable television and internet services at a page displaying Complainant’s logo, Respondent had knowledge of Complainant’s rights in the CHARTER Marks when it registered the disputed domain name. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s marks at that time.
Complainant goes on to claim that Respondent’s use of the <spectrumfeature.com> domain name is intended to trade upon the reputation of Complainant’s CHARTER Marks, and is likely to confuse internet users into believing that Respondent’s website is licensed by or affiliated with Complainant. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain in this manner has been held to evince bad faith under Policy ¶ 4(b)(iv). See HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. wangxiaonxiaowang, D2016-0805 (WIPO [] 2016) (“by copying the look and feel of the Complainants' website, the Respondent is affirmatively creating the false impression that the website is controlled by or affiliated with the Complainants. The Respondent has intentionally attempted to attract Internet users to the Respondent's website for commercial gain by creating a likelihood of confusion with the Complainants' HUGO BOSS mark….”) As noted above, Complainant provides a screenshot of the resolving website associated with the disputed domain name, showing that Respondent appears to use a copycat page to solicit the sale of Complainant’s television, Internet, and voice communications services. It is unclear if the Respondent is actually providing Complainant’s services or is gathering personal information from website visitors while not providing any services. In either scenario, the Panel agrees that Respondent is attempting to commercially benefit from the use of Complainant’s SPECTRUM Marks in bad faith under Policy ¶ 4(b)(iv).
The Panel therefore determines that Respondent registered and uses the <spectrumfeature.com> domain name 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 <spectrumfeature.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq. Panelist
Dated: November 25, 2018
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