Charter Communications Holding Company v. MIZHAR salem
Claim Number: FA1803001774836
Complainant is Charter Communications Holding Company (“Complainant”), represented by Madelon Lapidus of Holland & Hart LLP, Colorado, USA. Respondent is MIZHAR salem (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <charterspectrumonline.com> and <spectrumcable.info>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 6, 2018; the Forum received payment on March 6, 2018.
On March 7, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <charterspectrumonline.com> and <spectrumcable.info> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 March 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 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@charterspectrumonline.com, postmaster@spectrumcable.info. Also on March 9, 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 April 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant has rights in the CHARTER SPECTRUM mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,618,726, registered October 7, 2014). See Compl. Ex. 3. Respondent’s <charterspectrumonline.com> domain name is confusingly similar to Complainant’s CHARTER SPECTRUM mark as it incorporates the mark in its entirety and adds the descriptive term “online” and the generic top-level domain (“gTLD”) “.com.” Respondent’s <spectrumcable.info> domain name is confusingly similar to Complainant’s mark as it incorporates Complainant’s well-known mark and adds the descriptive term “cable” along with the gTLD “.info.”
Respondent has no rights or legitimate interests in the <charterspectrumonline.com> and <spectrumcable.info> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. To the contrary, Respondent uses the <charterspectrumonline.com> domain name to replicate Complainant’s legitimate website and claim association with Complainant. See Compl. Ex. 5. Respondent fails to actively use the <spectrumcable.info> domain name, as it fails to resolve to an active website. See Compl. Ex. 6.
Respondent registered and uses the <charterspectrumonline.com> and <spectrumcable.info> domain names in bad faith. Respondent uses the domain names to trade on the goodwill associated with Complainant’s marks and either provide competing telecommunication services, or by not using the resolving domain for any purpose. See Compl. Exs. 5 and 7. Further, based on Respondent’s use of the <charterspectrumonline.com> domain name’s resolving webpage displaying Complainant’s stylized mark, Respondent had actual knowledge of Complainant’s rights in the CHARTER SPECTRUM mark at the time it registered the domain names at issue.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in the telecommunications industry.
2. Complainant has established its trademark rights in the CHARTER SPECTRUM mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,618,726, registered October 7, 2014).
3. Respondent registered the <charterspectrumonline.com> and <spectrumcable.info> domain names on February 15, 2018 and July 29, 2017, respectively.
4. Respondent uses the <charterspectrumonline.com> domain name to replicate Complainant’s legitimate website and claim association with Complainant and has failed to use the <spectrumcable.info> domain name to resolve to an active website.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the CHARTER SPECTRUM mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,618,726, registered October 7, 2014). See Compl. Ex. 3. 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).”). Accordingly, the Panel finds that Complainant has established rights in the CHARTER SPECTRUM mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s CHARTER SPECTRUM mark. Complainant argues that Respondent’s <charterspectrumonline.com> domain name is confusingly similar to Complainant’s CHARTER SPECTRUM mark as it incorporates the mark in its entirety and adds the descriptive term “online” and the gTLD “.com.” The Panel agrees with that submission. Similar changes to a registered mark have been held by prior panels not to distinguish a domain name sufficiently from a trademark for the purposes of Policy ¶4 (a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] 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 name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <charterspectrumonline.com> domain name is confusingly similar to the CHARTER SPECTRUM mark under Policy ¶4(a)(i).
Complainant submits that Respondent’s <spectrumcable.info> domain name is confusingly similar to Complainant’s mark as it incorporates the word SPECTRUM from Complainant’s famous CHARTER SPECTRUM mark and adds the descriptive term “cable” along with the gTLD “.info.” As noted above, this does not sufficiently distinguish the domain name from the mark for the purposes of Policy ¶4(a)(i) as the objective bystander would assume that the domain name by, adopting a prominent part of the trademark, was invoking the trademark itself and that by adding to it the word “cable” was referring to cables provided by Complainant under its trademark. The Panel therefore finds that the <spectrumcable.info> domain name is confusingly similar to the CHARTER SPECTRUM mark under Policy ¶4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s trademark and in one case to use it in its entirety and in the other case to use part of it in Respondent’s domain names, adding in the former case the descriptive term “online” and in the latter case the descriptive term “cable” ;
(b) Respondent registered the <charterspectrumonline.com> and <spectrumcable.info> domain names on February 15, 2018 and July 29, 2017, respectively;
(c) Respondent uses the <charterspectrumonline.com> domain name to replicate Complainant’s legitimate website and claim association with Complainant and has failed to use the <spectrumcable.info> domain name to resolve to an active website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <charterspectrumonline.com> and <spectrumcable.info> domain names as Respondent is not commonly known by the domain names. Where a response is lacking, relevant information on this issue includes the WHOIS and any other evidence from 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 identifies “MIZHAR salem” as the registrant for both domain names. See Compl. Ex. 1. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by the CHARTER SPECTRUM mark. Panels may use these assertions as evidence of a registrant lacking rights or legitimate interests. 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). Complainant submits that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and that Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel finds that Respondent is not commonly known by the infringing domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent also does not use the <charterspectrumonline.com> domain name for any bona fide offering of goods or services or a legitimate noncommercial or fair use because it attempts to pass itself off as Complainant on the resolving webpage. Passing off can evince a lack of rights and legitimate interests per Policy ¶¶ 4(c)(i) and (iii). 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 screenshots of its own resolving webpage along with Respondent’s, which does appear to show identical content and color scheme. See Compl. Exs. 5 (Respondent’s domain) and 7 (Complainant’s domain). As such, the Panel finds that Respondent’s attempts to pass itself off as Complainant show its lack of rights and legitimate interests in the <charterspectrumonline.com> domain name per Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant contends that Respondent fails to use the <spectrumcable.info> domain name actively. Failure to make active use of a confusingly similar domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). The screenshot provided by Complainant shows a GoDaddy parked webpage without any further content. See Compl. Ex. 6. Accordingly, the Panel finds that Respondent fails to use the <spectrumcable.info> domain name actively and thus fails to make 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).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <charterspectrumonline.com> and <spectrumcable.info> domain names in bad faith to trade on the goodwill associated with Complainant’s marks and either provide competing telecommunication services, or by not using the resolving domain for any purpose. Using 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 evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). As mentioned above, Complainant has provided screenshots showing that Respondent mimics Complainant’s website with the <charterspectrumonline.com> domain name, and hosts a parked webpage with the <spectrumcable.info> domain name. See Compl. Exs. 5-6. Accordingly, the Panel agrees that Respondent attempted to trade off the goodwill associated with Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent had actual knowledge of Complainant’s rights in the CHARTER SPECTRUM mark at the time of registering the at-issue domain names. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent clearly had knowledge of Complainant’s mark based on Respondent’s use of the <charterspectrumonline.com> domain name’s resolving webpage displaying Complainant’s stylized mark. See Compl. Ex. 5. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the CHARTER SPECTRUM mark and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <charterspectrumonline.com> and <spectrumcable.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 4, 2018
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