Mediacom Communications Corporation v. Zhang Wei Zhang / zhang wei
Claim Number: FA1905001845412
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski,Jr. of Dentons US LLP, Illinois, USA. Respondent is Zhang Wei Zhang / Zhang Wei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are <mediacomcble.com> and <mediacomtoday.co>, registered with Dynadot, Llc, Chengdu West Dimension Digital Technology Co., Ltd. and Chengdu West Dimension Digital Technology Co., Ltd..
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 May 29, 2019; the Forum received payment on May 29, 2019.
On May 30, 2019, Dynadot, Llc, Chengdu West Dimension Digital Technology Co., Ltd.; Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <mediacomcble.com> and <mediacomtoday.co> domain names are registered with Dynadot, Llc, Chengdu West Dimension Digital Technology Co., Ltd.; Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. Dynadot, Llc, Chengdu West Dimension Digital Technology Co., Ltd.; Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Dynadot, Llc, Chengdu West Dimension Digital Technology Co., Ltd.; Chengdu West Dimension Digital Technology Co., Ltd. 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 June 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 2019 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@mediacomcble.com, postmaster@mediacomtoday.co. Also on June 26, 2019, 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 July 19, 2019, 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 one of America’s largest cable television companies and provides its customers with a wide variety of telecommunications services, including high-definition cable television services, video-on demand services, and high-speed Internet and telephone service. Complainant has rights in the trademark MEDIACOM through its use in commerce since 1995 and its registration with the United States Patent and Trademark Office (“USPTO”) as early as 2002. Respondent’s <mediacomtoday.co> and <mediacomcble.com> domain names, registered on April 30, 2017 and March 26, 2019 respectively, are identical or confusingly similar to Complainant’s MEDIACOM mark. Respondent incorporates Complainant’s mark in its entirety, adds two descriptive terms, a misspelled version of the word “cable” and the word “today” along with the addition of the “.com” generic top-level domain (gTLD).
Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Respondent also fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the domain names to resolve to webpages that contain pay-per-click hyperlinks or to a page displaying a “Domain Suspension” notice.
Respondent registered and uses the disputed domain names in bad faith as Respondent resolves the domain names to websites that contain pay-per-click links which refer users to third parties that provide competing services or to websites that are registrar parking pages and do not display any substantive content. Further, Respondent uses the disputed domain name to imply an affiliation with Complainant. Finally, Respondent had actual knowledge of Complainant’s rights in the MEDIACOM mark given Complainant’s widespread use and registration of the 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 disputed 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 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 claims rights in the MEDIACOM mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”) Here, Complainant has provided the Panel with copies of its USPTO registration certificates for the MEDIACOM mark. Therefore, the Panel finds that Complainant has adequately shown rights in the MEDIACOM mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <mediacomcble.com> and <mediacomtoday.co> domain names are identical or confusingly similar to Complainant’s MEDIACOM mark. The addition of a descriptive term and a gTLD does not distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”) The Panel notes that Complainant makes no arguments with regards to the <mediacomtoday.co> domain name’s “.co” country code top-level domain (“ccTLD”), however addition of a ccTLD is irrelevant to a finding of confusing similarity where it adds no meaning or substance to the domain name as a whole. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (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.”) Here, Complainant argues that Respondent incorporates Complainant’s mark in its entirety and adds the term “cble” (a misspelling of the word “cable”) and the term “today,” both of which are related to Complainant’s business, along with the addition of the “.com” or “.co” TLD. Further, Complainant argues that the disputed domain names are virtually identical to domains that Complainant already owns (i.e., <mediacomcable.com> and <mediacomtoday.com>), with only one letter differing in each. Therefore, the Panel finds that Respondent’s domain names are identical or confusingly similar to Complainant’s MEDIACOM mark per 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 argues that Respondent lacks rights or legitimate interests in the <mediacomtoday.co> and <mediacomcble.com> domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Relevant WHOIS information can be used as evidence to help determine whether a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes that the WHOIS records for both of the disputed domains identify the Respondent as “Zhang Wei” and no information in the record indicates that Respondent is known otherwise or that it was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain names per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the domain names to resolve to webpages that contain pay-per-click hyperlinks or to pages that display a “Domain Suspension” notice. Use of a confusingly similar domain name to resolve to a webpage page that contains pay-per-click links is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, Complainant has provided the Panel with screenshots of the <mediacomcble.com> domain’s resolving webpages (both the home page displaying a list of categories and a deeper page displaying actual links to third-party websites) which offer category links to “Cable Tv Provider” and “Mediacom Cable” as well as links to other companies that appear to provide some of the same services as those provided by Complainant. It is asserted that these links relate to offers that compete with Complainant and the Panel agrees. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the <mediacomcble.com> domain name per Policy ¶ 4(c)(i) or (iii).
As for the <mediacomtoday.co> domain name, Complainant asserts that it resolved “a website that contained pay-per-click links in the past”. However, the submitted evidence does not support this. Two versions of this website’s resolution are submitted. One is a registrar parking page that displays the message “Domain Suspension” and the other is from Archive.org (the Wayback Machine). The first shows what appear to be two advertising links to the registrar for this domain name[i] and the archived screenshot shows only the <mediacomtoday.co> domain name and a blank field. Regardless, parked or inactive websites may also indicate that a Respondent has no rights or legitimate interests in a disputed domain name. See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”) In light of all of the circumstances in this case, the Panel similarly finds that Respondent has no rights or legitimate interests in the <mediacomtoday.co> domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant argues that Respondent had actual or constructive knowledge of Complainant’s rights in the MEDIACOM mark given Complainant’s widespread use and registration of the mark along with Respondent’s addition of terms related to Complainant’s goods and services to the disputed domain names and its misspelling of two domain names that are owned by Complainant. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). 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.”) Use of a domain name that incorporates a widely-used and registered mark may be evidence of actual knowledge of a complainant’s rights in the mark per Policy ¶ 4(a)(iii). See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”) Here, Complainant argues that Respondent had actual knowledge of Complainant’s mark through Complainant’s widespread use of the mark. The Panel notes that Complainant provides screenshots of its own use of the MEDIACOM mark and its <mediacomcable.com> and <mediacomtoday.com> websites. Further, the use of very close misspellings of Complainant’s own domain names in the disputed domains is noted. In light of this evidence, the Panel finds it highly likely that Respondent had actual knowledge of Complainant’s rights in the MEDIACOM mark and that this supports a finding of bad faith registration per Policy ¶ 4(a)(iii).
Complainant next argues that Respondent registered and used the disputed domain names in bad faith as the resolving websites contain competing pay-per-click links. Use of a confusingly similar domain name to resolve to a webpage that contains competing pay-per-clicks may demonstrate bad faith per Policy ¶ 4(b)(iii). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”) Here, Complainant provides screenshots of the disputed domains’ resolving webpages which contain links to categories “Cable Tv Provider” and “Mediacom Cable” and to commercial third-party sites that provide services similar to those offered by Complainant. Complainant argues that these hyperlinks lead to offers that compete with Complainant and that Respondent receives compensation for forwarding users to these third-party commercial sites. Therefore, the Panel finds that Respondent registered and used the disputed the <mediacomcble.com> domain name in bad faith per Policy ¶ 4(b)(iii).
With respect to the <mediacomtoday.co> domain name, as noted above, the evidence does not support Complainant’s claims that it resolved, in the past, to a pay-per-click website. However, the non-use or passive holding of a disputed domain name may be found to constitute bad faith under certain circumstances. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to bad faith.”); Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”) Here, the websites associated with the disputed <mediacomtoday.co> domain name are either a registrar parking page that displays a “Domain Suspension” notice or an archived screenshot that displays no content at all apart from showing the domain itself. The Panel therefore finds that Respondent is passively holding this domain name, which is confusingly similar to Complainant’s mark, and that this indicates bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant further argues that Respondent registered and uses the disputed domain names to imply an affiliation with Complainant. Use of a domain name that incorporates a well-known mark to imply an affiliation with a complainant, for profit, may be evidence of bad faith per Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). Here, Complainant argues that Respondent is using its MEDIACOM mark to divert Internet traffic to its domain names’ resolving webpages and profiting by click-through links or passive holding. Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mediacomcble.com> and <mediacomtoday.co> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: July 22, 2019
[i] The Panel offers no opinion here on whether these registrar advertisements are true monetized “pay-per-click” links.
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