Mediacom Communications Corporation v. Venkateshwara Distributor Private Limited. / Caas Serviced Office solutions
Claim Number: FA2004001894432
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski, Jr. of Dentons US LLP, Illinois, USA. Respondent is Venkateshwara Distributor Private Limited. / Caas Serviced Office solutions (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwmediacom.com> (the “disputed domain name”), registered with Tirupati Domains and Hosting Pvt Ltd. (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 30, 2020; the Forum received payment on April 30, 2020.
On May 2, 2020, Tirupati Domains and Hosting Pvt Ltd. confirmed by e-mail to the Forum that the <wwwmediacom.com> disputed domain name is registered with Tirupati Domains and Hosting Pvt Ltd. and that Respondent is the current registrant of the name. Tirupati Domains and Hosting Pvt Ltd. has verified that Respondent is bound by the Tirupati Domains and Hosting Pvt 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”).
Prior to the commencement of this proceeding, Complainant sent a cease and desist letter to Respondent, informing Respondent of its rights in the MEDIACOM trademark, but received no response.
On May 8, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2020 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@wwwmediacom.com. Also on May 8, 2020, 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 June 2, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 large American cable television company that 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 services. Complainant offers its services to more than 1,500 communities across dozens of states throughout the United States. Complainant has rights in the MEDIACOM trademark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,544,829, registered Mar. 5, 2002) (the “MEDIACOM Mark”). The <wwwmediacom.com> disputed domain name is confusingly similar to Complainant’s MEDIACOM Mark since it incorporates the trademark in its entirety, merely adding the abbreviation “www” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s MEDIACOM Mark. Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to host pay-per-click links and spread malware.
Respondent registered and is using the disputed domain name in bad faith. Respondent attracts users for commercial gain by displaying third party sponsored commercial links.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights in the MEDIACOM Mark. The disputed domain name is confusingly similar to Complainant’s MEDIACOM Mark. Further, Complainant has established that Respondent lacks rights or legitimate interests in the use of the disputed domain name and that Respondent registered and is using 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 disputed 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 disputed domain name; and
(3) the disputed 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”).
The Panel concludes that Complainant has rights in the MEDIACOM Mark based on registration of the MEDIACOM Mark with the USPTO, as referenced above. Registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the 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.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”). In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not respond to the Complaint, but given the facts of this case, the Panel finds Respondent would have been hard-pressed to furnish availing arguments, had it chosen to respond:
Specifically, Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the MEDIACOM Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because the disputed domain name resolves to a parked webpage containing third party pay-per-click links. Complainant provides a screenshot of the webpage to which the disputed domain name resolved as of March 3, 2020, and asserts that the site is a suspected malware dissemination site. The aforementioned uses demonstrate a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and ¶ 4(c)(iii).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
First, Respondent attracts users for commercial gain by displaying third party commercial links. Use of a confusingly similar domain name to display third party commercial hyperlinks is evidence of bad faith for commercial gain under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (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)).
Second, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Finally, the Panel concludes that Respondent had knowledge of Complainant’s rights in the MEDIACOM mark based on Complainant’s widespread use of the trademark as well as Respondent’s use of the disputed domain name to host pay-per-click links such as “Mediacom Cable TV” and “Mediacom Modem” on the landing page to which the disputed domain name resolves. Prior knowledge of a complainant’s trademark and use of a disputed domain name that incorporates the trademark is sufficient to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it); Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwmediacom.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: June 8, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page