DECISION

 

Mediacom Communications Corporation v. DANIELE RUSSO / MEDIACOM PAY S.R.L.

Claim Number: FA2402002084217

 

PARTIES

Complainant is Mediacom Communications Corporation ("Complainant"), represented by Robert M. Wasnofski, Jr. of Dentons US LLP, Illinois, USA. Respondent is DANIELE RUSSO / MEDIACOM PAY S.R.L. ("Respondent"), Italy.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mediacom-pay.com>, registered with Tucows Domains Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 16, 2024; Forum received payment on February 17, 2024.

 

On February 20, 2024, Tucows Domains Inc. confirmed by e-mail to Forum that the <mediacom-pay.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 February 20, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2024 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@mediacom-pay.com. Also on February 20, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 12, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.

 

On March 12, 2024, the Panel issued a Procedural Order requesting that both parties provide additional information.

 

On 22 March 2024, Complainant timely responded to that Procedural Order, see below. Respondent did not reply to the procedural order.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that it is one of America's largest cable television companies. Through its interactive broadband network, Complainant provides its customers with a wide variety of telecommunications services, including high-definition cable television services, video-on-demand streaming services, and high-speed Internet and telephone service. In addition, since at least as early as 2015, Complainant has offered advertising and business marketing consulting services. Complainant offers its services to more than 1,500 communities across dozens of states throughout the United States. Complainant has used the MEDIACOM Mark to identify and distinguish its various services for over 25 years. Complainant has also used the MEDIACOM mark with advertising services for many years. Complainant has rights in the MEDIACOM mark based upon its registration in the United States in 2002. The mark is well known.

 

Complainant alleges that the disputed domain name is identical or confusingly similar to its MEDIACOM mark as it incorporates the mark in its entirety, merely adding a hyphen, the generic/descriptive term "pay" and the ".com" generic top-level domain ("gTLD").

 

According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant's MEDIACOM mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the disputed domain name is not being used.

 

Further, says Complainant, Respondent registered and uses the disputed domain name in bad. The disputed domain name is not being used. Respondent did not reply to Complainant's cease-and-desist letters. Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the MEDIACOM mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

C. Additional Submissions

In its response to the Panel's Procedural Order, Complainant refers to the Complaint and reiterates that it attempted to communicate with the Respondent in regard to its objection to the disputed domain name at least four times, but never received a response from Respondent.

 

FINDINGS

Complainant a large cable television companies, providing a variety of telecommunications services, including high-definition cable television services, and also advertising and business marketing consulting services. It uses the mark MEDIACOM to market its services.

 

Complainant's rights in its mark date back to 2002.

 

The disputed domain name was registered on May 5, 2023.

 

Respondent appears to be a business duly registered in Italy since 2005. The disputed domain name is not being used.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The disputed domain name incorporates Complainant's MEDIACOM mark in its entirety, merely adding a hyphen, the generic/descriptive term "pay" and the ".com" generic top-level domain ("gTLD"). Under Policy ¶ 4(a)(i), adding a gTLD and/or generic terms and/or hyphens is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word "advisors" and the gTLD ".com" did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

The WHOIS lists the organization name as "MEDIACOM PAY S.R.L." ("S.R.L." stands for "Società a responsabilità limitata", which is the Italian version of a limited liability company).

 

According to paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), a Panel may conduct limited factual research regarding disputed domain names:

 

Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.

 

This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.

 

From publicly available databases, the Panel has found that "Mediacom Pay S.R.L" is an officially registered company in Italy, whose address corresponds to the address given in the WHOIS, see:
https://www.registroimprese.it/web/guest/home. The address in question corresponds to a building that could house offices.

 

The resolving website states that it is under construction, and its footer displays the company name and address referred to above. Further, the footer displays the VAT company number "04998870960". This is indeed the official VAT number of the company "Mediacom Pay S.R.L.", registered since September 26, 2005 see:
https://telematici.agenziaentrate.gov.it/VerificaPIVA/Scegli.do?parameter=verificaPiva

 

The resolving website displays a logo that is different from that of Complainant.

 

An Internet search for "MEDIACOM" returned URLs containing the term "MEDIACOM" for organizations that appear to be legitimate and that are not related to Complainant.

 

In its Procedural Order, the Panel stated that it had conducted an Internet search, from which it appeared that Respondent may be operating a legitimate business. The Panel requested Complainant to provide evidence showing that Respondent does not operate a legitimate business; and evidence, if any, that emails associated with the disputed domain name may have been used for phishing.

 

In its reply to that Procedural Order, Complainant did not provide any additional evidence, and it referred to the evidence in the Complaint showing that it attempted to communicate with the Respondent in regard to its objection to the disputed domain name at least four times, but never received a response from Respondent.

 

However, the Panel notes that those communications from Complainant were sent by email only, even though they were letters. There is no evidence in the Complainant showing that Complainant sent a registered letter to Respondent.

 

Respondent has replied neither to the Complainant nor to the Procedural Order. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent's failure to reply as it considers appropriate. In the instant case, the Panel does not consider it appropriate to draw substantive inferences from Respondent's failure to reply.

 

Consequently, the Panel finds that Complainant has failed to provide sufficient evidence to rebut a finding that Complainant is operating a legitimate business, that it is commonly known by the disputed domain name per Policy ¶ 4(c)(ii), and that it may be able to use the disputed domain name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). That finding is based on (1) the publicly available official Italian registration records; and (2) the fact that other organizations appear to be making legitimate use of domain names that include the term "MEDIACOM" (which clearly can stand for "media communications"). See Brickworks Building Products Pty Ltd. v. Brickworks LLC, FA 1951356 (Forum Aug. 16, 2021) ("A respondent may be found to be commonly known by a domain name, under Policy ¶ 4(c)(ii), where it provides evidence that it does business under the name."); see also Garcoa, Inc. v. Janeen Arshan / Nature's Beauty Mix LLC, 1937648 (Forum May 17, 2021) ("Respondent provides copies of the Articles of Organization for Respondent's business under the name Nature's Beauty Mix, LLC, and argues the disputed domain name reflects that business name…. Therefore, Respondent has rights and legitimate interest in the disputed domain name under Policy ¶ 4(c)(ii)."); see also SageNet LLC v. Hill, Randy, FA 1865122 (Forum Nov. 8, 2019) ("Respondent contends that it has legitimate interests in the domain name as the name reflects its business name, Sage Network & Communications. A respondent may have legitimate interests in a disputed domain name where it reflects as business name and the respondent has provided evidence of this.... Respondent provides a copy of its business registration with the California Secretary of State which identifies its business as "Sage Network, Inc." … The Panel therefore finds that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).").

 

However, the Panel notes that it has been almost one year since the disputed domain name was registered, and thus there can be legitimate doubts with respect to Respondent's actual intentions regarding use of the disputed domain name. Consequently, the Panel will dismiss the Complaint without prejudice.

 

Registration and Use in Bad Faith

Since the Panel has found that Complainant has failed to satisfy its burden of proof for the previous element of the Policy, it need not analyze this element of the Policy. See Healthy Pets, Inc. d/b/a Pet Health Solutions v. Kwangpyo Kim, FA 1976154 (Forum Jan. 24, 2022) ("[S]ince Complainant must prove all three elements of Policy ¶ 4(a) under the Policy, Complainant's failure to prove one of the elements makes further inquiry into the remaining elements unnecessary.").

 

DECISION

The Complaint is dismissed WITHOUT PREJUDICE.

 

Accordingly, it is Ordered that the <mediacom-pay.com> domain name REMAIN WITH Respondent.

 

 

 

Richard Hill, Panelist

Dated: March 25, 2024