The domain Media-com.com was registered in 1998, making it 26 years old. It was registered by a producer of karaoke devices and was used as such until the mid-2010s.
But then, Media-com.com apparently lapsed and it was picked up by a domain investor, potentially via a NameJet auction; they parked the domain with PPC ads, some of which contained telecom ads.
Mediacom Communications Corporation, operating from Mediacom.com, filed a UDRP to get the domain on the basis of its established mark, MEDIACOM, and it succeeded. The Forum panelist said:
First, Respondent is using its confusingly similar media-com.com domain name to address a webpage displaying pay-per-click links. Using the domain name in such manner is disruptive to Complainant’s business, takes unfair advantage of the confusion between the at-issue domain name and Complainant’s trademark […]
Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark or other identifying text such as a website domain name and then uses the resulting string to form a domain name.
Final decision: Transfer the domain Media-com.com to the Complainant.
Mediacom Communications Corporation v. Domain Admin / TotalDomain Privacy Ltd
Claim Number: FA2312002076723
PARTIES
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski, Jr. of Dentons US LLP, Illinois, USA. Respondent is Domain Admin / TotalDomain Privacy Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is media-com.com, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
PANEL
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.
Paul M. DeCicco, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on December 27, 2023; Forum received payment on December 27, 2023.
On December 29, 2023, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the media-com.com domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 December 29, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 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@media-com.com. Also on December 29, 2023, 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 January 19, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
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 contends as follows:
Complainant 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 services, and high-speed internet and telephone service. In addition, Complainant offers advertising services.
Complainant claims rights in the MEDIACOM mark through numerous registrations of such mark including registration with the United States Patent and Trademark Office (“USPTO”).
The at-issue domain name media-com.com is virtually identical and certainly confusingly similar to Complainant’s mark because it incorporates Complainant’s MEDIACOM mark with a hyphen inserted.
Respondent lacks rights or legitimate interests in the at-issue domain name. Complainant has not authorized Respondent to use its MEDIACOM mark. Respondent is not commonly known by the domain name. Additionally, Respondent fails to use the domain name in connection with make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the domain name to direct internet users to website that contains pay-per- click hyperlinks which appear related to Complainant’s advertising consulting services.
Respondent registered and uses the at-issue domain name in bad faith. Respondent knew of Complainant’s rights in MEDIACOM when it registered media-com.com as a domain name. Rx uses the domain name to host pay-per-click links relating to Complainant’s services. Respondent is engaged in typosquatting and Respondent’s use and registration of the domain name is disruptive to Complainant’s business as it deprives Complainant from using the domain name. Respondent was officially informed of Complainant’s objection to registration and use of the domain name on multiple occasions.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has trademark rights in the MEDIACOM mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired rights in the MEDIACOM trademark.
Respondent uses the at-issue domain name to address a webpage hosting pay-per-click links.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the MEDIACOM mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s media-com.com domain name contains a recognizable version of Complainant’s MEDIACOM trademark where a hyphen is inserted between “media” and “com” and then followed by the “.com” top-level domain name. The inclusion of a hyphen in Complainant’s trademark in forming the at-issue domain name fails to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel concludes that Respondent’s media-com.comdomain name is confusingly similar to Complainant’s MEDIACOM trademark pursuant to Policy ¶ 4(a)(i). See Microtech Knives, Inc. v. shenzhen… et al, FA 2061325 (Forum Oct. 6, 2023) (finding micro-tech.store to be confusingly similar to complainant’s MICROTECH trademark); see also, 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.”).
Rights or Legitimate Interests
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue 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 WHOIS information for media-com.com indicates that “TotalDomain Privacy Ltd” is the domain name’s registrant and there is no evidence in the record indicating that Respondent is commonly known by media-com.com. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the coppertown.com domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses media-com.com to address a website offering pay-per-click links. Respondent’s use of the media-com.com domain name is thus not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (“Respondent’s use of edcorlando.xyz also does not qualify as a bona fide offering… the edcorlando.xyz domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
As discussed below without being exhaustive, there is evidence from which the Panel concludes that Respondent acted in bad faith pursuant to the Policy.
First, Respondent is using its confusingly similar media-com.com domain name to address a webpage displaying pay-per-click links. Using the domain name in such manner is disruptive to Complainant’s business, takes unfair advantage of the confusion between the at-issue domain name and Complainant’s trademark, and indicates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Vivint, Inc. v. Online Management, FA 1549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links).
Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark or other identifying text such as a website domain name and then uses the resulting string to form a domain name. The registrant hopes that internet users will: 1) inadvertently type the malformed string when searching for content related to the domain name’s target trademark or related website and/or, 2) in viewing the domain name will confuse such domain name with its target trademark. Respondent’s at-issue domain name is near identical to Complainant trademark as the at-issue domain name merely consists of an irrelevant hyphen inserted into Complainant’s trademark and a necessary top-level, here “.com,” to form the at-issue domain name. There is some likelihood that a number of internet users will misspell Complainant’s mark by including a hyphen between “media” and “com” and assume the widely used “com” top-level when attempting to guess Complainant’s official domain name. The erroneous guess will instead deliver the internet user to Respondent’s pay-per-click website. Further, upon reading media-com.com in a search result or elsewhere it is predicable that the domain name may pass for the address of what is believed to be Complainant’s official website, notwithstanding the misspelling of Complainant’s MEDIACOM trademark. Typosquatting is, in itself, indicative of bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Moreover, Respondent had actual knowledge of Complainant’s rights in the MEDIACOM mark when it registered media-com.com. Respondent’s actual knowledge is apparent from the mark’s notoriety, as well as from Respondent’s typosquatting of Complainant’s mark in forming the domain name. See, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant’s mark when registering the disputed domain name).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the media-com.com domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 20, 2024
Very bad decision because makes aged domains aren’t trustworthy.
And hyphenated domain is not a typo.
The domain name MEDIACOM.COM is confusingly similar to a MEDIA.COM too.
PYZDA.COM – The registered mark is MEDIACOM that, based on previous decisions referenced in the UDRP, is close enough to the domain (one dash in-between.) Also, the PPC lander served ads of the Complainant’s competitors. Lastly, for the sake of UDRP decisions, aged domains that change ownership lose the advantage when a trademark is older than the subsequent ownership’s date. The Respondent failed to respond.
Media is a generic keyword with zero to minimal secondary meaning so you’re comparing apples to oranges.