It’s shocking: a trademark for XTREAM granted in 2019, delivered victory in a UDRP filed against the domain name Xtream.com. The domain was registered in 1998.
The Respondent was called a “cybersquatter” and that they acquired the domain “in bad faith” in 2018 in the secondary market, being aware of the Complainant’s mark, allegedly.
Mediacom Communications Corporation, the Complainant in this case, filed for the trademark in 2017, but that’s for a stylized XTREAM mark.
NAF’s sole panelist, Terry F. Peppard, ordered the domain to be transferred to the Complainant, as the Respondent didn’t file a response – a bad choice.
Full details on the transfer of Xtream.com to the Complainant follow:
Mediacom Communications Corporation v. Privacy.co.com / Savvy Investments, LLC Privacy ID# 1124979
Claim Number: FA2001001881672
PARTIES
Complainant is Mediacom Communications Corporation (“Complainant”), represented by Robert M. Wasnofski, Jr. of Dentons US LLP, Illinois, United States. Respondent is Privacy.co.com / Savvy Investments, LLC Privacy ID# 1124979 (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xtream.com>, registered with Sea Wasp, LLC.
PANEL
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on January 31, 2020; the Forum received payment on January 31, 2020.
On February 3, 2020, Sea Wasp, LLC confirmed by e-mail to the Forum that the <xtream.com> domain name is registered with Sea Wasp, LLC and that Respondent is the current registrant of the name. Sea Wasp, LLC has verified that Respondent is bound by the Sea Wasp, 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 February 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 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@xtream.com. Also on February 4, 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 February 28, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is one of America’s largest cable television companies, offering a wide variety of telecommunications services.
Complainant holds a registration for the XTREAM trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,704,384, registered March 19, 2019, based on an application filed November 16, 2017.
The domain name <xtream.com> was created on November 19, 1998.
Respondent acquired the domain name on an indeterminate date in 2018.
The domain name is substantively identical and confusingly similar to Complainant’s XTREAM mark.
Respondent has not been commonly known by the domain name.
Respondent is not authorized to use Complainant’s XTREAM mark.
Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent fails to make any active use of the domain name.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent has a history of cybersquatting.
Respondent knew of Complainant’s rights in the XTREAM mark when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
(1) the domain name registered by Respondent is substantively identical and confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
DISCUSSION
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent’s failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant’s undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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
Complainant has rights in the XTREAM trademark and service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum August 4, 2015) (finding that a UDRP complainant’s USPTO registration for a mark sufficiently demonstrated its rights in that mark for purposes of standing to proceed under Policy ¶ 4(a)(i)).
We are mindful in this connection that Complainant’s USPTO registration for its mark became effective on March 19, 2019, after the domain name came into the hands of Respondent in 2018. However, it is well established that, in cases of this kind, the relevant date for determining time priority for Complainant’s mark is the date of filing of its application for mark registration, November 16, 2017, which precedes the time when Respondent acquired the domain name. See, for example, Francesca’s Collections, Inc. v. Blackstone Trust, FA 368315 (Forum March 9, 2011):
… Complainant’s rights in the mark date back … to … the filing date of the … trademark registration.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <xtream.com> domain name is both substantively identical and confusingly similar to Complainant’s XTREAM mark. The domain name contains the mark in its entirety, with only the addition of the generic Top Level Domain (“gTLD”) “.com.” This alteration of the mark, made in forming the domain name, does not save it from the realm of confusing similarity under the standards of the Policy. See, for example, 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 make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <xtream.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <xtream.com> domain name, and that Complainant has not authorized Respondent to use the XTREAM mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Privacy.co.com / Savvy Investments, LLC,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent fails to use the <xtream.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, in that Respondent fails to make any active use the disputed domain name at all. In the circumstances described in the Complaint, we agree that Respondent’s failure to make any active use of the domain name (commonly called “passive holding”) is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum September 2, 2004):
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 Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Before proceeding under this head of the Policy, we must acknowledge that, as a general principle, it may be difficult for a UDRP complainant to make out a case for bad faith registration and use of a domain name in circumstances in which the domain name was created earlier in time than the date when the complainant acquired its rights in the competing mark. Here it appears that the <xtream.com> domain name was created on November 19, 1998, whereas Complainant’s rights in its XTREAM mark arose much later, in the period 2017-19. However, where bad faith registration and use is the question, and where there has been a chain of owners of a contested domain name over time, it is settled that:
[T]he date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, sec. 3.9.We therefore examine the circumstances prevailing when Respondent came into possession of the domain name in 2018.
In so doing, we first reflect that inactive use of a domain name is a form of use. See Telstra Corp. Ltd. v Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). Therefore, because it deprives Complainant of the opportunity to employ its XTREAM mark in a corresponding domain name, Respondent’s inactive use (passive holding) of the <xtream.com> domain name for an extended period after acquiring it permits us to conclude that Respondent has both registered and uses the domain name in bad faith within the contemplation of Policy ¶ 4(a)(iii). See, for example, VideoLink, Inc. v. Xantech Corporation, FA1608735 (Forum May 12, 2015):
Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
See also Indiana University v. Ryan G Foo / PPA Media Services, FA1588079 (Forum December 28, 2014):
Under the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith [registration and use of it] pursuant to Policy ¶ 4(a)(iii).
We next consider that the Complaint details that Respondent has a history of registering and using domain names in bad faith, as was found in a series of UDRP panel decisions, numbering more than twenty in all, including the following: Vision Service Plan d/b/a VSP Corporation v. Privacy.co.com Privacy ID# 845818, Savvy Investments, LLC Privacy ID# 845818, WIPO Case No. D2019-2497; Marshalls of Nevada, Inc. v. Savvy Investments, LLC Privacy ID# 945766, FA1822175 (Forum January 26, 2019); and Pearson plc v. Savvy Investments, LLC Privacy ID# 995949, FA1838495 (Forum May 19, 2019). This history establishes a pattern of bad faith registration and use of domain names which we take into account in concluding that Respondent registered and uses the <xtream.com> domain name in bad faith in this instance. See, for example, DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018):
The record contains evidence of Respondent’s previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith [registration and use of the domain name here in issue] per Policy ¶ 4(b)(ii).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain name <xtream.com> be forthwith transferred from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 4, 2020
