WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CSC Holdings, LLC v. Internet Invest, Ltd. dba Imena.UA, and KIRILL LI, UzGazOil Company
Case No. D2013-0048
1. The Parties
The Complainant is CSC Holdings, LLC, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, P.C., United States of America.
The Respondent is Internet Invest, Ltd. dba Imena.UA, Kyiv, Ukraine, and KIRILL LI, UzGazOil Company, Tashkent, Uzbekistan.
2. The Domain Name and Registrar
The disputed domain name <optimum-online.net> is registered with Internet Invest, Ltd. dba Imena.ua (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2013. On January 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 14, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 18, 2013. In response to a notification by the Center of the Language of the Proceedings, the Complainant filed a request for English as the Language of the proceedings on January 18, 2013.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2013. No official Response was filed with the Center. A short email message was received on January 14, 2013, apart from which, no further communication was received from the Respondent. On February 13, 2013, the Center notified the Respondent’s default in this administrative proceeding.
The Center appointed Assen Alexiev as the sole panelist in this matter on February 25, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
In respect of the language of the proceedings, the Panel notes the following circumstances. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Center has provided both parties with an opportunity to comment on this issue by sending them an invitation in both English and Russian languages. The Complainant has submitted a request that English be the language of the proceedings, pointing out that the disputed domain name is composed of English words, that the website associated to the disputed domain name is entirely in the English language and is directed to visitors from the United States of America, which according to the Complainant shows that it would be appropriate the present administrative proceeding to be conducted in the English language. The Respondent has sent a short email in English to the Center by which it has not requested the proceedings to be held in Russian, and has not submitted any comments on the Complainant’s request the proceeding to be held in English, although the invitation by Center clearly stated that the lack of comments by the Respondent will be regarded as consent the proceeding to be held in the English language. In this situation, the Panel accepts that the Respondent does not disagree the proceedings to be held in English, and that doing so will be fair and efficient and will not put either of the parties at a disadvantage. Therefore, in exercise of its powers under paragraphs 10 and 11 of the Rules, the Panel decides that language of this administrative proceeding will be English. At the same time, the Panel accepts and considers all evidence available in the case and submitted by the Parties in either English or Russian languages.
4. Factual Background
The Complainant is part of a corporate group that operates one of the largest cable communications businesses in the United States of America. Since the mid-1990s, it has used the service marks OPTIMUM and OPTIMUM ONLINE in connection with a range of Internet service provider services, including high speed Internet access, website hosting and email services, and other communications services such as “voice-over-Internet” digital telephone services and interactive cable television services. The Complainant serves customers in the states of New York, New Jersey, Connecticut, Pennsylvania, Colorado, Montana, Wyoming and Utah with a cable infrastructure that can offer service to more than five million residences and commercial buildings.
The Complainant is the owner of the following service mark registrations for the territory of the United States of America (the “OPTIMUM marks”):
- the service mark OPTIMUM, with registration No. 2,609,003, registered on August 20, 2002 for services in International Classes 38 and 41;
- the service mark OPTIMUM ONLINE, with registration No. 2,524,754, registered on January 1, 2002
for services in International Class 38; and
- the service mark OPTIMUM ONLINE, with registration No. 3,776,026, registered on April 13, 2010 for services in International Classes 39 and 42.
The Complainant indirectly controls the websites at “www.optimum.net”, “www.optimum.com”, and “www.optimumrewards.com”. These websites enable computer users to view and purchase the Complainant’s offerings, including ISP and other communications services (e.g., television and voice products). The “www.optimum.net” website provides a portal for Complainant’s subscribers to set up access and modify customer accounts and profiles, review invoices, access payment information, and pay bills for the Complainant’s services. This website also allows customers to set up, access and spend rewards points through a rewards account, to access information regarding the Complainant and its product, to view and download Complainant’s promotional materials, and to view programming provided by the Complainant to its subscribers.
The disputed domain name was registered on October 11, 2011.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the OPTIMUM marks. The Complainant’s OPTIMUM marks are incorporated in the disputed domain name in their entirety with only the addition of a hyphen, which does not eliminate the confusing similarity.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not granted the Respondent any license, permission, or other right by which the Respondent could own or use any domain name incorporating Complainant’s OPTIMUM marks, and the Respondent is not connected to the Complainant in any way. The Respondent was well aware of the renown of the Complainant’s OPTIMUM marks before it registered and made use of the disputed domain name. By extensively copying content from the Complainant’s websites, the Respondent sought to use the disputed domain name to falsely cause new and existing customers and other users to view the website associated to the disputed domain name as an official or authorized website operated by Complainant. An attempt to pass off a website as an official website of Complainant cannot constitute a bona fide offering of goods or services.
According to the Complainant, the Respondent has registered and is using the disputed domain name in bad faith. In an apparent effort to draw traffic away from the Complainant and to collect personal information from its subscribers, the Respondent has posted a website slavishly copies and mirrors the exact content posted at Complainant’s official websites. The Respondent has attempted to pass off its website as an official website operated by Complainant by not only using the Complainant’s marks, contact information, format and content, but also by directing some links to the Complainant’s own pages and by including a copyright notice in the Complainant’s name on every page of its website. Several links on the Respondent’s website (such as “Pay My Bill,” “Please Sign In,” and “Email”) take users to a fake sign-in page bearing the Complainant’s OPTIMUM marks and logos, directing users to enter their “Optimum ID” and “Password.” The Respondent’s website also features account access pages, directing users to enter their Cablevision account numbers, full names, phone numbers, and email addresses, including images taken directly from the Complainant’s website. The Respondent has thus attempted to mislead the Complainant’s customers to believe that its website is the official website of the Complainant, and to improperly collect important and valuable personal information from them. This activity is known as “phishing” – a fraudulent process of attempting to acquire sensitive information such as usernames, passwords and credit card details by masquerading as a trustworthy entity in an electronic communication. A phishing scam of this type harms the Complainant not only by improperly collecting personal information of its customers, but also by tarnishing the OPTIMUM marks and the image of Complainant. Such activity, even in the absence of evidence that the Respondent has actually received money from the Complainant’s clients, shows that the Respondent has registered and used the disputed domain name for commercial gain. The Respondent has thereby unfairly capitalized on the goodwill and fame of Complainant’s OPTIMUM marks, has attracted traffic from potential and existing customers to its website, and has improperly benefited in violation of the Policy, paragraph 4(b)(iv).
Complainant requests that the disputed domain name be immediately transferred to it.
The Respondent has not submitted a formal Response in this administrative proceeding1.
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the Domain Names:
(i) That the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) That the Respondent has registered and is using the Domain Names in bad faith.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
In this administrative proceeding, the Respondent chose not to submit a formal Response. This conduct of the Respondent leads the Panel to conclude that it has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take his decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the OPTIMUM marks, registered for the territory of the United States of America.
It is a common practice under the Policy to disregard the gTLDs such as the “.net” section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name is its “optimum-online” section. The only difference between this element and the Complainant’s OPTIMUM ONLINE service marks is the inclusion of a hyphen between the “optimum” and “online” elements of the disputed domain name. Rather than distinguishing the disputed domain name from the Complainant’s trademark, this hyphen visually separates its two parts and makes the distinctive ‘optimum” element easily recognizable. This increases the chances Internet users to regard the disputed domain name as signifying the Complainant’s OPTIMUM marks and to relate it to the Complainant.
For this reason, the Panel finds that the disputed domain name is confusingly similar to the OPTIMUM marks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name, and provides certain arguments and evidence in this regard. Thus, the Complainant establishes a prima facie case under Policy, paragraph 4(a)(ii).
It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the showing by providing evidence to the contrary.
In the present case, the Respondent has chosen not to present to the Panel any allegations or documents in its defence despite the burden under the Rules, paragraph 5(b)(i) and 5(b)(ix), or the consequences that a panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any justification for registering or using the disputed domain name, it could have provided it. In particular, the Respondent has not contended that any of the circumstances described in Policy, paragraph 4(c) — or any other circumstance — is present in its favour. The only factual allegations made by the Respondent in its email to the Center dated January 14, 2013 was that the disputed domain name was registered for a client of the Respondent, which later lost interest in the disputed domain name. However, the Respondent provides no details or evidence about the existence and identity of its client and about the contractual relations between them. If such a client existed and it was a client of the Respondent, this could have easily been proven with evidence one would expect to be easily available to the Respondent. As the Respondent has not provided such evidence and its allegations remain unproven, the Panel is prepared to regard the Respondent as the party in actual control of the disputed domain name and as the party whose actions need to be analyzed for the purposes of the present proceeding.
The publicly available WhoIs information about the Respondent provided by the Registrar does not contain any evidence of rights or legitimate interests of the Respondent in respect of the disputed domain name.
At the same time, the disputed domain name is confusingly similar to the OPTIMUM marks of the Complainant. The Respondent does not deny the contentions of the Complainant, does not claim having rights or legitimate interests in respect of this disputed domain name, and does not provide any explanation whatsoever for its registration and use other than its unproven allegation for having registered it on behalf of a third party.
At the same time, as alleged by the Complainant, the Respondent has used the disputed domain name to link it to a website which copies the content of the Complainant’s websites and creates the false impression of being maintained by the Complainant, and which may lead the Complainant’s subscribers and other Internet users to provide sensitive personal information.
In the absence of any evidence or allegations to the contrary, the above satisfies the Panel that the Respondent was aware of the goodwill of the Complainant and of its OPTIMUM service mark, and that this goodwill has motivated the Respondent to choose to register the disputed domain name and to link it to the described website in an attempt to misleadingly collect personal information from Internet users.
In the Panel’s view, such conduct could not be regarded as giving rise to rights and legitimate interests of the Respondent in the disputed domain name. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For the purposes of Policy, paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name;
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.
In the present case, the disputed domain name is confusingly similar to the Complainant’s OPTIMUM marks, and the Respondent is found to have registered the disputed domain name without having rights and legitimate interests in it, while at the same time more likely than not being aware of the Complainant and of its goodwill. Having registered the disputed domain name, the Respondent has used it to link it to a website which copies the content of the Complainant’s websites and creates the false impression of being maintained by the Complainant, and which may lead Internet users to provide sensitive information about their credit cards and log in details for access to their accounts with the Complainant.
Taking all the above into account, and in the absence of any contrary evidence or even allegation of any actual or contemplated good faith use of the disputed domain name, the Panel is prepared to accept that the Respondent has registered and used it in bad faith primarily in an attempt to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s OPTIMUM marks as to the source and affiliation of the Respondent’s website or of the services offered on the Respondent’s website.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <optimum-online.net> be transferred to the Complainant.
Date: March 12, 2013
1 See discussion on the Respondent’s email of January 14, 2013 below.