Complainants are Charter Communications, Inc., Charter Communications Holding Company, LLC and Charter Communications Operating LLC of Stamford, Connecticut, United States of America (“US”), represented by Loeb & Loeb, LLP, US.
Respondent is Perfect Privacy, LLC of Jacksonville, Florida, US / Sheri K Corwin of Tampa, Florida, US, represented by Smith & Hopen, P.A., US. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2017. On January 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2017. The Response was filed with the Center February 7, 2017.
The Center appointed Lawrence K. Nodine, Lynda J. Zadra-Symes and Adam Taylor as panelists in this matter on March 23, 2017. The Panel finds that it was properly constituted. Each member of 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. 4. Factual Background
Complainant Charter Communications, Inc. is a large broadband communications company that provides broadband services such as TV and high-speed Internet access to residential and commercial customers. Complainant Charter Communications Holding Company, LLC owns numerous trademark registrations in the US. Although Complainants claim common law trademark rights in the term “spectrum” by itself as a mark as of July 2014, Complainants’ trademark registrations have all used the term “spectrum” in combination with other terms and design elements (hereinafter collectively “Spectrum Marks”). Complainants’ earliest registrations claim first use in March 2014, although several of the trademark registrations are based on applications filed November 13, 2013. Complainants’ earliest registrations are for marks that include the term “spectrum” combined with the company name “Charter”, See, e.g., US reg. no. 4,618,730 (“Charter Spectrum” plus design element) registered on October 7, 2014; filed November 13, 2013; first use in March 2014. Complainants’ more recently filed registrations combine “spectrum” and a disclaimed term such as “internet”. See e.g., US trademark registration no. 5,098,550 (“Spectrum Internet”) registered December 13, 2016; filed October 21, 2015; first use July 6, 2015, (disclaiming “internet”).
Respondent is a graphic design company engaged in, among other things, the design of newsletters and calendars. As a part of its services, Respondent registers, creates, and maintains websites that provide its customers with access to software for customizing newsletters and calendars. Respondent registered the disputed domain name on December 8, 2011, for the purpose of providing its customer Spectrum Retirement Communities, LLC (“Retirement Communities”) with access to Respondent’s software and on-line order forms. The website accessed through the disputed domain name was used by Retirement Communities to access Respondent’s software for customizing newsletters and calendars. Retirement Communities ceased using the site in 2013, after which there were no active pages associated with the disputed domain name (Annex 8 of the Complaint). Respondent nonetheless renewed the disputed domain name on October 13, 2013.
At the time of filing of the Complaint, the disputed domain name did not resolve to an active website. 5. Parties’ Contentions A. Complainant
Complainants contend that Respondent is passively holding the disputed domain name for the bad faith purpose of extorting money from Complainants. According to Complainants, the disputed domain name is confusingly similar to Complainants’ Spectrum Marks in that it merely adds the non-distinctive words “my” and “news” and the “.com” generic Top-Level Domain (“gTLD”). Arguing that Respondent has no rights or legitimate interest in the disputed domain name, Complainants assert that Respondent does not own a trademark or a service mark identical to the disputed domain name, is not commonly known as “spectrum” or “my spectrum news”, is not licensed by Complainants to use the Spectrum Marks, and has not and is not engaged in a noncommercial or fair use of the disputed domain name.
To support their contention of bad faith registration, Complainants argue that Respondent had no rights to the disputed domain name and that it has been passively holding the disputed domain name since 2013. According to Complainants, the fact that the disputed domain name was registered before the Spectrum Marks were used in commerce does not foreclose a finding of bad faith registration as “Respondent appears to have renewed the disputed domain on January 29, 2015, well after Complainant’s first use of their SPECTRUM marks.”
Complainants argue that Respondent’s request for payment of an amount “significantly higher” than USD 17,500 is evidence of bad faith. B. Respondent
Respondent asserts that it has legitimate interests in the disputed domain because Respondent used the disputed domain name in connection with a bona fide offering of graphic design services to Retirement Communities not only before the current dispute arose but even before any of Complainants’ Spectrum Marks were first used in commerce and before Complainants filed any trademark applications for that mark.
Respondent also argues that Complainants cannot succeed in establishing that the disputed domain name was registered in bad faith because, contrary to Complainants’ contention, the renewal of the disputed domain name occurred on October 13, 2013, before Complainants acquired rights in the Spectrum Marks. Respondent shows that Complainants mistakenly asserted that the January 29, 2015 “updated date” provided in a WhoIs search was the renewal date. Respondent asserts that this is incorrect, and provides an invoice from the Registrar listing October 13, 2013, as the renewal date of the disputed domain name.
Respondent argues that a finding of reverse domain name hijacking is supported here as Complainants’ knew or should have known, based on past communications with Respondent, that they could not prove that Respondent did not have a legitimate interest in the disputed domain name or that the disputed domain name was registered in bad faith. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that Complainants have rights in the term “spectrum” in view of its trademark registrations. Although none of its registrations are for “spectrum” alone, the term is distinctive enough when combined with the company name or disclaimed terms to be appreciated by consumers as an important or dominant portion of the trademark as a whole. Respondent does not contest Complainants’ claim of common law rights in “spectrum” alone. Moreover, “spectrum” is recognizable in the disputed domain name. The Panel further finds that the whole of the disputed domain name is confusingly similar to Complainants’ Spectrum Marks. The addition of “my” and “news” do not prevent an Internet user from recognizing the “spectrum” within the disputed domain name.
Accordingly, the Panel finds that Complainants have standing to bring this Complaint because it has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Because Complainants have not satisfied paragraph 4(a)(iii) of the Policy the Panel need not address paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Panel finds that Complainants have not satisfied paragraph 4(a)(iii) of the Policy. Respondent registered and renewed the domain name before Complainants acquired rights in their Spectrum Marks. “Generally speaking … when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.1.
Moreover, the preponderance of evidence supports our finding that Respondent renewed the disputed domain name in October 2013 before Complainants filed their first trademark applications for their Spectrum Marks in November 2013 and before Complainants’ first use of any of the Spectrum Marks in March 2014, as recited in Complainants’ earliest trademark registrations. Consequently, there is no factual basis for asserting that Respondent renewed in bad faith, and we need not consider cases that consider whether bad faith renewal is relevant to the bad faith registration requirement. However, the Panel notes that paragraph 3.7 of WIPO Overview 2.0 states that “mere renewal of a domain name has not generally been treated as a new registration for the purpose of assessing bad faith.”
Complainants rely on Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions,WIPO Case No. D2009-0786. However, unlike in Octogen, Complainants have not proved that Respondent engaged in egregious bad faith use that should be considered a breach of the registrant’s warranty to refrain from behavior that violates third-party rights. The preponderance of the evidence shows that Respondent registered the disputed domain name for a legitimate purpose – for its client and subscriber, a retirement community named Spectrum. Retirement Communities stopped working with Respondent in 2013, whereupon Respondent deactivated the webpages associated with Retirement Communities but retained ownership of the disputed domain name. Moreover, because this deactivation occurred prior to Complainants’ acquisition of any trademark rights, there is no basis for inferring that Respondent deactivated the site for any bad faith purpose,1 or that its continued assertion of ownership rights in the disputed domain name constitutes bad faith use. There being no evidence of bad faith use, the question of whether any purported bad faith use is a breach of warranty under Octogen does not arise.2
In any case, the Panel adds that the overwhelming approach of UDRP panels since Octogen has been to reject alternative approaches such as that espoused in Octogen and to affirm paragraph 4(a)(iii) of the Policy requiring bad faith at the time of registration or acquisition of the disputed domain name. See, e.g., Coolside Limited v. Get On The Web Limited,WIPO Case No. D2016-0335, Centroamerica Comercial, Sociedad Anonima de Capital Variable (CAMCO) v. Michael Mann,WIPO Case No. D2016-1709, New Forests Asset Management Pty Limited v. Kerry Schorsch, Global Advertizing, LLC,WIPO Case No. D2015-1415, Dreamlines GmbH v. Darshinee Naidu / World News Inc,WIPO Case No. D2016-0111, Lonza AG v. Onyx Networks, Inc.,WIPO Case No. D2015-1460, Movius Interactive Corporation v. D,WIPO Case No. D2015-1717 and Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iE, LLC,WIPO Case No. D2016-1349.
The Panel therefore finds that Complainants have not satisfied paragraph 4(a)(iii) of the Policy. D. Reverse Domain Name Hijacking (“RDNH”)
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Panel finds Reverse Domain Name Hijacking. Complainants should have known that Respondent’s original use of the disputed domain name in the manner outlined above was likely to prove fatal to their prospects in this proceeding. Complainants’ reliance on the “update date” as the date of Respondent’s renewal was fundamentally wrong. The Panel might overlook this mistake were it not the primary pillar of Complainants’ bad faith contention, causing the Panel concern that Complainants knew or should have known that they had built their case on an erroneous factual premise.
Furthermore, before launching this case, Complainants engaged in lengthy and detailed negotiations with Respondent to buy the disputed domain name. Frustrated by these negotiations, Complainants strained too hard to find a theory, making erroneous assertions of fact regarding the renewal date their central contention and lobbing baseless allegations (such as the false contact assertion) in an effort to achieve via the UDRP what they could not achieve by negotiation. This stratagem has been described in many UDRP cases as “a highly improper purpose” and it has often contributed to findings of RDNH. See, e.g., Patricks Universal Export Pty Ltd. v. David Greenblatt,WIPO Case No. D2016-0653 and BERNINA International AG v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D2016-1811. 7. Decision
For the foregoing reasons, the Complaint is denied and the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Lawrence K. Nodine
Presiding Panelist
Lynda J. Zadra-Symes
Panelist
Adam Taylor
Panelist
Date: April 19, 2017
1 Complainants’ “passive holding” contention has no merit whatsoever. Unlike Telstra Corp. v. Nuclear Marshmallows,WIPO Case No. D2000-0003, Complainants’ mark was not widely known before registration of the disputed domain name; Respondent has furnished evidence of its initial good faith registration of the disputed domain name; and Respondent has not concealed its identity or provided false contact information, although Complainant makes an unsubstantiated claim that it has. There is no dispute about Respondent’s initial good faith registration. And this is sufficient to counter any retroactive inferences of bad faith registration from alleged subsequent bad faith use. See Global Media Resources SA v. Sexplanets aka SexPlanets Free Hosting,WIPO Case No. D2001-1391 (Policy paragraph 4(b)(iv) does not require finding of bad faith where there is counter-evidence of good faith registration).
2 The Panel expressly declines to comment on the Octagen analysis, emphasizing that these facts do not require that we reach the issue.
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