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Red Bull GmbH v. Unasi Management Inc. [2005] GENDND 492 (9 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CSC Holdings, Inc. v. cablevision-lightpath.com Inc.

Case No. D2004-1057

1. The Parties

The Complainant is CSC Holdings, Inc., Bethpage, New York, United States of America, represented by Davis & Gilbert LLP, United States of America.

The Respondent is cablevision-lightpath.com Inc., Bethpage, New York of United States of America.

2. The Domain Name and Registrar

The disputed domain name <cablevision-lightpath.com> is registered with Easyspace Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2004. On December 15, 2004, the Center transmitted by email to Easyspace a request for registrar verification in connection with the domain name at issue. On December 15, 2004, Easyspace transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 27, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 December 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2005.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on February 24, 2005. 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.

4. Factual Background

Complainant states that it is one of the leading telecommunications and entertainment companies in the United States and for more than fifteen years, through its wholly-owned subsidiary Cablevision Lightpath, Inc., Complainant has delivered voice, data, Internet and video services to businesses in New York, New Jersey and Connecticut via its proprietary fiber optics telecommunications network.

Complainant states that it has become one of the largest providers of telecommunications services to hospitals, financial institutions, universities and high tech industries in the New York tri-state area.

Complainant states that it is the owner, through Cablevision Lightpath, Inc., of multiple incontestable U.S. trademark registrations for CABLEVISION LIGHTPATH, CABLEVISION and LIGHTPATH for use in connection with a broad range of telecommunications services. Complainant has attached four U.S. Trademark registrations, all in the telecommunications field as follows:

CABLEVISION LIGHTPATH, Reg. No. 2092801

LIGHTPATH CABLEVISION LIGHTPATH INC. and Design, Reg. No. 2092828

CABLEVISION and Design, Reg. No. 1348581; and

LIGHTPATH, Reg. No. 2092807

Complainant states that it is the owner of numerous domain names that incorporate its CABLEVISION LIGHTPATH, CABLEVISION and LIGHTPATH trademarks, including the domain names <cablevision.com>, <cablevision.net> and <light-path.net>, through which Complainant provides, among other things, useful information to its clients and potential clients and retailers about its LIGHTPATH business. LIGHTPATH marks include <cablevisionlightpath.com>, <cablevisionlightpath.net>, <cablevisionlightpath.org>, <cablevisionlightpath.biz>, <cablevision.biz>, <cablevision.us>, <lightpath.biz>, <lightpath.info>, <lightpath.tv> and <lightpath.us>.

Complainant states that as a result of Complainant’s prolonged and prominent use and promotion of its CABLEVISION LIGHTPATH, CABLEVISION and LIGHTPATH trademarks in connection with its voice, data, internet, video and other communications services, the CABLEVISION LIGHTPATH, CABLEVISION and LIGHTPATH marks have acquired and enjoy considerable fame, goodwill and a valuable reputation. See generally Virtual Reality Group Inc. v. LeBel, NAF Case No. 112526 (June 20, 2002) (recognizing that CABLEVISION is “highly desirably (sic) and valuable mark[]”)

Complainant states that business consumers that encounter the CABLEVISION LIGHTPATH, CABLEVISION and LIGHTPATH marks in connection with communication services, including most particularly online services of all kinds, without question recognize that those services originate from a single source, namely Complainant. Complainant states that business consumers also rely upon the CABLEVISION LIGHTPATH, CABLEVISION and LIGHTPATH marks to identify Complainant’s services and distinguish them from the services of others. By its registration and repeated renewal of the CABLEVISION LIGHTPATH, CABLEVISION and LIGHTPATH trademarks, the U.S. Patent & Trademark Office similarly has recognized that CABLEVISION LIGHTPATH, CABLEVISION and LIGHTPATH are very strong and highly distinctive trademarks that uniquely identify Complainant.

Complainant alleges that Respondent holds no trademark registration for CABLEVISION LIGHTPATH, CABLEVISION or LIGHTPATH and that Respondent does no legitimate business under any name that incorporates the terms “cablevision” or “lightpath” and is not known by any legitimate name that incorporates the terms “cablevision” and/or “lightpath.” Complainant also alleges that Respondent could not legitimately own or exercise any rights in any names or marks that incorporate the terms “cablevision” and/or “lightpath” in view of Complainant’s numerous incontestable registrations for its CABLEVISION LIGHTPATH, CABLEVISION and LIGHTPATH marks.

Complainant states that Respondent is not licensed by Complainant to provide any CABLEVISION LIGHTPATH-brand services, or to use the CABLEVISION LIGHTPATH, CABLEVISION or LIGHTPATH marks. Complainant states that Respondent does not have and never has had any business relationship with Complainant.

Complainant states that “although Respondent has no right to identify itself with any names or marks that incorporate the terms “cablevision” and “lightpath”, Respondent has identified itself on the Domain Name registration record as <cablevision-lightpath.com Inc>.

Complainant further alleges that Respondent also provided a fraudulent mailing address and other false identity information for its administrative contact on the domain name registration record. Complainant states this information is one letter or one digit different from the correct contact information for Complainant.

Complainant states that Respondent has been using the Domain Name to automatically redirect users to Complainant’s own internet site, “www.lightpath.net”. As evidence of this allegation, Complainant attached a printout of the source code from the site that links to the Domain Name, and a printout of the home page of the site itself. Complainant states that the printout of the home page at “www.lightpath.net” as redirected by Respondent and the printout from the home page of Complainant’s “www.lightpath.net” site reveal that the two sites are one and the same.

5. Parties’ Contentions

A. Complainant

With respect to Paragraph 4(a)(i) of the Policy, Complainant contends that due to its ownership of and extensive use during the part 15 years of the incontestable United States trademark registrations for CABLEVISION, CABLEVISION LIGHTPATH and LIGHTPATH for communication services, it holds more than enough rights in its CABLEVISION, CABLEVISION LIGHTPATH and LIGHTPATH marks to invoke the Policy.

Complainant further contends that the Domain Name <cablevision-lightpath.com> is effectively identical to, and confusingly similar to, Complainant’s trademarks CABLEVISION, CABLEVISION LIGHTPATH and LIGHTPATH and that it is an accepted tenet of UDRP practice that a domain name that wholly incorporates a registered trademark in its entirety and without alteration is identical or confusingly similar to that trademark and satisfies the requirements of Paragraph 4(a)(i) of the Policy.

Finally, Complainant contends that since it routinely employs its CABLEVISION and LIGHTPATH trademarks with other words such as “digital,” “online” and “mail” in its domain names, this further increases the likelihood of consumer confusion between the CABLEVISION LIGHTPATH, CABLEVISION and LIGHTPATH marks and the Domain Name.

With respect to Paragraph 4(a)(ii) of the Policy, Complainant contends that the absence of any evidence showing Respondent’s use of or preparation to use the Domain Name in connection with a bona fide offering of goods or services demonstrates that Respondent has no rights to or legitimate interests in respect of the Domain Name. The only known use by Respondent of the Domain Name at the time this Complaint was filed has been to redirect users to Complainant’s “www.lightpath.net” website, without the Complainant’s knowledge or permission.

Complainant contends that since Respondent does not appear to be making legitimate non-commercial or fair use of the Domain Name this further establishes that Respondent has no rights or legitimate interests in respect of the Domain Name.

Finally, Complainant contends that Respondent does not appear ever to have legitimately been known by or done business under the name “Cablevision Lightpath” or any similar name, and the fact that Respondent has no relationship with Complainant that would allow it to use Complainant’s trademarks CABLEVISION, CABLEVISION LIGHTPATH and LIGHTPATH in the Domain name is evidence that Respondent has no rights or legitimate interests in respect of the Domain name.

With respect to Paragraph 4(a)(iii) of the Policy, Complainant contends that Respondent’s registration and use of a domain name that it knew was confusingly similar, if not identical, to Complainant’s trademarks CABLEVISION, CABLEVISION LIGHTPATH and LIGHTPATH establishes bad faith under the Policy. As evidence Complainant cites CSC Holdings Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273, where use of the challenged domain name to redirect users to Complainant’s website is “acknowledgement of sorts that [challenged domain name] is confusingly similar to [Complainant’s website domain name] and is ‘ground[] on which bad faith may be inferred.”

Complainant further contends that Respondent’s auto-forwarding to Complainant’s website is evidence of bad faith because it shows that Respondent has actual knowledge of Complainant’s rights in its trademarks.

Complainant further contends that internet users who wrongly recall or guess the domain name for Complainant’s “www.cablevisionlightpath.com”, “www.cablevisionlightpath.net”, “www.cablevisionlightpath.org”, “www.cablevisionlightlpath.biz” websites and mistakenly type the Domain Name into their computer browsers are likely to believe that the Domain Name is owned and controlled by Complainant.

Complainant further contends that Respondent, by its continued ownership and control of the Domain Name, will be able to increase confusion when Respondent decides to redirect at some later date to its own website or to a competitor’s website.

Complainant contends that while, as of the date of this Complaint, Respondent may not have inflicted any readily measurable harm, it has interfered with Complainant’s use and control of its own federally registered trademarks, and that prior UDRP decisions have recognized that such interference with Complainant’s own ability to control the use of its own trademarks on the Internet unquestionably evidences bad faith.

Finally, Complainant contends that Respondent’s deliberate false and misleading contact information in its Domain Name registration records also supports the conclusion that the contested domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, Paragraph 4(a).

A. Identical or Confusingly Similar

Complainant has legitimate rights in the trademarks CABLEVISION, CABLEVISION LIGHTPATH and LIGHTPATH due to the incontestable United States registrations it owns for the marks and due to Complainant’s alleged 15 years use of the marks in connection with communications services, a use that long predates the Respondent’s registration of the disputed domain name.

The domain name <cablevision-lightpath.com> is confusingly similar, if not identical, to the CABLEVISION LIGHTPATH mark in which Complainant has rights as the domain name differs only in that it contains a hyphen between the words “cablevision” and “lightpath” and that it contains the non-descriptive gTLD domain name suffix “.com”. It is well established that neither punctuation marks such as hyphens nor the “.com” suffix on their own avoid a finding of confusing similarity. See Owens Corning Fiberglas Technology, Inc v. Hammerstone, WIPO Case No. D2003-0903 (December 29, 2003) (“The addition of a hyphen and the top-level domain designation “.com” are not sufficient to avoid the conclusion that the domain name and mark are confusingly similar.”). See, e.g., Rolls Royce PLC v. Hallofpain, WIPO Case No. D2000-1709 (February 19, 2001) (“[t]he use or absence of punctuation marks, such as hyphens and spaces, does not alter the fact that a domain name is identical to a mark”); Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (April 22, 2000) (“the addition of the generic top-level domain (gTLD) name ‘.com’ is … without legal significance since use of a gTLD is required of domain name registrants”).

Therefore, Complainant has proven that the Domain Name is confusingly similar to Complainant’s CABLEVISION LIGHTPATH mark, the first of the three elements required by the Policy.

B. Rights or Legitimate Interests

The Panel believes that the absence of any evidence showing Respondent’s use of or preparation to use the Domain Name in connection with a bona fide offering of goods or services, the fact that Respondent does not appear to be making a legitimate non-commercial or fair use of the domain name at issue, the apparent redirection of users to Complainant’s “www.lightpath.net” website, without the Complainant’s knowledge or permission, the fact that Respondent does not appear ever to have legitimately been known by or done business under the name “Cablevision Lightpath” or any similar name, and the fact that Respondent has no relationship with Complainant that would allow it to use Complainant’s trademarks CABLEVISION, CABLEVISION LIGHTPATH and LIGHTPATH in the domain name at issue is evidence that Respondent has no rights or legitimate interests in respect of the Domain name. CSC Holdings, Inc. v.Elbridge Gagne, WIPO Case No. D2003-0273 (June 18, 2003) where use of a challenged domain name to redirect users to Complainant’s own website “is not any bona fide offering of goods or services under the UDRP.”

Therefore, based on the above unrefuted statements and absent any evidence of Respondent’s rights or legitimate interests in the domain name at issue, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Complainant has submitted evidence, unchallenged by the Respondent, that its marks are well known. The Panel believes from the evidence presented that it is highly likely that the Respondent must have been aware of Complainant’s well known trademarks CABLEVISION, CABLEVISION LIGHTPATH and LIGHTPATH when it registered and used the domain name at issue since the domain name in dispute, <cablevision-lightpath.com>, is the exact mark with only the addition of a hyphen between the terms CABLEVISION and LIGHTPATH and with the addition of the “.com”, both being without legal significance.

The Panel finds that the Respondent was simply trying to avoid the appearance of bad faith when the domain name at issue automatically redirected to Complainant’s website, “www.lightpath.net”. If ownership of the domain name at issue remains with the Respondent, it can obviously be re-directed to another website of Respondent’s choosing. The Panel cannot conclude that bad faith is not present simply because no measurable harm has yet been done. Complainant has no business relationship with the Respondent authorizing the re-direction of the website and thus, has no legitimate reason to do so.

Further, the Panel finds that the false and misleading contact information in Respondent’s Domain Name registration record supports the conclusion that the domain name at issue was registered and is being used in bad faith.

The Complainant has proven that the Domain Name has been registered and is being used in bad faith, and thereby Complainant has proven the third of the three elements required by the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <cablevision-lightpath.com> be transferred to the Complainant.

Lawrence K. Nodine
Sole Panelist

Date: March 10, 2005