Oath Inc. v. Pavel Seliverstov
Claim Number: FA2109001963038
Complainant is Oath Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Pavel Seliverstov (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoofinanceapi.com>, registered with Registrar of Domain Names REG.RU LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 9, 2021; the Forum received payment on September 9, 2021.
On September 15, 2021, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <yahoofinanceapi.com> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 September 20, 2021, the Forum served the Complaint and all Annexes, including a English and Russian language Written Notice of the Complaint, setting a deadline of October 12, 2021 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@yahoofinanceapi.com. Also on September 20, 2021, the English and Russian language 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.
A timely Response was received and determined to be complete on October 8, 2021.
On October 13, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Antonina Pakharenko-Anderson as Panelist.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
Pursuant to UDRP Rule 11(a), 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. Previous UDRP panels have noted that this paragraph must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition. See General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE,
Edison-GE and EEEGE.COM, D2006-0334 (WIPO Aug. 13, 2006). In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, the Panel must have regard to all “the relevant circumstances” of the case. See Allianz SE v. Privacy Protection Service - whoisproxy.ru / Sergey E. Vysotin, D2020-0490 (WIPO Apr. 29, 2020).
According to section 4.5.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.
The Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is has the capacity to understand the English language.
The Respondent has chosen English as the language of the website to which the Infringing Domain Name resolves. See Spike's Holding, LLC v. Jun Wu Wei, FA2010001916276 (Forum Nov. 9, 2020) (finding where the resolving website to the disputed domain name was in English, it was fair and in the interest of justice to conduct the remainder of the proceedings in English, even though the registration agreement was in Chinese).
In addition, the Infringing Domain Name is registered in connection with the “.com,” Top-Level Domain, which primarily targets English-speaking Internet users. See Adidas AG v. Daehyeon Kim, D2013-1904 (WIPO January 19, 2014) (finding that “.com” generic TopLevel Domains primarily target English-speaking Internet users).
In his response, the Respondent stated that he preferred the proceedings to be in Russian. His argument that “the website was primarily registered targeting Russian-speaking Internet users” cannot be accepted. The Panel studied the website at <yahoofinanceapi.com> and found out that there exists only an English version of it. Consequently, the allegations that the website was primarily registered targeting Russian-speaking Internet users cannot be accepted by the Panel. The fact that the Respondent is the resident of Russian Federation and his native language is Russian does not influence the fact that the Domain Name and resolving website is targeting English-speaking Internet users
After considering the circumstances of the present case, the Panel decides that the proceeding should be in English.
PRELIMINARY ISSUE: LEGAL PROCEEDINGS INITIATED IN RESPECT OF A DOMAIN-NAME DISPUTE THAT IS THE SUBJECT OF THE COMPLAINT
Pursuant to UDRP Rule 18 (a), In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
In his response, the Respondent mentioned that there existed a court proceeding concerning the subject matter in the Moscow Arbitration Court. As evidence that the lawsuit was duly accepted by the court on October 6, 2021, the Respondent encloses the scan copy from the court`s website, the printouts from the databases confirming the lawsuit was duly sent and delivered.
In accordance with the Policy 4(k), the mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either [respondent] or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that the domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel's decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure.
In view of this paragraph, the Panel has duly studied the documents provided by the Respondent and concluded that, although the Respondent provided in the Annexes the copy of the lawsuit and the information (scans/printouts from the online databases) that the lawsuit was duly delivered to and accepted by the court, the Panel noted that the copy of the lawsuit was not file-stamped by the clerk of the court. The Panel concluded that in this case, since the Respondent did not meet formal requirement and failed to provide file-stamped copy of the lawsuit, there is no ground for suspension or termination of the administrative proceeding.
In view of the above, the Panel prefers to proceed to a decision.
A. Complainant
Complainant is the owner of the service mark and trademark YAHOO! (hereinafter “Complainant’s YAHOO! Mark”), the trade name YAHOO as well as the domain name YAHOO.COM. In continuous use since 1994, Complainant’s Mark has become one of the most recognized brands in the world. Yahoo owns numerous trademark registrations for the YAHOO! Mark around the world, including but not limited to the United States Trademark Registration Nos. 2403227, 2040222, and 2187292, and U.S. Trademark Application No. 88626168 covering inter alia, “online computer services” in Class 35 and “telecommunication services” in Class 38. Yahoo’s trademark rights in its YAHOO! Mark and variations thereof predate Respondent’s registration of the Infringing Domain Name.
Respondent registered the <yahoofinanceapi.com> domain name on March 28, 2021, and this domain name resolves to a website called “Yahoo Finance API Specification” (the “Infringing Website”) that purports to offer “[r]eal time low latency Yahoo Finance API for stock market, crypto currencies, and currency exchange.” Accordingly, the Infringing Website offers the unauthorized sale of
Complainant’s copyright protected API, which it appears to be promoting as a lucrative stock market trading tool.
Respondent’s <yahoofinanceapi.com> domain name is confusingly similar to Complainant’s mark as Respondent merely removes the exclamation point from the mark and adds the generic terms “finance” and “api” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <yahoofinanceapi.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is diverting Internet users to sell them subscriptions to Complainant’s API software.
Respondent registered and uses the <yahoofinanceapi.com> domain name in bad faith. Specifically, Respondent is attempting to attract Internet users for commercial gain and disrupt Complainant’s business by offering subscription-based access to Complainant’s copyrighted material. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the YAHOO! mark at the time of registration.
B. Respondent
Respondent does not agree with the arguments contained in the complaint. He states that the domain name <yahoofinanceapi.com> is not confusingly similar to the Complainant’s YAHOO! Mark (they are visually, phonetically and semantically different and do not mislead the consumers). The Respondent is not the Complainant`s competitor and does not prevent the Complainant from performing his activity.
The Respondent claims that his use of <yahoofinanceapi.com> does not constitute the unfair use of the Complainant’s YAHOO! Mark.
Respondent registered the disputed domain name on March 28, 2021. Yahoo’s trademark rights in its YAHOO! Mark and variations thereof predate Respondent’s registration of the Infringing Domain Name.
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:
(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.
Complainant claims rights in the YAHOO! mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,403,227, registered Nov. 14, 2000). Registration with the USPTO is sufficient to demonstrate 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).”). Therefore, the Panel may find that the Complainant has rights in the YAHOO! mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <yahoofinanceapi.com> domain name is confusingly similar to Complainant’s mark as Respondent merely removes the exclamation point from the mark and adds the generic terms “finance” and “api” and the “.com” gTLD. Removing a symbol that is not reproducible in a URL does not avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Yahoo! Inc. v. HEIDI BUI, FA 1638878 (Forum Oct. 26, 2015) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Additionally, the addition of generic terms and a gTLD to a complainant’s mark is generally not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
Therefore, the Panel finds Respondent’s <yahoofinanceapi.com> domain name confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <yahoofinanceapi.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed 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 Panel may note the WHOIS of record identifies the Respondent as “Pavel Seliverstov” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. See Verification - Registrar. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <yahoofinanceapi.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <yahoofinanceapi.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is diverting Internet users to sell them subscriptions to Complainant’s API software. Using a disputed domain name to divert internet users seeking the complainant to a respondent’s website may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Additionally, using a disputed domain name to offer products or services the respondent cannot legally offer is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Nintendo of America Inc. v. Dajana Shawn, FA 1798791 (Forum Sept. 4, 2018) (“The use of a Domain Name to promote illegal products or services is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii)).”). Here, Complainant provides screenshots of the <yahoofinanceapi.com> domain name’s resolving webpage, which contains Complainant’s mark and offer various subscriptions with access to Complainant’s copyrighted API software. See Compl. Ex. P. Therefore, the Panel may find Respondent fails to use the <yahoofinanceapi.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Therefore, the Panel finds that Respondent has rights and legitimate interests in the disputed domain name <yahoofinanceapi.com> per Policy ¶ 4(a)(ii).
Complainant argues Respondent registered and uses the <yahoofinanceapi.com> domain name in bad faith. Specifically, Respondent is attempting to attract Internet users for commercial gain and disrupt Complainant’s business by offering subscription-based access to Complainant’s copyrighted material. Registering a disputed domain name to offer Internet users illicit access to a complainant’s goods or services for commercial gain and disrupt the complainant’s business can be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Hewlett-Packard Co. v. Ali, FA 353151 (Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); Airbnb, Inc. v. Javier Boix / SQ, FA1803001778337 (Forum May 29, 2018) (Consequently, the incorporation of Complainant’s well-known trademark and the continued publication of API code obtained from an unauthorized party has the ability to disrupt Complainant’s business, which is indicative of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).).
Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the YAHOO! mark at the time of registering the <yahoofinanceapi.com> domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent includes Complainant’s mark on the resolving webpage.
The Panel therefore finds Respondent have registered and used the disputed domain name <yahoofinanceapi.com> in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoofinanceapi.com> domain name be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson, Panelist
Dated: October 26, 2021
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