Oath Inc. v. This domain is for Sale / Robert K. Mueller
Claim Number: FA2110001971236
Complainant is Oath Inc. (“Complainant”), represented by Nichole Chollet of Kilpatrick Townsend & Stockton LLP, Georgia, USA. Respondent is This domain is for Sale / Robert K. Mueller (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahooslots.com>, registered with Dynadot, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 29, 2021; the Forum received payment on October 29, 2021.
On October 31, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <yahooslots.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 November 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 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@yahooslots.com. Also on November 4, 2021, 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 November 30, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant offers services that include web directory and search services, sports, sports betting, games, chat, e-mail, business management, and more.
Complainant has rights in the YAHOO! mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <yahooslots.com> domain name is confusingly similar to Complainant’s YAHOO! mark. Respondent incorporates the mark in its entirety, removing the exclamation point and adding the generic term “slots” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <yahooslots.com> domain name as Respondent is not commonly known by the at-issue domain name nor did Complainant authorize Respondent to use the YAHOO! mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a webpage that offers a casino game online.
Respondent registered and used the <yahooslots.com> domain name in bad faith as Respondent’s domain name resolves to an online casino game. Respondent had actual knowledge of Complainant’s rights in the YAHOO! mark due to the longstanding use and fame of the mark in commerce. Respondent has lost multiple prior UDRP cases.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in YAHOO!
Respondent is not affiliated with Complainant and is not authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the YAHOO! trademark.
Respondent’s at-issue domain name resolves to a webpage that offers an online casino game.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for its YAHOO! mark demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <yahooslots.com> domain name contains Complainant’s YAHOO! trademark, less its domain name impermissible exclamation point, followed by the descriptive term “slots.” The top-level domain name “.com” concludes the domain name. The differences between Complainant’s trademark and Respondent’s domain name fail to distinguish the domain name from Complainant’s mark for the purpose of Policy ¶ 4(a)(i). The Panel thus concludes that Respondent’s <yahooslots.com> domain name is confusingly similar to Complainant’s YAHOO! trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “This Domain is for Sale / Robert K. Mueller” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <yahooslots.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <yahooslots.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Next, Respondent has suffered prior adverse UDRP decisions. See for example, Medica Health Plans v. Robert K. Mueller / This domain is for Sale, FA2012001924073 (Forum Jan. 4, 2021) (transferring medcamember.com domain name away from Respondent) and Bittrex, Inc. v. Robert K. Mueller / This domain is for sale. For inquiries email sell@domainnamesales.com, FA1709001751666 (Forum Oct. 31, 2017) (transferring bittrex.com domain name away from Respondent). Respondent’s repeated cybersquatting evidences a pattern of domain name abuse and suggests Respondent’s bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Additionally, Respondent uses the <yahooslots.com> domain name to address a website that offers an online casino game. Respondent’s use of the domain name to resolve to a webpage that offers services unrelated to complainant’s business is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent registered and uses the <yahooslots.com> domain name to redirect internet traffic to a website hosting an online casino game. Doing so demonstrates Respondent’s bad faith registration and use per Policy ¶ 4(b)(iv). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Ricky K Wight, FA 1772363 (Forum Mar. 19, 2018) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent linked the domain name <skechersdlites.com>, which is identical to the complainant’s mark, to a gambling website).
Additionally, Respondent had actual knowledge of Complainant’s rights in the YAHOO! mark when it registered <yahooslots.com> as a domain name. Respondent’s actual knowledge is evident from the worldwide notoriety of Complainant’s YAHOO! trademark. Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s trademark rights in such domain name indicates Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahooslots.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 1, 2021
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