Taboola.com Ltd. v. Sean Taylor, Adknown Inc
Claim Number: FA2112001977402
Complainant is Taboola.com Ltd. (“Complainant”), represented by Taboola.com Ltd., Israel. Respondent is Sean Taylor, Adknown Inc (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <taboola.plus>, registered with NameCheap, Inc.
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 December 16, 2021; the Forum received payment on December 16, 2021.
On December 16, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <taboola.plus> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 December 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2022 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@taboola.plus. Also on December 20, 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 January 13, 2022, 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 provides users with a search engine, designing and delivering personalized recommendations on websites.
Complainant asserts rights in the TABOOLA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <taboola.plus> is identical or confusingly similar to Complainant’s TABOOLA mark, as it incorporates the mark in its entirety, only adding the “.plus” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the at-issue domain name. Complainant has not authorized or licensed Respondent to use the TABOOLA mark, nor is Respondent commonly known by the at-issue domain name. Further, Respondent is not using the domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the domain name resolves to a website that provides hyperlinks related to Complainant.
Respondent registered and uses the <taboola.plus> domain name in bad faith. Respondent disrupts Complainant’s business by using a confusingly similar domain name and presenting users with competing hyperlinks. Additionally, Respondent had actual notice of Complainant’s rights in the mark, evidenced by Respondent’s use of Complainant’s entire mark, as well as Complainant’s fame and notoriety.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the TABOOLA trademark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the TABOOLA trademark.
Respondent uses the at-issue domain name to address a website displaying links to services that compete with Complainant.
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 shows that it has a USPTO trademark registration for its TABOOLA mark. Complainant’s national registration of its TABOOLA mark is sufficient to demonstrate 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 <taboola.plus>domain name contains Complainant’s TABOOLA trademark followed by a domain name-necessary top-level name, here “.plus”. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <taboola.plus> domain name from Complainant’s TABOOLA trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <taboola.plus> domain name is confusingly similar to Complainant’s trademark. See Medline Industries, Inc. v. Jinkon / 胡雪, FA 1925299 (Forum Jan. 25, 2021) (finding the <medline.plus> domain name confusingly similar to the MEDLINE mark because it simply adds the “.plus” gTLD); see also Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”).
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. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the at-issue domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark into any domain name).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Sean Taylor, Adknown Inc” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <taboola.plus> domain name or by TABOOLA. The Panel therefore concludes that Respondent is not commonly known by the <taboola.plus> domain name for the purposes of Policy ¶ 4(c)(ii). See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”); see also Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.).
Additionally, Respondent currently uses the <taboola.plus> domain name to display links to Complainant’s competition. Respondent’s use of the confusingly similar domain name indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows 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).”); see also Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”).
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).
Respondent’s <taboola.plus> domain name was registered and used in bad faith.
First and as mentioned above regarding Respondent’s rights and legitimate interests, Respondent’s confusingly similar <taboola.plus> domain name is used to present links to Complainant’s competition. Doing so is disruptive to Complainant’s business. Furthermore, the confusingly similar domain name falsely implies a connection between Respondent and Complainant. Respondent’s registration and use of <taboola.plus> thus indicates Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent uses pay-per-click hyperlinks on the resolving website, which redirects users to competing websites. The use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).”); see also, Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use).
Moreover, Respondent registered <taboola.plus> knowing that Complainant had trademark rights in the TABOOLA mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark; from Respondent’s incorporation of Complainant’s entire trademark into the at-issue domain name; and from Respondent’s use of the domain name to present competitive hyperlinks. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <taboola.plus> domain name in 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 Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under 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 <taboola.plus> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 14, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page