Taboola.com Ltd. v. Wu Yu
Claim Number: FA2202001984066
Complainant is Taboola.com Ltd. (“Complainant”), Israel, self-represented. Respondent is Wu Yu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <apitaboolanews.com> (the “disputed domain name”), registered with Dynadot, LLC (the “Registrar”).
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.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 11, 2022; the Forum received payment on February 11, 2022.
On February 13, 2022, the Registrar confirmed by e-mail to the Forum that the <apitaboolanews.com> disputed domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. The Registrar 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 February 17, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 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@apitaboolanews.com. Also on February 17, 2022, 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 March 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Since Complainant’s founding in 2007, Complainant has been building one of the world’s largest and most advanced discovery platforms — or “search engine in reverse” — delivering personalized recommendations to over one billion unique users every month, on many of the web’s most innovative and highly-visited websites.
Complainant provides approximately 450 billion recommendations to its huge number of visitors each month on many of the web's most innovative publisher sites, including NBC, USA Today, ESPN, CBS, and Fox Sports. Employing over 1,300 individuals, Complainant has offices in many of the largest cities worldwide, for example New York, Los Angeles, London, Paris, Madrid, Berlin, Mexico City, Tel Aviv, New Delhi, Sao Paulo, Shanghai, Tokyo, Bangkok, Beijing, Seoul, Istanbul, Hong Kong and Sydney.
Complainant owns various registered trademarks with the United States Patent and Trademark Office (the “USPTO”), including, but not limited to: TABOOLA, United States Registration No. 3,481,994, registered in May, 2008, in international class 42; TABOOLA, United States Registration No. 3,554,698, registered in May, 2008, in international class 9; and TABOOLA NEWSROOM, United States Registration No. 5,394,719, registered on July 26, 2019, in international classes 35 and 42.
In addition, the Complainant claims common law rights in the TABOOLA trademark based on continuous use of the trademark in commerce since 2007. Registration of a mark is not necessary under Policy ¶ 4(a)(i) if a complainant can establish common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant must show that the mark has developed secondary meaning. See Lokai Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1763598 (Forum January 22, 2018). Here, Complainant has provided evidence of the use of the mark since 2007and that the mark has developed secondary meaning. Thus, the Panel finds that Complainant has rights in the TABOOLA Mark.
The Complainant’s foregoing common law and registered trademarks will hereby be collectively referred to as the “TABOOLA Mark”.
The disputed domain name was registered on January 16, 2022, more than fifteen years after Complainant established its trademark rights. Respondent’s disputed domain name initially resolved to a landing page with pay-per-click hyperlinks labeled “Ruby Web Development Company”, “Developer Warszawa”, and “Computer Coding Degree Online”.[i]
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has rights in the TABOOLA Mark based on its trademark registrations with the USPTO and its acquired common law rights. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). In addition, the Panel finds that the disputed domain name is confusingly similar to Complainant’s TABOOLA Mark, as it incorporates the TABOOLA Mark in its entirety, merely adding the generic abbreviation or acronym “api” (that stands for “application programming interface”) before the Mark, adding the generic term “news” after the Mark, and followed by the generic Top-Level Domain (“gTLD”) “.com. The Panel also finds that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 Panel finds that the disputed domain name is confusingly similar to the TABOOLA Mark as set forth below.
First, the Panel concurs that Complainant has common law rights in the TABOOLA Mark based on continuous use of the trademark in commerce since 2007as Complainant has shown that it established common law rights. Complainant has provided evidence of the use of the Mark since 2007 and that the Mark has developed secondary meaning.
Second, in addition, Complainant claims to have rights in the TABOOLA and TABOOLA NEWS Mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”); see also Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum December 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”).
Here, Complainant has provided this Panel with copies of its USPTO registrations for the TABOOLA Mark. Therefore, the Panel finds that Complainant has rights in the TABOOLA Mark per Policy ¶ 4(a)(i).
Third, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s TABOOLA Mark. It contains Complainant’s entire mark except for the addition of the acronym “api” (that stands for “application programming interface”) that precedes “TABOOLA” and the term “news”, that follows TABOOLA. Such alterations do not prevent the disputed domain name from being confusingly similar to the TABOOLA Mark as long as the TABOOLA Mark itself is recognizable.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum April 12, 2014) (“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”).
In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not submit a response to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond.
In support, the Panel finds that Respondent is not commonly known by the disputed domain name or any name similar to it, nor has Complainant authorized or licensed Respondent to use its TABOOLA Mark in the disputed domain name. In addition, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use.
In particular, the Panel concludes that Respondent does not use the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website initially presented users with pay-per-click links that purportedly listed third party entities that offered services competing with those of Complainant. Using a disputed domain name to resolve to a page with pay-per-click competing links does not constitute a bona fide offering of goods and services or legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (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 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).”); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy as described below.
First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, the fame of the TABOOLA Mark, which was used and registered by Complainant in advance of Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the TABOOLA Mark, and this constitutes bad faith under Policy ¶ 4(a)(iii). It therefore strains credulity to believe that Respondent had not known of the Complainant or its TABOOLA Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant’s trademarks before registering a domain name is sufficient to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Third, the Panel concludes that Respondent registered and is using the disputed domain name for bad faith disruption of the Complainant’s business for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to host parked, pay-per-click competing links is generally considered evidence of bad faith disruption for commercial gain. See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum August 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <apitaboolanews.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panel
Dated: March 23, 2022
[i] As of the writing of this Decision, however, the disputed domain name resolves to error pages with no substantive content.
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