Taboola.com Ltd. v. Dmitrii Vassilev
Claim Number: FA2204001992853
Complainant is Taboola.com Ltd. (“Complainant”), represented by Taboola.com Ltd., Israel. Respondent is Dmitrii Vassilev (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tabola.net>, registered with DropCatch.com 995 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.
Jonathan Agmon as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 19, 2022; the Forum received payment on April 19, 2022.
On April 19, 2022, DropCatch.com 995 LLC confirmed by e-mail to the Forum that the <tabola.net> domain name is registered with DropCatch.com 995 LLC and that Respondent is the current registrant of the name. DropCatch.com 995 LLC has verified that Respondent is bound by the DropCatch.com 995 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 April 20, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 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@tabola.net. Also on April 20, 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.
A timely Response was received and determined to be complete on May 9, 2022.
On May 16, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jonathan Agmon 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.
A. Complainant
Complainant argues that the disputed domain name is confusingly similar to its registered TABOOLA mark as the disputed domain name comprises of the TABOOLA mark with the omission of the letter “O” and the generic Top-Level Domain (“gTLD”) “.net”.
Complainant also argues that Respondent has no rights or legitimate interests in respect of the disputed domain name as it has not licensed or permitted Respondent to use any of its trademarks or register the disputed domain name.
Complainant further argues that the disputed domain name was registered and is using used in bad faith as Respondent was well aware of Complainant and its TABOOLA mark at the time of registration of the disputed domain name and there is no plausible good faith to which the disputed domain name can be put to.
B. Respondent
Respondent has submitted a Response to Complainant’s contentions, arguing that Complainant’s registered trademark rights are irrelevant in terms of jurisdiction, that Respondent has legitimate rights and interests in the disputed domain name and that Respondent had no knowledge of Complainant prior to the proceedings.
Complainant, Taboola.com Ltd., was founded in 2007. Complainant states that it is the world’s leading content discovery platform, serving 450 billion recommendations to over 1 billion unique visitors each month on publisher sites such as NBC, USA Today, ESPN, CBS and Fox Sports. Complainant also states that it has been building the world’s largest and most advanced discovery platform or “search engine in reverse” to deliver personalized recommendations to users. The global reach of Complainant as measured by Comscore is 41.5%, ahead of Facebook and second to Google. Complainant and its affiliates currently employ over 1,300 people with offices in New York, Los Angeles, London, Paris, Madrid, Berlin, Mexico City, Tel Aviv, New Delhi and so forth.
Complainant owns the following word and device trademark registrations of TABOOLA and variations thereof:
- U.S. trademark registration for “TABOOLA” (Registration No. 3,481,994) registered on August 5, 2008;
- U.S. trademark registration for “TABOOLA” (Registration No. 3,554,698) registered on December 30, 2008;
- U.S. trademark registration for “Taboola EngageRank” (Registration No. 4,094,219) registered on January 31, 2012;
- U.S. trademark registration for “[IMAGE OF TABOOLA MARK OMITTED]” (Registration No. 5,189,039) registered on April 25, 2017;
- U.S. trademark registration for “TABOOLA NEWSROOM” (Registration No. 5,394,719) registered on February 6, 2018;
- U.S. trademark registration for “TABOOLA FEED” (Registration No. 5,742,965) registered on May 7, 2019;
- U.S. trademark registration for “TABOOLA NEWS” (Registration No. 5,989,377) registered on February 18, 2020; and
- U.S. trademark registration for “[IMAGE OF TABOOLA NEWS MARK OMITTED]” (Registration No. 5,991,226) registered on February 18, 2020.
Complainant also owns registration of the domain name <taboola.com> which was registered on February 21, 2007.
Respondent appears to be an individual based in Seychelles who purchases and parks domain names. The disputed domain name <tabola.net> was registered on March 28, 2022 and resolved to a parking page with competing third-party pay-per-click (“PPC”) links relating to marketing tools and services.
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.
Paragraph 4(a)(i) of the Policy requires Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate. Complainant is the owner of the registered U.S. trademarks for “TABOOLA”.
Complainant asserts that the disputed domain name incorporates its mark with the omission of the letter “O” and addition of the gTLD “.net” which are insufficient to avoid the finding of confusing similarity.
Respondent argues that unless Complainant’s clientele has bad typing habits, they will not type the disputed domain name into the browser instead of <taboola.com>, therefore there is no issue of confusing similarity. Respondent also argues that Complainant’s ownership of registered trademarks in countries where neither Complainant nor Respondent is located is irrelevant in this proceeding.
The legal test under UDRP Policy 4(a)(i) is whether the domain name itself is identical or confusingly similar to a trademark of service mark in which Complainant has rights. It is well established that the addition or subtraction of a letter from a disputed domain name would not prevent in most cases a finding of confusing similarity under the first element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Past Panelists have found that such changes are not typically sufficient to distinguish a domain name from an incorporated mark. See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trademark pursuant to the Policy.”). It is also established that an addition of a gTLD to a trademark is irrelevant in the analysis under Paragraph 4(a)(i) of the Policy.
In the present case, there is confusing similarity between Complainant’s registered trademark and Respondent’s disputed domain name as the latter consists of Complainant’s TABOOLA mark with the omission of the letter “O” and a gTLD “.net”. The omission of the letter “O” does not serve to sufficiently distinguish the disputed domain name from the registered trademark of Complainant. Respondent’s argument is rejected on the basis that “TABOOLA” is confusingly similar to Complainant’s “TABOLA” mark and gTLD is viewed as a standard registration requirement and as such disregarded under this first element of confusing similarity test. See WIPO Overview 3.0, section 1.11.
It is also well established that where a complainant holds a nationally or regionally registered trademark, the threshold requirement of having trademark rights for the purposes of standing to file a UDRP case is prima facie satisfied. See VKR Holding A/S v. Li Pinglong, WIPO Case No. D2016-2269; WIPO Overview 3.0, section 1.2.1. Therefore, Respondent’s further argument is legally incorrect as Complainant has standing to commence this proceeding by virtue of its registered U.S. trademark rights and the Panel notes that Respondent has not submitted any evidence of trademark rights in relation to the disputed domain name to dispute Complainant’s registered trademark rights.
Therefore, the Panel finds that Respondent’s <tabola.net> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
In the present case, Complainant has demonstrated a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name through providing evidence of its trademark registrations and use of the TABOOLA trademarks well before Respondent registered the disputed domain name.
Complainant has also showed that Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the TABOOLA mark in any way. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017). Respondent does not dispute these facts.
Once Complainant establishes a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to Respondent to show that it has rights or legitimate interests in respect of the disputed domain name. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy 4(a)(ii)); Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 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”); WIPO Overview 3.0, section 2.1.
Complainant also argues that the Respondent’s webpage which displayed third-party PPC links to competing marketing services shows that Respondent is aware of Complainant and its business activities and registered the disputed domain name for the purpose of attracting potential customers of Complainant and creating the impression that Respondent’s webpage is affiliated with Complainant and thereby interfering with Complainant’s business.
Prior Panels have held that using a disputed domain name to deceive Internet users as to the affiliation between a respondent and complainant to sell competing goods or services 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 Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”); see also Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant provided evidence showing that the <tabola.net> domain name’s resolving webpage shows several third-party PPC links to “Low Cost Marketing Ideas”, “Web Marketing Agency”, “Easy Marketing Tools”, “Social Media Marketing Tips”, just to name a few. See Amended Complaint, Annex O. The disputed domain name “Tabola.net” is also displayed at the top left corner of the webpage.
Under UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark (see WIPO Overview 3.0, section 2.9).
In the present case, the disputed domain name <tabola.net> does not consist of a generic word or an actual word with dictionary meaning. It is also not used to host PPC links genuinely related to any dictionary meaning of the word in the domain name. The PPC links, which relate to marketing tools and services, appear to compete with and trade off Complainant’s TABOOLA trademark. Respondent’s argument that PPC links are selected solely based on Internet users visiting a domain name was not supported by any evidence and the Panel’s research shows that a domain name owner may very well control the PPC links appearing on the website. Although Respondent states that he purchases and park domain names to generate traffic from backlinks and therefore has legitimate rights and interests in the disputed domain name, the sole piece of evidence provided by Respondent, an Excel sheet, does not support this argument. Respondent did not provide any explanation as to the significance or meaning of each item in the Excel sheet, which is supposedly a “domain backlink profile export from MajesticSEO service”. While the Panel is not obliged to do so, the Panel has conducted random searches of the backlinks provided and did not find the disputed domain name identified in any of the substantive backlinks therein. Further, Respondent did not show any demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The Excel sheet simply shows that the disputed domain name was allegedly identified in several “Alexa top domain list” sources.
Therefore, the Panel finds that Respondent has failed to use the <tabola.net> 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).
Having reviewed the evidence submitted by Complainant and Respondent, the Panel finds that Respondent failed to show he has rights or legitimate interests in the disputed domain name. Respondent is neither known by the disputed domain name nor is he authorized or licensed by Complainant to use the disputed domain name.
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(a)(iii) of the Policy requires Complainant to show that Respondent registered and is using the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
Finding of registration and use in bad faith requires a showing that Respondent is taking an unfair advantage or otherwise abusing the complainant’s mark. See WIPO Overview 3.0, section 3.1. UDRP paragraph 4(b) provides non-exclusive scenarios that constitute evidence of a respondent’s bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
Complainant centers its arguments on UDRP paragraph 4(b)(iv).
Respondent asserts that he is unaware of Complainant and that he purchased and park the disputed domain name as it had some traffic from backlinks. However, given the PPC links appearing on the website under the disputed domain name, it is highly improbable for Respondent to credibly claim to have been unaware of Complainant and/or its mark. Respondent gave no evidence of having a legitimate purpose for registering the disputed domain name. In the particular circumstances of the present case, the Panel is prepared to infer that Respondent knew or should have known that the registration of the disputed domain name would be confusingly similar to Complainant’s mark. See Asda Stores, Ltd., Wal-Mart Stores, Inc. v. HC a/k/a Henry Chimanzi, WIPO Case No. D2014-2256; WIPO Overview 3.0, section 3.2.2. The evidence submitted by Respondent did not show that Respondent is a trader of domain names or a professional domainer and from the other end Complainant submitted evidence of its ownership of registered trademark rights in TABOOLA since 2008 and of its domain name since 2007 while Respondent did not submit any evidence to refute Complainant’s prima facie case. Therefore, the Panel considers it reasonable to infer that Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to her website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Based on the evidence presented to the Panel and the total circumstances of this case, including the close similarity between Complainant’s registered trademark and the disputed domain name, the distinctiveness of Complainant’s registered trademark, the registration of the disputed domain name long after the registration of Complainant’s marks and the long use of Complainant’s mark on similar services, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tabola.net> domain name be TRANSFERRED from Respondent to Complainant.
Jonathan Agmon, Panelist
Dated: May 24, 2022
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