Yahoo! Inc. v. Sebastian Müller / Privacy Guard
Claim Number: FA1108001403853
Complainant is Yahoo! Inc. (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington, D.C., USA Respondent is Sebastian Müller / Privacy Guard (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <removeyahoo.com>, registered with PSI-USA, Inc. d/b/a Domain Robot.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2011; the National Arbitration Forum received payment on August 18, 2011.
On August 19, 2011, PSI-USA, Inc. d/b/a Domain Robot confirmed by e-mail to the National Arbitration Forum that the <removeyahoo.com> domain name is registered with PSI-USA, Inc. d/b/a Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. d/b/a Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. d/b/a Domain Robot 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 August 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 2011 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@removeyahoo.com. Also on August 23, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <removeyahoo.com> domain name is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <removeyahoo.com> domain name.
3. Respondent registered and used the <removeyahoo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc., is a digital media company, covering news, shopping, photo sharing and finance and providing e-mail service. Complainant has registered its YAHOO! mark multiple times with the United States Patent and Trademark Office (“USPTO”) and the German Patent and Trademark Office (“GPTO”):
USPTO
Reg. No. 2,040,222 registered February 25, 1997;
Reg. No. 2,040,691 registered February 25, 1997;
Reg. No. 2,187,292 registered September 8, 1998;
Reg. No. 2,403,227 registered November 14, 2000; &
GPTO
Reg. No. 1,076,181 registered June 7, 2000.
Respondent, Sebastian Müller / Privacy Guard, registered the <removeyahoo.com> domain name on August 20, 2008. The disputed domain name directs Internet users to a website entitled “UCEPROTECT-NETWORK,” which provides information on eliminating spam.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 an effort to protect its distinctive mark, Complainant has registered the YAHOO! mark with both the USPTO and the GPTO and provided evidence of these registrations:
USPTO
Reg. No. 2,040,222 registered February 25, 1997;
Reg. No. 2,040,691 registered February 25, 1997;
Reg. No. 2,187,292 registered September 8, 1998;
Reg. No. 2,403,227 registered November 14, 2000; &
GPTO
Reg. No. 1,076,181 registered June 7, 2000.
In LFP Video Group LLC v. Deep, FA 1154133 (Nat. Arb. Forum April 17, 2008), the panel found that complainant had proven rights in the BARELY LEGAL mark by providing evidence of its trademark registration with the USPTO, the UKIPO, the GPTO, IP Australia, and CIPO. Similarly, the panel found that a complainant could secure rights in a mark with numerous registrations with trademark authorities around the world in Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004). Based on Complainant’s provided evidence and these past decisions, the Panel concludes that Complainant has established rights in the YAHOO! mark for the purposes of Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <removeyahoo.com> domain name is confusingly similar to Complainant’s YAHOO! mark because the domain name is comprised solely of Complainant’s mark without the exclamation point, the generic term “remove,” and the generic top-level domain (“gTLD”) “.com.” Panels have previously discussed the effect of added generic terms in Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), and Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001), concluding that they did not remove a disputed domain name from the realm of confusing similarity. Panels have also found that removing punctuation, like the exclamation point, and adding a gTLD does not distinguish a disputed domain name. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel thus holds that Respondent’s <removeyahoo.com> domain name is confusingly similar to Complainant’s YAHOO! mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate its rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has adequately established a prima facie case in these proceedings. Since Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights and legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) ( finding that “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel elects to consider the evidence in the record and determine whether Respondent owns any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i).
Complainant alleges that Respondent is not, and never has been, commonly known by the <removeyahoo.com> domain name. Complainant asserts that neither the name of Respondent, Sebastian Müller, nor the business name associated with Respondent, Privacy Guard, bears any similarity to the YAHOO! mark or disputed domain name. The Panel finds that the WHOIS information, listing the registrant as “Sebastian Müller / Privacy Guard,” and the lack of other information in the record support a finding that Respondent has no rights and legitimate interests in the disputed domain name, as it is not commonly known by the <removeyahoo.com> domain name according to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Complainant argues that Respondent’s <removeyahoo.com> domain name resolves to a website entitled “UCEPROTECT-NETWORK,” which provides information on eliminating spam, a service also provided by Complainant. Complainant alleges that using the disputed domain name to redirect consumers to Respondent’s competing website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that since it offers anti-spam services, Respondent’s resolving website that also provides information on eliminating spam competes with Complainant and disrupts Complainant’s business by diverting Complainant’s potential customers away from Complainant’s own website. The panel found in Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001), that a competitive relationship between a complainant and respondent suggested that the respondent had the intent to disrupt complainant’s business. In Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006), the panel also held that creating competition under a confusingly similar domain name supported a finding of Policy ¶ 4(b)(iii) bad faith. The Panel accordingly determines that Respondent’s actions at the <removeyahoo.com> domain name illustrate bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant does not allege Respondent’s bad faith under ¶ 4(b)(iv) of the Policy. By providing or advertising competing anti-spam services at the disputed domain name, however, the Panel concludes that Respondent intended to profit in some manner from its use of the disputed domain name. The Panel infers that Respondent intentionally registered the disputed domain name containing Complainant’s well-known YAHOO! mark to generate higher traffic to the resolving website and create a likelihood of confusion as to the source, sponsorship, or affiliation of Respondent’s website. Based on the available evidence and these logical inferences, the Panel determines that Respondent’s actions demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Complainant also argues that Respondent undoubtedly registered the <removeyahoo.com> domain name with actual knowledge of Complainant’s rights in the YAHOO! mark because the mark is internationally famous and is registered in the U.S. and in Germany. While constructive notice is generally not sufficient for a finding of bad faith, if the Panel finds that Respondent did have actual notice of Complainant’s mark, the Panel may conclude that Respondent registered the disputed domain name in bad faith. Here, the Panel infers that due to the extent of the fame enjoyed by Complainant’s mark, Respondent did in fact register the disputed domain name while knowing of Complainant’s mark, thus exhibiting bad faith registration under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <removeyahoo.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 29, 2011
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