Yahoo! Inc. v. amir zardadi
Claim Number: FA1203001432972
Complainant is Yahoo! Inc. (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is amir zardadi (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahootar.com>, registered with OnlineNic, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 5, 2012; the National Arbitration Forum received payment on March 5, 2012.
On March 6, 2012, OnlineNic, Inc. confirmed by e-mail to the National Arbitration Forum that the <yahootar.com> domain name is registered with OnlineNic, Inc. and that Respondent is the current registrant of the name. OnlineNic, Inc. has verified that Respondent is bound by the OnlineNic, 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 March 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 2012 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@yahootar.com. Also on March 6, 2012, 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 April 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <yahootar.com> domain name, the domain name at issue, is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
Complainant owns numerous trademark registrations for its mark, YAHOO! around the world, including but not limited to federal trademark registrations in the United States, such as Registration No. 2,403,227, first used June 1994, filed August 13, 1998, issued November 14, 2000, covering telecommunications services, online computer services for a wide range of general interest information, online advertising and retail services, transportation services, and computer software in International Classes 38, 42, 35, 39, and 9; Registration No. 2,040,222, first used June 1, 1994, filed January24, 1996, issued February 25, 1997, covering online computer services including creating indexes of information and providing online reference materials, software, books, and advertising services in International Classes 42, 9, 16, and 35; Registration No. 2,187,292, first used September 22, 1997, filed February 28, 1997, issued September 8, 1998, covering online computer services in International Class 35; and Registration No. 2,040,691, first used January 2, 1996, filed April24, 1996, issued February 25, 1997, covering online computer services including creating indexes of information and providing online reference materials in International Class 42.
Respondent has not been licensed or otherwise authorized by Complainant to use the YAHOO! mark or any part thereof and Respondent is not commonly known by the domain name at issue. On September 15, 2009, Respondent registered the domain name at issue, long after Complainant’s multiple registrations of the YAHOO! trademark. Following the registration of <yahootar.com>, Respondent directed it to a website which provides news and information that was prominently entitled “YAHOOTAR”. The website also provides, in its left-side column, many links to other “Health News” and “News” websites through which Respondent receives click-through fees when users click on such links. Consumers are likely to become confused when they see the domain name in dispute and its website because they will believe that the website and links are approved of, sponsored by, or otherwise associated with YAHOO!.
DISCUSSION
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 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.”).
Complainant owns USPTO trademark registrations for its YAHOO! mark (e.g., Reg. No. 2,040,222 registered Feb. 25, 1997). Complainant’s USPTO trademark registrations are evidence that Complainant holds rights to its YAHOO! mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Complainant’s trademark registrations suffice to prove it owns rights in the mark under Policy ¶ 4(a)(ii) even though the mark is not registered in the country where Respondent is located. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <yahootar.com> domain name is confusingly similar to Complainant’s YAHOO! mark. The disputed domain name omits the exclamation point from the YAHOO! mark and adds a generic top-level domain (“gTLD”). Using Complainant’s mark without the punctuation and adding a gTLD does not distinguish a disputed domain name from a mark. 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 Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The disputed domain name adds the generic term “tar” to Complainant’s mark. Because the disputed domain name is in Persian, the Persian definition of “tar” is a long-neck Iranian musical instrument similar to a lute. Adding a generic term does not distinguish a disputed domain name from a mark. See Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to the complainant’s marks and likely to mislead Internet users into believing that products and services offered by the respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark). The Panel finds that Respondent’s <yahootar.com> is confusingly similar to Complainant’s YAHOO! mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not commonly known by the <yahootar.com> domain name and that it did not authorize Respondent to use Complainant’s YAHOO! mark. The WHOIS information identifies “amir zardadi” as the registrant of the <yahootar.com> domain name. A respondent is not commonly known by a disputed domain name if the WHOIS information is not similar to the disputed domain name and if the complainant has not authorized the respondent to register the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent is not using the <yahootar.com> domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a website that provides news and information in direct competition with Complainant’s news and information services, along with pay-per-click links to other related content. The offering of goods and services similar to those offered by Complainant, along with the display of pay-per-click links to related content, is evidence that Respondent is not making a bona fide offering of goods or services or a noncommercial or fair use of the disputed domain name. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds that Respondent’s use of the disputed domain name to offer links and services in direct competition with Complainant is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <yahootar.com> domain name.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent registered and is using the <yahootar.com> domain name for the purpose of disrupting Complainant’s business. Respondent uses the goodwill of Complainant’s YAHOO! mark to divert Internet traffic meant for Complainant’s websites to Respondent’s own news and information-related websites. Using a disputed domain name to divert Internet users to a website that is in open and direct competition with a complainant’s services is evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). Consequently, the Panel finds that Respondent’s registration and use of the <yahootar.com> domain name illustrates bad faith under Policy ¶ 4(b)(iii).
Respondent is commercially benefiting from Internet users’ confusion as to Complainant’s affiliation with the disputed domain name. Respondent uses the disputed domain name to attract consumers seeking Complainant and create confusion. The links displayed on the resolving website are monetized and therefore generate profit for Respondent. Using Complainant’s mark to attract Internet users to a competing website with pay-per-click links for Respondent’s own profit is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)). Respondent is commercially benefitting from such competing use and Respondent’s registration and use of the <yahootar.com> domain name was in bad faith under Policy ¶4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahootar.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 7, 2012
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