Yahoo! Inc. v. Whois Privacy Protection Service, Inc. / Whois Agent and Profile Group
Claim Number: FA1206001450606
Complainant is Yahoo! Inc. (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington, D.C., USA. Respondents are Whois Privacy Protection Service, Inc. / Whois Agent and Profile Group (“Respondents”), represented by Gary Hammock of Profile Group, Wilmington, Delaware.[1]
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hottestflickrgirls.com>, registered with Enom, Inc.
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.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2012; the National Arbitration Forum received payment on June 26, 2012.
On June 26, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <hottestflickrgirls.com> domain name is registered with Enom, Inc. and that Respondent Profile Group is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the ENOM, 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 June 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 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@hottestflickrgirls.com. Also on June 26, 2012, 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 July 16, 2012.
A timely Additional Submission was received from Complainant on July 23, 2012; and a timely Additional Submission was received from Respondent on July 27, 2012. Both of these documents have been deemed to be compliant according to the Forum's Supplemental Rule #7.
On July 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Douglas M. Isenberg 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
In its Complaint, Complainant contends, in relevant part, as follows:
· Complainant, “the premier digital media company in the world,” owns “numerous trademark registrations for FLICKR around the world,” including U.S. Reg. No. 3,455,275 (first used in commerce on February 28, 2004; filed on May 10, 2005; and registered on June 24, 2008) for use in connection with, inter alia, “computer software for uploading, manipulating, and enhancing digital content, documents, photographs, images, video, and audio”; and the domain name <flickr.com>.
· “FLICKR is the number one rated photo website globally and in the United States,” reaching more than 67.5 million unique visitors and 143.4 million total visits in January 2012.
· The Disputed Domain Name was created on January 13, 2008, and has been used in connection with a website that “displays an adult-oriented photograph, provides links to explicit or pornographic content including ‘GIRLS PORN’, searching services, and states ‘This domain may be for sale’ with a further link to ‘Buy this Domain’.”
· The Disputed Domain Name is confusingly similar to the FLICKR trademark because the domain name contains the trademark in its entirety plus “generic or descriptive terms” that “do not sufficiently distinguish the Disputed Domain Name from the FLICKR Mark.”
· Respondent has no rights or legitimate interests in the Disputed Domain Name because, inter alia, “Respondent is not and has never been commonly known by the Disputed Domain Name”; “Complainant has not authorized the Respondent to use its FLICKR Mark”; “Respondent undoubtedly receives click-through fees” when Internet users click the links on the website using the Disputed Domain Name, which is not a legitimate noncommercial or fair use; “[e]vidence of adult-oriented material is further affirmation that Respondent lacks rights and legitimate interests in respect of” the Disputed Domain Name; and Respondent registered the Disputed Domain Name “with the intention of selling [it] to the trademark holder,” that is, Complainant.
· Respondent registered and uses the Disputed Domain Name in bad faith because, inter alia, “Respondent undoubtedly registered the Disputed Domain Names in bad faith with actual knowledge of Complainant’s rights in its FLICKR Mark because Complainant’s FLICKR Mark is internationally famous and is registered in the United States”; Respondent has “engaged in a pattern of bad-faith registration and use, as shown by a number of decisions against Respondent under the Policy, including one decision brought by Complainant, Yahoo! Inc. v. Whois Privacy Protection Service, Inc. c/o Whois Agent, NAF Claim No. 412705 (<yahoomusic.com>), and others brought by such well-known companies as the American Heart Association, Disney, Kohler, Bank of America, Priceline and Seagate; “registering a domain name that incorporates another party’s trademark, with the intention of selling the domain name to the trademark holder, is sufficient evidence of bad faith in and of itself”; “[u]se of a domain name that is confusingly similar to a mark in which a complainant has rights to post or link to pornography has been consistently found to be bad faith registration and use”; “Respondent had the clear goal to disrupt the business of the previously-existing FLICKR websites by diverting Internet traffic meant for Complainant’s websites to Respondent’s website”; and “[b]y registering a confusingly similar domain name to Complainant’s Mark to host a commercial website at that domain name, Respondent had the clear goal to attract Internet Users to Respondent’s commercial website for commercial gain by creating a likelihood of confusion with” the FLICKR trademark.
B. Respondent
In its Response, Respondent contends, in relevant part, as follows:
· Complainant has identified the incorrect Respondent, because Whois Privacy Protection Service, Inc. is “a privacy service, not the registered name holder” of the Disputed Domain Name, and “Profile Group is the registered name holder” and “proper Respondent.”
· “Respondent takes active measures to avoid its attainment and/or retention of registrations of domain names that infringe third party rights, or that it has reason to believe may infringe third party rights.”
· “Respondent never received any communication from Complainant prior to its filing the UDRP complaint…. Had Respondent received [a] demand letter, Respondent would have immediately reviewed it and addressed Complainant’s concerns in a timely and appropriate fashion.”
· Since receiving the Complaint, Respondent contacted Complainant and “offered to promptly grant Complainant’s requested remedy stipulated in the Complaint and transfer the Domain to Complainant.” Counsel for Complainant rejected this offer.
· “Respondent respectfully requests that the Panel dismiss the complaint inasmuch as Respondent has acted only in good faith. Upon dismissal, Respondent agrees to immediately transfer the Domain to Complainant.”
C. Additional Submission from Complainant
In its Additional Submission, Complainant contends, in relevant part, as follows:
· “Profile Group is not the registrant listed in the WHOIS record of the Disputed Domain Name nor its authorized representative. Respondent has provided no evidence that it is the registrant of the Disputed Domain Name or that it controls or manages such domain or that it is the authorized representative of the registrant. Accordingly, the Response and all facts and arguments within the Response should be disregarded by the Panel and given no weight, because Respondent is not the registrant of the Disputed Domain Name or its authorized representative. Thus, the registrant should be found not to have filed a Response and to have defaulted…. The UDRP does not have a provision for third parties to submit responses in a dispute proceeding.”
· “[T]here is no authority for the proposition that because Respondent has or is subject to an anti-infringement policy that it should be absolved of all bad faith, and Respondent cannot point to any. Indeed, this fact is completely irrelevant in a UDRP proceeding.”
· “Complainant sent two emails complaining of the infringing nature of the Disputed Domain Name and requesting its transfer to the listed registrant of the Disputed Domain Name in the WHOIS shortly after becoming aware of the Disputed Domain Name in November 2011.”
· “Respondent’s “use of a privacy protection service to hide its identity and change its contact information is further evidence of its bad faith.”
· Respondent’s offer to transfer the Disputed Domain Name to Complainant, after the filing of the Complaint, is “an obvious ploy to avoid adverse findings by the Panel.”
· Complainant responded to Respondent’s offer to transfer the Disputed Domain Name by submitting a counteroffer “that would include terms that Profile Group represent and warrant that they will not register any future domain names containing Complainant’s mark in the future.”
D. Additional Submission from Respondent
In its Additional Submission, Respondent contends, in relevant part, as follows:
· “[I]t is Respondent’s understanding that the dispute resolution service provider (in this instance, the FORUM), sends out a WHOIS verification request to the registrar of a disputed domain name, and the registrar then confirms the identity of the actual registrant. In the instant case… the FORUM clearly confirmed through its Written Notice of Complaint that Profile Group is the proper Respondent in this matter.”
· “Respondent has no affiliation with” the entity Complainant contacted prior to filing the Complaint, so Respondent “would not have been the recipient of” any such communications.
· Complainant’s counteroffer regarding a transfer of the Disputed Domain Name following the filing of the Complaint was “unreasonable.”
· “[B]oth Complainant and Respondent agree that the Disputed Domain Name should be transferred to Complainant. Accordingly, the Panel’s decision to transfer the Disputed Domain Name to Complainant without making a formal finding that the Respondent acted in bad faith would not ‘subvert the purpose of the UDRP,’ but would instead be wholly in accordance with the spirit of it.”
Given a discrepancy between the Whois record for the Disputed Domain Name (dated June 25, 2012) provided with the Complaint, identifying the registrant of the Disputed Domain Name as “Whois Privacy Protection Service, Inc. / Whois Agent,” and the Registrar’s verification to the Forum (dated June 26, 2012), identifying the registrant of the Disputed Domain Name as “Profile Group,” it appears as if the registrant of the Disputed Domain Name was changed upon filing of the Complaint. This is a not uncommon occurrence that often has been identified as a type of “cyberflight” intended to frustrate proceedings under the Policy. In such circumstances, many panels have proceeded with both entities identified as Respondents, particularly where, as here, the first Respondent purports to identify a privacy service.[2] This is the course that this Panel follows. (References in this decision to “Respondent” or “Respondents” are intended to refer to either or both of the registrants, as the context may require.) Accordingly, the Panel denies Complainant’s request to disregard the documents submitted by Respondent in this proceeding.
Further, the Panel rejects Respondent’s request – in light of its offer to transfer the Disputed Domain Name to Complainant – that the Panel either dismiss this proceeding or refrain from making a finding on the issue of bad faith. The Panel agrees with the decision cited by Complainant, The Weather Underground, Inc. v. Domain Administrator / PortMedia, FA 1433949 (Nat. Arb. Forum May 9, 2012), that “the ‘consent-to-transfer’ approach is but one way for cybersquatters to avoid adverse findings against them” and, therefore, is not appropriate, especially where, as here, the Complainant does not accept the Respondent’s offer.
The Panel finds that the Disputed Domain Name is confusingly similar to the FLICKR trademark, that Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Disputed Domain Name was 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."
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.
Based upon the trademark registration cited by Complainant, it is apparent that Complainant has rights in and to the FLICKR trademark. This conclusion is consistent with at least one previous decision under the Policy, Yahoo! Inc. v. Value Domain c/o Value-Domain Com and Digirock, Inc., FA 1260975 (Nat. Arb. Forum June 18, 2009) (transfer of <flickr.org> and <wallpaper-flickr.com>), and has not been contested by Respondent.
As to whether the Disputed Domain Name is identical or confusingly similar to the FLICKR trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “hottestflickrgirls”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ¶ 1.2 (“WIPO Overview 2.0”) (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
The addition of certain words, as here (that is, “hottest” and “girls”), do not necessarily negate a finding of confusing similarity. Indeed, in a previous decision under the Policy cited by Complainant, Skype v., FA 1431445 (Nat. Arb. Forum May 4, 2012), a panel found the domain name <skypehotgirls.com> confusingly similar to the trademark SKYPE. In that decision, the panel said that the words “hot” and “girls” were “generic/descriptive” and “do[] not sufficiently distinguish the at-issue domain name from Complainant’s mark.” This Panel agrees, and the Respondent has not disputed that the domain name in this case, <hottestflickrgirls.com> is confusingly similar to the FLICKR trademark.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Complainant has argued that Respondent has no rights or legitimate interests in the Disputed Domain Name for a number of reasons, including those set forth above. Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph ¶ 2.1. Here, Respondent has not provided any allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
Accordingly, as a result of Complainants’ allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, the Panel agrees with the decisions cited by Complainant that registering and using a domain name that is confusingly similar to a well-known trademark in connection with an adult website constitutes bad faith under the Policy, including paragraphs 4(b)(iii) and 4(b)(iv). See Yahoo! Inc. v. Igor N., FA 1240854 (Nat. Arb. Forum Feb. 12, 2009) (“links to adult-oriented websites [are] evidence of bad faith registration and use”); see also Wells Fargo & Co. v. Party Night Inc. & Carrington, FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (“redirect[ing] Internet users to adult-oriented websites is further evidence of bad faith”).
Accordingly, the Panel is satisfied that Complainant has proven the third element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hottestflickrgirls.com> domain name be TRANSFERRED from Respondent to Complainant.
Douglas M. Isenberg, Panelist
Dated: August 8, 2012
[1] With respect to the identity of the Respondent, see the discussion below, under the heading “Procedural Matters.”
[2] See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ¶ 4.9 (“Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant.”)
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