Yahoo! Inc. v. JOR9.COM / Rezq
Claim Number: FA1211001471070
Complainant is Yahoo! Inc. (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is JOR9.COM / Rezq (“Respondent”), Jordan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mymaktoob.com>, registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 13, 2012; the National Arbitration Forum received payment November 13, 2012.
On November 14, 2012, PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <mymaktoob.com> domain name is registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the names. PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM verified that Respondent is bound by the PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 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@mymaktoob.com. Also on November 20, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
i. Respondent is not commonly known by the disputed domain name, where the WHOIS information identifies “JOR9.COM / Rezq” as the registrant.
ii. Respondent’s disputed domain name redirects users to a competing web portal and informational commercial website.
i. Respondent registered the disputed domain name for the purpose of selling the disputed domain name.
ii. Respondent registered the disputed domain name with the intention to disrupt Complainant’s business.
iii. Respondent registered the disputed domain name to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks.
iv. Respondent had actual knowledge of Complainant’s rights in the MAKTOOB mark at the time that it registered the disputed domain name.
Complainant established that it has rights in the mark contained within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark.
Respondent registered and used 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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, Yahoo! Inc., contends that it is the premiere digital media company in the world, with content covering games, dating, news, shopping, photo sharing, and finance, among other things. Complainant argues that Maktoob.com assigned its entire interest and goodwill in the MAKTOOB marks to Complainant in 2010. Complainant asserts that it has continuously used the MAKTOOB marks in connection with its web-based products and services, since at least as early as 2000. Complainant argues that it owns and shows evidence of trademark registrations with the USPTO for the MAKTOOB mark (e.g., Reg. No. 2,563,369, registered November 1, 2000). See Complainant’s Exhibit 3. Complainant asserts that it owns and shows evidence of trademark registrations with JMIT (Reg. No. 62,062, registered January 21, 2001). See Complainant’s Exhibit 3. Complainant also contends to own various trademarks in numerous countries throughout the world. See Complainant’s Exhibit 3. The Panel finds that Complainant’s registration of the MAKTOOB mark with multiple trademark agencies throughout the world sufficiently evidences Complainant’s rights in the MAKTOOB mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant asserts that Respondent’s <mymaktoob.com> domain name is confusingly similar to Complainant’s MAKTOOB mark as it contains the MAKTOOB mark in its entirety and merely adds the generic term “my” to the disputed domain name. The Panel finds that Respondent’s addition of a generic term to the disputed domain name does not distinguish Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Complainant argues that Respondent added a gTLD to the end of its disputed domain name. The Panel finds that the addition of a gTLD does not eliminate confusing similarity under Policy ¶ 4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Therefore, the Panel finds that Respondent’s <mymaktoob.com> domain name is confusingly similar to Complainant’s MAKTOOB mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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.”).
Complainant argues that Respondent is not commonly known by the disputed domain name, where the WHOIS information identifies “JOR9.COM / Rezq” as the registrant. Complainant further asserts that nothing on Respondent’s websites nor in the record demonstrates that Respondent is commonly known by the disputed domain name. Complainant contends that it has not authorized Respondent to use its MAKTOOB marks. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent’s disputed domain name redirects users to a competing web portal and informational commercial website. Complainant asserts that Respondent’s disputed domain name provides monetized links to third parties and commercial advertisements unrelated to Complainant’s business. Complainant argues that Respondent’s disputed domain name hosts no content of its own, but instead redirects to a different domain name and website. See Complainant’s Exhibit 9. The Panel finds that Respondent’s use of the disputed domain name to provide links to third-party websites and commercial advertisements 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
Further, Complainant contends that Respondent’s offer to sell the disputed domain name to Complainant for $5,000 is also evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Complainant’s Exhibit 10. The Panel agrees and finds accordingly. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent registered the disputed domain name for the purpose of selling the disputed domain name. Complainant argues that Respondent offered to sell the disputed domain name to Complainant for $5,000, which is well above its out-of-pocket registration costs. See Complainant’s Exhibit 10. The Panel finds that Respondent’s offer to sell the disputed domain name supports findings of bad faith registration and use under Policy ¶ 4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).
Complainant also urges that Respondent registered the disputed domain name with the intention to disrupt Complainant’s business. Complainant contends that Respondent registered the disputed domain name to trade off Complainant’s goodwill in the MAKTOOB marks and to link to third parties. Complainant argues that Respondent intended to divert Internet traffic meant for Complainant’s websites to Respondent’s own website. The Panel finds that Respondent’s use of the disputed domain name to divert Internet traffic to its own website constitutes disruption and supports findings of bad faith registration and use under Policy ¶ 4(b)(iii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith).
Complainant contends that Respondent registered the disputed domain name to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks. Complainant argues that Respondent created the disputed domain name to host a competing commercial website that contains advertising and monetized links, for which Respondent presumably commercially benefits. See Complainant’s Exhibit 9. The Panel finds that Respondent’s use of the disputed domain name to host a competing website constitutes attraction for commercial gain, showing bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the MAKTOOB mark at the time that it registered the disputed domain name. Complainant argues that Complainant’s MAKTOOB mark is registered in the United States and Arabic-speaking jurisdictions throughout the world and is internationally famous. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel here finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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”).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED..
Accordingly, it is Ordered that the <mymaktoob.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 9, 2013.
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