Yahoo! Inc. v. cancelyahoo.org Private Registrant / A Happy DreamHost Customer
Claim Number: FA1306001503412
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is cancelyahoo.org Private Registrant / A Happy DreamHost Customer (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cancelyahoo.org>, registered with New Dream Network, LLC d/b/a DreamHost Web Hosting (R173-LROR).
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 5, 2013; the National Arbitration Forum received payment on June 5, 2013.
On June 20, 2013, New Dream Network, LLC dba DreamHost Web Hosting (R173-LROR) confirmed by e-mail to the National Arbitration Forum that the <cancelyahoo.org> domain name is registered with New Dream Network, LLC dba DreamHost Web Hosting (R173-LROR) and that Respondent is the current registrant of the name. New Dream Network, LLC dba DreamHost Web Hosting (R173-LROR) has verified that Respondent is bound by the New Dream Network, LLC dba DreamHost Web Hosting (R173-LROR) 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 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 2013 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@cancelyahoo.org. Also on June 19, 2013, 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 July 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
BACKGROUND FACTS
A. Yahoo! and its Services
1. Yahoo!, together with its consolidated subsidiaries, is a global technology company that provides a wide array of products and services, many of them personalized—including search, content, and communications tools, on PCs and other devices such as mobile devices, tablets, and TVs. Yahoo!’s products and services are available in more than 45 languages, and in 60 countries, regions, and territories.
2. Yahoo! is the owner of the service mark and trademark YAHOO!, the trade name YAHOO!, and the domain name YAHOO.COM. In continuous use since 1994, the YAHOO! mark has become one of the most recognized brands in the world, and has been ranked for years by Interbrand as one of the top 100 global brands.
3. Yahoo! has sold many billions of dollars worth of services and products under the YAHOO! mark over the years. For example, Yahoo!’s revenues exceeded U.S. $4,900,000,000 in both 2011 and 2012.
4. Yahoo!’s offerings are categorized by the three primary groups that Yahoo! serves with its products and services: users, advertisers and publishers, and developers.
5. Yahoo! has approximately 700,000,000 users located in more than 60 countries around the world. Yahoo!’s user offerings include its YAHOO.COM website, a starting point that brings together the most relevant content and functionality from across the Internet, including original YAHOO! content. Yahoo!’s YAHOO.COM website has long been one of the most highly trafficked websites on the Internet. For example, the news carousel at the top of the YAHOO.COM website receives 1,000,000,000 clicks every month.
6. Yahoo! offers a host of services and products to its users under the YAHOO! mark and related marks. For example, Yahoo! offers its YAHOO! SEARCH service that provides rich search results ranked and organized based on relevance to each user’s search query, and its YAHOO! TOOLBAR product, a customizable browser add-on that provides numerous online tools. In the categories of news and information, Yahoo! offers an array of services, including YAHOO! FINANCE, one of the leading financial news and information websites; and YAHOO! ENTERTAINMENT AND LIFESTYLES, a collection of properties comprised of YAHOO! OMG!, YAHOO! MOVIES, YAHOO! TV, and YAHOO! MUSIC, each of which are leading destinations for content regarding celebrities, movies, TV programs, and music, respectively. In additional examples of Yahoo!’s services, Yahoo!’s YAHOO! SHINE service is targeted to women and provides tips, features and in-depth analysis in areas such as health, fashion, careers, and parenting. Yahoo!’s YAHOO! VIDEO service provides original, premium and third-party news, finance, sports, entertainment, and lifestyle video content distributed in contextually relevant experiences across the YAHOO! network.
7. Additional examples of Yahoo!’s user offerings include its services offered under the YAHOO! mark and the related marks YAHOO! NEWS, YAHOO! LOCAL, YAHOO! SHOPPING, YAHOO! TRAVEL, YAHOO! REAL ESTATE, YAHOO! AUTOS, YAHOO! SMALL BUSINESS, MY YAHOO!, YAHOO! GAMES, and YAHOO! SPORTS, among others.
8. Yahoo! provides communications tools to its users, such as its YAHOO! MAIL service, which provides Yahoo! users with e-mail, instant messaging, and mobile text messaging as well as integrated contacts and calendar functionality; and its YAHOO! MESSENGER service, an instant messaging service that provides an interactive and personalized way for users to communicate on a real-time basis.
9. Yahoo! also offers products and services under the marks YAHOO! GROUPS, YAHOO! ANSWERS, and FLICKR for user-generated content that allow users to create, share, and discover ideas, interests, and/or photography with the world.
10. Many of Yahoo!’s services are available to users via registered accounts. Specifically, Yahoo! provides a sign-up facility where users create user names and passwords for their accounts, and users log into these registered accounts to access YAHOO! services such as e-mail, instant messaging, and other services. Yahoo!’s registered users may also sign up for Yahoo!’s fee-based services, such as YAHOO! SMALL BUSINESS services and YAHOO! DOMAINS services, through their accounts. Registered users have the ability to cancel the fee-based services, as well as the ability to cancel their YAHOO! accounts entirely.
11. For advertisers and publishers, Yahoo! offers numerous services, including precision targeting solutions, high-impact display opportunities, and video and interactive advertising units. Yahoo! offers these services as one of the Internet’s largest publishers and the owner of leading properties across multiple content categories; through its YAHOO! NETWORK PLUS network comprised of many partners such as AT&T, Verizon, Rogers, Monster, and Comcast; and through Yahoo!’s Right Media Exchange, Yahoo!’s ad platform for digital advertising companies.
12. Yahoo!’s developer offerings include many APIs that enable third-party developers, advertisers, agencies, publishers and designers to use YAHOO! products and services for their own software and application development. Yahoo!’s developer offerings include YAHOO! DEVELOPER NETWORK, a service used by more than 600,000 developers, to interact, build and learn by leveraging Yahoo!’s platforms, APIs, tools, documentation, support, and resources. Additional examples of developer offerings include Yahoo!’s services identified by the marks YAHOO! QUERY LANGUAGE, YAHOO! USER INTERFACE, and YAHOO! FLICKR API.
13. In addition to the variety of services offered at Yahoo!’s main YAHOO.COM website, Yahoo! (either directly or through its licensees and related companies) operates many additional sites under the YAHOO! mark and using YAHOO-formative trademarks and domain names, including sites for particular countries, regions, and/or languages. Specifically, Yahoo! provide services in more than 45 languages and in 60 countries, regions, and territories, including localized versions of Yahoo!’s websites and services in Argentina, Australia, Austria, Brazil, Canada, Chile, China, Colombia, Egypt, France, Germany, Greece, Hong Kong, India, Indonesia, Ireland, Italy, Japan, Jordan, Kuwait, Malaysia, Mexico, the Netherlands, New Zealand, Peru, the Philippines, Russia, Saudi Arabia, Scandinavia (Denmark, Finland, Norway, and Sweden), Singapore, Spain, Switzerland, Taiwan, Thailand, Turkey, the United Arab Emirates, the United Kingdom, Venezuela, and Vietnam. Outside of native English-speaking countries, Yahoo! provides some of its most popular user services through Yahoo! Asia (its English language portal to Southeast Asia), Yahoo! Canada En Français (French Canadian Website), and Yahoo! En Espanol (United States Hispanic Website).
14. Many of Yahoo!’s current online products and services are offered to the public free of charge, with Yahoo!’s income being derived primarily from display advertising and search advertising on Yahoo!’s online properties as well as some affiliate websites. Yahoo! also sells sponsorships, promotions, and a wide array of other marketing services to its advertising clients. Yahoo! serves advertisements for thousands of companies each year, and its advertising clients have included a majority of the “Fortune 100” largest advertisers. Yahoo! also receives revenues from other sources including listings-based services, facilitating commercial transactions, royalties, and consumer and business premium fee-based services offered to consumers and businesses.
15. One hundred and eighteen (118) UDRP decisions involving Yahoo!’s marks have been issued in Yahoo!’s favor, and the Panels in more than forty (40) of these cases expressly found the YAHOO! mark to be famous.
B. Yahoo!’s Trademark Holdings
16. Yahoo!’s YAHOO! mark is protected in countries around the world including the United States.
17. Yahoo! owns numerous trademark registrations for the YAHOO! mark in the U.S. including the following representative examples:
a. Registration 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.
b. Registration 2,040,222, first used June 1, 1994, filed January 24, 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.
c. Registration 2,187,292, first used September 22, 1997, filed February 28, 1997, issued September 8, 1998, covering online computer services in International Class 35.
d. Registration No. 2,040,691, first used January 2, 1996, filed April 24, 1996, issued February 25, 1997, covering online computer services including creating indexes of information and providing online reference materials in International Class 42.
18. Yahoo!’s trademark rights in its YAHOO! mark and variations thereof predate Respondent’s registration of the Domain Name.
C. Respondent’s Infringing Activities and Bad-Faith Acts
19. Respondent registered the Domain Name on March 20, 2011, long after Complainant began using its YAHOO! mark, long after Complainant’s YAHOO! mark became famous worldwide, and long after Complainant registered its YAHOO! mark in the U.S. (and elsewhere).
20. Respondent uses the Domain Name for a website that purports to be a Yahoo!-authorized website where Yahoo!’s users may submit cancellation requests to Yahoo!. Specifically, Respondent’s website (a) states “Cancel Yahoo!,” with “Yahoo!” appearing in Complainant’s signature color of purple, (b) provides a form with input fields for “Name” and “Reason,” and (c) provides a “Submit” button, as shown below:
[image redacted]
21. Below the input form on its website, Respondent displays the names and reasons submitted by users, and many of these submissions constitute evidence of actual confusion, where the user’s comment indicates that the user believed he or she was submitting a customer service request directly to Yahoo!. Examples of such actual confusion are:
Bridget[redacted]
I cant sign in because I forgot my password. The security question asks me for my daughters nickname. I only have one daughter. [Redacted] is her nickname. So I want to cancel because its not letting me change the password.
Linda [redacted]
I made an error on my e-mail name an you picked it up and refused to let me on Face Book because I couldnt answer question in regards to this error account my e-mail was [redacted] and I intered [redacted] by mistake. The only was was to delete [redacted] and now I cant get back on Face Book. Thanks for all your (NOT) help.
[redacted]@yahoo.com
i can’t get inthe yahoo, i hane tried everything with my email and my pass word but it sill saying that i am entering the wrong password and email so i want to know what i am doing wrongthis is been going on for a long time so what i want to do is to gone and cancel the one that i have and just want to start all over
milton [redacted]
i can not get my e-mail
[redacted]@yahoo.com
No longer required
[Redacted]@ymail.com
Cancel
[Redacted]@yahoo.com
just cancel
[Redacted]@yahoo.com
dont néed
22. In addition to evidencing the actual confusion caused by Respondent’s registration and use of the Domain Name, these Yahoo! user submissions show that Respondent uses the Domain Name to collect the personal and/or confidential information of Yahoo!’s users, such as their names, e-mail addresses, security information, and/or other information.
VI. THE DOMAIN NAME IS CONFUSINGLY SIMILAR
TO COMPLAINANT’S MARK
23. The Domain Name is confusingly similar to Complainant’s famous and federally registered YAHOO! mark because it is comprised of that mark and a generic term (“cancel”). Omitting the exclamation point of Yahoo!’s mark, as required under the DNS system that does not allow exclamation points in domain names, and combining Yahoo!’s mark with a generic term are minor differences that render the Domain Name confusingly similar to Complainant’s mark. UDRP Panels have consistently held that domain names comprised of the mark at issue and a generic term are confusingly similar to the mark at issue, and that generic top-level domains (“gTLDs”) such as “.org” are irrelevant to confusingly similarity analysis. See, e.g., Yahoo! v. Brotherton (NAF FA0608000778969) (finding the domain names <yahooboy.com> and <yahooboys.com> confusingly similar to Complainant’s YAHOO! mark and holding “the only special character allowed in a domain name is ‘-’ and thus the string ‘YAHOO!’ cannot be registered as a domain name. Therefore, in order to obtain a domain name that includes and reflects its trademark, the Complainant has no choice except to register domain names containing the string ‘yahoo.’”); Yahoo! v. Whois Privacy Protection Service (NAF FA0501000412705) (finding the domain name <yahoomusic.com> confusingly similar to Complainant’s YAHOO! mark because the addition of the term “music,” the omission of the exclamation point, and the addition of the generic top-level domain .COM are “minor alterations are insufficient to negate a finding of confusing similarity pursuant to Policy ¶4(a)(i).”).
24. UDRP Panels have also consistently held that domain names comprised of a mark and generic or descriptive terms that relate to the complainant’s business to be confusingly similar to the mark at issue. Here, the term “cancel” relates to Yahoo!’s business because Yahoo! provides its users with the ability to cancel the YAHOO! services for which they have registered, as described above in Paragraph 22. Accordingly, because the term “cancel” relates to Yahoo!’s business, the addition of such term does not distinguish the Domain Name from Yahoo!’s YAHOO! mark, and in fact heightens the confusing similarity of the Domain Name. Indeed, as shown above in Paragraph 33, Respondent’s use of the Domain Name has resulted in many instances of actual confusion. See, e.g., Yahoo! v. Zheng (NAF FA0802001142567) (finding <yahootrips.com> confusingly similar to Complainant’s YAHOO! mark because the term “trips” relates to Complainant’s business that includes providing tools and information for Internet users planning business or recreational trips); Yahoo! v. Malm (NAF FA0611000841031) (“Respondent’s <yahoolocal.com> domain name wholly incorporates Complainant’s YAHOO! mark, eliminates the exclamation point, and adds the term ‘local,’ a term that Complainant uses in connection with its online services. The Panel finds that these alterations are not distinguishing differences. As a result, the disputed domain name is confusingly similar to mark pursuant to Policy ¶4(a)(i).”).
VII. RESPONDENT HAS NO LEGITIMATE INTEREST
IN THE DOMAIN NAME
25. Respondent clearly has no rights or legitimate interest in the Domain Name for the following reasons.
26. First, Respondent’s registration and use of the Domain Name for a website that (a) purports to be a Yahoo!-authorized website where Yahoo!’s users may submit cancellation requests to Yahoo!, and (b) collects the personal and/or confidential information of Yahoo!’s users, does not constitute a bona fide offering of goods or services or noncommercial fair use under the UDRP. Rather, Respondent’s activities constitute both passing off and “phishing,” in that Respondent is trying to pass itself off as Yahoo! and obtain Yahoo!’s users’ information. Both passing-off activities and phishing have been consistently held to demonstrate a lack of legitimate interest in disputed domain names. See, e.g., Yahoo! v. The Underscore (NAF FA0402000241985) (holding respondent’s registration and use of the domain name <yahoo-security.com> to defraud Yahoo!’s users of their personal and confidential information does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)); Yahoo! v. Youjin (NAF FA1109001409001) (holding respondent’s use of the domain name <myyahoonews.com> for a website that collects the personal information of Internet users under false pretenses, i.e., a phishing scam, demonstrates that respondent lacks rights and legitimate interests in the domain name under Sections 4(c)(i) and 4(c)(iii)); Bridgestone Brands v. Alexander / Tornado (NAF FA1101001367353) (“The Panel finds that Respondent is attempting to pass itself off as Complainant and that use of a confusingly similar domain name [<firestonecreditcard.org>] for such a purpose is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
27. Second, Respondent is not and has not been commonly known by the Domain Name. Nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the Domain Name, and Complainant has not authorized Respondent to use its YAHOO! mark. See, e.g., Yahoo! v. Zheng (NAF FA0802001142567) (holding respondent has no rights or legitimate interests pursuant to Section 4(c)(ii) because there is no evidence in the record or WHOIS information indicating respondent is commonly known by the disputed domain name and because Complainant did not authorize respondent to use its YAHOO! mark); Yahoo! v. Morgan (NAF FA0805001195421) (“The WHOIS domain name registration information for each of the disputed domain names [<yahoocupid.com> and <yahoocupid.net>] lists the registrant as ‘John Morgan,’ which bears a strong dissimilarity to the disputed domain names. More to the point, there is no inference of any express or implied authority or license on behalf of Respondent to use Complainant’s YAHOO! mark in any fashion. The Panel therefore finds that Respondent is not commonly known by the disputed domain names, and as such lacks rights and legitimate interests under Policy ¶4(c)(ii).”).
28. Indeed, given the international fame of Complainant’s YAHOO! mark, Respondent could not be known by the Domain Name. See, e.g., Yahoo! v. Blanco (NAF FA0908001280452) (“. . . considering the notoriety and fame of the YAHOO! marks, it is highly unlikely that anyone other than Complainant would be commonly known by the mark or a confusingly similar version thereof.”); Yahoo! v. Zviely (NAF FA0306000162060) (“The worldwide fame of Complainant’s marks permit a finding that anyone other than Complainant could [not] be commonly known as YAHOO! . . .” and that the respondent could therefore not have shown that it was commonly known by any of the disputed domain names pursuant to Section 4(c)(ii) of the UDRP); Yahoo! v. Butler (NAF FA0607000744444) (finding no legitimate interest in respondent’s registration of the domain name <yahooanswers.com> among others because “As an initial matter, given that the Respondent selected Domain Names which have no connection to himself and which combine Complainant’s well-known [YAHOO!] Trademark with common generic terms, in what would appear to be an effort to take advantage of the reputation and goodwill in Complainant’s Trademark, these basic points would appear to indicate that Respondent does not have any rights or legitimate interests in the Domain Names pursuant to Policy ¶4(c)(ii).”).
VIII. RESPONDENT’S BAD FAITH UNDER SECTION 4(B) OF THE UDRP
29. Respondent’s registration and use of the Domain Name squarely meet the grounds of bad faith outlined in the UDRP, as well as additional grounds of bad faith defined in previous UDRP decisions.
30. First, Respondent’s registration and use of the Domain Name constitute bad faith under Section 4(b)(iv) of the UDRP because Respondent uses the Domain Name to intentionally attract Internet users by creating a likelihood of confusion with Complainant and its YAHOO! mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent and/or its website. Respondent’s activities constitute bad faith under Section 4(b)(iv) regardless of whether Respondent profits directly (for example, in the form of selling Yahoo!’s users’ information collected via the website) or indirectly (for example, in the form of gathering information on Yahoo!’s users). See, e.g., Yahoo! v. Youjin (NAF FA1109001409001) (holding respondent’s use of the domain name <myyahoonews.com> constitutes bad faith under Section 4(b)(iv) whether respondent benefits indirectly from the resolving website or directly, for example, by gathering confidential information from Internet users that could be sold for profit); Yahoo! v. Pham (NAF FA0204000109699) (holding “Respondent’s registration of the <yahoonail.com> domain name for the purpose that it would benefit from the Complainant’s mark is evidence of bad faith pursuant to Policy ¶4(b)(iv).”); see also, e.g., Yahoo! v. Manage Technical (NAF FA0402000238649) (“It is well established that when a domain name registrant incorporates a well-known registered mark in a domain name for the purpose of creating Internet-user confusion as to the sponsorship of the name and then uses it for commercial gain, the registrant has registered and used the name in bad faith pursuant to Policy ¶4(b)(iv).”).
31. Further, as shown above in Paragraph 33, Respondent’s use of the Domain Name has caused actual confusion.
32. Second, Respondent’s use of the Domain Name for a website that purports to be a Yahoo!-authorized website where Yahoo!’s users may submit cancellation requests to Yahoo! constitutes an independent ground of bad faith under prior UDRP decisions, which have consistently held that such passing off activities constitute bad faith. See, e.g., Smiths Group v. Snooks (NAF FA1102001372112) (holding respondent’s use of the domain name <smithsdetections.com> to pass itself off as complainant is evidence of respondent’s bad faith under Section 4(a)(iii)).
33. Third, Respondent’s use of the Domain Name for a website that collects the personal and/or confidential information of Yahoo!’s users constitutes an independent ground of bad faith under prior UDRP decisions, which have consistently held that such phishing activities constitute bad faith. See, e.g., Yahoo! v. The Underscore (NAF FA0402000241985) (“The Panel finds that Respondent’s fraudulent use of the <yahoo-security.com> domain name to acquire unsuspecting Internet users’ personal information is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).”); Yahoo! v. Youjin (NAF FA1109001409001) (holding respondent’s use of the domain name <myyahoonews.com> for a website that collects the personal information of Internet users under false pretenses is “evidence of a phishing scheme, which reveals Respondent’s bad faith registration and use pursuant to Policy ¶4(a)(iii).”).
34. Third, Respondent’s registration and use of the Domain Name constitute bad faith under Section 4(b)(iii) of the UDRP because Respondent disrupts Yahoo!’s business by using the Domain Name to obtain Yahoo!’s users’ information under the guise of passing itself off as Yahoo! or a Yahoo!-authorized website.
35. Finally, there is no question that Respondent registered the Domain Name in bad faith with knowledge of Yahoo! and its YAHOO! mark, given (a) the fame of the YAHOO! mark, and (b) the references on Respondent’s website to Yahoo! and its YAHOO! name and mark. Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the UDRP. See, e.g., Yahoo! v. Müller (NAF FA1108001403853) (holding respondent registered the domain name <removeyahoo.com> in bad faith because “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).”); H-D Michigan v. Buell (NAF FA0711001106640) (“Respondent’s websites explicitly demonstrate Respondent’s knowledge of Complainant’s marks and the products and services associated therewith. Such knowledge is additional evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶4(a)(iii).”); see also, e.g., Yahoo! v. Pham (NAF FA0204000109699) (“Because of the famous and distinctive nature of Complainant’s YAHOO! mark, [the respondent] is thought to have been on notice of the existence of Complainant’s mark at the time Respondent registered the infringing [domain name].”); Yahoo! v. Quan (NAF FA0208000117877) (finding the respondent’s registration of the domain names with knowledge of Complainant’s rights was in bad faith because “the YAHOO! mark has developed into one of the most famous marks associated with the Internet by way of the mark’s use on the highly popular <yahoo.com> website.”); Yahoo! v. Registrant (WIPO D2004-0896) (holding respondent registered the disputed domain names in bad faith because complainant’s mark YAHOO! is known and used worldwide).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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."
Paragraph 4(a) of the Policy requires Complainant prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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 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 claims rights in its YAHOO! mark because of its numerous United States Patent & Trademark Office (“USPTO”) registrations of the mark (e.g., Reg. No. 2,040,222 registered February 25, 1997). Such a trademark registration constitutes adequate proof of Complainant’s rights in the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007). Policy ¶4(a)(i) is satisfied because Complainant has established rights in the YAHOO! mark through its USPTO registration.
Complainant argues the <cancelyahoo.org> domain name is confusingly similar to Complainant’s YAHOO! Mark. The domain name uses the YAHOO! entire mark, while eliminating the exclamation point (which is not a valid character for a domain name), and adding the generic term “cancel,” as well as the generic top-level domain (“gTLD”) “.org.” Respondent uses Complainant’s mark on the disputed domain name. The term “cancel” relates to Complainant’s business, and its presence in the domain name increases the confusing similarity with Complainant’s mark. The confusion is actual and not hypothetical because Complainant has produced examples of actual confusion. Adding a generic term to Complainant’s mark, as well as the gTLD “.org,” and omitting punctuation from the mark nonetheless results in confusing similarity to Complainant’s mark for the purposes of Policy ¶4(a)(i). 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 Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶4(a)(i) analysis.”).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known by the <cancelyahoo.org> domain name and has provided WHOIS information as evidence. Respondent has no express or implied authority to use the mark in any way. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel stated the respondent failed to establish rights and legitimate interests in the disputed domain name because the respondent had no authorization to register domain names incorporating the complainant’s mark. This Panel agrees and finds Respondent lacked authorization or permission to register domain names using the YAHOO! Mark. Respondent is not commonly known by the <cancelyahoo.org> domain name, and as a result, lacks rights or legitimate interests in the domain name under Policy ¶4(c)(ii).
Respondent uses the website resolving from the <cancelyahoo.org> domain name to host a website that improperly suggests affiliation with Complainant. Respondent is trying to pass itself off as Complainant. While the Panel is not convinced Respondent is “phishing”, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the resolving website to display text boxes where visitors can type their name and a reason they would like to “cancel Yahoo!”, and contains a list underneath the text boxes displaying a variety of erstwhile YAHOO! users, their e-mail addresses, and why they want their accounts cancelled. This does not constitute a Policy ¶4(c)(i) bona fide offering of goods or services, or a Policy ¶4(c)(iii) legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (maintaining that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Finally, Respondent uses a privacy service to register the disputed domain name. This means Respondent cannot acquire any rights to the mark because Respondent has not made its name available to the public. In a commercial context, Respondent cannot acquire any rights to the mark unless it discloses its own identity.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s registration and use of the <cancelyahoo.org> domain name constitutes bad faith under Policy ¶4(b)(iii) because Respondent disrupts Complainant’s business by using the domain name to obtain Complainant’s users’ information under the guise of passing itself off as Complainant or a website authorized by Complainant. Regrettably, Complainant has not claimed Respondent is a competitor, which is a requirement for finding of bad faith under Policy ¶4(b)(iii). See PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine).
Complainant claims Respondent engages in bad faith registration and use due to its use of a domain name confusingly similar to Complainant’s YAHOO! mark to attract Internet users to the resolving website in order to make profits. While the source of the profit is not clear to this Panel, Respondent has not disputed the issue. Therefore, this constitutes adequate grounds to find bad faith registration and use.
Complainant argues Respondent makes use of the <cancelyahoo.org> domain name in an attempt to convince Internet users that the resolving website belongs to Complainant, leading consumers to divulge personal and confidential information at the website. Complainant contends such use is an attempt on Respondent’s part to pass itself off as Complainant in order to accomplish a “phishing” scheme, claiming that such use amounts to bad faith. Once again, the Panel does not see how confidential information is being solicited. No user names are solicited and no passwords are being solicited (or at least no on the screens submitted to the Panel). While Complainant makes this claim, the documentation submitted does not make this sufficiently clear.
Complainant claims there is “no question” Respondent registered the <cancelyahoo.org> domain name with actual knowledge of Complainant’s mark, due to the fame of the YAHOO! mark throughout the world, as well as the reference to Complainant’s mark at the resolving website. The Panel certainly agrees Respondent had actual knowledge of Complainant’s mark, especially since Respondent uses Complainant’s logo. There is no doubt Respondent is trying to pass itself off as Complainant for unknown reasons. This is sufficient evidence of bad faith registration and use of the disputed domain name.
Finally, Respondent used a privacy service to register the disputed domain name. In the commercial context, this raises the rebuttable presumption of bad faith registration and use of the disputed domain name. Respondent has taken no steps to rebut this presumption. Therefore, the presumption stands.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <cancelyahoo.org> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, July 29, 2013
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