Yahoo! Inc. v. See ICANN RAA 3.7.5.7 Domain Subject To UDRP Dispute; Fundacion Private Whois / Domain Administrator
Claim Number: FA1306001504609
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is See ICANN RAA 3.7.5.7 Domain Subject To UDRP Dispute; Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hack-yahoo.com> , registered with FastDomain Inc.; and <hack-yahoo-password.com>, registered with Internet.bs Corp.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2013; the National Arbitration Forum received payment on June 13, 2013.
On June 13, 2013, FastDomain Inc. confirmed by e-mail to the National Arbitration Forum that the <hack-yahoo.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 Jun 18, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the , <hack-yahoo-password.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 July 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 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@hack-yahoo.com, postmaster@hack-yahoo-password.com. Also on July 10, 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 August 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
Complainant
A. Respondent registered the <hack-yahoo-password.com> domain name in March 2013 and the <hack-yahoo.com> domain name in 2012. Complainant’s trademark rights predate the registrations of both disputed domain names.
B. Complainant contends that it has rights in the YAHOO! mark, used in connection with search, content, and communications tools on PCs and other electronic devices. Complainant is the owner of registrations for the YAHOO! mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,040,691 registered Feb. 25, 1997). See Complainant’s Exhibit 9.
C. Complainant’s YAHOO! mark has gathered significant recognition and good will since its continuous use beginning in 1994. Complainant’s revenues in both 2011 and 2012 have exceeded $4.9 billion, and more than 700 million Internet visitors have used Complainant’s services. Complainant invests a substantial amount of its resources into marketing and advertising the YAHOO! mark.
D. One of Complainant’s online services includes hosting “Hackdays” and “Hack U” events, where technicians can learn from each other and share code.
E. The disputed domain name is confusingly similar to Complainant’s mark. Respondent’s <hack-yahoo.com> and <hack-yahoo-password.com> domain names include Complainant’s YAHOO! mark while leaving off the exclamation mark, which the Domain Name System does not allow. Both disputed domain names include the generic term “hack”, and the <hack-yahoo-password.com> domain name adds the generic term “password.” Further, the disputed domain names add the generic top level domain (“gTLD”) “.com.”
F. Respondent does not have any rights or legitimate interests in the disputed domain names.
a. Respondent has never been commonly known by the disputed domain names. Nothing in the WHOIS records for either disputed domain name indicates that Respondent is commonly known by the disputed domain names. Further, Respondent does not have Complainant’s permission to use Complainant’s YAHOO! mark.
b. Respondent is not using the disputed domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent is using the disputed domain names in connection with a website offering a malicious software program that facilitates the theft of Complainant’s users’ confidential information. See Complainant’s Exhibit 3.
c. Respondent is also using the disputed domain names to display pay-per-click advertisements for services that compete directly with Complainant. See Complainant’s Exhibit 3.
G. Respondent registered and uses the <hack-yahoo.com> and <hack-yahoo-password.com> domain names in bad faith.
a. Respondent intentionally attracts Internet users for commercial gain by creating a likelihood of confusion with Complainant’s YAHOO! mark. Respondent uses Complainant’s stylized YAHOO! logo and Complainant’s signature purple color on its website to further cause confusion amongst Internet users as to the source, sponsorship, or affiliation of the disputed domain names.
b. Respondent’s registration and use of the dispute domain names disrupts Complainant’s business because Respondent is using the disputed domain names to facilitate the theft of confidential information of Complainant’s users.
c. Respondent had knowledge of Complainant’s mark at the time Respondent registered the disputed domain name. Complainant points to the fame of its YAHOO! mark and the numerous references on Respondent’s resolving website to Complainant and its mark as evidence for this claim.
Respondent
A. Respondent failed to submit a Response in this proceeding.
Complainant is Yahoo! Inc., which list its address as Sunnyvale, CA, USA. Complainant is the owner of the mark YAHOO, which it uses in conjunction with the offering of goods and services in the global communications and technology industry. Complainant has used the mark continuously since at least 1997 and has registered the mark both domestically and abroad. Complainant’s offerings include its <yahoo.com> website that gathers relevant content and functionality from across the Internet.
Respondent is indicated as See ICANN RAA 3.7.5.7 Domain Subject To UDRP Dispute; Fundacion Private Whois/Domain Administrator which has a postal address associated with <hack-yahoo-password.com> listed as Zona 15 Panama. The postal address for the <hack-yahoo.com> domain name is listed as Burlington, MA, USA. The registrar’s address for that domain name is indicated as Provo, Utah, USA while the other domain name is registered with an entity based in Nassau, Bahamas. The domain name <hack-yahoo.com> was registered in 2012 and <hack-yahoo-password.com> was registered in March 2013.
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.
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 contends that it has rights in the YAHOO! mark, used in connection with search, content, and communications tools on PCs and other electronic devices. Complainant asserts it is the owner of registrations for the YAHOO! mark with the USPTO (e.g., Reg. No. 2,040,691 registered Feb. 25, 1997). See Complainant’s Exhibit 9. Past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. 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). The Panel finds that Complainant’s USPTO registrations satisfy the requirements of Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The disputed domain name is confusingly similar to Complainant’s mark. Respondent’s <hack-yahoo.com> and <hack-yahoo-password.com> domain names include Complainant’s YAHOO! mark while leaving off the exclamation point, which the Domain Name System does not allow. Both disputed domain names include the generic term “hack,” and the <hack-yahoo-password.com> domain name adds the generic term “password.” Further, the disputed domain names add the gTLD “.com.” The Panel finds that the exclamation point in Complainant’s mark cannot be added to a domain name and thus is irrelevant in analyzing the confusing similarity of the disputed domain name. See Yahoo! v. cancelyahoo.org Private Registrant / A Happy DreamHost Customer, FA 1503412 (Nat. Arb. Forum July 29, 2013) (noting that an exclamation point is not a valid character for a domain name). The Panel also finds that the addition of the generic terms “hack” and “password” do not sufficiently distinguish the disputed domain names from Complainant’s mark. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). The Panel further finds that the addition of a gTLD is irrelevant for the purposes of Policy ¶ 4(a)(i) analysis. See 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 that Respondent’s <hack-yahoo.com> and <hack-yahoo-password.com> domain names are confusingly similar to Complainant’s YAHOO! mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant contends that Respondent does not have any rights or legitimate interests in the disputed domain names. Respondent has never been commonly known by the disputed domain names. Complainant states that nothing in the WHOIS records for either the <hack-yahoo.com> or <hack-yahoo-password.com> domain names indicates that Respondent is commonly known by the disputed domain names. Further, Complainant asserts that Respondent does not have Complainant’s permission to use Complainant’s YAHOO! mark. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and other evidence on the record as whole in determining whether the respondent is commonly known by a disputed domain name. See 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). Because Respondent was not authorized by Complainant to use the YAHOO! mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <hack-yahoo.com> and <hack-yahoo-password.com> domain names under Policy ¶ 4(c)(ii).
Complainant claims Respondent is not using the disputed domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Complainant’s Exhibit 3. Respondent is also using the disputed domain names to display pay-per-click advertisements for services that compete directly with Complainant. See Complainant’s Exhibit 3. Past panels have found that using a disputed domain name to display competing links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)). The Panel finds that Respondent is not making 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).
Complainant also claims Respondent is using the disputed domain names in connection with a website offering a malicious software program that facilitates the theft of Complainant’s users’ confidential information. The Panel notes that while Respondent may not itself be phishing for confidential information, it is providing an opportunity for Internet users to obtain the confidential information of Complainant’s users. Phishing is defined as “the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit card numbers, passwords, social security numbers and other personal information that may be used for fraudulent purposes.” See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004). Phishing has been found to be evidence of a respondent’s lack of rights and legitimate interests in a disputed domain name. See Australia & New Zealand Banking Group Ltd. v. Kim, FA 1366558 (Nat. Arb. Forum Feb. 18, 2011) (holding that the respondent lacks rights and legitimate interests in the disputed domain name when the respondent used the disputed domain name to promote a phishing scheme). The Panel determines that Respondent’s use of the <hack-yahoo.com> and <hack-yahoo-password.com> domain names to associate itself with a website that offers software programming which facilitates information theft constitutes a “phishing” scheme within the definition under the Policy and thus concludes that Respondent’s use of the disputed domain names in such a manner provides further evidence that Respondent does not have any rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent disrupts Complainant’s business by its use of the disputed domain names. The Panel notes that Respondent uses Complainant’s logo and similar color scheme at the resolving website, and displays hyperlinks to websites offering products and services that are likely to be confused with Complainant’s business. The Panel finds that by displaying hyperlinks to websites offering substantially similar services to those offered by Complainant, Respondent disrupts Complainant’s business, demonstrating bad faith registration and use under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent registered and is using the <hack-yahoo.com> and <hack-yahoo-password.com> domain names in bad faith. Complainant asserts that Respondent is intentionally attracting Internet users for commercial gain by creating a likelihood of confusion with Complainant’s YAHOO! mark. Complainant notes that Respondent uses Complainant’s stylized YAHOO! logo and Complainant’s signature purple color on its website to further cause confusion amongst Internet users as to the source, sponsorship, or affiliation of the disputed domain names. Such an attempt to confuse Internet users to obtain commercial gain has been deemed a bad faith registration and use by past panels. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). The Panel finds that Respondent’s registration and use of the <hack-yahoo.com> and <hack-yahoo-password.com> domain names violates Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <hack-yahoo.com> and <hack-yahoo-password.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 15, 2013
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