Yahoo! Inc. v. Unix10.Com / Unix10 Host
Claim Number: FA1308001514758
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is Unix10.Com / Unix10 Host (“Respondent”), Jordan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoona.com>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2013; the National Arbitration Forum received payment on August 14, 2013.
On August 21, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <yahoona.com> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM 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 August 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 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@yahoona.com. Also on August 21, 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 September 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
Complainant Yahoo! is a global technology company offering Internet services including news, entertainment, sports, and music content. Complainant uses the YAHOO! mark, and other YAHOO!-formative marks in its business, and has registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,040,222 registered February 25, 1997). Complainant offers its services to the public free of charge, and sells sponsorships and marketing services to its advertising clients, which number in the thousands.
Respondent registered the <yahoona.com> domain name in November of 2012, and uses the resolving website to offer directly competing Internet search services, as well as links to such services, and links to a website with malicious software. Respondent claims on its website that its search services are provided by Google, one of Complainant’s main competitors, and provides links to Google’s home page. The <yahoona.com> domain name is confusingly similar to Complainant’s registered YAHOO! mark. Respondent fails to provide evidence that it is commonly known by the disputed domain name, and by offering directly competing Internet search services, Respondent’s use does not constitute a bona fide offering of goods or services or a noncommercial or fair use of the domain name. Respondent’s use of a malicious website further demonstrates its lack of legitimate interest in the disputed domain name. Respondent demonstrates bad faith registration and use by disrupting Complainant’s business through Respondent’s directly competing Internet search services, and by providing links to other competing services. Respondent makes a commercial gain from its use of the domain name, and does so by creating a likelihood of confusion between Complainant’s mark and the disputed domain name. Respondent unquestionably registered the domain name with knowledge of Complainant’s YAHOO! mark, considering the fame associated with the mark, and Respondent’s use of the domain
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 makes the claim that it owns the rights to the YAHOO! mark, as a result of its USPTO registration, (e.g., Reg. No. 2,040,222 registered February 25, 1997). Previous panels have considered evidence of USPTO registration sufficient to conclude that the complainant has rights in the claimed mark under the Policy. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark). The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i) and demonstrated rights in the YAHOO! mark as a result of its USPTO registration. The Panel determines that while Respondent appears to be located in Jordan, Complainant is not required to register its mark in Respondent’s country of residence in order to claim rights in the mark. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant contends that the <yahoona.com> domain name, by way of two additional letters and the generic top-level domain (“gTLD”) “.com,” is confusingly similar to the YAHOO! mark. Complainant claims that the letters “na” may be interpreted to be an abbreviation for the Netherland Antilles, or the country code for Namibia. Either way, Complainant argues, the additional letters are irrelevant to confusing similarity analysis because the domain name incorporates that substantive portion of the YAHOO! mark. The Panel agrees that adding a gTLD and two additional letters (which likely stand for “North America”) to Complainant’s mark results in confusing similarity to the mark. See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). The Panel notes that the domain name omits the exclamation mark that is present in the YAHOO! mark, and finds that because domain names do not allow punctuation, the absence of an exclamation mark has no impact on a finding of confusing similarity. 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). The Panel finds that the aforementioned changes made to the mark within the domain name results in confusing similarity between the <yahoona.com> domain name and the YAHOO! mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent does not possess rights or legitimate interests in the <yahoona.com> domain name, claiming that Respondent is not commonly known by the domain name. Complainant argues that the WHOIS information on record does not reflect the domain name, and Complainant has not authorized Respondent’s use of the YAHOO! mark. The Panel notes that the registrant listed in the WHOIS information for the disputed domain name is identified as “Unix10.Com / Unix10 Host.” The panel in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), held that the respondent was not commonly known by the domain name in question, based on evidence demonstrating that the WHOIS information was not supportive of such a finding, and the fact that the complainant did not give the respondent authorization to use the mark. The Panel finds that Respondent is not commonly known by the <yahoona.com> domain name pursuant to Policy ¶ 4(c)(ii), as a result of the inconsistent WHOIS information and Complainant’s lack of authorization to use the mark.
Complainant makes the assertion that Respondent uses the <yahoona.com> domain name in such a way that fails to demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent offers both directly competing services at the resolving website and links to competing entities. Complainant includes evidence consisting of a screen shot of the resolving website, which shows two links, one for “Google,” and another for “WWWSearchSolutions.” Complainant asserts that its services include an online search engine, and argues that Google is one of its foremost competitors. The Panel concludes that by offering competing services and links to other competing websites, Respondent has created sufficient evidence to conclude that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <yahoona.com> domain name. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Complainant makes the claim that Respondent also uses the disputed domain name to reroute Internet users to a malicious website, and includes its Exhibit 10 as evidence, which shows a screen shot of the website resolving from the “WWWSearchSolutions” link. The Panel notes that a message to website visitors warns, “This web page at www.wwwsearchsolutions.com has been reported as an attack page and has been blocked based on your security preferences. . . Some attack pages intentionally distribute harmful software, but many are compromised without the knowledge or permission of their owners.” The Panel determines that causing website visitors to reroute to an “attack page” does not generally support a finding of rights or legitimate interests, and the Panel finds that Respondent has no rights or legitimate interests in the <yahoona.com> domain name under Policy ¶ 4(a)(ii). See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
Complainant has proven this element.
Complainant alleges that Respondent uses the <yahoona.com> domain name in a disruptive manner, by attempting to compete with Complainant’s business. Complainant argues that Respondent offers competing services and links to Complainant’s competitors, and contends that Respondent’s disruptive use is evidence of bad faith. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel maintained that the disputed domain names resolved to websites listing links to the complainant’s competitors, which was evidence that the respondent intended to disrupt the complainant’s business and thereby demonstrated bad faith. Similarly, the panel in Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000), stated that the respondent used the domain name at issue to resolve to a website offering similar services and thus confusing consumers into believing the complainant sponsored the services offered at the site. The Panel finds that Respondent’s bad faith registration and use of the <yahoona.com> domain name under Policy ¶ 4(b)(iii) is apparent by both its competing use and by its displays of links to Complainant’s competitors at its resolving website.
Complainant argues that Respondent’s registration and use of the <yahoona.com> domain name demonstrates bad faith, as Respondent creates a likelihood of confusion with Complainant resulting in a commercial profit by Respondent’s receipt of commissions. The Panel notes that Complainant does not give precise evidence of Respondent’s financial gain, but infers that by posting hyperlinks to Complainant’s competitors, Respondent collects a fee from the links’ sponsors. The Panel determines that Respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(iv) by selecting a confusingly similar domain name in order to attract Internet users, and by generating revenue as a result of the search engine at the website and the posted hyperlinks. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
Complainant also contends that Respondent directs Internet users to a website containing malicious content by way of the “WWWSearchSolutions” link at the domain name’s homepage. Complainant argues that malicious software connected with a confusingly similar domain name disrupts its business in bad faith. The Panel finds that by associating itself with malicious websites or software via the disputed domain name, Respondent registered the <yahoona.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”).
Complainant sets forth the assertion that Respondent registered the <yahoona.com> domain name in bad faith with knowledge of the YAHOO! mark, considering the fame of the mark, and Respondent’s efforts to offer competing search services at the resolving website. Previous panels have found that when the link between a claimed mark and the content on the resolving website is obvious, the respondent must have known about the complainant’s mark when it registered the disputed domain name. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name"). The Panel concludes that because the YAHOO! mark is internationally prominent, and the resolving website offers competing search services and hyperlinks, Respondent must have had actual knowledge of Complainant’s mark when it registered the <yahoona.com> domain name, and thus registered the domain name in bad faith according to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <yahoona.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 12, 2013
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