Yahoo! Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1310001526653
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fllickr.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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2013; the National Arbitration Forum received payment on October 25, 2013.
On October 31, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <fllickr.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 November 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 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@fllickr.com. Also on November 4, 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 November 26, 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.
1. Complainant is a global technology company that provides a wide array of products and services.
2. Complainant has about 800,000,000 users located in more than 60 countries around the world.
3. Complainant’s Flickr program was acquired in 2005 and is the largest photo-specific site in the world. Flickr allows Internet users to organize, edit and share photos.
4. Complainant has common law rights in the FLICKR mark through its substantial and continuous use of the mark since at least as early as February 2004.
5. Complainant owns rights in the FLICKR mark through its registration with the United States Patent and Trademark Office (“USPTO”):
a. Reg. No. 3,455,275 filed May 10, 2005, registered June 24, 2008.
6. Complainant’s official website for the FLICKR program is located at the <flickr.com> domain name.
7. Respondent’s <fllickr.com> domain name is confusingly similar to Complainant’s FLICKR mark.
a. Respondent’s disputed domain name differs from Complainant’s registered mark by a single letter.
b. Respondent’s disputed domain name is a typosquatted version of Complainant’s mark.
8. Respondent has no rights or legitimate interests in the <fllickr.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
c. Respondent uses the disputed domain name to host a pay-per-click website with sponsored-link advertisements for directly competing services and other commercial websites.
d. Respondent has engaged in typosquatting behavior.
9. Respondent registered and is using the <fllickr.com> domain name in bad faith.
a. Respondent has a pattern of registering trademark-related domain names in bad faith under Policy ¶ 4(b)(ii).
b. Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
i. Respondent’s use of the disputed domain name disrupts Complainant’s business by using the domain name to resolve to a website featuring advertisements for directly competing services.
c. Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
i. Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its famous and federally-registered FLICKR mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website.
d. Respondent’s typosquatting behavior indicates bad faith use and registration.
e. Respondent registered the disputed domain name with knowledge of Complainant and its FLICKR mark.
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 argues that it is a global technology company that provides a wide array of products and services. Complainant asserts that it has about 800,000,000 users located in more than 60 countries around the world. Complainant states that its FLICKR program was acquired in 2005 and is now the largest photo-specific site in the world. Complainant explains that its FLICKR program allows Internet users to organize, edit and share photos. Complainant states that its official website for the FLICKR program is located at the <flickr.com> domain name. Complainant contends that it owns rights in the FLICKR mark through its registration with the USPTO (Reg. No. 3,455,275 filed May 10, 2005, registered June 24, 2008). Previous panels have found that evidence of a registration with the USPTO for a given mark is sufficient to establish rights in that mark. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). A Complainant’s rights in a registered mark have previously been found to date back to the date on which the mark was filed with the USPTO. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). To establish rights in a mark, a complainant need not register the mark in the country in which the respondent resides or operates. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel finds that Complainant has rights in the FLICKR mark dating back to May 10, 2005 pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <fllickr.com> domain name is confusingly similar to Complainant’s FLICKR mark. Complainant contends that Respondent’s <fllickr.com> domain name differs from Complainant’s registered FLICKR mark by featuring an additional letter “L.” Respondent also adds the generic top-level domain (“gTLD”) “.com.” Complainant further claims that Respondent’s <fllickr.com> domain name is phonetically identical to Complainant’s FLICKR mark. Prior UDRP panels have found that a phonetically similar domain name does not negate a ¶ 4(a)(i) finding of confusingly similar. See Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004) (“Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”). Previous panels have often found that adding an additional letter and a gTLD is insufficient to differentiate a disputed domain name from a given mark. See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that “[a] domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive.”). The Panel finds that Respondent’s <fllickr.com> domain name is confusingly similar to Complainant’s FLICKR mark under 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 argues that Respondent has no rights or legitimate interests in the <fllickr.com> domain name because Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). Complainant claims that nothing in Respondent’s WHOIS information or elsewhere on the record demonstrates that Respondent is commonly known by the disputed domain name. Complainant also contends that it has not authorized Respondent to use its FLICKR mark. The Panel notes that the WHOIS information for Respondent’s disputed domain name lists “PPA Media Services/ Ryan G Foo” as Registrant. Previous UDRP panels have traditionally found that a respondent is not commonly known by a disputed domain name where there is no evidence, on the record or otherwise, to indicate a relationship. 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel finds that Respondent is not commonly known by the <fllickr.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Complainant contends that Respondent uses the <fllickr.com> domain name to host a pay-per-click website with sponsored-link advertisements for directly competing services and other commercial websites. The Panel notes that some of the links included on Respondent’s resolving website are “Istock Photos,” “Flickr Photo,” “Flickr Images,” “Horse Care-Head to Hoof,” “Photo Sharing,” and “Imaging.” UDRP panels have found that featuring a series of links to competing third parties, and gaining revenue from the links, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”). The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant argues that Respondent has no rights or legitimate interests in the <fllickr.com> domain name because Respondent is engaged in typosquatting behavior. Panels have traditionally found typosquatting where there is a disputed domain name representing a typographical error with respect to a complainant’s mark, or correlation between an incorrect letter found in the disputed domain name and its placement on a computer keyboard near the correct letter as found in the complainant’s mark. See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”). The Panel finds that Respondent’s typosquatting behavior does not indicate rights or a legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant has proven this element.
Complainant asserts that Respondent has a pattern of registering trademark-related domain names in bad faith under Policy ¶ 4(b)(ii). Complainant claims that Respondent has been subject to at least 13 adverse UDRP decisions involving third-party marks. See e.g.: Twentieth century Fox Film Corp. v. PPA Media Services/ Ryan G Foo, (FA 1467717); see also Woot v. PPA Media Services/ Ryan G Foo, FA 1454856); see also Getty Images (US) v. PPA Media Services/ Ryan G Foo, FA 1443660); see also Crate & Barrel v. PPA Media Services/ Ryan G Foo, FA 1440326). UDRP panels have found bad faith use and registration when a respondent was involved in various prior UDRP proceedings that resulted in the transfer of contested domain names. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant argues that Respondent registered and is using the <fllickr.com> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant contends that Respondent’s use of the <fllickr.com> domain name disrupts Complainant’s business by using the domain name to resolve to a website featuring advertisements for directly competing services. Panels have found bad faith use and registration under Policy ¶ 4(b)(iii) when a respondent uses a confusingly similar domain name to resolve to a website featuring links that compete with a complainant. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel finds that Respondent registered and is using the <fllickr.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its famous and federally-registered FLICKR mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website. The Panel agrees with Complainant and finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) by using a confusingly similar domain name to resolve to a website offering links that compete with Complainant, from which Respondent generates a commercial gain. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent’s typosquatting behavior indicates bad faith use and registration under Policy ¶ 4(a)(iii). Typosquatting behavior causes a likelihood of confusion between a complainant’s registered mark and a respondent’s disputed domain name based on a slight variation or misspelling of the complainant’s mark. UDRP panels have found that typosquatting behavior indicates bad faith use and registration. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form). The Panel agrees that Respondent has engaged in typosquatting and finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant also contends that in light of the fame and notoriety of Complainant's FLICKR mark, it is inconceivable that Respondent could have registered the <fllickr.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Complainant additionally states that Complainant’s FLICKR mark was successfully known and used publicly before Respondent’s registration of the disputed domain name. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because modern UDRP case precedent declines to find bad faith as a result of mere constructive knowledge. 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."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
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 <fllickr.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 4, 2013
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