Yahoo! Inc. v. Domain Admin / PrivacyProtect.org / Whois Agent / Whois Privacy Protection Service, Inc.
Claim Number: FA1312001532946
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C, USA. Respondent is Domain Admin / PrivacyProtect.org / Whois Agent / Whois Privacy Protection Service, Inc. (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yahoocheckinvisible.com> and <checkyahooinvisible.com>, registered with UK2 Group Ltd. a/k/a Cloud Group Limited; DomainSite, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 4, 2013; the National Arbitration Forum received payment on December 4, 2013.
On December 5, 2013, UK2 Group Ltd. a/k/a Cloud Group Limited; DomainSite, Inc confirmed by e-mail to the National Arbitration Forum that the <yahoocheckinvisible.com> and <checkyahooinvisible.com> domain names are registered with UK2 Group Ltd. a/k/a Cloud Group Limited; DomainSite, Inc and that Respondent is the current registrant of the names. UK2 Group Ltd. a/k/a Cloud Group Limited; DomainSite, Inc has verified that Respondent is bound by the UK2 Group Ltd. a/k/a Cloud Group Limited; DomainSite, 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 December 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@yahoocheckinvisible.com, postmaster@checkyahooinvisible.com. Also on December 6, 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 January 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
A. Complainant
1. Complainant is a global technology company that provides a wide array of products and services, including a search engine and communication tools on computers and other devices including mobile devices, tablets, and televisions.
2. Complainant has continuously used the YAHOO! mark since 1994.
3. Complainant owns numerous trademark registrations for the YAHOO! mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,040,222 registered February 25, 1997).
4. Respondent’s disputed domain names contain Complainant’s mark with the addition of a generic or descriptive word.
5. The terms “invisible” and “check” in the disputed domain names relate to Complainant’s YAHOO! MESSENGER service that offers the “invisible” setting to its users.
6. Punctuation such as the exclamation point in Complainant’s mark and gTLDs are irrelevant to the confusingly similar analysis.
7. Respondent is not commonly known by the disputed domain names.
8. Nothing in Respondent’s WHOIS information or record demonstrates that Respondent is commonly known by the domain names.
9. Respondent’s disputed domain names resolve to websites featuring advertisements and links for directly competing websites.
10. Respondent runs a commercial website offering software that circumvents and interferes with Complainant’s YAHOO! MESSENGER service, and allows Respondent to obtain confidential information of Complainant’s users.
11. Respondent has a pattern of bad faith use and registrations.
12. Respondent’s use of the disputed domain names disrupts Complainant’s business by using the domain name for commercial websites featuring advertisements for competing websites, and allows Respondent to obtain confidential information of Complainant’s users.
13. Respondent uses the disputed domain names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its registered mark as to the source, sponsorship, affiliation, and endorsement of Respondent. Respondent also uses Complainant’s signature purple color on its websites.
14. Respondent was aware of Complainant and its mark when it registered the disputed domain names because Complainant’s marks are famous. Respondent registered <yahoocheckinvisible.com> on February 26, 2010 and checkyahooinvisible.com> on March 1, 2010.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the YAHOO! mark. Respondent’s domain names are confusingly similar to Complainant’s YAHOO! mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <yahoocheckinvisible.com> and checkyahooinvisible.com> domain names, and that Respondent registered and uses the domain names 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 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.”).
Preliminary Issue: Multiple Respondents
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that Respondents are one in the same because the disputed domain names are used for virtually identical websites. The Panel concludes that the domain names are under common control and therefore are “registered to the same domain name holder.”
Complainant explains that it is a global technology company that provides a wide array of products and services, including a search engine and communication tools on computers and other devices including mobile devices, tablets, and televisions. More specifically, Complainant states that it offers programs such as YAHOO! SEARCH, YAHOO! MAIL, YAHOO! MESSENGER, YAHOO!TOOLBAR, YAHOO! NEWS, YAHOO! FINANCE, YAHOO! SPORTS, YAHOO! OMG!, YAHOO! MOVIES, YAHOO! TV, YAHOO! MUSIC, and YAHOO! SHINE. Additionally, Complainant states that it has continuously used the YAHOO! mark since 1994 and has provided the Panel with evidence of its registration for the YAHOO! mark with the USPTO (e.g., Reg. No. 2,040,222 registered February 25, 1997). Evidence of a registration with the USPTO is sufficient evidence to establish rights in a given mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Further, it is irrelevant whether a complainant registered a trademark in the country in which the respondent resides. 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). The Panel therefore concludes that Complainant has rights in the YAHOO! mark under Policy ¶ 4(a)(i).
Additionally, Complainant contends that Respondent’s <yahoocheckinvisible.com> and <checkyahooinvisible.com> domain names are confusingly similar to Complainant’s YAHOO! mark under Policy ¶ 4(a)(i). Respondent’s domain names contain Complainant’s mark with the addition of a generic or descriptive word. Complainant argues that the terms “invisible” and “check” in the disputed domain names relate to Complainant’s YAHOO! MESSENGER service that offers the “invisible” setting to its users. Adding descriptive words to a registered mark does not sufficiently distinguish a domain name. See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). Complainant further contends that Respondent removes the exclamation point in Complainant’s YAHOO! mark and adds the gTLD “.com.” Punctuation such as the exclamation point in Complainant’s mark and gTLDs are irrelevant to the confusingly similar analysis. 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 concludes that Respondent’s <yahoocheckinvisible.com> and <checkyahooinvisible.com> domain names are confusingly similar to Complainant’s YAHOO! mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant states that nothing in Respondent’s WHOIS information demonstrates that Respondent is commonly known by the domain names. The WHOIS information for the domain names list “Whois Agent” as the registrant. A respondent is not commonly known by a domain name where there is no evidence on the record to indicate such a relationship. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Based on the evidence provided, Respondent is not commonly known by the <yahoocheckinvisible.com> or <checkyahooinvisible.com> domain names under Policy ¶ 4(c)(ii).
Furthermore, Complainant claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <yahoocheckinvisible.com> or <checkyahooinvisible.com> domain names. Complainant supports this claim by providing the Panel with screenshots of the websites that resolve from the disputed domain names. Respondent’s domain names resolve to websites featuring advertisements and links for directly competing websites. Both websites appear to feature advertisements for video games, including the phrase “Play Now,” “Free,” and “VIP Code.” The <yahoocheckinvisible.com> domain name features an advertisement stating, “Buy a Mac, iPad or iPhone for college and get a gift card for apps and more.” Using a confusingly similar domain name to resolve to a website featuring advertisements that compete with a complainant does not indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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)). The Panel concludes that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names under Policy ¶¶ 4(c)(i) or (iii).
Complainant asserts that Respondent runs a commercial website offering software that circumvents and interferes with Complainant’s YAHOO! MESSENGER service, and allows Respondent to obtain confidential information of Complainant’s users. Both domain names resolve to websites prominently displaying the color purple with the welcome message stating, “Hello, this website that can help you check status of Yahoo Messenger ID of your friends is Online, Offline or Invisible? You put a Yahoo Messenger ID in below box and click detect. It will detect and show you if the yahoo ID is Invisible, Online or Offline. It also shows that avatar and other information about Yahoo IDs.” The websites then prompts the Internet user to “Please enter your friends (sic)Yahoo ID.” Using a domain name to resolve to a website attempting to solicit personal information indicates a phishing scheme. See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (holding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)). The Panel concludes that Respondent has no rights or legitimate interests in the disputed domain names because Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain names under Policy ¶¶ 4(c)(i) or (iii), by phishing for personal information.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii). Complainant asserts that Respondent has a pattern of bad faith use and registrations. Complainant states that Respondent’s registration of multiple domain names infringing on Complainant’s YAHOO! mark indicates a pattern of bad faith behavior. Registering more than one domain name featuring a complainant’s mark indicates bad faith use and registration under Policy ¶ 4(b)(ii). See YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark). Respondent’s registration of two infringing domain names is evidence that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).
Secondly, Complainant asserts that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii). Complainant claims, as discussed above, that Respondent’s use of the disputed domain names disrupts Complainant’s business by using the domain name for commercial websites featuring advertisements for competing websites. Bad faith use and registration under Policy ¶ 4(b)(iii) is found when a respondent uses confusingly similar domain names to display links and advertisements that compete with complainant, thus disrupting the complainant’s business. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel concludes that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Additionally, Complainant contends that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent uses the disputed domain names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its registered mark as to the source, sponsorship, affiliation, and endorsement of Respondent. Complainant notes Respondent also uses Complainant’s signature purple color on its websites. Furthermore, the disputed domain names resolve to websites that feature Complainant’s YAHOO! mark repeatedly. Bad faith use and registration exists where a respondent uses a confusingly similar domain name to resolve to a website featuring competing links and characteristics similar to a complainant’s to attract Internet users to the website and presumably profit. 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 concludes that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent uses the disputed domain names to resolve to websites that request Internet users to enter Yahoo ID names which amount to phishing--a tactic that aims at fraudulently obtaining personal information from Internet users. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”). A respondent acts in bad faith when it attempts to acquire personal information through a confusingly similar domain name and confusingly similar website. See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (concluding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use). The Panel finds that Respondent’s attempt to acquire the Yahoo IDs of Internet users indicates a phishing scheme and therefore bad faith use and registration under Policy ¶ 4(a)(iii).
Complainant also contends that in light of the fame and notoriety of Complainant's YAHOO! mark, it is inconceivable that Respondent could have registered the <yahoocheckinvisible.com> and <checkyahooinvisible.com> domain names without actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the domain names which is e 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoocheckinvisible.com> and <checkyahooinvisible.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 15, 2014
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