Yahoo! Inc. v. Yahoo Web Hosting Services / Ahmed Hamed
Claim Number: FA1401001539227
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is Yahoo Web Hosting Services / Ahmed Hamed (“Respondent”), Egypt.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoo-eg.net>, 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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on January 14, 2014; the National Arbitration Forum received payment on January 14, 2014.
On January 16, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail message addressed to the National Arbitration Forum that the domain name <yahoo-eg.net> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of that domain 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 January 16, 2014, the Forum served the Complaint and all Annexes, includ-ing a Written Notice of the Complaint, setting a deadline of February 5, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administrat-ive, and billing contacts, and to postmaster@yahoo-eg.net. Also on January 16, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 February 10, 2014, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
Operating under its YAHOO! mark, Complainant markets a wide array of prod-ucts and services, including search, content and communications tools on PC’s and other devices such as mobile devices, tablets, and TVs.
Complainant holds registrations for the YAHOO! trademark and service mark, on file with the United States Patent and Trademark Office (“USPTO”), (including Registry No. 2,403,227, registered November 14, 2000).
Respondent registered the <yahoo-eg.net> domain name on December 4, 2013.
The domain name is confusingly similar to Complainant’s YAHOO! mark.
Respondent has not been commonly known by the domain name.
Respondent has never been licensed or otherwise authorized by Complainant to use the YAHOO! mark.
Respondent uses the <yahoo-eg.net> domain name to resolve to a website offer-ing web hosting services directly competing with the business of Complainant.
Such use is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use.
Respondent does not have rights to or legitimate interests in the <yahoo-eg.net> domain name.
Respondent registered the <yahoo-eg.net> domain name shortly after Complain-ant prevailed in a UDRP decision issued against Respondent in a prior UDRP proceeding regarding the <yahoo-eg.com> domain name (Yahoo! v. Yahoo Web Hosting Services / Ahmed Hamed, FA 1527400 (Nat. Arb. Forum Dec. 4, 2013)).
The facts in that case mirror those in the present dispute.
Respondent’s registration and use of the <yahoo-eg.net> domain name disrupt Complainant’s business.
Respondent employs the <yahoo-eg.net> domain name to attract to its resolving website, for commercial gain, Internet users who are confused as to the possibil-ity of Complainant’s affiliation with or endorsement of the resolving website.
Respondent’s registration and use of the <yahoo-eg.net> domain name are in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the YAHOO! mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from its registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Egypt). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a UDRP complainant can demonstrate rights in its mark in some jurisdiction).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <yahoo-eg.net> domain name is confusingly similar to Complainant’s YAHOO! mark. The domain name contains the entire mark but for the exclamation point, adding only a hyphen, the country-code “eg,” for Egypt, and the generic Top-Level Domain (“gTLD”) “.net.” These alterations of the mark, made in forming the domain name, do not save it from the realm of con-fusing similarity under the standards of the Policy. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that, under the Policy, punctuation is not significant in determining the question of confusing similarity as between a domain name and the mark from which it was derived).
See also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004), the panel there concluding that: “…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”
Finally, see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding, under Policy ¶ 4(a)(i), that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the mark of another).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a UDRP complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this branch of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Complaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the <yahoo-eg.net> domain name, and that Respondent has never been licensed or otherwise authorized by Complainant to use the YAHOO! trademark and service mark. Moreover, although the WHOIS record for the domain name identifies the registrant as “Yahoo Web Hosting Services / Ahmed Hamed,” this designation is not identical to the domain name, and there is nothing in the record to suggest that Respondent has been commonly known by the domain name. On this record, we conclude that Respondent has not been commonly known by the domain name so as to have acquired rights to or legitimate interests in it within the contemplation of Policy ¶ 4(c)(ii). See, for example, Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003), the panel there finding that a respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name.”
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <yahoo-eg.net> domain name to resolve to a website offering web hosting services directly competing with the business of Complain-ant. This employment of the domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website that competed with the business of a UDRP complain-ant, was not a bona fide offering of goods or services Policy ¶ 4(c)(i)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We conclude from the evidence that Respondent has demonstrated bad faith in the registration and use of the <yahoo-eg.net>, within the meaning of Policy ¶ 4(b)(ii), by registering it shortly after Respondent was found by another UDRP panel to have registered and used in bad faith another domain name trading on the YAHOO! mark, <yahoo-eg.com>. See Yahoo! v. Yahoo Web Hosting Services / Ahmed Hamed, FA 1527400 (Nat. Arb. Forum Dec. 4, 2013). As is alleged in the Complaint in this proceeding, the facts in that case mirror those in the present dispute. By this behavior Respondent has shown a pattern which illuminates the question of bad faith in this proceeding. See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding bad faith under Policy ¶ 4(b)(ii) where a “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).
We are also persuaded by the evidence that Respondent’s registration and use of the <yahoo-eg.net> domain name as alleged in the Complaint disrupts Complainant’s business. This stands as proof of bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006), the panel there finding that a respondent registered and used a disputed domain name in bad faith under Policy ¶ 4(b)(iii) by employing it to redirect Internet users to that respondent’s website, which operated in competition with the business of a UDRP complainant.
In addition, that Respondent uses the <yahoo-eg.net> domain name, which is confusingly similar to Complainant’s YAHOO! trademark and service mark, to attempt to profit from confusion caused among Internet users as to the possibility of Complainant’s affiliation with the domain name, is also evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding, under Policy ¶ 4(b)(iv), that a respondent engaged in bad faith registra-tion and use of domain names that were confusingly similar to a UDRP complain-ant’s mark by using them to redirect users to a website that offered services similar to those sold by that complainant).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <yahoo-eg.net> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 11, 2014
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