Yahoo! Inc. v. Moldoveanu Catalin
Claim Number: FA1405001559047
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is Moldoveanu Catalin (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ydetector.ro>, registered with Romarg SRL.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 12, 2014; the National Arbitration Forum received payment on May 13, 2014.
On May 14, 2014, Romarg SRL confirmed by e-mail to the National Arbitration Forum that the <ydetector.ro> domain name is registered with Romarg SRL and that Respondent is the current registrant of the name. Romarg SRL has verified that Respondent is bound by the Romarg SRL 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 May 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 2014 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@ydetector.ro. Also on May 14, 2014, 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.
A timely Response was received and determined to be complete on June 3, 2014.
On June 9, 2014,Additional Submission was received which were consider to comply with Supplemental Rule 7.
On June 13, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka 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.
Language of the Proceedings
The Panel finds that the language of the present proceeding should be English, although the Registrar of the disputed domain name has informed the Center that the language of the relevant registration agreement was Romanian.
The Panel concludes that, according to Rules, paragraph 11(b), the language of the proceedings shall be English for the following reasons:
- Both Complainant and Respondent had filed procedural documents in English;
- The website to which the disputed domain name resolves uses also English language.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that:
a) Complainant is a global technology company that provides a wide array of products and services. One such service is called Y! Messenger, which is an instant messaging services that provides an interactive and personalized way for users to communicate on a real-time basis. This service allows users to choose between the settings “available,” “busy,” or “invisible.” The “invisible” setting allows users to not be visible to other users online. See Complainant’s Exhibit 7.
b) Complainant has rights in the Y! mark, used in connection with communication and chat services. Complainant owns registrations for the Y! mark with the Office for Harmonization of the Internal Market (“OHIM”) (e.g., Reg. No. 000907840 registered December 11, 2000). Complainant also owns the Y! mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,638,064 registered October 22, 2002).
c) Respondent’s <ydetector.ro> domain name is confusingly similar to Complainant’s Y! mark. The disputed domain name omits the exclamation mark, which is required by the DNS system, and combines Complainant’s mark with generic or descriptive term “detector” as well as the country-code top-level domain (“ccTLD”) “.ro.”
d) Respondent does not have any rights or legitimate interests in the <ydetector.ro> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its Y! mark in any way.
b. The <ydetector.ro> domain name features sponsored-link advertisements for directly competing websites. See Complainant’s Exhibit 12.
c. Respondent primarily uses the <ydetector.ro> domain name to distribute software to circumvent and/or interfere with Complainant’s Y! Messenger service. The software allows Internet users to detect the online status of Y! Messenger users, including those who do not want to be detected.
d. The <ydetector.ro> domain name also prominently features Complainant’s famous Y! logo on the resolving website, which provides additional evidence to support a finding that Respondent lacks rights or legitimate interests in the domain name.
e) Respondent registered and is using the <ydetector.ro> domain name in bad faith.
a. Respondent is disrupting Complainant’s business by using the disputed domain name for a commercial website featuring advertisements for directly competing websites and software to circumvent and/or interfere with Complainant’s Y! Messenger service. See Complainant’s Exhibit 12.
b. Respondent is attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s Y! mark. Respondent is using Complainant’s Y! logo, displaying competing commercial advertisements, and promoting software that interferes with Complainant’s Y! Messenger service. See Complainant’s Exhibit 12.
c. Respondent’s unauthorized use of the Complainant’s Y! logo on the resolving website constitutes an independent ground for a finding of bad faith.
d. Respondent had knowledge of Complainant’s Y! mark prior to registering the <ydetector.ro> domain name because the resolving website uses Complainant’s logo and has direct references to Complainant and its services. See Complainant’s Exhibit 12.
B. Respondent
By its Response, the Respondent
a) Respondent compares the <ydetector.ro> domain name to Complainant’s YAHOO! mark, and urges that the disputed domain name is not confusingly similar to the YAHOO! mark.
b) Respondent does not sell anything through the <ydetector.ro> domain name. Respondent does not offer software through the disputed domain name; rather, Respondent provides a formula where users can type their username and see if they are online or offline.
C. Additional Submissions
By its Additional Submission, the Complainant asserts that:
a) Respondent’s argument regarding confusingly similarity with comparison to the YAHOO! mark is irrelevant because Complainant also has rights in the Y! mark.
b) Respondent’s website clearly targets Complainant and Complainant’s customers.
c) Regardless of Respondent’s alleged lacked of malicious intent, the use of the <ydetector.ro> domain name provides clear evidence of bad faith.
The Respondent had registered the disputed domain name which intentionally reproduces the Complainant’s trademark Y! and by doing so circumvents and/or interferes with Complainant’s Y! Messenger service
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.
Complainant contends it has rights in the Y! mark, used in connection with communication and chat services. Complainant states it owns registrations for the Y! mark with the OHIM (e.g., Reg. No. 907,840 registered December 11, 2000) and with the USPTO (e.g., Reg. No. 2,638,064 registered October 22, 2002). Past panels have found that registration of a trademark with a recognized trademark authority is sufficient to establish rights in the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the Y! mark within the meaning of Policy ¶ 4(a)(i) because Complainant holds registrations for mark with the OHIM and USPTO.
Complainant alleges that Respondent’s <ydetector.ro> domain name is confusingly similar to Complainant’s Y! mark. Complainant asserts that the disputed domain name omits the exclamation mark, which is required by the DNS system, and combines Complainant’s mark with generic or descriptive term “detector” as well as the ccTLD “.ro.” In Yahoo! Inc. v. YAHOO.COM / YAHOO! INC., FA 1532273 (Nat. Arb. Forum Jan. 10, 2013), the panel found the <ymail.com.co> domain name confusingly similar to the complainant’s Y! mark because the “[r]espondent’s elimination of punctuation does not distinguish the disputed domain name from Complainant’s mark,” and the “[r]espondent’s addition of a generic or descriptive term is inconsequential.” The Panel also notes that the addition of a ccTLD is irrelevant for the purposes of confusing similarity analysis. See Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”).
On the other side, the Respondent compares the <ydetector.ro> domain name to Complainant’s YAHOO! mark, and urges that the disputed domain name is not confusingly similar to the YAHOO! mark.
However, Complainant argues that Respondent’s argument regarding confusingly similarity with comparison to the YAHOO! mark is irrelevant because Complainant also has rights in the Y! mark. The Panel notes that Complainant has in fact established rights in the Y! mark and this is the mark to which comparison is to be made by the Panel. Therefore, the Panel need not analyze whether the <ydetector.ro> domain name is confusingly similar to Complainant’s YAHOO! mark because the Panel finds that Complainant has already satisfied its burden under Policy ¶ 4(a)(i) through its evidence and argument in connection with the Y! mark.
As the UDRP practice holds, the 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 contends that Respondent does not have any rights or legitimate interests in the <ydetector.ro> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its Y! mark in any way. The Panel notes that the WHOIS record does not list a domain name registrant or any other information that would identify the domain name registrant. See Complainant’s Exhibit 1.
Complainant alleges that the <ydetector.ro> domain name features sponsored-link advertisements for directly competing websites. See Complainant’s Exhibit 12. Past UDRP panels have found that using a confusingly similar domain name to host competing advertisements fails to demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because the disputed domain name resolves to a website featuring advertisements for Complainant’s competitors.
Complainant asserts that Respondent primarily uses the <ydetector.ro> domain name to distribute software to circumvent and/or interfere with Complainant’s Y! Messenger service. Complainant explains that the software allows Internet users to detect the online status of Y! Messenger users, including those who do not want to be detected. In Yahoo! Inc. v. Domain Admin / PrivacyProtect.org / Whois Agent / Whois Privacy Protection Service, Inc., FA 1532946 (Nat. Arb. Forum Jan. 15, 2014), the respondent was running a commercial website with a 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.” There, the panel found that the respondent was not making a bona fide offering of goods or services or a legitimate noncommercial or fair use by phishing for personal information. The Panel notes that striking similarity between the case above and the facts in this case. Therefore, the Panel finds that Respondent is not making 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) because the Respondent is using the <ydetector.ro> domain name to distribute software to circumvent or interfere with Complainant’s Y! Messenger service.
Complainant argues that the <ydetector.ro> domain name also prominently features Complainant’s famous Y! logo on the resolving website, which provides additional evidence to support a finding that Respondent lacks rights or legitimate interests in the domain name. See Complainant’s Exhibit 12. In H-D v. Private Whois Service, FA 1328876 (Nat. Arb. Forum July 12, 2010), the panel found that use of the complainant’s Harley Davidson logo, mark, and a similar color scheme to the one used by the complainant was sufficient to find that the respondent was attempting to pass itself off as the complainant. Further, past panels have found that passing off is evidence of a respondent’s lack of rights and legitimate interests in the disputed domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Therefore, if the Panel finds that Respondent is attempting to pass itself off as Complainant based on sufficient evidence of Respondent’s use of Complainant’s logo, mark, and color scheme on the website connected to the <ydetector.ro> domain name, then the Panel holds that this finding provides further evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
On the other side, the Respondent argues that he does not sell anything through the <ydetector.ro> domain name. Respondent asserts that he does not offer software through the disputed domain name; rather, Respondent provides a formula where users can type their username and see if they are online or offline.
The Panel cannot agree with the Respondent’s assertions. As stated above there are many elements which proves the contrary and indicative of absence of rights and legitimate interests. The Respondent had registered a domain name which incorporates the Complainant’s famous trademark, reproduces prominently Complainant’s famous Y! logo on the resolving website, provide a soft in connection with the Complainant’s famous Y! Messenger, and the resolving website features sponsored-link advertisements for directly competing websites.
Therefore, this Panel determines that Respondent is using the <ydetector.ro> domain name for any commercial purposes, and finds that Respondent has no rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and is using the <ydetector.ro> domain name in bad faith. Complainant asserts that Respondent is disrupting Complainant’s business by using the disputed domain name for a commercial website featuring advertisements for directly competing websites and software to circumvent and/or interfere with Complainant’s Y! Messenger service. See Complainant’s Exhibit 12. In past cases, panels have found that either aspect of conduct such as that asserted by respondent demonstrates bad faith pursuant to Policy ¶ 4(b)(iii). See Yahoo! Inc. v. ALHIJAZI / saad HIJAZI, FA 1442196 (Nat. Arb. Forum June 12, 2012) (respondent’s use of the <upyahoo.com> domain name for a website featuring ads for competing services disrupts the complainant’s business in bad faith); see also Microsoft Corporation v. ABK / George Owens a/k/a Rohan / Rohan Suha, FA 1473573 (Nat. Arb. Forum Jan. 21, 2013)(“[r]espondent is also disrupting [c]omplainant’s business by causing the public to associate [c]omplainant’s with [r]espondent’s malware warnings, potentially malicious download links, and survey/offer schemes that contain no privacy policies and lack reliable contact information.” Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Therefore, the Panel finds that Respondent is disrupting Complainant’s business pursuant to Policy ¶ 4(b)(iii) because Respondent is offering software that interferes with Complainant’s business and displaying competing advertisements on the resolving website.
Complainant claims Respondent is attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s Y! mark. Respondent is using Complainant’s Y! logo, displaying competing commercial advertisements, and promoting software that interferes with Complainant’s Y! Messenger service. See Complainant’s Exhibit 12. In Yahoo! Inc. v. Manage Technical a/k/a Administration Local, FA 0238649 (Nat. Arb. Forum Apr. 8, 2004, the panel stated that “It is well established that when a domain name registrant incorporates a well-known registered mark in a domain name for the purpose of creating Internet-user confusion as to the sponsorship of the name and then uses it for commercial gain, the registrant has registered and used the name in bad faith pursuant to Policy ¶ 4(b)(iv).” Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Therefore, the Panel finds that Respondent registered and is using the <ydetector.ro> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent is creating a likelihood of confusion with Complainant’s Y! mark through the appearance and commercial use of the disputed domain name.
Complainant argues that Respondent’s unauthorized use of the Complainant’s Y! logo on the resolving website constitutes an independent ground for a finding of bad faith. In H-D v. Private Whois Service, FA 1328876 (Nat. Arb. Forum July 12, 2010), the panel found that use of the complainant’s Harley Davidson logo, mark, and a similar color scheme to the one used by the complainant was sufficient to find that the respondent was attempting to pass itself off as the complainant. Further, past panels have found that passing off is evidence of a respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Therefore, the Panel finds that Respondent is attempting to pass itself off as Complainant based on Respondent’s use of Complainant’s logo, mark, and color scheme on the website connected to the <ydetector.ro> domain name, and holds that this finding provides further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant asserts that Respondent had knowledge of Complainant’s Y! mark prior to registering the <ydetector.ro> domain name because the resolving website uses Complainant’s logo and has direct references to Complainant and its services. See Complainant’s Exhibit 12. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). It is obvious that the Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name, that he had d actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
As a conclusion, this Panel finds Complainant has fully satisfied its burden under 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 <ydetector.ro> domain name be TRANSFERRED from Respondent to Complainant
Beatrice Onica Jarka Panelist
Dated: June 26, 2014
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