Yahoo! Inc. v. CDN Properties Incorporated CDN Properties Incorporated / CDN Properties Incorporated
Claim Number: FA1405001560952
Complainant is Yahoo! Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is CDN Properties Incorporated CDN Properties Incorporated / CDN Properties Incorporated (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoostores.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 May 22, 2014; the National Arbitration Forum received payment on May 22, 2014.
On May 27, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <yahoostores.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 June 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 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@yahoostores.com. Also on June 2, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
June 27, 2014, 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.
On June 2, 2014, Respondent submitted an email (“Other Correspondence”) to the National Arbitration Forum stating its willingness to transfer the domain name. However, since there has been no request to withdraw the complaint pursuant to the National Arbitration Forum Supplemental Rule 12(b), the panel will issue a decision.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
i. Complainant, Yahoo! Inc., is a global technology company focused on making the world’s daily habits inspiring and entertaining.
ii. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the YAHOO! mark (e.g., Reg. No. 2,040,222, registered February 25, 1997).
iii. Respondent’s disputed domain name is confusingly similar to Complainant’s YAHOO! mark.
i. Respondent has no rights or legitimate interests in the disputed domain name.
ii. Respondent is not commonly known by the infringing domain name.
iii. Respondent uses the infringing domain name to redirect users to a parked webpage displaying links to third-party websites offering competing services to Complainant’s services.
i. Respondent registered and used the infringing domain name in bad faith.
ii. Respondent’s resolving website contains links to competing third-party commercial websites.
iii. Respondent registered the disputed domain name with the intent to cause confusion.
iv. Respondent registered the disputed domain name with Complainant’s mark in mind.
Respondent
Although the Forum received other correspondence from Respondent, the Forum did not receive a formal, timely response.
For the 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 alleges that it is a global technology company focused on making the world’s daily habits inspiring and entertaining. Complainant asserts that it is the owner of trademark registrations with the USPTO for the YAHOO! mark (e.g., Reg. No. 2,040,222, registered February 25, 1997). The Panel notes that although Respondent resides in Panama, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the Respondent’s country of origin. 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). Thus, the Panel finds that Complainant’s registration of the YAHOO! mark with the USPTO sufficiently proves that it has rights in the mark pursuant to 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).
Complainant contends that Respondent’s <yahoostores.com> domain name is confusingly similar to Complainant’s YAHOO! mark. Complainant asserts that Respondent merely adds a generic or descriptive term to Complainant’s mark in the disputed domain name. The Panel holds that Respondent’s addition of a generic or descriptive term does not prevent a panel from finding confusing similarity under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Complainant asserts that the omission of the exclamation point from the YAHOO! mark in the disputed domain name is irrelevant. The Panel agrees and determines that Respondent’s elimination of punctuation does nothing to negate confusing similarity pursuant to Policy ¶ 4(a)(i). 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). Finally, the Panel notes that Respondent includes the generic top-level domain (“gTLD”) “.com” in the disputed domain name. The Panel finds that Respondent’s addition of a gTLD is inconsequential pursuant to a Policy ¶ 4(a)(i) determination. See 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”). Consequently, the Panel holds that Respondent’s <yahoostores.com> domain name is confusingly similar to Complainant’s YAHOO! 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 contends that Respondent is not commonly known by the <yahoostores.com> domain name. Complainant alleges that nothing in Respondent’s WHOIS information or the record shows that Respondent is commonly known by the disputed domain name. The WHOIS record lists “CDN Properties Incorporated CDN Properties Incorporated / CDN Properties Incorporated” as the registrant of the disputed domain name. Further, Complainant states that it has not authorized Respondent to use its YAHOO! mark in a domain name or otherwise. Thus, the Panel concludes that Respondent has not been commonly known under the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant claims that Respondent uses the <yahoostores.com> domain name to redirect users to a parked webpage displaying links to third-party websites offering competing services to Complainant’s services. Complainant asserts that Respondent is using the disputed domain name to redirect Internet users to a webpage displaying links such as “Yahoo Stores,” “Yahoo Online Store,” “Online Retail Stores,” and more. Complainant alleges that Respondent presumably receives pay-per-click fees from these linked websites. In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), the panel held that the operation of a pay-per-click website at a confusingly similar domain name was not 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). Accordingly, the Panel finds that Respondent is not using the <yahoostores.com> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant has proven this element.
Complainant alleges that Respondent’s website resolving from the <yahoostores.com> domain name contains links to competing third-party commercial websites. Respondent’s disputed domain name leads to a competing website hosting third-party links titled “Yahoo Small Business Domain,” “Yahoo Merchant Solutions,” “Online Retail Stores,” and more. The Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s legitimate business, and concludes that Respondent has registered and is using the <yahoostores.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant argues that Respondent registered the <yahoostores.com> domain name with the intent to cause confusion. Complainant contends that Respondent intentionally created a likelihood of confusion with Complainant by hosting competing links on its disputed domain name. Complainant argues that Respondent is using the disputed domain name to capitalize on consumers’ familiarity with Complainant and to intentionally attract Internet users for its own financial gain. The Panel finds that Respondent is using the disputed domain name to attract users to its website for which it profits. The Panel holds that Respondent has registered and is using the <yahoostores.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
Complainant states that Respondent registered the <yahoostores.com> domain name with Complainant’s mark in mind. Complainant alleges that it first used the YAHOO! mark in 1994. Complainant further claims that the YAHOO! mark is recognized and relied upon by online consumers throughout the world. The Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the YAHOO! mark and Complainant's rights. Thus, the Panel holds that Respondent registered the <yahoostores.com> domain name in bad faith under Policy ¶ 4(a)(iii). 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."); 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.”)
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <yahoostores.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: July 7, 2014
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