Yahoo! Inc. v. Jeff Duncan
Claim Number: FA1406001566421
Complainant is Yahoo! Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Jeff Duncan (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoopostoffice.com>, registered with FastDomain 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2014; the National Arbitration Forum received payment on June 24, 2014.
On June 25, 2014, FastDomain Inc. confirmed by e-mail to the National Arbitration Forum that the <yahoopostoffice.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 June 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 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@yahoopostoffice.com. Also on June 25, 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 July 14, 2014.
A timely Supplementary Submission was received from Complainant on July 18, 2014. The Panel has accepted this submission, considered it and taken it into account in reaching its decision.
A timely Supplementary Submission was received from Respondent on July 22, 2014. The Panel has accepted this submission, considered it and taken it into account in reaching its decision.
On July 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honhourable Neil Anthony Brown QC 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.
A. Complainant
Complainant made the following contentions
1. Complainant has used the YAHOO! mark for many years to market its web and mass communication services. Complainant has registered YAHOO! with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,403,227 registered Nov. 14, 2000).
2. Respondent’s <yahoopostoffice.com> domain name takes the entire mark, minus the exclamation, and adds the generic phrase “post office” and the generic top-level domain ("gTLD") “.com.” The omission of the exclamation point does not create a distinct domain name.
3. Respondent has no rights in the <yahoopostoffice.com> domain name.
Respondent has never been commonly known by this domain name.
4. Respondent registered the domain name on October 25, 2012 and is using the domain name to host a private website protected by a password-protected login screen. See Compl., at Attached Ex. Q. On this website there are various hyperlink advertisements to commercial endeavors that compete with Complainant.
5. Respondent registered and has used the disputed domain name in bad faith. First, Respondent allows competing offers to appear on the <yahoopostoffice.com> domain name in move that disrupts Complainant’s business. Secondly, Respondent if profiting from the likelihood Internet users will associate the <yahoopostoffice.com> domain name with the YAHOO! mark. Finally, in using in this domain name the YAHOO! mark Respondent had actual knowledge of the trademark.
B. Respondent
There is no confusing similarity in that the domain name does not include the exclamation point. Using the term “yahoo” is acceptable here.
Respondent has in fact actually made an active use of the domain name in hopes of sparking the interest of Complainant’s executives and even created a user ID for one of Complainant’s chief executive officer. The domain name reroutes authorized users to Respondent’s own other domain names, many of which are operating on outdated technology that makes their visibility near-impossible to almost all modern Internet users. Thus, any potentially competing offers are not visible to the ordinary user.
Respondent has no bad faith here. First, the commercial links noted by Complainant cannot be reached unless an Internet user explicitly types in a very specific web address—there is no banner or hyperlink that the ordinary Internet user could find to these websites on the original website. Respondent admits it knew of the YAHOO! mark, but claims this domain name was registered in hopes of getting Complainant, or Google, Inc., to enter a business venture with Respondent.
C. Additional Submissions
1. Complainant made the following contentions in its Supplementary Submission.
“Complainant submits this Reply in response to the arguments set forth in Respondent’s Response submitted on July 14, 2014. The Respondent’s claims and admissions in the Response are made with blatant disregard to the Policy, both in terms of substance and the purpose behind the Policy, and serve to not only support Complainant’s contentions, but effectively verify Respondent’s bad faith use and registration of the Infringing Domain Name in violation of the Policy.
Specifically, Respondent’s statements in the Response establish that the Respondent registered the Infringing Domain Name with Complainant’s Mark in mind for the purpose of presenting a business opportunity to Complainant’s CEO, Marissa Mayer, and the CEO of Complainant’s competitor, Google. As stated in the Response, Respondent’s “intention had always been to expose the opportunity to both Google and Yahoo and if the first to review my proposal choose to accept it, there was the possibility that it would not be exposed to the second.” Respondent’s statements substantiate Respondent’s bad faith under Policy ¶ 4(b)(i) since they provide evidence that Respondent registered the Infringing Domain Name “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.” Policy ¶ 4(b)(i).
Additionally, Respondent attempts to defend his registration of the Infringing Domain Name based on the argument that the Infringing Domain Name is not confusingly similar to Complainant’s YAHOO! Mark because Respondent omitted the exclamation point in the Infringing Domain Name. As an initial matter, the Respondent expressly contradicts this claim in the Response by conceding that the Infringing Domain Name is “quite similar” to Complainant’s YAHOO! Mark. Moreover, as established in the Complaint, omission of an exclamation point is irrelevant to the confusingly similar analysis under Policy ¶ 4(a)(i) because exclamation point characters are not permitted in domain names, and even if they were, omission of an exclamation point in this case is irrelevant because the YAHOO! Mark is distinctive and arbitrary and the YAHOO portion is the dominant, source identifying portion of the mark. See, e.g., Yahoo! Inc. v. Scott McVey, D2011-1486 (WIPO Nov. 15, 2011) (“this Panel finds that the relevant trademark YAHOO! is recognizable as such within each disputed domain names, albeit without the exclamation mark ‘!’. The exclamation mark is not relevant for any aural comparison.”); Yahoo! Inc. v. Syed Hussaini, FA 1222425 (Nat. Arb. Forum Oct. 30, 2008) (“Complainant’s YAHOO! mark, cannot be registered under the current DNS system in its entirety since the exclamation point character is not valid in domain names. The absence of the exclamation point (!) regarding the at-issue domain name is thus of no consequence. [citation omitted] Notably, even if the exclamation point were permitted it’s absence would not sufficiently differentiate the Complainant’s mark and the at-issue domain name to cause the Panel to reach an alternative conclusion.”); Yahoo! Inc. v. Ratnayake, FA 1142577 (Nat. Arb. Forum Mar. 24, 2008) (“Because exclamation points are not a permitted character in domain names, the disputed domain names [<yahoomail.ws> and <yahooadvertiser.com>] do not include the exclamation point found in Complainant’s mark. The absence of this punctuation, however, does not change the analysis under Policy ¶ 4(a)(i).”). Since omission of the exclamation point is irrelevant under Policy ¶ 4(a)(i), for the reasons established in the Complaint, the Infringing Domain Name is confusingly similar to the Complainant’s Mark.
Finally, Respondent attempts to argue that although the Infringing Domain Name does not currently resolve to an active webpage, Respondent is not passively holding the Infringing Domain Name because Respondent intends to make active use of the Infringing Domain Name at an undisclosed future date. As established in the Complaint, UDRP decisions have consistently held that a registrant’s failure to make an active use of a disputed domain name is not a Policy ¶ 4(c)(ii) bona fide offering of goods and services or a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use. See e.g. Google Inc. v. Jiang Wei / HangZhou Eplus Science & Technology Co.,Ltd, FA1110001411338 (Nat. Arb. Forum October 19, 2011) (finding “that Respondent’s failure to make an active use of the <googleplus.net> domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).”); Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding non-use of a domain name is not a bona fide offering of goods or services nor is it a legitimate noncommercial or fair use of the domain name); Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (finding that “the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Accordingly, Respondent’s argument is absurd and serves as evidence of Respondent’s admission that he currently has “no rights or legitimate interests in respect of the domain name” Policy ¶ 4(a)(ii).
Conclusion
Respondent’s admissions in his Response serve to further support Complainant’s contentions that Respondent registered the Infringing Domain Name with Complainant’s Mark in mind with the intention of selling or transferring the Infringing Domain Name back to the Complainant for commercial gain. As such, based on the circumstances enumerated above and in the Complainant, it is clear that Respondent registered a domain that is identical and confusingly similar to Complainant’s YAHOO! Mark, that Respondent has no legitimate interest in the Infringing Domain Name, and that Respondent registered and used the Infringing Domain Name in bad faith and in violation of the Policy.”
2. Respondent
Respondent made the following contentions in his Supplementary Submission.
“In the respondent’s opinion, the Complainant does not introduce any new evidence or argument to support the original claims, but rather restates and attempts to draw conclusion on behalf of the Arbitrator. Consequently the respondent will rely primarily on the original response submission previously provided and address herein only the unique issues put forward in the additional submission.
Complainant indicates in the opening paragraph that “The Respondent’s claims and admissions in the Response are made with blatant disregard to the Policy”. If this is referring to the UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY, I apologize to the arbitrator for any disregard. Having no experience in this matter, I have attempted to follow the policy as I interpreted it and any failure to do so was unintentional and I will attempt to remedy any such failure that I am made aware of.
Respondent counter claims that Complainant in “blatant disregard to the Policy” failed to copy the Panel on correspondence he initiated during this arbitration as Provided for in Section 2.(h)(iii) of “The Policy” as stated below and documented in Annex AA.
2. Communications
(h) Any communication by
(iii) a Party shall be copied to the other Party, the Panel and the Provider, as the case may be.
Complainant States:
Specifically, Respondent’s statements in the Response establish that the Respondent registered the Infringing Domain Name with Complainant’s Mark in mind for the purpose of presenting a business opportunity to Complainant’s CEO, Marissa Mayer, and the CEO of Complainant’s competitor, Google. As stated in the Response, Respondent’s “intention had always been to expose the opportunity to both Google and Yahoo and if the first to review my proposal choose to accept it, there was the possibility that it would not be exposed to the second.” Respondent’s statements substantiate Respondent’s bad faith under Policy ¶ 4(b)(i) since they provide evidence that Respondent registered the Infringing Domain Name “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.” Policy ¶ 4(b)(i).
Response:
The complainant is fully aware that this is not the case. I did not obtain nor am I maintaining the domain “primarily for the purpose of selling, renting, or otherwise transferring the domain…” As documented in Annex AA, an email stream has been exchanged with the Complainant confirming the statement in my original responses that if Ms. Mayer is not interested in reviewing the proposal that is being documented on the site in question, that I will turn over the domain without any further contingency or costs. While the email from David Caplan quotes me as saying I “offered to relinquish the domain name”, this is a fallacious quote. The offer was taken out of context as is discussed in my response to Mr. Caplan also in Annex AA.
Furthermore:
Complainant provides continuing and redundant arguments regarding the distinction of YAHOO! and yahoo (with and without the exclamation point). But they fail to respond to the question raised in the original response of why they have not trademarked the term without the exclamation point. Numerous other companies have trademarked this name (Yahoo) as documented in Annex E of the original response (re-provided herein as Annex BB for convenience). Either the Complainant has failed to protect this name, when others have chosen to do so in disparate fields of business, or they have been denied a trademark without the exclamation point. In either case the distinction of having or not having the exclamation point is recognized by the US Patent and Trademark Office. I again suggest that the history of YAHOO! attempting to obtain this trademark be explored and implore the arbitrator to request this information as provided for in Section 12 of the “The Rules”.
Complainant States:
Finally, Respondent attempts to argue that although the Infringing Domain Name does not currently resolve to an active webpage, Respondent is not passively holding the Infringing Domain Name because Respondent intends to make active use of the Infringing Domain Name at an undisclosed future date. …
Response:
While there may be a legal definition of “passive” that I am not equipped to address, the fundamental facts of the situation certainly describe a “passive” use of the site in layman’s terms. There appear to be no disputed facts that the domain does not resolve to an active site and that there had never been any intention to publish anything competitive or of a commercial nature on the site. The sole purpose of the domain was to gain the audience of the CEO of YAHOO!. Furthermore, the offer to the CEO that should they be not interested in discussions, that the domain would be abandoned without hesitation or cost. I contend that this is, always has been, and is committed in written to be a “passive” use of the domain.
Complainant States:
Conclusion
Respondent’s admissions in his Response serve to further support Complainant’s contentions that Respondent registered the Infringing Domain Name with Complainant’s Mark in mind with the intention of selling or transferring the Infringing Domain Name back to the Complainant for commercial gain. As such, based on the circumstances enumerated above and in the Complainant, it is clear that Respondent registered a domain that is identical and confusingly similar to Complainant’s YAHOO! Mark, that Respondent has no legitimate interest in the Infringing Domain Name, and that Respondent registered and used the Infringing Domain Name in bad faith and in violation of the Policy.
Response/Conclusion:
Contrary to the statement above, and as has been discussed, the offer has been made to transfer the domain without any commercial gain. Ownership of the Domain is in no way competitive to the Complainant and no loss of business, competitive position or other benefit has been claimed by the Complainant. No commercial gain has been obtained by the Respondent, nor shall it be in the future with the possible “stretch” exception of the site’s recognition by the YAHOO! CEO resulting in her looking at the business proposal that will be presented. However, even this possible exception is fully at the control of YAHOO! as the offer to surrender the domain if the CEO does not wish to review the proposal has previously been made without any further contingencies or time limits.
It is my request, and I believe a fair request, that the panel find in my favor in this matter, or if unable to do so completely, provide me with a time period of 90 days or more to comply with a transfer such that I can complete the proposal discussed herein and provide Ms. Mayer with the opportunity to review it.”
1. Complainant is a very prominent and successful United States technology company whose main website is at www.yahoo.com.
2. Complainant has used the YAHOO! mark for many years to market its web and mass communication services. Complainant has registered YAHOO! with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,403,227 registered Nov. 14, 2000).
3. Respondent registered the domain name on October 25, 2012 and is using the domain name to host a private website protected by a password-protected login screen. See Complainant’s Exhibit Q. On this website there are various hyperlink advertisements to commercial endeavors that compete with Complainant.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims it has used the YAHOO! mark for many years to market its web and mass communication services. Complainant has registered YAHOO! with the USPTO (e.g., Reg. No. 2,403,227 registered Nov. 14, 2000). The Panel here agrees that this USPTO registration is valid evidence of Policy ¶ 4(a)(i) rights in the YAHOO! mark. See Amusement Art, LLC v. zarathustra james / bomit, FA 1536201 (Nat. Arb. Forum Jan. 29, 2014) (“The Panel observes that Respondent appears to reside and operate within the United States. Therefore, the Panel holds that Complainant’s registration of the MR BRAINWASH mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s YAHOO! mark. Complainant claims Respondent’s <yahoopostoffice.com> domain name takes the entire mark, minus the exclamation point, and adds the generic phrase “post office” and the gTLD “.com.” Complainant claims the omission of the exclamation point does not create a domain name so distinct from the trademark that the domain name is not confusingly similar to the trademark and that the domain name is therefore still confusingly similar. The Respondent says that the domain name cannot be confusingly similar with a trademark with an exclamation point when the exclamation point does not appear in the domain name. The Panel agrees with Complainant, as prior panels have, that as there can be no exclamation point in domain names, the absence of one in a domain name like the present does not negate a finding of confusing similarity that is otherwise present as it is in this case. In other words, a domain name may be confusingly similar to a trademark, whether or not the trademark ends with an exclamation point and whether or not the exclamation point is reproduced in the domain name. In the present case, the substance of the trademark is YAHOO and the domain name is confusingly similar to that trademark as it is obvious that the domain name registrant is trying to invoke a reference to Complainant’s famous trademark. Likewise, the addition of generic terms and gTLD evinces Policy ¶ 4(a)(i) confusing similarity. See, e.g., Yahoo! Inc. v. CDN Props. Incorp., FA 1560952 (Nat. Arb. Forum June 16, 2014); Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s YAHOO! mark and to use it in its domain name;
(b) Respondent has then used the domain name to host a private website protected by a password-protected login screen. See Compl., at Attached Ex. Q. On this website there are various hyperlink advertisements to commercial endeavors that compete with Complainant;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant submits that Respondent has never been commonly known by this domain name. Respondent, in his response, largely avoids this issue by claiming he only sought to register the domain name to pitch a business idea. As such, the Panel agrees there is no basis for finding Respondent to be commonly known by the <yahoopostoffice.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
As those matters make out the prima facie case, the Panel must now examine Respondent’s case to see if he can rebut that prima facie case. The Panel finds that the matters submitted by Respondent do not rebut the prima facie case for the following reasons.
The case against Respondent is essentially contained in the following paragraph of Complainant’s submissions:
“On or around July 2012, Yahoo announced the appointment of its new CEO,
Marissa Mayer, signaling Yahoo’s intention to shift its business strategy to a focus on the development and implementation of web-based technology products. See Annex L (A true and correct copy of the CNN article titled “Yahoo earnings ‘solid’ for Marissa Mayer’s first quarter” dated October 22, 2012). On October 25, 2012, the same day Respondent registered the Infringing Domain Name, several media outlets reported announcement of Yahoo’s first acquisition under the leadership of its new CEO. See Annex M (A true and correct copy of the CNN article titled “Yahoo CEO Marissa Mayer buys Justin Bieber-backed startup Stamped” dated October 25, 2012).”
Respondent’s reply is essentially contained in the following paragraph of his submissions:
“I was not aware of the coincidental actions taken by Yahoo! on the same day as my registering the infringing name, but even if I was I don’t see what relevance this would have to question at hand. In reality my selection of Yahoo to pursue as a potential sponsor for a business concept was in large part because of Ms. Mayer’s recent appointment as President and CEO, not any particular acquisition that she made. It was my hope that presenting a compelling business opportunity to her would be welcomed as she recently took on the role of leading the company in new and productive directions. My plan to forward her a secure link to a web site with similarity to her own domain is intended peak her interest and improve my chances of gaining her attention.”
The problem for Respondent in this argument is that even if it were literally true it does not give rise to a right or legitimate interest in the domain name. Clearly, no-one has the right to take another party’s trademark and doing so to galvanize the trademark owner’s attention and strongly encourage it to enter into a business relationship under which it would “sponsor” Respondent’s project, cannot give a legitimacy to a domain name that was not otherwise present.
Secondly, the whole thrust of the manoeuvre being described by Respondent has an element of force and compulsion about it. His admission that he wanted to “pursue” the President and CEO of Complainant, his wish to “peak her interest” and the fact that the object of the exercise was to have Complainant “ sponsor the project”, meaning to pay or to do something for Respondent in his, rather than Complainant’s interest, can hardly create a legitimacy that was not otherwise there. Moreover, in his Supplementary Submission, Respondent puts it that “The sole purpose of the domain was to gain the audience of the CEO of YAHOO!.” The motives of Respondent may be above reproach, but the fact remains that to register a domain name using someone else’s trademark without permission and for the purpose of gaining an audience with a targeted business partner cannot convert illegitimacy into legitimacy.
In any event there is an additional reason why Respondent has not rebutted the prima facie case against him. Complainant claims Respondent is using this domain name to host a private website protected by a password-protected login screen. See Compl., at Attached Ex. Q. Complainant notes that on this website there are various hyperlink advertisements to commercial endeavors that compete with Complainant. See Complainant’s Ex. R. The Panel accepts the evidence of Complainant in this regard. The Panel agrees that based on this record, there is no basis for finding Policy ¶ 4(c)(i) or ¶ 4(c)(iii) rights when the domain name is used by Respondent to host wholly unrelated websites over which Complainant has no control. See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).
Respondent also claims that there is a right or legitimate interest in the domain name as he is making “a legitimate noncommercial & fair use of the domain.” That submission cannot be sustained, as the attempt to win Complainant’s support, according to the Response was for a “business” proposition, not a non-commercial one.
Respondent therefore has not rebutted the case against it and the Panel finds Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims Respondent allows competing offers to appear on the <yahoopostoffice.com> domain name in a move that disrupts Complainant’s business. The Panel notes note that this domain name’s entry portal contains a single message: “This site is not public and is privately owned. If you have been invited to enter, [a hyperlink reading “click here” is inserted] Otherwise --- move on!” See Complainant’s Exhibit. Q. The Panel finds this to constitute bad faith. See, e.g., Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Secondly, Complainant claims Respondent is profiting from the likelihood Internet users will associate the <yahoopostoffice.com> domain name with the YAHOO! mark. The Panel agrees that Respondent’s use of the website is evidently to host a personal, private, webpage. See Compl., at Attached Ex. Q. The Panel agrees that Respondent here has acted in Policy ¶ 4(b)(iv) bad faith as Respondent most likely profits from a likelihood of confusion based on the use of the domain name. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Thirdly, Complainant claims the YAHOO! mark was used in this domain name as a result of Respondent’s actual knowledge of the trademark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed 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).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the YAHOO! mark and in view of the conduct that Respondent has engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoopostoffice.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 28, 2014
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