Yahoo! Inc. v. James Anderson
Claim Number: FA1407001570001
Complainant is Yahoo! Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is James Anderson (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tohackyahoo.com>, registered with ENOM, 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 July 16, 2014; the National Arbitration Forum received payment on July 16, 2014.
On July 17, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <tohackyahoo.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 July 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 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@tohackyahoo.com. Also on July 21, 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.
On August 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable 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 uses the YAHOO! mark extensively in its web and Internet services business. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,403,227 registered Nov. 14, 2000). The mark and the domain name are confusingly similar.
2. Respondent lacks rights and legitimate interests in this domain name. Respondent is not known by the domain name. Respondent’s use of the domain name is neither bona fide nor a legitimate noncommercial or fair use.
3. Respondent registered and used the <tohackyahoo.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is the famous United States web and Internet services business.
2. Complainant is the owner of numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for the YAHOO! mark (e.g., Reg. No. 2,403,227 registered Nov. 14, 2000).
3. Respondent registered the <tohackyahoo.com> domain name on April 16, 2014.
4. The disputed domain name resolves to a website offering a malicious software program that facilitates the theft of, and/or induces others to obtain fraudulently, the confidential information of Complainant’s users.
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 issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the YAHOO! mark extensively in its web and Internet services business. Complainant notes the mark has been registered with the USPTO (e.g., Reg. No. 2,403,227 registered Nov. 14, 2000). The Panel finds this registration to satisfy Policy ¶ 4(a)(i)’s required showing of rights, regardless of where Respondent dwells. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The second issue that arises is whether the disputed <tohackyahoo.com> domain name is identical or confusingly similar to Complainant’s YAHOO! mark Complainant claims the mark and the domain name are confusingly similar. The Pane notes the <tohackyahoo.com> domain name adds the generic top-level domain ("gTLD") “.com” and the phrase “to hack” onto the mark, without the mark’s exclamation point. The Panel agrees that none of these alterations avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Yahoo! Inc. v. Domain Administrator / Fundacion Private Whois, FA 1541475 (Nat. Arb. Form March 14, 2014) (in finding <hackyahoofree.com> confusingly similar to Complainant’s YAHOO! mark, the Panel stated that “the terms “hack” and “free” are merely generic terms incapable of distinguishing the disputed domain name from Complainant’s mark.”); see also Yahoo! Inc. v. Ratnayake, FA 1142577 (Nat. Arb. Forum March 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).
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 and has added the generic expression “to hack” which suggests that the domain name will lead to information related to hacking into Complainant’s system and services;
(b) Respondent registered the disputed domain name on April 16, 2014;
(c) The disputed domain name resolves to a website offering a malicious software program that facilitates the theft of, and/or induces others to obtain fraudulently, the confidential information of Complainant’s users;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant claims Respondent has never been known by the <tohackyahoo.com> domain name. The Panel notes the WHOIS information lists “JAMES ANDERSON” as the registrant of record for this domain name. On this evidence, the Panel concludes there is no basis for finding Respondent to be commonly known by the domain name within Policy ¶ 4(c)(ii). 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);
(f) Complainant also notes Respondent uses the <tohackyahoo.com> domain name to promote the exchange of malicious software. See Compl., at Attached Ex. R. In Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010), the panel agreed that one would be hard pressed to find any rights or legitimate interests in the promotion of malicious software. Then as here, the Panel agrees Respondent’s use is wholly without a Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
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 is disrupting Complainant’s business by offering off this hacking application and malicious software. See Compl., at Attached Ex. R. The Panel agrees that disruption under Policy ¶ 4(b)(iii) requires some element of competition. As such, the Panel finds Policy ¶ 4(b)(iii) bad faith as it finds the software offerings to be competitive vis-à-vis the YAHOO! business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Secondly, Complainant submits the domain name is being used to capitalize on a likelihood of confusion. The Panel again notes the domain name appears to be facilitating the spread of malicious software. See Compl., at Attached Ex. R. Prior panels have found that the provision of malicious software can create a likelihood of confusion sufficient to give rise to Policy ¶ 4(b)(iv) bad faith. See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)). The Panel here similarly concludes Respondent’s actions demonstrate bad faith within the meaning of Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent registered the domain name with actual knowledge of Complainant’s mark. The Panel agrees with that submission given the fact that the domain name has only been used to promote software that specifically hacks into YAHOO! services. As such, the Panel finds Policy ¶ 4(a)(iii) bad faith registration. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
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 <tohackyahoo.com> domain name using the YAHOO! mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it 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 <tohackyahoo.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: August 16, 2014
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