Yahoo! Inc. v. Domain Vault / Domain Vault LLC
Claim Number: FA1509001636906
Complainant is Yahoo! Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Domain Vault / Domain Vault LLC (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoophonebook.com>, registered with Name.com, Inc.
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 Forum electronically on September 8, 2015; the Forum received payment on September 8, 2015.
On September 14, 2015, Name.com, Inc. confirmed by e-mail to the Forum that the <yahoophonebook.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 September 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 2015 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@yahoophonebook.com. Also on September 17, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 uses the YAHOO! trademark and service mark in connection with its business as a global technology company.
Complainant holds rights registration for the YAHOO! trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 2,403,227, registered November 14, 2000).
Respondent registered the domain name <yahoophonebook.com> on October 11, 2004.
The domain name is confusingly similar to Complainant’s YAHOO! mark.
Respondent has not been commonly known by the domain name.
Respondent is not linked to Complainant or its business, and Complainant has
not authorized Respondent to use its YAHOO! mark in the domain name.
Respondent uses the domain name to resolve to a generic parked webpage, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of Complainant’s YAHOO! mark in the domain name creates confusion among Internet users, which Respondent exploits for commercial gain.
Respondent knew of Complainant and its rights in the YAHOO! mark when Respondent registered the domain name.
Respondent has engaged in a pattern of bad faith registrations of domain names.
Respondent has registered and is using the domain name 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, and pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel will decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it considers appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable 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! trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO. See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (finding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <yahoophonebook.com> domain name is confusingly similar to Complainant’s YAHOO! mark. The domain name contains the mark in its entirety, merely adding the generic term “phonebook” and the generic Top Level Domain (“gTLD”) “.com,” and removes the exclamation point from the mark. These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (finding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
See also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” to the mark of another in creating a contested domain name was insufficient to differentiate that domain name from the mark).
Further see Napster, Inc. v. Mededovic, D2005-1263 (WIPO Jan. 17, 2006) (finding confusing similarity where a disputed domain name was composed of the trademark of a UDRP complainant combined with the generic suffix “togo.”).
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent 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) (finding that a UDRP complainant must make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under ¶ 4(a)(ii) before the burden shifts to a 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 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the allegations 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 finding 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 examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent 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 <yahoophonebook.com> domain name, that Respondent is not linked to Complainant or its business, and that Complainant has not authorized Respondent to use its YAHOO! mark in the domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Domain Vault,” of the organization “Domain Vault LLC,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <yahoophonebook.com> domain name to resolve to a generic parked webpage, which Respondent exploits for commercial gain. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website resolving from a domain name that was confusingly similar to the mark of a UDRP complainant did not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent has engaged in a pattern of registering domain names that were confusingly similar to the commercial marks of others, as found in previous UDRP proceedings. See The Wendy’s Company and Quality Is Our Recipe, LLC v. Whois Privacy Protection Service, Inc. / Domain Vault LLC, WIPO Case No. D2015-1370; Yahoo! Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Domain Vault, Domain Vault LLC, WIPO Case No. D2015-0500; Yahoo! Inc. v. Domain Vault, Domain Vault LLC, WIPO Case No. D2014-1830; and eClinicalWorks, LLC v. Whois Privacy Protection Service, Inc./Domain Vault LLC, WIPO Case No. D2014-1059. Under Policy ¶ 4(b)(ii), this stands as evidence of Respondent’s bad faith in registering and using the instant domain name. See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith under Policy ¶ 4(b)(ii) where a respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
We are also convinced by the evidence that Respondent has registered and is using the contested <yahoophonebook.com> domain name, which is confusingly similar to Complainant’s YAHOO! mark, to profit from confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this too is proof of Respondent’s bad faith in registering and using the domain name. See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005):
[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).
Finally, under this head of the Policy, it is evident that Respondent knew of Complainant and its rights in the YAHOO! mark when Respondent registered the <yahoophonebook.com> domain name. This is a further indication of Respondent's bad faith in registering the domain name. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (finding that a respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) where that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel thus 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 <yahoophonebook.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 15, 2015
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