Yahoo Inc. v. Alamin Kiron
Claim Number: FA2210002018162
Complainant is Yahoo Inc. ("Complainant"), United States, represented by Joseph Daniels-Salamanca of Kilpatrick Townsend & Stockton LLP, United States. Respondent is Alamin Kiron ("Respondent"), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoosmm.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to Forum electronically on October 28, 2022; Forum received payment on October 28, 2022.
On October 31, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by email to Forum that the <yahoosmm.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 October 31, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@yahoosmm.com. Also on October 31, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 provides a variety of services under the YAHOO! mark, including online advertising and marketing, online publications and livestreams, web directory and search services, and more. Complainant has used the mark in this manner for many years and has long ranked among the most visited sites on the Internet. Complainant owns longstanding trademark registrations for YAHOO! in countries around the world, including Bangladesh and the United States. Complainant asserts that the YAHOO! mark is famous and notes that it has been found so in more than 100 previous proceedings under the Policy.
Respondent registered the disputed domain name <yahoosmm.com> in September 2020. The domain name is being used for a website called "YAHOOSMM.COM" that describes itself as an "SMM service reseller panel." (As of the filing of the Complaint, the domain name no longer resolves to a website.) Complainant explains that "SMM" stands for "social media marketing." Complainant alleges that Respondent's website offers advertising and marketing services that compete with those offered by Complainant, and that Respondent is operating a phishing scheme intended to obtain personal data and financial information from users of Complainant's services. Complainant states that Respondent is not commonly known by the domain name, has no relationship with Complainant, and is not authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <yahoosmm.com> is confusingly similar to its YAHOO! mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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:
(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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <yahoosmm.com> incorporates Complainant's registered YAHOO! trademark, omitting the exclamation point, and adds the generic abbreviation "SMM" (for "social media marketing") and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Yahoo! Inc. v. Yahooteb / Rezai, FA 1517431 (Forum Oct. 2, 2013) (finding <yahooteb.com> confusingly similar to YAHOO!); Yahoo! Inc. v. Amir Zardadi, FA 1432972 (Forum Apr. 7, 2012) (finding <yahootar.com> confusingly similar to YAHOO!); Yahoo! Inc. v. Huafang Liu, FA 1426589 (Forum Mar. 8, 2012) (finding <yahoosir.com> confusingly similar to YAHOO!); Yahoo! Inc. v. Alanadi Idarecisi, FA 1083155 (Forum Nov. 12, 2007) (finding <yahoodsl.com> confusingly similar to YAHOO!). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and its sole apparent use has been for a misleading (and possibly now defunct) website promoting services similar to those offered by Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Yahoo Inc. v. Amit Kumar Rawat, FA 1986917 (Forum Apr. 5, 2022) (finding lack of rights or interests in similar circumstances); Yahoo! Inc. v. Yahooteb / Rezai, supra (same); Yahoo! Inc. v. Amir Zardadi, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating Complainant's famous mark and has used or is using it for a misleading website that promotes competing services. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Yahoo Inc. v. Amit Kumar Rawat, supra (finding bad faith registration and use in similar circumstances); Yahoo! Inc. v. Yahooteb / Rezai, supra (same); Yahoo! Inc. v. Amir Zardadi, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoosmm.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: November 29, 2022
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