Yahoo Assets LLC v. Zanybh Solutions
Claim Number: FA2211002022077
Complainant is Yahoo Assets LLC (“Complainant”), USA, represented by Joseph Daniels-Salamanca of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Zanybh Solutions (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <techcrunchblog.com>, registered with NameCheap, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on November 29, 2022; Forum received payment on November 29, 2022.
On November 30, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <techcrunchblog.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 December 2, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 2022 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@techcrunchblog.com. Also on December 2, 2022, 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.
On December 5, 2022, Respondent submitted a formal Response to Forum.
On December 8, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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
i) Complainant, Yahoo Assets LLC, uses the TECHCRUNCH mark in connection with a variety of technology-related goods and services, including an online technology publication. Complainant has rights in the TECHCRUNCH mark through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,064,062, which was registered on November 29, 2011). The disputed domain name is identical or confusingly similar to the TECHCRUNCH mark because it includes the mark in its entirety, merely appending a generic term and a generic top-level domain (“gTLD”).
ii) Respondent lacks rights or a legitimate interest in the disputed domain name since Respondent is not commonly known by the name and Complainant has no relationship with Respondent whereby Respondent would have rights to use the TECHCRUNCH mark. Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services, nor making a legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent hosts a website that contains multiple hyperlinks to third-party sites, some of which compete with Complainant, and displays services that compete with Complainant. Respondent also uses the disputed domain name to conduct a phishing scheme.
B. Respondent
1. The disputed domain name was registered on September 21, 2020.
2. Complainant has established rights in the TECHCRUNCH mark through the USPTO (e.g., Reg. No. 4,064,062, which was registered on November 29, 2011).
3. The disputed domain name’s resolving website hosts multiple hyperlinks to third-party sites, some of which compete with Complainant, and displays services that compete with Complainant.
4. The disputed domain name’s resolving website features Complainant’s TECHCRUNCH mark in the header of every page along with news and blog articles relating to business, gadgets, apps, and marketing—all of which Complainant offers under the TECHCRUNCH mark and various other brands operated by Complainant.
5. The disputed domain name’s resolving website is engaging in link farming – the creation of websites that backlink to other domain names owned by Respondent or by third parties.
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.
Complainant claims rights in the TECHCRUNCH mark through several trademark registrations, including with the USPTO (e.g., Reg. No. 4,064,062, which was registered on November 29, 2011). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant provides evidence of registration of the TECHCRUNCH mark with the USPTO, the Panel finds Complainant has demonstrated rights in the TECHCRUNCH mark per Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <techcrunchblog.com> is confusingly similar to its TECHCRUNCH mark because it wholly incorporates the TECHCRUNCH mark, simply appending the generic term “blog” and the “.com” gTLD. When a disputed domain name includes the entirety of a mark, adding a descriptive term and a gTLD, it has been found insufficient to defeat a finding of confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). As the disputed domain name incorporates Complainant’s mark in its entirety, adding a descriptive term “blog,” and the “.com” gTLD, the Panel finds that the disputed domain name is confusingly similar to Complainant’s TECHCRUNCH mark under Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and there is no relationship between the parties that would give Respondent rights to use the TECHCRUNCH mark. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). In addition, where there is no evidence to indicate a complainant is associated with a respondent such that a complainant may have authorized respondent to use a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”); see also Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”).
The unmasked WHOIS information for the disputed domain name lists the registrant as “Zanybh Solutions.” There is no other evidence to suggest that Respondent is affiliated with Complainant and was authorized to use the TECHCRUNCH mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant claims that Respondent impersonates Complainant through its use of a website containing the TECHCRUNCH mark and similar services for profit, which is evidence that Respondent lacks a bona fide offering of goods or services or a legitimate noncommercial use. Previous panels have determined that when a respondent passes itself off either as or associated with a complainant to draw Internet traffic and divert it from a complainant, such use does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] 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 also Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”)
Complainant provides evidence that the resolving webpage features Complainant’s TECHCRUNCH mark and displays technology-related news articles and blog posts, the same service Complainant offers under the TECHCRUNCH mark. As the Panel agrees that Respondent appears to be passing off as Complainant to draw Internet traffic, the Panel finds that Respondent lacks any bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Given the considerations above, the Panel finds that Complainant has made out a prima facie case. As the onus thus shifts to Respondent, the Panel must now see if Respondent has rebutted the prima face case and shown that it has a right or legitimate interest in the disputed domain name.
Respondent contends that Complainant made his domain available on Namecheap Domain Registrar, whereas trademark right holders had the option to make it unavailable. Respondent purchased the disputed domain as it was available on NameCheap Domain Registrar, and thus it should be allowed to keep the disputed domain name.
The Panel is of the view that Complainant’s absence of taking measures to prevent the availability of a third party’s registration of a domain name similar to Complainant’s trademark neither justifies nor confers rights or legitimate interests to the registration of such domain names. The Panel therefore finds that Respondent has failed to rebut the prima facie case against it, and thus it concludes that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent registered and uses the disputed domain name in bad faith by passing itself off as or affiliated with Complainant. Respondent diverts Internet traffic from Complainant and offers competing services, sponsored advertisements, and hyperlinks.
Complainant has provided screenshots of the disputed domain name’s resolving website titled “TECH CRUNCH BLOG,” where Complainant’s TECHCRUNCH mark is prominently featured in the header of every page of the resolving website along with news and blog articles relating to business, gadgets, apps, and marketing—all of which Complainant offers under the TECHCRUNCH mark and various other brands operated by Complainant. Complainant has also provided exhibits showing that the disputed domain name’s resolving website is engaging in link farming – the creation of websites that backlink to other domain names owned by Respondent or by third parties to increase the page rankings of the linked websites. The disputed domain name’s resolving website features 1,704 pages, 278 of which were created within the same minute on November 1, 2021. Another set of 287 pages on the resolving website were created within the same minute on November 11, 2021. All of these pages, more than 550 in total, lead to the same website, which uses the same registrar, the same designs, the same “subscribe” icon, and the same layout as the disputed domain name’s resolving website.
Use of a disputed domain name to pass off as a complainant and offer competing or counterfeit versions of its products may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
The Panel is of the view that Respondent’s hosting competing or unrelated hyperlinks for financial gains is evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Zynex Medical, Inc. v. New Ventures Services, Corp, FA 1788042 (Forum July 2, 2018) (“The resolving webpage [] appears to display [competing] links such as “Electrical Stimulation” and “Physical Therapy Software.” Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).”). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant further argues that Respondent registered and uses the disputed domain name in bad faith because Respondent had knowledge of Complainant’s rights in the TECHCRUNCH mark because the disputed domain name’s resolving website prominently features Complainant’s TECHCRUNCH mark on every page. Although panels have generally not regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of a complainant’s rights in the mark prior to registering a disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (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.”). The Panel infers, due to the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in its TECHCRUNCH mark at the time of registering the disputed domain name, which constitutes bad faith registration under Policy ¶ 4(a)(iii).
Respondent rebuts to the effect that Complainant made his domain available on Namecheap Domain Registrar, whereas trademark right holders had the option to make it unavailable. Respondent purchased the disputed domain as it was available on NameCheap Domain Registrar, and thus it should be allowed to keep the disputed domain name. As noted above, the Panel is of the view that Complainant’s absence of taking measures to prevent the availability of Respondent’s registration of the disputed domain name that is confusingly similar to Complainant’s trademark does not excuse Respondent’s registration and use of the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <techcrunchblog.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: December 12, 2022
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