Yahoo! Inc. v. Neil Macbeath / Merchant World Service Inc. / M Ka. / Anonymous Domain Networks
Claim Number: FA1406001567019
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is Neil Macbeath / Merchant World Service Inc. / M Ka. / Anonymous Domain Networks (“Respondent”), represented by Michael Kapoustin, Ontario, Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yahoopegs.com> and <ypegs.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2014; the National Arbitration Forum received payment on June 26, 2014.
On June 26, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <yahoopegs.com> and <ypegs.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 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@yahoopegs.com, postmaster@ypegs.com. Also on June 27, 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 Response was received in a timely manner on July 17, 2014. However, the Exhibits attached to the Response were determined to be deficient on July 18, 2014, because they were not submitted in a timely manner pursuant to Supplement Rule 5(a).
Complainant submitted a timely Additional Submission on July 22, 2014. Respondent submitted a timely Additional Submission on July 28, 2014.
On July 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant names Neil Macbeath / Merchant World Service Inc. / M Ka. / Anonymous Domain Networks as the single Respondent in this case. The WHOIS information shows that Neil Macbeath / Merchant World Service Inc. is listed as the registrant of the domain name <yahoopegs.com> and M Ka. / Anonymous Domain Networks is listed as the registrant of the domain name <ypegs.com>. Complainant argues that, because the two domain names are used for virtually identical websites on the same server, the registrants must be “one and the same.” Complainant cites Yahoo! Inc. v. Domain Admin / Privacy Protection.org / Whois Agent / Whois Privacy Protection Service, Inc. FA 1532946 (Nat. Arb. Forum Jan. 15, 2014) in support of its argument, and provides the declaration of Leslie Gutowski who accessed the Domain Names and screen shots from the associated websites. The Panel notes that the Yahoo! case above that was cited by Respondent did not contain a response, and thus the panel in that case was entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence was 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.”).
Here, there is a Response and thus the Panel is not automatically entitled to accept Complainant’s allegations as true. The Panel notes that the screenshots for <yahoopegs.com> and <ypegs.com> domain names, provided as Exhibits to the declaration of Leslie Gutowski, consist of advertisements and warnings, and are similar but not exactly the same. Furthermore, Complainant notes that the registrants for the two disputed domain names have different e-mail addresses and different physical addresses. Without more to show that the registrants are the same, the Panel determines that the Complaint is deficient under the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds that Complainant has not presented sufficient arguments and evidence to demonstrate that the disputed domain names are registered by the same person or entity and therefore may not proceed in one action as to both domain names. The Panel will make a determination on <yahoopegs.com>. The Panel, under the National Arbitration Forum’s Supplemental Rule ¶ 4(f)(ii), is required to dismiss without prejudice the Complaint as it pertains to <ypegs.com>.
A. Complainant
1. Respondent’s <yahoopegs.com> domain name is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <yahoopegs.com> domain name.
3. Respondent registered and uses the <yahoopegs.com> domain name in bad faith.
B. Respondent
1. Complainant has not proven that Respondent’s <yahoopegs.com> domain name is confusingly similar to Complainant’s YAHOO! Mark.
2. Respondent is making a fair use of the word “yahoo” in the <yahoopegs.com> domain name.
3. Respondent purchased the <yahoopegs.com> domain name as an investment and therefore has a legitimate legal interest in the domain name.
4. Respondent denies that he registered and uses the <yahoopegs.com> domain name in bad faith.
C. Complainant’s Additional Submission
1. Complainant is not required to prove third-party confusion under the UDRP.
2. Respondent is not making a fair use of the <yahoopegs.com> domain name where it is being used for pay-per-click revenue, news services that compete with Complainant, and malicious downloads.
3. Complainant is not required to prove dilution or actual harm to establish Respondent’s bad faith under the UDRP.
D. Respondent’s Additional Submission consists of the attachments to its original response, which were submitted after the original deadline. The Panel will consider the attachments, as Respondent was entitled to submit an Additional Submission, and it was submitted on time.
Procedural Issue 1: Applicability of the UDRP
Respondent claims that it did not agree to arbitration and cannot be bound to this proceeding. However, Respondent could not have acquired the disputed domain name without signing the Go.Daddy.com, LLC, registration agreement. Go.Daddy.com sent a Verification Notice to the Forum indicating that Respondent’s <yahoopegs.com> domain name is subject to the registration agreement, and Respondent is therefore bound to utilize the UDRP. The Panel notes the following excerpt from the Go.Daddy.com, LLC registration agreement:
You agree to be bound by the rules, policies and agreements of each Registry from which you purchase a domain name registration, which may include, but is not limited to, Top Level Domain Registries and Second Level Domain Registrations. You further agree to comply with the ICANN requirements, standards, policies, procedures, and practices for which each applicable Registry Operator has monitoring responsibility in accordance with the Registry Agreement between ICANN and itself or any other arrangement with ICANN. You further agree to comply with any operational standards, policies, procedures, and practices for the each Registry TLD established from time to time by the applicable Registry Operators in a non-arbitrary manner, which shall be effective thirty (30) days after email notice or posting on this Site.
Respondent’s claim is wholly without merit because it agreed to submit itself to ICANN policies explicitly, and the UDRP is an ICANN Policy, with the National Arbitration Forum being a provider thereunder. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (finding that the UDRP applied because: “[b]y virtue of its contract with NSI, Respondent agreed to be bound by NSI’s then-current domain name dispute policy, and any changes made to that policy made by NSI in the future”). While Policy ¶ 4(k) allows the parties to litigate in court, the Panel may decide this dispute under the guidelines of the Policy.
Procedural Issue 2: Respondent’s Claim of Forum Non Conveniens
Respondent argues that the doctrine of forum non conveniens applies to this proceeding. However, the UDRP is not a federal or state court; it is a forum whose exclusive purpose is to resolve Internet domain name disputes such as this. Furthermore, if such a doctrine applied, it is dependent on the adjudicator’s ultimate decision as to whether the movant suffered an undue burden. See Piper Aircraft Co. v. Reyno, 454 U.S. 235 (1981) (holding that compelling reasons must be shown for a transfer or dismissal under forum non conveniens). Under the UDRP all proceedings occur by submissions over the Internet or through the telephone. There is no element of substantial hardship to the parties, since they do not appear at the hearing. Thus, the Panel rejects Respondent’s forum non conveniens argument.
Procedural Issue 3: Respondent’s Claim of No Procedural Due Process
Respondent claims this proceeding violates his due process rights. The Panel relies on ICANN and UDRP Policies, along with the Forum’s compliance with the Policies, to carry on this proceeding. The Panel declines to rule as to whether or not UDRP proceedings fail to afford Respondent due process rights to a notice and hearing.
Procedural Issue 4: Respondent’s Claim of Inadequate Time to File
Respondent claims it was given inadequate notice because none of the email addresses in the WHOIS information actually resolve to Respondent. Contrary to UDRP Rule 2, however, Respondent failed to include working, reachable e-mail addresses in the contact information for the disputed domain name.
Complainant’s uses its very well known YAHOO! Mark for online and web services, including news services. Complainant has registered the YAHOO! mark with United States Patent and Trademark Office ("USPTO”) (Reg. No. 2,040,222 registered Feb. 25, 1997).
Respondent uses the <yahoopegs.com> domain name for pay-per-click revenue, news services that compete with Complainant, and malicious downloads.
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 that its YAHOO! mark is unmistakable as to its exclusive and heavily protected use as the identifier of Complainant’s online and web services. Complainant has registered the YAHOO! mark United States Patent and Trademark Office ("USPTO”) (e.g., Reg. No. 2,040,222 registered February 25, 1997). The Panel finds that Complainant’s USPTO registration of the mark is sufficient under Policy ¶ 4(a)(i) to establish Complainant’s rights in the mark. 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.”).
Complainant claims the <yahoopegs.com> domain name is confusingly similar to its YAHOO! Mark, as it merely drops the exclamation point and adds “pegs,” a synonym for the generic phrase “news,” and the generic top-level domain (“gTLD”) “.com.” See 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). The Panel agrees that Complainant is not required under the UDRP to prove actual confusion, and finds that the <yahoopegs.com> domain name is confusingly similar to Complainant’s YAHOO! mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant claims Respondent is not known by the <yahoopegs.com> domain name, nor could it be, since the domain name incorporates Complainant’s YAHOO! mark and Respondent is not authorized or licensed to use the mark. The WHOIS record lists Neil Macbeath / Merchant World Service Inc. as the registrant of the disputed domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further alleges that the domain name is being used to generate pay-per-click revenue with links that compete with Complainant. The Panel notes that the domain name resolves to a website containing news stories, hyperlinks to various websites, and a link to a “warning” page that requests the user to install a “security update.” Such uses of a domain name have been long found not legitimate and without rights because there is nothing bona fide about using websites for competing services, hyperlinks, or unwanted web downloads. See, e.g., Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds that Respondent is not using the disputed domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor for a Policy ¶ 4(c)(iii) noncommercial or fair use.
It makes no difference that the website resolving from the <yahoopegs.com> domain name does not use Complainant’s YAHOO! mark; Respondent is still profiting from the unauthorized use of Complainant’s mark. Likewise, it is irrelevant whether Respondent purchased the disputed domain name as an investment. See NY Times Co. v. NY Internet Servs., D2000-1072 (WIPO Dec. 5, 2001) ( “Disclaimers and links directly to the authorized site do not mitigate matters. The misdirected searcher is immediately confronted with advertising that has nothing to do with The New York Times.”). The Panel also dismisses Respondent’s argument that it is using the word YAHOO as a dictionary term, when it is clearly using Complainant’s mark to confuse Internet users and to compete with Complainant.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <yahoopegs.com> domain name resolves to competing links that disrupt the commercial operations of Complainant. This illustrates Policy ¶ 4(b)(iii) bad faith. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Respondent no doubt intends to profit from the likelihood that Internet users will associate the <yahoopegs.com> domain name with Complainant’s legitimate operations. The Panel finds that this constitutes Policy ¶ 4(b)(iv) bad faith. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Complainant states that Respondent allows malicious software to be hosted at the disputed domain name. The Panel notes the “warning” screen that appears when Internet users click through the website at <yahoopegs.com>, apparently rerouting users to malware. The Panel finds that this constitutes bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum Dec. 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”).
Finally, Complainant argues that Respondent had constructive, if not actual, notice of Complainant’s rights prior to registering the disputed domain name. The Panel agrees and finds that, due to the fame of Complainant’s YAHOO! mark, Respondent actually knew of Complainant’s rights in the mark, a further indication of bad faith under Policy ¶ 4(a)(iii). See, e.g., 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.”).
Again, Respondent’s arguments that Complainant has not shown dilution of its YAHOO! mark, and has not shown actual harm by Respondent’s use of the <yahoopegs.com> domain name, are not relevant arguments under the UDRP.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoopegs.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 1, 2014
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