Oath Inc. v. Borisov Pavel Sergeevich
Claim Number: FA1907001851228
Complainant is Oath Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Borisov Pavel Sergeevich (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yahoo-for-dating.online> and <yahoo-adultdating.online> registered with Regional Network Information Center, JSC dba RU-CENTER.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 8, 2019; the Forum received payment on July 8, 2019.
On July 9, 2019, Regional Network Information Center, JSC dba RU-CENTER confirmed by e-mail to the Forum that the <yahoo-for-dating.online> and <yahoo-adultdating.online> domain names are registered with Regional Network Information Center, JSC dba RU-CENTER and that Respondent is the current registrant of the names. Regional Network Information Center, JSC dba RU-CENTER has verified that Respondent is bound by the Regional Network Information Center, JSC dba RU-CENTER 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 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2019 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@yahoo-for-dating.online, postmaster@yahoo-adultdating.online. Also on July 9, 2019, 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 August 2, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreement is written in Russian, thereby making it the designated language of the proceedings. However, Complainant has alleged that because Respondent is conversant and proficient in English, these proceedings should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the case. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends that the disputed domains are made up of English words and that the websites to which they redirect traffic use English words, suggesting that Respondent is at least proficient in the English language.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest that the Respondent is conversant and proficient in the English language and Respondent has not contested this or otherwise participated in this case. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant operates in the digital media and online advertising industries. Complainant has rights in the trademark YAHOO! based upon its use since 1994 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”) dating back to 1997. Respondent’s <yahoo-for-dating.online> and <yahoo-adultdating.online> domain names, registered on September 2, 2018 and October 11, 2018 respectively, are identical or confusingly similar to Complainant’s YAHOO! mark because they wholly incorporate Complainant’s YAHOO! mark, and merely add the descriptive terms “for”, “adult”, and “dating”, as well as the “.online” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <yahoo-for-dating.online> and <yahoo-adultdating.online> domain names. Respondent is not authorized or licensed to use Complainant’s YAHOO! mark and there is no evidence to suggest that the Respondent is commonly known by the disputed domain names. Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because the disputed domain names’ resolving webpages host sexually-themed, adult dating content. Respondent also attempts to divert Internet traffic to the disputed domain names for commercial gain.
Respondent registered and uses the <yahoo-for-dating.online> and <yahoo-adultdating.online> domain names in bad faith because the resolving webpages host sexually-themed, adult dating content. Further, Respondent attempts to attract, for commercial gain, users to the disputed domain names’ websites based upon its intent to create confusion with Complainant’s YAHOO! mark. Finally, Respondent had actual knowledge of Complainant’s mark at the time it registered the disputed domains.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed 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:
(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 Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the YAHOO! mark based upon registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate [sic] its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) Here, Complainant provides USPTO printouts evidencing registrations for its trademarks. Therefore, the Panel finds that Complainant has rights in the YAHOO! mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <yahoo-for-dating.online> and <yahoo-adultdating.online> domain names are identical or confusingly similar to Complainant’s YAHOO! mark because they wholly incorporate the mark, and merely add some combination of the descriptive terms “for”, “adult”, and “dating”, as well as the “.online” gTLD. The Panel notes that the disputed domain names omit the exclamation point “!” in Complainant’s trademark and also add hyphens. The addition of generic or descriptive terms and a gTLD to a complainant’s mark, as well as changes in punctuation, have been found insufficient to defeat a finding of confusing similarity pursuant to Policy ¶ 4(a)(i); furthermore, punctuation is not significant in determining similarity. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Yahoo! Inc. v. HEIDI BUI, FA 1638878 (Forum Oct. 26, 2015) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Therefore, the Panel finds Respondent’s disputed domain names to be confusingly similar to the Complainant’s YAHOO! mark.
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 <yahoo-for-dating.online> and <yahoo-adultdating.online> domain names as Respondent is not authorized by Complainant to use the YAHOO! mark and there is no evidence to suggest that Respondent is commonly known by the disputed domain names. Where a response is lacking, relevant WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding that a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Complainant provides WHOIS information for the disputed domain names indicating that Respondent is known as “Borisov Pavel Sergeevich” and no information in the record indicates that Respondent is known otherwise or that it was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the yahoo-for-dating.online> and <yahoo-adultdating.online> domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because the disputed domain names’ resolving webpages host adult-oriented material. There exist a number of UDRP decisions which hold that a respondent’s use of a disputed domain name to display adult-oriented sexual images is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. For example, in Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA 1732665 (Forum July 7, 2017), the Panel held that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.” It went on to find that “[h]ere, Complainant provided screenshots of Respondent’s resolving website which displays adult-oriented images. Therefore, the Panel holds that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name.” Id. No other basis for the Panel’s finding under Policy ¶ 4(c)(i) is made in the Altria Group decision. However, the Panel in the present case does not view the adult-themed nature of a website, alone, as sufficient grounds upon which to find a lack of bona fide offering of goods or services. Rather, such cases should be examined in the same manner as disputes involving industries other than adult entertainment including a full range of factors such as the use of a confusingly similar domain name, the nature of the website (commercial or otherwise), evidence of a genuine (i.e., not pretextual or exploitative) business plan utilizing the domain name, and other evidence generally pointing to a lack of indicia of cybersquatting intent. See TeamShiffrin, LLC v. Ray Leal, FA 1771643 (Forum Mar. 27, 2018) citing WIPO Jurisprudential Overview 3.0 at par. 2.2. As such, the Panel declines to find that Respondent’s use of the disputed domains is not bona fide solely on the basis of the adult-themed content to which they resolve.
Complainant also argues that the Respondent is not making a bona fide offering of goods and services under the disputed domain names as they redirect to third-party commercial content that makes no mention of, and has no relationship to Complainant. UDRP panels have found that leading consumers who are searching for a particular business, to a site where unrelated commercial services provided by others are listed, is not a bona fide use. See Homer, TLC Inc. v. Lorna Kang, FA 573872 (Forum Nov. 22, 2005) (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party website for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use....”) Here, Complainant provides screenshots of the disputed domain names’ resolving webpages which host commercial adult dating content that is unauthorized by, and bears no relationship to Complainant. The Panel finds that Respondent has improperly leveraged the confusingly similar nature of the disputed domains in an attempt at commercial gain and that such activity fails to demonstrate a bona fide offering of goods or services under Policy ¶ 4(c)(i).
Complainant further argues that Respondent fails to uses the yahoo-for-dating.online> and <yahoo-adultdating.online> domain names in connection with a legitimate noncommercial or fair use as Respondent attempts to divert Internet traffic to the disputed domain names for commercial gain. Using a disputed domain name to divert Internet traffic from a complainant for commercial gain may not be a legitimate noncommercial or fair use under Policy ¶ 4(c)(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).”) Here, Complainant argues that Respondent uses the disputed domain names to divert Internet traffic from Complainant to the commercial websites of the disputed domain names. Therefore, the Panel finds that Respondent fails to a make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent registered and uses the <yahoo-for-dating.online> and <yahoo-adultdating.online> domain names in bad faith because Respondent had actual knowledge of Complainant’s rights in the YAHOO! mark. Actual knowledge of a complainant’s rights in a mark prior to registering a disputed domain name is an adequate foundation upon which to build a finding of bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Here, Complainant argues, with supporting evidence, that its YAHOO! marks are well known and globally famous. As such, the Panel determines that Respondent had actual knowledge of Complainant’s rights in the mark under Policy ¶ 4(a)(iii).
Complainant further argues that Respondent registered and uses the <yahoo-for-dating.online> and <yahoo-adultdating.online> domain names in bad faith because Respondent attempts to attract, for commercial gain, users to the disputed domain names where the resolving webpages host adult-oriented material. Prior UDRP decisions have held that a respondent’s use of a disputed domain name to display adult-oriented images can evince bad faith registration and use. See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”) Similar to its reasons noted above, this Panel declines to find bad faith based solely on the nature of the websites to which the disputed domain names resolve. However, the use of a confusingly similar domain name to mislead users to third-party websites for commercial gain does provide firm ground upon which to find bad faith registration and use. See Government Employees Insurance Company ("GEICO") v. Michal Restl c/o Dynadot, D2018-1685 (WIPO, Aug. 25, 2018) (finding bad faith use based upon the Respondent's activities of using the disputed domain name to redirect web users to commercial websites unrelated to the Complainant). Here, the Complainant has provided screenshots of the disputed domain names’ resolving webpages which host third-party, commercial adult-themed dating content. Based upon this use of Complainant’s trademark the Panel finds that Respondent has engaged in bad faith registration and use of the disputed domains under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoo-for-dating.online> and <yahoo-adultdating.online> domain names be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 5, 2019
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