DECISION

Taboola.com Ltd. v. Bianca Stafford

Claim Number: FA1910001867776

PARTIES

Complainant is Taboola.com Ltd. (“Complainant”), represented by Isabella M. Storey of Taboola.com Ltd., Israel. Respondent is Bianca Stafford (“Respondent”), Illinois, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <taboola-us.com>, registered with 1&1 IONOS SE.

PANEL

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 21, 2019; the Forum received payment on October 21, 2019.

On October 21, 2019, 1&1 IONOS SE confirmed by e-mail to the Forum that the <taboola-us.com> domain name is registered with 1&1 IONOS SE and that Respondent is the current registrant of the name. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@taboola-us.com. Also on October 22, 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 November 14, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Parties’ Contentions

1. Complainant is a discovery platform that delivers personalized recommendations to users every month on the web’s most innovative and highly-visited websites. Complainant has rights in the TABOOLA mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g. 3,481,994 registered Aug. 5, 2008.) See Amend. Compl. Ex. E. Respondent’s <taboola-us.com> domain name is identical or confusingly similar to Complainant’s mark as it includes the TABOOLA mark in its entirety, adding the generic word “us” and the “.com” generic top-level domain (“gTLD”).

2. Respondent lacks rights or legitimate interests in the <taboola-us.com> domain name. Respondent is not commonly known by the disputed domain name and Respondent is not a licensee or authorized to use the Complainant’s mark. See Amend. Compl. Ex. L. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name resolving website resolves to a generic landing page containing advertisements and is used for phishing activities.

3. Respondent registered and uses the domain name <taboola-us.com> in bad faith. Respondent does make an active use of the domain name. Further, Respondent engages in an email phishing scheme directed towards Complainant’s employees. In addition, the fame of Complainant’s mark demonstrates that Respondent had actual knowledge of Complainant’s rights in the mark.

FINDINGS

1. Respondent’s <taboola-us.com> domain name is confusingly similar to Complainant’s TABOOLA mark.

2. Respondent does not have any rights or legitimate interests in the <taboola-us.com> domain name.

3. Respondent registered or used the <taboola-us.com> domain name in bad faith.

DISCUSSION

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”).

Identical and/or Confusingly Similar

Complainant asserts rights in the TABOOLA mark based on registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of 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 its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides copies of its registration of the TABOOLA mark with the USPTO (e.g. 3,481,994 registered Aug. 5, 2008.) See Amend. Compl. Ex. E. Accordingly, the Panel finds that Complainant has established rights in the TABOOLA mark for the purposes of Policy ¶ 4(a)(i).

Complainant next argues that Respondent’s <taboola-us.com> domain name is identical or confusingly similar to Complainant’s mark as it includes the TABOOLA mark in its entirety, adding the generic word “us,” and the gTLD “.com.” The addition of a generic word like “us” with the “.com” gTLD, does not distinguish a domain name for purposes of Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The Panel therefore finds that the disputed domain name is confusingly similar to the TABOOLA mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

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 contends Respondent lacks rights or legitimate interests in the <taboola-us.com> domain name. Specifically, Complainant argues that Respondent is not commonly known by the disputed domain name and Respondent is not a licensee or authorized to use Complainant’s mark. Where a response is absent, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by 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)”). The WHOIS information for the disputed domain name lists the registrant as “Bianca Stafford,” and there is no other evidence to suggest that Respondent was authorized to use the TABOOLA mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

Complainant argues Respondent fails to use the <taboola-us.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent’s disputed domain name resolving website resolves to a generic landing page containing advertisements. Use of a domain name to divert internet users to a website containing advertisements does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Forum Mar. 18, 2003) (holding that the respondent’s use of “confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users to websites featuring pop-up advertisements” was not a bona fide offering of goods or services). Complainant provides screenshots of the disputed domain name’s resolving webpage which purportedly diverts internet users to a website containing advertisements. See Amend. Compl. Ex. M. The Panel therefore finds that Respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).

Complainant also argues that Respondent does not provide a bona fide offering of goods or services or any legitimate noncommercial or fair use as Respondent’s resolving webpage is connected with a phishing scheme. Use of an email address associated with a disputed domain name to further a phishing scheme does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). Complainant provides a screenshot of emails to Complainant’s employees originating from an email address associated with the disputed domain name. See Amend. Compl. Ex. M. The Panel therefore finds Respondent fails to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).

Registration and Use in Bad Faith

Complainant does not make any arguments that would fall under Policy ¶ 4(b). However, the Panel is reminded these arguments are merely illustrative rather than exclusive to support a finding of bad faith. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). As such, the Panel finds Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to support a finding of bad faith.

Complainant argues Respondent registered and uses the domain name <taboola-us.com> in bad faith as Respondent does not make an active use of the domain name as the resolving webpage contains parked webpage with advertisements. Respondent’s registration of a disputed domain name that resolves to a parked page with only advertisements may be evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).. Complainant has attached screenshots of the disputed domain name’s resolving parked website which purportedly only contains advertisements. See Amend. Compl. Ex. M. The Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).

Complainant next argues that Respondent registered and uses the <taboola-us.com> in bad faith as Respondent uses the coordinating disputed domain name to further an email phishing scheme. Use of a disputed domain name to further an email phishing scheme is evidence of bad faith under Policy ¶ 4(a)(iii). See Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was coordinating the disputed domain name to send emails to Internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process). Complainant provides screenshots of Respondent’s disputed domain name emailing Complainant’s employees indicating a necessity to effect a payment. See Amend. Compl. Ex. M. The Panel therefore agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).

Complainant also argues that the Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration of the <taboola-us.com> domain name. Actual knowledge of Complainant’s mark prior to registering 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.”). Prior knowledge can be evidenced by Respondent’s use of a mark to attract Internet users to a website in competition with the Complainant under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Actual knowledge of another’s trademark rights can be inferred from the notoriety of the Complainant’s trademark under Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith). Complainant argues Respondent’s use of their notorious TABOOLA mark demonstrates it had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name. The Panel finds Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <taboola-us.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: November 27, 2019