Yahoo! Inc. v. Alanadi Idarecisi
Claim Number: FA0709001083155
Complainant is Yahoo! Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <yahoodsl.com> and <yahooemail.com>, registered with Enom, 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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On October 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 23, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@yahoodsl.com and postmaster@yahooemail.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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.
A. Complainant makes the following assertions:
1. Respondent’s <yahoodsl.com> and <yahooemail.com> domain names are confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <yahoodsl.com> and <yahooemail.com> domain names.
3. Respondent registered and used the <yahoodsl.com> and <yahooemail.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, YAHOO!, Inc., is a global Internet
communications, media, and commerce company that delivers a branded network of
comprehensive searching, directory, information, communication, shopping
services and other online activities and features to millions of Internet users
daily. Complainant has continuously used
the YAHOO! mark since 1994, and registered the YAHOO! mark with the United
States Patent and Trademark Office (“USPTO”) on
WHOIS information indicates that the <yahoodsl.com> domain name was registered
on
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is 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.”).
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 holds numerous versions of the YAHOO! mark which
have been registered with the USPTO since 1997; therefore Complainant has
established rights to the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum
Respondent’s <yahoodsl.com> and <yahooemail.com>
domain names are confusingly similar to
Complainant’s YAHOO! mark under Policy ¶ 4(a)(i). Both disputed domain names contain Complainant’s
registered mark in addition to a generic term (“dsl” or “email”) which do not
distinguish the disputed domain names for the purpose of Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names. Complainant must present a prima facie case, establishing that Respondent lacks rights and legitimate interests in the disputed domain names. After the Complainant meets the initial burden of establishing a prima facie case, the burden shifts to Respondent to show that it has rights or legitimate interests to the disputed domain names. The Panel finds that Complainant has demonstrated a prima facie case that Respondent lacks rights and legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Based on Respondent’s failure to answer the Complaint, the
Panel presumes that Respondent lacks rights and legitimate interests in the
disputed domain names. American Express Co. v. Fang Suhendro, FA
129120 (Nat. Arb. Forum
Complainant asserts without
contradiction in the record that Respondent is not and has not been commonly
known by the disputed domain names, and Respondent’s WHOIS information does not
indicate that Respondent is commonly known by the disputed domain names. Thus, the Panel finds that Respondent is not
commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Respondent’s websites contain pay-per-click advertisements and direct Internet users to competing Internet search services and websites. The Panel finds that this is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Party Night Inc. FA 144647 (Nat. Arb. 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); see also Bank of Am. Corp. v. Northwest 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 Policy ¶ 4(a)(iii) has been satisfied.
Complainant asserts that Respondent uses the <yahoodsl.com>
and <yahooemail.com>
domain names for commercial gain by
intentionally creating a likelihood of confusion with Complainant’s mark,
thereby attracting Internet users to its websites. The disputed domain names create confusion as
to Complainant’s source, sponsorship, affiliation, and endorsement, and
Respondent’s websites include pay-per-click advertisements redirecting users to
competing Internet search services. The
Panel finds that this constitutes evidence of registration and use in bad faith
under Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum
Furthermore, the Panel finds that the use of the disputed
domain names to offer competing Internet search services and to display links
to competing websites constitutes a disruption of Complainant’s business and is
evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Franpin
SA v. Paint Tools S.L., D2000-0052 (WIPO May 25, 2000) (finding bad faith
where the respondent, a company financially linked to the complainant’s main
competitor, registered and used the domain name in question to disrupt the
complainant’s business); see also S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum
In addition, Respondent has registered two disputed domain
names incorporating Complainant’s mark, and has been the respondent in at least
one previous UDRP decision in which the disputed domain name was transferred
from Respondent to the complainant in that case, thus, creating a bad-faith
pattern of domain name registration in order to prevent the trademark owner
from using the domain name, pursuant to Policy ¶ 4(b)(ii). See
Citigroup Inc. v. Alanadi Idarecisi, FA 765735 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoodsl.com> and < yahooemail.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: November 12, 2007
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