Yahoo! Inc. v. Sachika Ratnayake d/b/a Software Solutions Network and d/b/a Personel
Claim Number: FA0802001142577
Complainant is Yahoo! Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yahoomail.ws> and <yahooadvertiser.com>, registered with GoDaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On February 13, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 4, 2008 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 email@example.com and firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <yahoomail.ws> and <yahooadvertiser.com> domain names are confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <yahoomail.ws> and <yahooadvertiser.com> domain names.
3. Respondent registered and used the <yahoomail.ws> and <yahooadvertiser.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 various services, including searching, director,
information, shopping, communications and other online activities. Complainant’s website, located at the
<yahoo.com> domain name, is one of the leading Internet websites. Complainant holds several trade and service
marks with various governmental authorities for its YAHOO! mark,
including with the National Intellectual Property Office of Sri Lanka (Reg. No.
Respondent registered the <yahoomail.ws> domain name on November 30, 2007 and the <yahooadvertiser.com> domain name on December 7, 2007. Respondent’s disputed domain names resolve to websites that display hyperlinks to various third-party websites, some of which are in competition with Complainant. Respondent also has attempted to sell the disputed domain names to Complainant for amounts in excess of Respondent’s out-of-pocket expenses.
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.
The Panel finds that Complainant’s numerous registrations
for the YAHOO! mark with the USPTO, as well as with
The Panel finds that Respondent’s <yahoomail.ws> and <yahooadvertiser.com>
domain names are confusingly similar to Complainant’s YAHOO! mark
under the parameters of a Policy ¶ 4(a)(i) analysis. Because exclamation points are not a
permitted character in domain names, the disputed domain names do not include
the exclamation point found in Complainant’s mark. The absence of this punctuation, however,
does not change the analysis under Policy ¶ 4(a)(i). See Mrs. World Pageants, Inc.
v. Crown Promotions, FA 94321 (Nat. Arb. Forum
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. See Am. 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 is using the <yahoomail.ws> and <yahooadvertiser.com>
domain names to host websites that display hyperlinks to various third-party
websites, some of which offer services that are in competition with those
offered by Complainant under its YAHOO! mark. Accordingly, the Panel finds that such use is
not in connection with a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 24 Hour Fitness USA, Inc. v.
24HourNames.com-Quality Domains For
Moreover, the Panel finds that Respondent’s offer to sell
the <yahoomail.ws> and <yahooadvertiser.com>
domain names to Complainant for amounts far in excess of any out-of-pocket
costs indicates that Respondent lacks rights and legitimate interests under
Policy ¶ 4(a)(ii). See American Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum
Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the
domain name is further evidenced by Respondent’s attempt to sell its domain
name registration to Complainant, the rightful holder of the RED CROSS mark.”);
see also Hewlett-Packard Co. v. High
Performance Networks, Inc., FA 95083 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has offered to sell the <yahoomail.ws> and <yahooadvertiser.com>
domain names to Complainant for amounts ranging from $1,500 to $37,400, which
the Panel finds to be in great excess of any out-of-pocket costs acquired by
Respondent. The Panel finds such action
by Respondent indicates bad faith registration and use under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum
Complainant asserts that Respondent uses the <yahoomail.ws> and <yahooadvertiser.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 are
capable of creating 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, as well as other unrelated 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 July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
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 <yahoomail.ws> and <yahooadvertiser.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 24, 2008
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