Yahoo! Inc. v. Mark Smith / YoureSecureWorld.com
Claim Number: FA1009001344301
Complainant is Yahoo! Inc. (“Complainant”), represented by Brian J. Winterfeldt, of Steptoe & Johnson LLP, Washington D.C., USA. Respondent is Mark Smith / YoureSecureWorld.com (“Respondent”), Hawaii, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <greenyahoo.com>, registered with REGISTER.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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 31, 2010.
On September 2, 2010, REGISTER.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <greenyahoo.com> domain name is registered with REGISTER.COM, INC. and that Respondent is the current registrant of the name. REGISTER.COM, INC. has verified that Respondent is bound by the REGISTER.COM, INC. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 2010 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@greenyahoo.com by e-mail. Also on September 9, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 a Written Notice, as defined in Rule 1. 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <greenyahoo.com> domain name is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <greenyahoo.com> domain name.
3. Respondent registered and used the <greenyahoo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc., owns the exclusive rights to use its YAHOO! mark in connection with a wide variety of online computer services including: email, searching, travel, directory information, electronic commerce, shopping, and communication. Complainant operates and manages the website <green.yahoo.com> which promotes “green” living and clean energy. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its YAHOO! mark (e.g., Reg. No. 2,040,222 issued February 25, 1997).
Respondent, Mark Smith / YoureSecureWorld.com, registered the <greenyahoo.com> domain name on September 3, 2009. The disputed domain name previously resolved to a website which displayed Complainant’s mark, provided links to Complainant’s <green.yahoo.com> website, and also displayed links to sites of Complainant’s competitors. After receiving a cease and desist letter from Complainant, Respondent changed the <greenyahoo.com> domain name to display various communications between himself and Complainant, including letters and voicemails directed from Complainant to Respondent. The website currently displays a message saying that the domain name has been suspended.
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 contends that it has established rights in the YAHOO! mark. The Panel finds that registrations with a federal trademark authority are sufficient to establish rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Complainant holds multiple trademark registrations with the USPTO for its YAHOO! mark (e.g., Reg. No. 2,040,222 issued February 25, 1997). Therefore, the Panel finds Complainant has established rights in the YAHOO! mark pursuant to Policy ¶ 4(a)(i).
Complainant contends Respondent’s <greenyahoo.com> domain name is confusingly similar to Complainant’s YAHOO! mark. The disputed domain name contains Complainant’s mark, removes the exclaimation mark, adds the term “green” (which is descriptive of one of Complainant’s business components), and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a term and a gTLD do nothing to distinguish Respondent’s domain name from Complainant’s mark. Previous panels have also concluded that the absense of a punctuation mark does not differentiate the domain from a complainant’s mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Therefore, the Panel finds that Respondent’s <greenyahoo.com> domain name is confusingly similar to Complainant’s YAHOO! mark pursuant to Policy ¶ 4(a)(i).
The Panel finds ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <greenyahoo.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden of proof is shifted to the respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Complainant has made a prima facie case. Due to Respondent’s failure to respond to the complaint, the Panel may infer that Respondent does not have rights or legitimate interests in the <greenyahoo.com> domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). In spite of this, the Panel will still examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent has offered no evidence, nor is there any indication in the record to suggest that Respondent is commonly known by the <greenyahoo.com> domain name. The WHOIS information identifies the domain name registrant as “YoureSecureWorld.com / Mark Smith.” Complainant contends that Respondent is not authorized to use the YAHOO! mark. In light of these facts, the Panel concludes that the Respondent has not established rights or legitimate interests in the <greenyahoo.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent previously used the <greenyahoo.com> domain name to divert Internet users to a site that provided links to both Complainant and Complainant’s competitors’ websites. The disputed domain name resolved to a page which was similar in color scheme and looks to Complainant’s <green.yahoo.com> website, which was a clear attempt at passing off by Respondent. Previous panels have found that the diversion to competing services of a complainant for respondent’s own commercial gain, or a respondent’s attempt to pass itself off as a complainant do not constitute 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). The Panel may find accordingly.
Respondent posted his intent to sell the <greenyahoo.com> domain name on the popular social networking site, “Twitter.” Respondent posted messages on Twitter regarding his desire to sell, as well as an appraisal of the value of the domain name, several times. He subsequently contacted executives of Complainant’s company to further discuss his intentions. The Panel finds Respondent’s offer to sell as evidence that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Dobson, FA 146568 (Nat. Arb. Forum Apr. 8, 2003) (finding evidence that the respondent lacked rights or legitimate interests in the disputed domain name after it sent several correspondences offering to sell its rights in the domain name in exchange for 1,500 shares of the complainant’s stock to the complainant); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).
Complainant alleges that Respondent is typosquatting by its use of the <greenyahoo.com> domain name because it only differs from Complainant’s official website <green.yahoo.com> by removing the dot between ‘green’and ‘yahoo.’ Respondent is taking advantage of Internet users who mistakenly omit the period from Complainant’s web address and inadvertently end up on Respondent’s site. The Panel finds that this intentional misdirection constitutes bad faith pursuant to Policy ¶ 4(a)(ii). See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Shortly after registering the <greenyahoo.com> domain name, Respondent began making offers to sell it. He posted messages on his Twitter account noting his desire to sell the disputed domain name for $22,000 and he also contacted executives of Complainant’s company to try and arrange a sale with them. The Panel finds Respondent’s registration and subsequent offers to sell the <greenyahoo.com> domain name is in bad faith pursuant to Policy ¶ 4(b)(i). See Kabushiki Kaisha Hitachi Seisakusho (Japan Corp.) v. Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Respondent is advertising the <bigtow.com> domain name for sale for $5,000. Furthermore, Respondent offered to sell the disputed domain name to Complainant for $4,000. The Panel finds that these offers to sell the disputed domain name constitute bad faith registration and use pursuant to Policy ¶ 4(b)(i).”); see also Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy ¶ 4(b)(i) where the respondent stated in communication with the complainant that it would be ready to sell the <matmut.com> domain name registration for $10,000).
Respondent initially used the disputed domain name to resolve to a page which looked similar to Complainant’s <green.yahoo.com> site, but offered links to both Complainant and Complainant’s competitors. Respondent likely profited from the display of these third-party links on a click-through basis. Respondent’s commercial gain was likely increased through the confusion he created by registering a domain name confusingly similar to Complainant’s famous mark. The Panel finds that this intentional confusion in an attempt to commercially gain constitutes bad faith on Respondent’s part under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Respondent’s registration of the <greenyahoo.com> domain name constitutes typosquatting because it clearly takes advantage of those Internet users who omit the dot from Complainant’s <green.yahoo.com> domain name. Previous panels have found that this use amounts to bad faith pursuant to Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <greenyahoo.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: October 17, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum