Yahoo! Inc. v. Domain Manager / Terramonte Corp
Claim Number: FA1108001403852
Complainant is Yahoo! Inc. (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is Domain Manager / Terramonte Corp (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahooamswers.com>, registered with PSI-USA, Inc. d/b/a Domain Robot.
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 August 18, 2011; the National Arbitration Forum received payment on August 18, 2011.
On August 19, 2011, PSI-USA, Inc. d/b/a Domain Robot confirmed by e-mail to the National Arbitration Forum that the <yahooamswers.com> domain name is registered with PSI-USA, Inc. d/b/a Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. d/b/a Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. d/b/a Domain Robot 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 August 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 2011 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@yahooamswers.com. Also on August 23, 2011, 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 September 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 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 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 <yahooamswers.com> domain name is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <yahooamswers.com> domain name.
3. Respondent registered and used the <yahooamswers.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc., is a worldwide digital media company and electronic mail service provider. Complainant owns the YAHOO! mark, which it has used in connection with its e-mail and Internet services since 1994. Complainant also sells cell phones and offers advice on cell phones at its YAHOO! shopping website. Complainant holds numerous registered trademarks for its YAHOO! mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,040,222 registered February 25, 1997). Complainant owns the <yahoo.com> domain name, as well as the <yahooanswers.com> domain name, which redirects to its “YAHOO! ANSWERS” website providing online reference services since 2005.
Respondent, Domain Manager / Terramonte Corp, registered the <yahooamswers.com> domain name on March 31, 2011. The disputed domain name redirects to the <phondekho.com> domain name, a website providing information about cell phones and directly competing with Complainant’s online cell phone retail and information services.
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 claims that it has established rights in the YAHOO! mark. A complainant can demonstrate rights in a mark by registering it with a national trademark authority. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). The Panel finds that Complainant is not required to register its mark within the country of Respondent as long as it can demonstrate rights in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Here, Complainant has a number of trademark registrations for the YAHOO! mark with the USPTO (e.g., Reg. No. 2,040,222 registered February 25, 1997). The Panel concludes that Complainant has established rights in its YAHOO! mark, under Policy ¶ 4(a)(i), because of its numerous trademark registrations with a national authority.
Complainant also argues that Respondent’s <yahooamswers.com> domain name is confusingly similar to its YAHOO! mark. The disputed domain name incorporates Complainant’s entire mark, deletes the exclamation point, adds the term “amswers,” which is a misspelling of the descriptive word “answers,” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the omission of punctuation is not relevant in a confusingly similar determination, especially because the exclamation mark cannot be reproduced in a domain name. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Respondent’s addition of “amswers” to the disputed domain name is an attempt to reference Complainant’s “YAHOO! ANSWERS” website and services. The Panel finds that adding descriptive words does not help to avoid a finding of confusing similarity. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). Finally, the Panel finds that the affixation of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel concludes that Respondent’s <yahooamswers.com> domain name is confusingly similar to Complainant’s YAHOO! mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant maintains that Respondent has no rights or legitimate interests in the <yahooamswers.com> domain name. In Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006), the panel held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name. Here, Complainant has made a prima facie case in support of its arguments. Respondent’s failure to respond to the Complaint can be viewed as an admission of no rights or legitimate interests under Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel elects to examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies Respondent as “Domain Manager / Terramonte Corp,” which is not similar to <yahooamswers.com>. Complainant states that it has not authorized Respondent to use its YAHOO! mark within the disputed domain name. Given these findings, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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’s <yahooamswers.com> domain name redirects Internet users to the <phonedekho.com> domain name, a website which offers information relating to cell phones and directly competing with Complainant’s online services. The Panel holds that Respondent’s use of the disputed domain name to direct Internet users to its own competing website is not 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 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).”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant argues that Respondent registered and is using the disputed domain name in order to disrupt Complainant’s online business. Respondent’s <yahooamswers.com> redirects Internet users searching for Complainant’s services and advice to Respondent’s competing cell phone website. The Panel finds that Respondent’s registration and use of the disputed domain name does disrupt Complainant’s business and is evidence of bad faith according to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahooamswers.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 26, 2011
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