Yahoo! Inc. v. zheng youjun
Claim Number: FA1109001409001
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington D.C., USA. Respondent is zheng youjun (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myyahoonews.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2011; the National Arbitration Forum received payment on September 26, 2011.
On September 27, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <myyahoonews.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 September 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 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@myyahoonews.com. Also on September 28, 2011, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <myyahoonews.com> domain name is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <myyahoonews.com> domain name.
3. Respondent registered and used the <myyahoonews.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc., is a digital media company that offers a comprehensive branded network of searching, directory, information, communication, shopping, electronic commerce, and other online services to Internet users. Complainant owns several trademark registrations for the YAHOO! mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 2,040,222 registered February 25, 1997;
Reg. No. 2,040,691 registered February 25, 1997;
Reg. No. 2,187,292 registered September 8, 1998; &
Reg. No. 2,403,227 registered November 14, 2000.
Respondent, zheng youjun, registered the <myyahoonews.com> domain name on October 22, 2009. The disputed domain name resolves to a website promoting WorldSID, an organization known as the World Side Impact Dummy Task Group, which was initiated to study and improve vehicle safety using crash-test dummies. The resolving website is a phishing web page, substantially similar to the actual WorldSID website, that connects to websites with login links for ISO committee members in an effort to collect login credentials under false pretenses.
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 owns several trademark registrations for the YAHOO! mark with the USPTO:
Reg. No. 2,040,222 registered February 25, 1997;
Reg. No. 2,040,691 registered February 25, 1997;
Reg. No. 2,187,292 registered September 8, 1998; &
Reg. No. 2,403,227 registered November 14, 2000.
Panels have consistently established, in Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), and Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006), for example, that trademark registration—especially with the USPTO—conclusively proves a complainant’s rights in a mark. In accord with this reasoning, the Panel here determines that Complainant has Policy ¶ 4(a)(i) rights in the YAHOO! mark due to its several USPTO trademark registrations.
Complainant argues that Respondent’s <myyahoonews.com> domain name is confusingly similar to Complainant’s YAHOO! mark because the minor changes to the mark—the addition of the generic term “my” and the descriptive term “news,” the omission of the exclamation point, and the attachment of the generic top-level domain (“gTLD”) “.com”—are insufficient to dispel confusing similarity. The Panel agrees with Complainant, relying in part on Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), where the panel held that added generic and descriptive words do not negate a finding of confusing similarity. The Panel’s finding is also supported by Yahoo! Inc. v. [--], FA 1139567 (Nat. Arb. Forum Mar. 12, 2008), where the panel found the <yahoogreen.com> domain name confusingly similar to the YAHOO! mark despite the omission of the exclamation point and the addition of the gTLD “.com”.
The Panel determines that Complainant has satisfied Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) requires that Complainant put forth a prima facie case against Respondent before Respondent is faced with the obligation of defending its rights and legitimate interests. Complainant has satisfied its initial burden in this proceeding, but Respondent, in contrast, has defaulted and failed to provide a response. Faced with Respondent’s silence and a general lack of evidence supporting Respondent’s case, the Panel may infer that Complainant’s allegations are true and that Respondent lacks rights and legitimate interests in the disputed domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). In the interest of fairness, however, the Panel will examine the record against the Policy ¶ 4(c) factors to determine independently whether Respondent possesses any rights and legitimate interests in the disputed domain name.
Complainant contends that Respondent is not commonly known by the <myyahoonews.com> domain name. Complainant suggests that no evidence in the record reveals any association between Respondent and the disputed domain name, and Complainant has not authorized Respondent to use its YAHOO! mark in any way. Additionally, the WHOIS information for the disputed domain name lists the registrant as “zheng youjun,” which suggests no connection between Respondent and the disputed domain name. Accordingly, the Panel concludes that Respondent does not have rights and legitimate interests under Policy ¶ 4(c)(ii) as it is not commonly known by the <myyahoonews.com> domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent uses the <myyahoonews.com> domain name to host a website that attempts to pass itself off as the official website of WorldSID in order to collect, under false pretenses, the login credentials of Internet users attempting to access the actual WorldSID website. In Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004), a prior panel held that this practice is “phishing”: “a practice that is intended to defraud consumers into revealing personal and proprietary information.” Previous cases, such as Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006), and Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004), have established that using fraud to secure personal data as part of a phishing scheme does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The Panel accordingly concludes that this Respondent’s resolving website at the <myyahoonews.com> domain name is a phishing scam, which indicates that Respondent lacks rights and legitimate interests in the <myyahoonews.com> domain name according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel determines that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s registration and use of the <myyahoonews.com> domain name constitute bad faith under Policy ¶ 4(b)(iv) because Respondent uses the YAHOO! mark to intentionally attract Internet users to Respondent’s resolving website by creating a likelihood of confusion with Complainant. Complainant asserts that Respondent either benefits directly from the resolving website or indirectly—by gathering confidential information from Internet users that could be sold for profit, for example—which the Panel finds supports a finding of bad faith registration and use under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant contends that Respondent’s website attempts to pass itself off as the WorldSID website and purports to provide a log-in page in an effort to collect Internet users’ information. The Panel finds these actions are evidence of a phishing scheme, which reveals Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Complainant also contends that Respondent registered the <myyahoonews.com> domain name in bad faith with actual knowledge of Complainant’s rights in the YAHOO! mark because the mark is internationally famous and registered in the U.S. and elsewhere. While the Panel has previously held that constructive knowledge is insufficient to support a finding of bad faith under the Policy, the Panel infers in this case that Respondent had actual knowledge of the mark. Accordingly, the Panel finds bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also 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).
The Panel determines that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myyahoonews.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 31, 2011
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