DECISION

 

Yahoo! Inc. v. Carlos

Claim Number: FA1201001425174

 

PARTIES

Complainant is Yahoo! Inc. (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington, D.C., USA.  Respondent is Carlos (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <shoesyahoo.com>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns.com.cn.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically on January 18, 2012; the National Arbitration Forum received payment on January 18, 2012. The Complaint was submitted in both Chinese and English.

 

On January 29, 2012, Beijing Innovative Linkage Technology Ltd. d/b/a Dns.com.cn confirmed by e-mail to the National Arbitration Forum that the <shoesyahoo.com> domain name is registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns.com.cn and that Respondent is the current registrant of the name.  Beijing Innovative Linkage Technology Ltd. d/b/a Dns.com.cn has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. d/b/a Dns.com.cn 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 February 6, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 27, 2012 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@shoesyahoo.com.  Also on February 6, 2012, the Chinese language 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 March 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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.

 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complainant and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is a digital media company providing content and services related to news, shopping, photo sharing, finance and e-mail.

 

Complainant owns trademark and service mark registrations for the YAHOO! Mark, on file with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 2,403,227, registered November 14, 2000.

 

Respondent registered the <shoesyahoo.com> domain name on May 12, 2009.

 

The disputed domain name resolves to a website at the <coolplayoff.com> domain name, which sells basketball shoes.

 

Respondent’s <shoesyahoo.com> domain name is confusingly similar to Complainant’s YAHOO! mark.

 

Respondent has never been commonly known by the <shoesyahoo.com> domain name.

 

Complainant has never authorized Respondent to use Complainant’s YAHOO!  mark in any way.

 

Respondent does not have any rights to or legitimate interests in the domain name <shoesyahoo.com>.

 

Respondent both registered and uses the <shoesyahoo.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain name registered by Respondent is confusingly similar to a trade-mark and service mark in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)  the same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.     Respondent has no rights or legitimate interests in respect of the domain name; and

iii.    the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant has rights in the YAHOO! trademark and service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark auth-ority, the USPTO.  See, for example, Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007), and Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004), both holding that a USPTO trademark registration suffices to demonstrate a complainant’s rights in a mark for purposes of Policy ¶ 4(a)(i).

 

Respondent’s <shoesyahoo.com> domain name is confusingly similar to Complainant’s YAHOO! trademark and service mark. The only differences between the mark and the disputed domain name are the removal of the exclamation point and the additions of the generic term “shoes” and the generic top-level domain (“gTLD”) “.com.” Such alterations of the mark in forming the domain name do not avoid a finding of confusing similarity. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the domain name <westfieldshopping.com> confusingly similar to the WESTFIELD because the mark was the dominant element of the domain name); see also Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of a domain name incorporating a complainant’s YAHOO! mark, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to the mark and likely to mislead Internet users into believing that products and services offered by a respondents are sponsored or endorsed by that complainant).

 

Likewise, removing the exclamation point from the mark and attaching the gTLD “.com” also fail to distinguish the disputed domain name from the mark. See Yahoo! Inc. v. Idarecisi, FA 1083155 (Nat. Arb. Forum Nov. 12, 2007):

 

Respondent’s omission of the exclamation point does not sufficiently distinguish the disputed domain names from the Complainant’s mark.

 

See also Aids Alive, Inc. v. DomainMarket.com, FA 1224033 (Nat. Arb. Forum Nov. 4, 2008) (finding that neither the removal of an exclamation point nor the addition of a gTLD to the mark of another in creating a domain name is a material alteration preventing a finding of confusing similarity between the domain name and the mark).

 

The Panel therefore finds that Respondent’s <shoesyahoo.com> domain name is confusingly similar to Complainant’s YAHOO! mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), once Complainant establishes a prima facie case in support of this allegation, the burden shifts to Respondent to prove that it has such rights or legitimate interests.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:

 

complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.

 

Complainant has established a prima facie showing under this head of the Policy.  Therefore, and because Respondent has failed to submit a Response to the Complaint filed in this proceeding, we are free to presume that Respondent has no rights to or legitimate interests in the disputed domain name.  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.

 

Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for conclud-ing that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.

 

We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent has never been commonly known by the <shoesyahoo.com> domain name, and that Complainant has never authorized Respondent to use Complainant’s mark in any way.  Moreover, name as listed in the WHOIS information identifies the registrant of the contested domain name only as “Carlos,” which does not resemble the disputed domain name.  On this record, we conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had no rights to or legitimate interests in the domains under Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domains, and where a complainant had not authorized that respondent to register a domain name containing its mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (con-cluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so had no rights to or legitimate interests in that domain under Policy ¶ 4(c)(ii), where there was no evidence in the record showing that that respon-dent was commonly known by that domain name, and where a complainant asserted that it had not authorized or licensed that respondent’s use of its mark in a domain name).

 

We next observe that Complainant alleges, without objection from Respondent, that Respondent’s <shoesyahoo.com> domain name redirects Internet users to a commercial website that sells shoes.  This use of Complainant’s mark in the disputed domain name does 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, for example, AT&T Corp. v. Zuccarini, WIPO Case No. D2002-0440 (August 28, 2002).

 

The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

By registering the disputed domain name, which is confusingly similar to complainant’s YAHOO! mark, and linking it to a commercial website, Respondent has attempted to attract Internet users to the resolving website by creating a likelihood of confusion as to the possibility of Complainant’s association with the resolving site.  In the circumstances here presented, we may comfortably pre-sume that Respondent profits from the operation of the resolving commercial website.  This use of the disputed domain name therefore stands as evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv).  See AT&T Corp. v. Zuccarini, WIPO Case No. D2002-0440 (August 28, 2002), supra.

 

Further, it is evident from the record that Respondent had actual knowledge of Complainant’s rights in the YAHOO! mark at the time the disputed domain name was registered.  In such circumstances, Respondent’s registration and use of the domain name as alleged in the Complaint evidences bad faith registration and use of the domain within the meaning of Policy ¶ 4(a)(iii). SeeYahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith registration and use of a contested domain name under Policy ¶ 4(a)(iii) where a respondent was “well-aware” of a complainant’s YAHOO! mark at the time of its registration).

 

For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that the <shoesyahoo.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  March 19, 2012