Yahoo! Inc. v. Xiaodong Peng
Claim Number: FA1202001428038
Complainant is Yahoo! Inc. (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is Xiaodong Peng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoorezinr.com>, registered with Go France Domains, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 3, 2012; the National Arbitration Forum received payment on February 3, 2012.
On February 3, 2012, Go France Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <yahoorezinr.com> domain name is registered with Go France Domains, LLC and that Respondent is the current registrant of the name. Go France Domains, LLC has verified that Respondent is bound by the Go France Domains, LLC 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 7, 2012, the Forum served the Complaint and all Annexes, including a 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@yahoorezinr.com. Also on February 7, 2012, 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 March 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <yahoorezinr.com> domain name is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <yahoorezinr.com> domain name.
3. Respondent registered and used the <yahoorezinr.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc., is a digital media company offering content covering news, shopping, photo sharing, and finance, as well as providing e-mail services. Complainant owns multiple trademark registrations for the YAHOO! mark with the United States Patent and Trademark Office (“USPTO”) and China’s State Administration for Industry and Commerce (“SAIC”):
USPTO
Reg. No. 2,403,227 registered November 14, 2000;
Reg. No. 2,040,222 registered February 25, 1997;
Reg. No. 2,187,292 registered September 8, 1998;
Reg. No. 2,040,691 registered February 25, 1997;
SAIC
Reg. No. 1,109,289 registered September 21, 2007;
Reg. No. 1,327,419 registered October 21, 2009.
Respondent, Xiaodong Peng, registered the <yahoorezinr.com> domain name on August 27, 2009. The disputed domain name resolves to a generic website featuring pay-per-click links for topics like “Home Finance,” “Business Information,” “CreditCards.com,” “Need a Vacation?,” etc.
Respondent has been a respondent in a previous UDRP proceeding in which the panel ordered Respondent to transfer the disputed domain name to the complainant. WordPress Foundation v. Xiaodong Peng, FA 1393152 (Nat. Arb. Forum July 14, 2011).
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 has registered its YAHOO! trademark with both the USPTO and SAIC and provides the trademark registration certificates for the following registrations:
USPTO
Reg. No. 2,403,227 registered November 14, 2000;
Reg. No. 2,040,222 registered February 25, 1997;
Reg. No. 2,187,292 registered September 8, 1998;
Reg. No. 2,040,691 registered February 25, 1997;
SAIC
Reg. No. 1,109,289 registered September 21, 2007;
Reg. No. 1,327,419 registered October 21, 2009.
The Panel relies on precedent, such as AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006), and Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008), which held that USPTO and SAIC trademark registrations conclusively established a complainant’s rights in a mark. Accordingly, the Panel finds that Complainant has shown rights in the YAHOO! mark sufficient for the purposes of Policy ¶ 4(a)(i).
Complainant argues that the <yahoorezinr.com> domain name is comprised of the YAHOO! mark without the exclamation point, combined with the generic term “rezinr,” which Complainant alleges is a misspelling of the term “resignor,” and the generic top-level domain (“gTLD”) “.com.” Complainant alleges that these changes are only minor and that the disputed domain name is therefore confusingly similar to Complainant’s YAHOO! mark. In Yahoo! Inc. v. [--], FA 1139567 (Nat. Arb. Forum March 12, 2008), the panel found that the slight alterations of removing the exclamation point and adding a generic term and the gTLD in the <yahoogreen.com> domain name did not “render a disputed domain name distinct from the mark.” A panel found similarly in Yahoo! Inc. v. Ratnayake, FA 1142577 (Nat. Arb. Forum Mar. 24. 2008), determining that the <yahooadvertiser.com> domain name was confusingly similar to the YAHOO! mark despite the omission of the exclamation point and the additions of the generic term “advertiser” and the gTLD. The Panel concludes that this precedent is persuasive and concludes that Respondent’s <yahoorezinr.com> domain name is confusingly similar to Complainant’s YAHOO! mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has proven Policy ¶ 4(a)(i).
In accord with the procedural burdens laid out in Policy ¶ 4(a)(ii), Complainant presented a prima facie case arguing against Respondent’s rights and legitimate interests that is sufficient to shift the burden of proving rights and legitimate interests to Respondent. 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”). Respondent declined to respond, however, and thus presented the Panel with nothing but silence in defense of its position. Without further argument from Respondent, the Panel may assume that Complainant’s allegations are true and hold that Respondent lacks rights and legitimate interests. See 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). The Panel elects to consider the full record, however, in light of the Policy ¶ 4(c) factors in order to make an independent determination on Respondent’s rights and legitimate interests.
Complainant contends that Respondent is not, and never has been, commonly known by the <yahoorezinr.com> domain name. The name of the domain name registrant indicated in the WHOIS information is “Xiaodong Peng,” and it bears no similarity to the YAHOO! mark or the disputed domain name. Complainant argues that nothing in the WHOIS information or on Respondent’s website indicates that Respondent is commonly known by the disputed domain name, and Complainant has not authorized Respondent to use the YAHOO! mark. Without affirmative evidence showing that Respondent has been commonly known by the disputed domain name prior to its registration, the Panel concludes that Respondent does not possess rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). 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 respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent’s <yahoorezinr.com> domain name resolves to a website which prominently displays the YAHOO! mark and a collection of several pay-per-click links, such as “SEO Services,” “New Zero Cost Opportunity,” “Need a Vacation?,” and “Business Information.” Complainant argues that this resolving website competes with Complainant and that Respondent receives click-through fees from the displayed links. The Panel finds that, regardless of whether the resolving website competes with Complainant or not, the hosting of pay-per-click links under Complainant’s mark is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 finds Complainant has proven Policy ¶ 4(a)(ii).
Complainant argues that Respondent has engaged in a pattern of bad-faith registration and use pursuant to Policy ¶ 4(b)(ii) because it has previously registered domain names that infringe on the trademark rights of others. See WordPress Foundation v. Xiaodong Peng, FA 1393152 (Nat. Arb. Forum July 14, 2011). The Panel finds, however, that a single prior case involving Respondent is insufficient to support a finding of bad faith registration under Policy ¶ 4(b)(ii).
Complainant contends that Respondent’s disputed domain name resolves to a website that links to a variety of competing websites, which indicates that Respondent intended to disrupt the business of the previously-existing Internet linking services provided by Complainant. The Panel finds that, as Complainant is in the business of providing information and links to information on the Internet, the links displayed on the resolving website compete with Complainant and disrupt Complainant’s business. The Panel thus determines that Respondent’s activities at the disputed domain name reveal bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant asserts that, because of Respondent use of the YAHOO! mark in the disputed domain name, Internet users are likely to be attracted to Respondent’s website and subsequently confused that the resolving website and displayed links are sponsored or approved by Complainant. Complainant also alleges that Respondent receives click-through fees from the disputed domain name, which indicates that Respondent commercially profits from the attraction and confusion resulting from Respondent’s use of the YAHOO! mark. Based on these assertions, the Panel concludes that intentionally causing such attraction and confusion for commercial gain is evidence of bad faith registration and use according to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad 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); see also 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).”).
Complainant alleges that Respondent undoubtedly registered the disputed 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., China, and other countries around the world. While constructive notice is generally regarded as insufficient to support a finding of bad faith registration, the Panel here concludes that Respondent had actual knowledge and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) (“That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant’s mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).”).
The Panel finds Complainant has proven 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 <yahoorezinr.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 16, 2012
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