national arbitration forum

 

DECISION

 

Yahoo! Inc. v. Netclass s.r.l. / Cristi Maruntelu

 Claim Number: FA1205001444154

 

PARTIES

Complainant is Yahoo! Inc. (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington, D.C., USA.  Respondent is Netclass s.r.l. / Cristi Maruntelu (“Respondent”), Romania.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yahoo-status.com>, registered with eNom, Inc..

 

PANEL

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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2012; the National Arbitration Forum received payment on May 15, 2012.

 

On May 15, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <yahoo-status.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, 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 May 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 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@yahoo-status.com.  Also on May 15, 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 June 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant made the following contentions

 

1.    The YAHOO! mark is internationally famous.

2.    Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its YAHOO! mark (e.g., Reg. No. 2,403,227 registered November 14, 2000).

3.    Complainant also owns multiple trademark registrations internationally with the European Union’s Office for Harmonization for the Internal Market (“OHIM”), which includes Respondent’s home country, for its YAHOO! mark (e.g., Reg. No. 1,076,181 registered December 2, 1999).

4.    Respondent’s <yahoo-status.com> domain name is confusingly similar to Complainant’s YAHOO! mark.

5.    Respondent omits the exclamation point from the YAHOO! mark and adds a hyphen and the generic top-level domain (“gTLD")  “.com.”

6.    Respondent’s <yahoo-status.com> domain name is comprised of Complainant’s YAHOO! mark in its entirety with the addition of the descriptive word “status” which also relates to Complainant’s business.

7.    Respondent has no rights or legitimate interest in the <yahoo-status.com> domain name.

8.    Respondent is not commonly known by the <yahoo-status.com> domain name.

9.    Nothing in Respondent’s WHOIS information or on Respondent’s website demonstrates that Respondent is commonly known by the <yahoo-status.com> domain name.

10. Complainant has not authorized Respondent to use its YAHOO! mark.

11. Respondent is using the <yahoo-status.com> domain name to host a competing website that links to other competing sites.

12. Respondent’s resolving site features pay-per-click links used to benefit Respondent financially when these links are clicked.

13. Respondent registered and uses the <yahoo-status.com> domain name in bad faith.

14. Respondent has actual knowledge of Complainant’s rights in the YAHOO! mark.

15. Respondent is disrupting  the business of the previously-existing Complainant’s instant messenger-related services by diverting Internet traffic to Respondent’s own website.

16. Respondent is using a confusingly similar domain name to provide competing services and link to competing websites for commercial gain.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

  FINDINGS

 

1.   Complainant is a United States company that is the premier digital media company in the world. Its YAHOO! trademark is internationally famous..

 

2. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its YAHOO! mark (e.g., Reg. No. 2,403,227 registered November 14, 2000). Complainant also owns multiple trademark registrations internationally with the European Union’s Office for Harmonization for the Internal Market (“OHIM”), which includes Respondent’s home country, for its YAHOO! mark (e.g., Reg. No. 1,076,181 registered December 2, 1999).

 

3. Respondent registered the disputed domain name on January 14, 2008.

The disputed domain name resolves to Respondent’s website which offers services which compete with those of Complainant and hosts links to other competing sites.

 

 

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."

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

 

The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it has rights in its famous YAHOO! mark pursuant to Policy 4(a) (i) due to Complainant’s trademark registrations with the USPTO (e.g., Reg. No. 2,403,227 registered November 14, 2000) and OHIM (e.g., Reg. No. 1,076,181 registered December 2, 1999). Previous panels have held that evidence of a trademark registration for a given mark is sufficient to establish a complainant’s rights in a mark pursuant to Policy ¶ 4(a) (i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that registration with the (“OHIM”) established the complainant’s right in the MINICARDS mark pursuant to Policy ¶ 4(a)(i)). Based on this evidence, the Panel finds that Complainant has established rights in its YAHOO! mark pursuant to Policy ¶ 4(a) (i).

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s YAHOO! mark. Due to the fame and nature of Complainant’s YAHOO! mark, Complainant alleges that the <yahoo-status.com> domain name is confusingly similar to Complainant’s YAHOO! mark. Here, Complainant demonstrates that Respondent removes the exclamation point, adds a hyphen, adds the gTLD “.com”, and finally adds the descriptive term “status” to the YAHOO! mark to create the <yahoo-status.com> domain name. Previous panels have determined that modifications of this sort, such as adding hyphens, removing punctuation, and adding a gTLD and descriptive terms, are insufficient to extricate a disputed domain name from the realm of confusing similarity if that has been otherwise shown. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also 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 Yahoo! Inc. v. Junlong Zheng, FA 1142567 (Nat. Arb. Forum Mar. 25, 2008) (holding that deleting an exclamation point is irrelevant in distinguishing whether or not a domain name is identical or confusingly similar to a complainant’s mark because exclamation points are not valid characteristics for domain names). Based on the facts before the Panel, the Panel holds that Respondent’s <yahoo-status.com> domain name is confusingly similar to Complainant’s YAHOO! mark pursuant to Policy ¶ 4(a) (i). This is particularly so as the addition of the word “status” would merely convey to the objective internet user that the disputed domain name related to the status of an account with Complainant or its internet service and that it would lead to an official website of Complainant dealing with the status of its accounts or a similar subject that was within the ambit of the activities of Complainant.

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

 

It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

 

(a)  Respondent has chosen to take Complainant’s YAHOO! mark and to use it in its domain name;

 

(b)  Respondent has then decided to add to the YAHOO! the word “status” which can only enhance the notion that the domain name is an official domain name of the famous Yahoo! company.

 

(c)   The disputed domain name resolves to Respondent’s website which offers services which compete with those of Complainant and hosts links to other competing sites.

 

(d)  Respondent has engaged in these activities without the consent or approval of Complainant;

 

(e) Complainant alleges Respondent does not have rights or legitimate interests in the <yahoo-status.com> domain name. Complainant further contends that there is no evidence in the record or WHOIS information indicating Respondent is commonly known by the <yahoo-status.com> domain name. The WHOIS information lists the domain name registrant as “Netclass s.r.l. Cristi Maruntelu” and Complainant asserts it has not authorized Respondent to use Complainant’s YAHOO! mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name and has no rights or legitimate interests pursuant to Policy ¶4(c) (ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); 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).

 

(f) Complainant alleges Respondent is not making a bona fide offering of goods or services or legitimate noncommercial or fair use based on Respondent’s actions in using the <yahoo-status.com> domain name. Complainant argues that Respondent is hosting a competing commercial website that redirects users to other competing websites. Complainant further argues that the <yahoo-status.com> site provides instant messenger related services in direct competition with Complainant’s instant messenger-related services, as well as links to other competing websites (e.g., “Amanet Electronice”, “WTA”, “xServers” and “Studio Design”). Complainant contends that, by using a confusingly similar domain name to attract Internet users, this action has the potential to confuse them as to the sponsorship and association of Respondent’s website. Complainant also asserts that Respondent’s resolving website features many links to other websites through which Respondent receives click-through fees when Internet users click on them (e.g., “GTap statistics” and “a hilite/DMI coproduction”). Previous panels have found that using a confusingly similar domain name to profit from advertisements for third parties competing with a complainant’s business is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of a disputed domain name. See Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees . . . is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Based on this evidence, the Panel finds that Respondent’s use of the disputed domain name to feature competing services and pay-per-click links for competing services 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).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

 

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant aims to quell Respondent’s registration of the <yahoo-status.com> domain name by making a showing of bad faith registration in accordance with Policy ¶4 (a) (iii). Complainant does this by asserting that Respondent is aiming to disrupt Complainant’s business by hosting a competing commercial website that diverts Internet traffic, supposedly meant for Complainant’s website, to Respondent’s instant messenger-related website, which also hosts competing hyperlinks. Previous panels have held that using a confusingly similar domain name to attract Internet users to a site offering competing services and displaying competing links disrupts a complainant’s business and constitutes bad faith registration and use pursuant to Policy ¶4 (b) (iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., and 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 Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)). Consequently, based on these submissions and the evidence adduced in support of them, which the Panel accepts, the Panel finds that Respondent registered and uses the <yahoo-status.com> domain name in bad faith under Policy ¶ 4(b) (iii).

 

Secondly, Complainant claims Respondent’s registration and use of the <yahoo-status.com> domain name also constitutes bad faith pursuant to Policy ¶4 (b) (iv). Complainant asserts that Respondent aims to attract Internet users to Respondent’s competing website for commercial gain by creating a likelihood of confusion with Complainant’s YAHOO! mark through its confusingly similar <yahoo-status.com> domain name. Complainant claims that consumers are likely to be confused when they see the <yahoo-status.com> domain name because they will believe that the links present on the resolving website are approved of, sponsored by, or associated with Complainant. Complainant also alleges that Respondent is obtaining click-through fees through the hyperlinks hosted at the website resolving from its <yahoo-status.com> domain name and the Panel finds that this is probably the case. Previous panels have found that intentionally causing such confusion for commercial gain is evidence of bad faith use and registration. See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b) (iv).”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Based on these submissions and the evidence in support of them, the Panel finds bad faith registration and use under Policy 4(b) (IV).

 

Thirdly, Complainant contends that, in light of the fame and notoriety of Complainant's YAHOO! mark, it is inconceivable that Respondent could have registered the <yahoo-status.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Generally, arguments of bad faith based on constructive notice are irrelevant to this consideration:  see The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, the Panel finds  that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii) and that Respondent therefore registered the disputed domain name in bad faith. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name)."

 

Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the YAHOO! mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <yahoo-status.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  June 18, 2012

 

 

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