Yahoo! Inc. v. VALUE DOMAIN / DIGIROCK, INC.; DigiRock, Inc. / Yuuki Yoshizawa; DIGIROCK, INC. / VALUE DOMAIN; DIGIROCK, INC. / VALUE DOMAIN
Claim Number: FA1205001446020
Complainant is Yahoo! Inc. (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington D.C., USA. Respondent is VALUE DOMAIN / DIGIROCK, INC.; DigiRock, Inc. / Yuuki Yoshizawa; DIGIROCK, INC. / VALUE DOMAIN; DIGIROCK, INC. / VALUE DOMAIN (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yahoohoo.org>, <yahooomahalo.com>, <yahoo-tube.net>, and <yahoo-widget.net>, registered with eNom, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 29, 2012; the National Arbitration Forum received payment on May 29, 2012.
On May 29, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <yahoohoo.org>, <yahooomahalo.com>, <yahoo-tube.net>, and <yahoo-widget.net> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. 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 June 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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@yahoohoo.org, postmaster@yahooomahalo.com, postmaster@yahoo-tube.net, and postmaster@yahoo-widget.net. Also on June 5, 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 28, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel notes that all of the disputed domain names share at least one common entity name. The Panel also notes that contact information for the disputed domain names all include the same telephone and facsimile number, along with corresponding addresses.
The Panel finds in light of the foregoing that sufficient evidence has been presented to establish that the disputed domain names are controlled by the same entity and thus chooses to proceed with the matter.
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it established its rights in the YAHOO! mark when it registered the mark with the USPTO (e.g., Reg. No. 2,040,222 registered February 25, 1997) and the JPO (e.g., Reg. No. 4,208,624 registered November 6, 1998). Complainant submits trademark certificates for the registrations issued by the USPTO, along with printouts from the JPO website, to support its contentions regarding rights in the mark. See Complainant’s Exhibits 3-4. Based upon the evidence provided, the Panel finds that Complainant established its rights in the YAHOO! mark under Policy ¶ 4(a) (i). See Implus Footcare, LLC v. Ellison, FA 1406760 (Nat. Arb. Forum Oct. 24, 2011) (finding that trademark registrations, including those with the Japanese Patent Office, are sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i)).
The second question that arises is whether the disputed domain names are identical or confusingly similar to the YAHOO! Mark. Complainant contends that Respondent’s <yahoohoo.org>, <yahooomahalo.com>, <yahoo-tube.net>, and <yahoo-widget.net> domain names are confusingly similar to Complainant’s YAHOO! mark. The Panel notes that each disputed domain name includes the entire portion of the mark in the domain names, removing only the exclamation point. Complainant states that the disputed domain names all add a generic top-level domain (“gTLD”). The Panel notes that the <yahoohoo.org>, <yahooomahalo.com>, <yahoo-tube.net>, and <yahoo-widget.net> domain names all include generic terms alongside the mark and the <yahoo-tube.net> and <yahoo-widget.net> domain names add a hyphen. As the Panel concludes that Respondent failed to differentiate its disputed domain names from Complainant’s mark, the Panel finds that Respondent’s <yahoohoo.org>, <yahooomahalo.com>, <yahoo-tube.net>, and <yahoo-widget.net> domain names are confusingly similar to Complainant’s YAHOO! mark under Policy ¶ 4(a) (i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also 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).
Complainant has thus made out the first of the three elements that it must establish.
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 established such a prima facie case. The prima facie case is based on the following considerations:
(a) Respondent has chosen as the major component of its domain names the entirety of Complainant’s YAHOO! trademark, which is one of the most famous trademarks in the world;
(b) Respondent has added to the trademark various generic expressions and linked the domain names to websites that promote goods and services in competition with those of Complainant and contain unrelated material;
(c) Respondent did not have the approval or authority of Complainant to use its YAHOO! trademark in this or any other way.
(d) Complainant also contends that Respondent is not commonly known by the disputed domain names. The Panel notes that Respondent has failed to offer any evidence to contradict Complainant’s contentions. The Panel also notes that the WHOIS information identifies the registrant of the disputed domain names as “VALUE DOMAIN / DIGIROCK, INC.; DigiRock, Inc. / Yuuki Yoshizawa; DIGIROCK, INC. / VALUE DOMAIN; DIGIROCK, INC. / VALUE DOMAIN.” Based upon the evidence on record, the Panel determines that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c) (ii). See 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).
(e) Complainant also contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Complainant states that the disputed domain names resolves to a variety of competing websites, which Complainant argues all offer links to both competing and unrelated websites. Complainant submits printouts from the resolving websites to verify its contentions relative to Respondent’s use of the disputed domain names. See Complainant’s Exhibits 9-12. Based upon the evidence provided, the Panel concludes that Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c) (iii). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services); see also H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use);
(f) Complainant also submits that Respondent has engaged in typosquatting. The Panel notes that each disputed domain name adds an entire term to the YAHOO! mark. Although the addition of an entire term removes the disputed domain names from the realm of typosquatting, it is clear that the additions to the trademark that have been made have been done to give the false impression that the disputed domain names are official domain names of Complainant and that they will lead to official websites.
For all of these reasons, Complainant has made out its prima facie case. As Respondent has not filed a Response and has not tried 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 names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and that they were also 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 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has established a pattern of bad faith registration. Complainant submits that Respondent registered multiple domain names in this dispute, which indicates a pattern. Complainant also submits that Respondent registered multiple other domain names that infringe upon the marks of third parties. As the Panel finds that Respondent has developed a pattern of infringing registrations, the Panel concludes that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b) (ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)).
Secondly, Complainant also argues that Respondent’s disputed domain names disrupt Complainant’s business. Complainant states that Respondent’s disputed domain names all resolve to websites offering competing and unrelated services. The Panel notes that Internet users searching for Complainant may arrive at Respondent’s websites and use Respondent’s services rather than Complainant’s. As a result, the Panel concludes that Respondent’s disputed domain names disrupt Complainant’s business, demonstrating bad faith registration and use under 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).
Thirdly, Complainant alleges that Respondent intends to attract, for commercial gain, Internet users to the disputed domain names by creating a likelihood of confusion with Complainant’s YAHOO! mark and collecting click-through fees. Complainant states that Respondent’s disputed domain names all resolve to websites offering competing and unrelated services. Therefore, as the Panel agrees with Complainant’s allegations, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b) (iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Fourthly, Complainant also alleges that Respondent registered the disputed domain names with actual knowledge of Complainant’s YAHOO! mark. Complainant states that its trademark registrations in both the United States and Japan, along with the fame and notoriety of Complainant’s YAHOO! mark, gave Respondent knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain names. The Panel finds that Respondent had actual knowledge, as opposed to constructive knowledge, of Complainant’s rights in the YAHOO! When Respondent registered the disputed domain names and the Panel therefore concludes that Respondent registered the domain names in bad faith under Policy ¶ 4(a) (iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arc. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also Immigration Equality v. Brent, FA 1103571 (Nat. Arc. 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).").
(g) Fifthly, Complainant asserts that Respondent has engaged in typosquatting. Although the addition of an entire term removes the disputed domain names from the realm of typosquatting, it is clear that the additions to the trademark that have been made have been done to give the false impression that the disputed domain names are official domain names of Complainant and that they will lead to official websites; those actions of Respondent are acts of bad faith. Accordingly, Respondent’s conduct constitutes bad faith in the registration and use of the disputed domain names within the generally accepted meaning of that expression.
For all of those reasons, the Panel finds that Respondent registered and has used the disputed domain name in bad faith and that Complainant has made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoohoo.org>, <yahooomahalo.com>, <yahoo-tube.net>, and <yahoo-widget.net> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 29, 2012
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