Yahoo! Inc. v. Mr ahmadi / yahoo36oiran
Claim Number: FA1206001449577
Complainant is Yahoo! Inc. (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is Mr ahmadi / yahoo36oiran (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoo360iran.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 20, 2012; the National Arbitration Forum received payment June 20, 2012.
On June 21, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <yahoo360iran.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a
publicdomainregistry.com verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com registration agreement and 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 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 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@yahoo360iran.com. Also on June 26, 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 July 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
1. Complainant operates a diversified digital media company under the YAHOO! mark.
2. Complainant owns trademark registration for the YAHOO! mark with various federal trademark authorities, including the USPTO (e.g., Reg. No. 2,040,222 registered February 25, 1997).
3. The disputed domain name is confusingly similar to Complainant’s mark.
4. Respondent is not commonly known by the disputed domain name.
5. The disputed domain name resolves to a website that directly competes with Complainant’s business by offering Internet search and linking services, while also providing hyperlinks to competing third-party websites.
6. Respondent commercially benefits from the operation of its site through the collection of click-through fees.
7. Respondent has established a pattern of registering domain names that infringe upon Complainant’s YAHOO! mark.
8. Respondent had actual knowledge of Complainant’s rights in the YAHOO! mark at the time Respondent registered the disputed domain name.
1. The Panel may note that Respondent registered the <yahoo360iran.com> domain name on October 20, 2009.
The disputed domain name is confusingly similar to Complainant’s protected marks.
Complainant established rights and legitimate interests in the disputed domain name; Respondent did not and the Panel finds that Respondent has no such rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant 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.
Given 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 will draw such inferences as the Panel 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.”).
Complainant claims rights in the YAHOO! mark pursuant to Policy ¶ 4(a)(i). The Panel notes that Complainant provides evidence of its registration of the mark with various federal trademark authorities, including the USPTO (e.g., Reg. No. 2,040,222 registered February 25, 1997). Registration of a mark with the USPTO is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office). The Panel further finds that Complainant established its rights in the YAHOO! Mark despite the fact that Complainant does not hold a trademark registration in the country in which Respondent operates or resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends that the <yahoo360iran.com> domain name is confusingly similar to its YAHOO! mark for the purposes of Policy ¶ 4(a)(i). The Panel notes that the disputed domain name omits the exclamation mark from Complainant’s mark, while adding the number “360,” the geographic term “iran,” and the generic top-level domain (“gTLD”) “.com.” Upon examining relevant UDRP precedent, the Panel finds that none of these changes, alone or cumulatively, distinguish Respondent’s domain name from Complainant’s mark for purposes of Policy ¶ 4(a)(i). See 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); see also Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)); see also Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). In light of the preceding analysis, the Panel may conclude that the <yahoo360iran.com> domain name is confusingly similar to the YAHOO! mark for the purposes of Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
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.”).
Complainant alleges that Respondent is not commonly known by the <yahoo360iran.com> domain name within the meaning of Policy ¶ 4(c)(ii). The Panel notes that the WHOIS information identifies the domain name registrant as “Mr ahmadi / yahoo36oiran.” The Panel finds that, although Respondent appears to be commonly known by the disputed domain name on the basis of the WHOIS information alone, no other evidence in the record supports this notion. In fact, the Panel notes that Respondent failed to satisfy its burden of providing the Panel with a Response, leaving the record devoid of any evidence that Respondent is commonly known by the disputed domain name. In the absence of such evidence, the Panel finds that Respondent is not commonly known by the <yahoo360iran.com> domain name within the meaning of Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant further alleges that Respondent’s use of the <yahoo360iran.com> domain name does not coincide with 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). Complainant contends that the website housed at Respondent’s domain name directly competes with Complainant’s business by offering Internet search and linking services, while also providing hyperlinks to competing third-party websites. The Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has engaged in a pattern of bad faith registration and use under Policy ¶ 4(b)(ii) through repeated registration of domain names that infringe on Complainant’s YAHOO! Mark. The Panel notes that Complainant provides evidence of the registration of the <yahoo118.com> domain name by a “Mohammad Ali Ahmadi,” while the WHOIS information for the <yahoo360iran.com> domain name identifies its registrant as “Mr ahmadi / yahoo36oiran.” The Panel finds that the registrant of each respective domain name is in fact the same party and finds that Respondent has engaged in a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).
Complainant also alleges that Respondent’s registration and use of the domain name at issue disrupts Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii). Complainant alleges that, by registering a confusingly similar domain name for the purpose of hosting a website that both directly competes with Complainant’s business and provides hyperlinks to competing third-parties, Respondent acted with the goal of disrupting Complainant’s business in bad faith. The Panel agrees and finds that Respondent’s registration and use of the <yahoo360iran.com> domain name disrupts Complainant’s business and, therefore, was and is in bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant contends that Respondent’s registration and use of the disputed domain name also demonstrates attraction for commercial gain in bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent’s registration of a confusingly similar domain name, along with its provision of services similar to those provided by Complainant, substantially increases the likelihood that consumers will believe that Respondent’s site is affiliated with Complainant. Complainant asserts that Respondent hopes to use this confusion to drive Internet traffic to its site, which Complainant claims will, in turn, likely result in the collection of greater click-through fees from the sponsored links Respondent hosts on its website. The Panel finds that Respondent is attempting to realize a commercial gain from the confusion it creates. The Panel finds that this type of arrangement constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant also contends that, in light of the fame and notoriety of Complainant's YAHOO! mark, it is inconceivable that Respondent could have registered the <yahoo360iran.com> domain name without actual knowledge of Complainant's rights in the mark. Moreover, Complainant notes that Respondent registered the disputed domain name using a Yahoo! e-mail address, providing further evidence that Respondent did in fact have actual knowledge of Complainant’s mark at the time Respondent registered the <yahoo360iran.com> domain name. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and also finds that actual knowledge is adequate evidence of bad faith registration under Policy ¶ 4(a)(iii). 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).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <yahoo360iran.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 6, 2012.
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