Yahoo! Inc. v. VALUE DOMAIN / DIGIROCK, INC.; DIGIROCK, INC. / DOMAIN SECTION VALUE DOMAIN
Claim Number: FA1206001450315
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. / DOMAIN SECTION VALUE DOMAIN (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yahoo-info.biz>, <deaiyahoo.com>, <yahooj.info>, <yahoo-bb-web.biz>, <yahoo-bb-net.biz>, <yahoo-site.biz>, <yahoo-o.com>, and <yahoo-rakuten.net>, registered with Key-Systems GmbH.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2012; the National Arbitration Forum received payment on June 25, 2012. The Complaint was submitted in both Japanese and English.
On June 27, 2012, Key-Systems GmbH confirmed by e-mail to the National Arbitration Forum that the <yahoo-info.biz>, <deaiyahoo.com>, <yahooj.info>, <yahoo-bb-web.biz>, <yahoo-bb-net.biz>, <yahoo-site.biz>, <yahoo-o.com>, and <yahoo-rakuten.net> domain names are registered with Key-Systems GmbH and that Respondent is the current registrant of the names. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 July 6, 2012, the Forum served the Japanese language Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of July 26, 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-info.biz, postmaster@deaiyahoo.com, postmaster@yahooj.info, postmaster@yahoo-bb-web.biz, postmaster@yahoo-bb-net.biz, postmaster@yahoo-site.biz, postmaster@yahoo-o.com, and postmaster@yahoo-rakuten.net. Also on July 6, 2012, the Japanese language 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 August 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds registered trademarks for the YAHOO! mark. Respondent did not 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.”).
Complainant argues 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 the trademark certificates issued by the USPTO and printouts from the JPO website to support its assertion that the mark is registered in both countries Based upon the evidence provided, the Panel concludes that Complainant established its rights in the YAHOO! mark under Policy ¶ 4(a)(i) by registering it with multiple trademark authorities across the world. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant also argues that Respondent’s <yahoo-info.biz>, <deaiyahoo.com>, <yahooj.info>, <yahoo-bb-web.biz>, <yahoo-bb-net.biz>, <yahoo-site.biz>, <yahoo-o.com>, and <yahoo-rakuten.net> domain names are confusingly similar to Complainant’s YAHOO! mark. Each disputed domain name includes nearly the entire mark, merely removing the “!” because the symbol is not allowed in domain names and adding a generic top-level domain (“gTLD”). The Panel also notes that the <yahoo-info.biz>, <deaiyahoo.com>, <yahoo-bb-web.biz>, <yahoo-bb-net.biz>, <yahoo-site.biz>, and <yahoo-rakuten.net> include generic terms and in some instances the letters “bb.” The Panel further notes that the <yahooj.info> and <yahoo-o.com> domain names both add an additional letter to the mark. Lastly, the Panel notes that the <yahoo-info.biz>, <yahoo-bb-web.biz>, <yahoo-bb-net.biz>, <yahoo-site.biz>, <yahoo-o.com>, and <yahoo-rakuten.net> domain names all include at least one additional hyphen. The Panel finds that Respondent failed to sufficiently differentiate the disputed domain names from Complainant’s YAHOO! mark, and therefore concludes that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the addition of the letter “c” to the complainant’s SAFLOK mark does not distinguish the <saflock.com> domain name from the mark under Policy ¶ 4(a)(i)); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known by the disputed domain names. The WHOIS information identifies the registrant of the disputed domain names as “VALUE DOMAIN / DIGIROCK, INC.; DIGIROCK, INC. / DOMAIN SECTION VALUE DOMAIN.” Respondent failed to provide any evidence to contradict Complainant’s assertion. Therefore, the Panel finds 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).
Complainant states that Respondent resolves the disputed domain names to websites offering competing services and links to competing third-party businesses. Based upon this use, the Panel finds 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 under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has engaged in a pattern of bad faith registration and use. The Panel notes that, in the present case, Respondent is charged with registering eight total allegedly infringing domain names. As a result, the Panel finds that Respondent’s registration of multiple disputed domain names in one instance is indicative of a pattern of bad faith registration and use 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)).
Complainant also contends that Respondent’s disputed domain names disrupt Complainant’s business. Complainant states that the disputed domain names resolve to websites offering competing commercial links. The Panel infers that Internet users will arrive at the website, click on one of the links, and then utilize the services of a competing company rather than Complainant. Based upon this use, the Panel finds that Respondent’s disputed domain names are disrupting Complainant business and that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant alleges that Respondent uses the disputed domain names to attract Internet users to its websites by creating a likelihood of confusion between Respondent and Complainant’s YAHOO! mark and then Respondent gains commercially from that confusion. Complainant states that Respondent uses the disputed domain name to offer websites with competing commercial content and links to Complainant’s competitors. Complainant claims that Respondent receives click-through fees from the linked sites. Because the Panel concludes that Respondent is attempting to confuse Internet users into believing Respondent is associated with Complainant and then profiting off of that confusion, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv) See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Complainant also alleges that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the YAHOO! mark. Complainant states that its YAHOO! mark is internationally famous. Because the Panel finds that Respondent had actual knowledge of Complainant’s rights in the YAHOO! mark, the Panel concludes that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds Complainant has satisfied 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 <yahoo-info.biz>, <deaiyahoo.com>, <yahooj.info>, <yahoo-bb-web.biz>, <yahoo-bb-net.biz>, <yahoo-site.biz>, <yahoo-o.com>, and <yahoo-rakuten.net> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 9, 2012
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