national arbitration forum

 

DECISION

 

Yahoo! Inc. v. Antonius Verplak

Claim Number: FA1208001458810

 

PARTIES

Complainant is Yahoo! Inc. (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington, D.C., USA.  Respondent is Antonius Verplak (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yahoo-center-mail.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Jonas Gulliksson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 20, 2012; the National Arbitration Forum received payment on August 20, 2012.

 

On August 21, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <yahoo-center-mail.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 August 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 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-center-mail.com.  Also on August 22, 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.

 

A timely Response was received and determined to be complete on September 11, 2012.

 

On September 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonas Gulliksson 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

I.     Complainant alleges:

a.    Complainant owns rights in the YAHOO! mark inter alia by virtue of Complainant’s trademark registrations for the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,040,222 registered February 28, 1997) and IP Australia (“IPA”) (e.g., Reg. No. 714,519 registered August 7, 1996).  See Complainant’s Exhibit 3.

                                          i.    Complainant offers online products and services under the YAHOO! mark. The YAHOO! mark has on several occasions been ranked as one of the top 100 global brands. Complainant owns the well-known and well visited domain <yahoo.com>, which during the month of January 2012 attracted over 700 million visitors worldwide.

                                         ii.    Respondent registered the <yahoo-center-mail.com> domain name on December 14, 2011.  See Complainant’s Exhibit 2.

b.    Respondent’s <yahoo-center-mail.com> domain name is confusingly similar to Complainant’s YAHOO! mark.

                                          i.    The disputed domain name only removes the exclamation point from Complainant’s mark, which is not permitted in a domain name, and adds hyphens, descriptive terms, and the generic top-level domain (“gTLD”) “.com.”

c.    Respondent is not commonly known by the <yahoo-center-mail.com> domain name.

                                          i.    Nothing in the WHOIS information, which lists “Antonius Verplak” as the registrant of the disputed domain name, indicates that Respondent is commonly known by the domain name.

                                         ii.    Complainant did not authorize Respondent to use Complainant’s YAHOO! mark.

d.    Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <yahoo-center-mail.com> domain name.

                                          i.    Respondent uses the <yahoo-center-mail.com> domain name to resolve to a website located at the <verplak.net> domain (hereinafter referred to “the Verplak website“) that hosts hyperlinks to various third parties that compete with Complainant, such as Google, Usmart Sydney, and various real estate listings.

                                         ii.    Respondent receives click-through fees from these hyperlinks.

e.    Respondent registered and uses the <yahoo-center-mail.com> domain name in bad faith.

                                          i.    Respondent’s hosting of competing hyperlinks disrupts Complainant’s business.

                                         ii.    Respondent is attempting to attract, for commercial gain, Internet users to Complainant’s resolving website by creating a likelihood of confusion with Complainant’s affiliation of the disputed domain name.

                                        iii.    Respondent had actual knowledge of Complainant’s rights in the YAHOO! mark due to the notoriety of Complainant’s mark.

 

B. Respondent

 

II.    Respondent alleges:

a.    Respondent registered the <yahoo-center-mail.com> domain name on December 14, 2011.

b.    Policy ¶ 4(a)(i)

                                          i.    Respondent acknowledges that YAHOO! is an internationally known name and mark and that Complainant does own rights in the YAHOO! mark.

                                         ii.    Respondent acknowledges that there is a similarity between the disputed domain name and the YAHOO! mark limited to the word “yahoo” but denies that it is confusing when the Verplak website makes no claim to be related to or to have any association with the Complainant.

c.    Policy ¶ 4(a)(ii)

                                          i.    Respondent is not commonly known by the <yahoo-center-mail.com> domain name.

                                         ii.    Respondent acknowledges that the disputed domain name has on occasions redirected Internet users to an unrelated third-party website but denies that there has ever been any intention to mislead or confuse.

                                        iii.    Respondent never received any advertising and click-through fees.

                                       iv.    Respondent forwarded the <yahoo-center-mail.com> domain name to the Verplak website for the benefit of Respondent and Respondent’s friends and family.

d.    Policy ¶ 4(a)(iii)

                                          i.    Respondent did not intend to disrupt Complainant’s business.

                                         ii.    The purpose of the registration of the disputed domain name was to test forwarding domains.

                                        iii.    Respondent elected to register the disputed domain name as offered by the Registrar without adding or removing any characters. Respondent was not aware that the Complainant would have any objection as there was no intend or purpose to confuse anyone.

                                       iv.    Respondent never intended, and does not intend, to attract any Internet users for commercial gain to the Verplak website because the Verplak website does not sell anything.

                                        v.    Respondent has not received any click-through fees

 

FINDINGS

 

The Complainant is the holder of the following registered trademarks:

 

United States Patent and Trademark Office

-       Reg. No. 2,403,227, November 14, 2000, in International Classes  9, 35, 38, 39 and 42.

-       Reg. No. 2,040,222, February 25, 1997, in International Classes 9, 16, 35 and 42.

-       Reg. No. 2,187,292, September 8, 1998, in International Class 35.

-       Reg. No. 2,040,691, February 25, 1997, in International Class 42.

 

Australian registered trademarks

-       Reg. No. 754,964, February 13, 1998, in International Class 38.

-       Reg. No. 709,752, June 3, 1996, in International Classes 9, 16, 35 and 42.

-       Reg. No. 714,519, August 7, 1996, in International Class 41.

-       Reg. No. 1,071,489, July 23, 2004, in International Classes 35, 37, 40, 43, 44 and 45.

 

The disputed domain name was registered on December 14, 2011.

 

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.

 

Identical and/or Confusingly Similar

 

Complainant alleges that it owns rights in the YAHOO! Mark inter alia by virtue of the Complainant’s trademark registrations in Australia and the United States of America (see above). Respondent acknowledges that the Complainant holds rights in the YAHOO! mark.

 

The Panel concludes that Complainant has established rights in the YAHOO! mark under Policy ¶ 4(a)(i) through its holding of trademark registrations. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).  Also, the Panel finds that the notoriety of the trade-name and trademark YAHOO! for Internet services is a fact which by itself constitutes proof of the Complainant’s legitimate rights, and these rights have been acknowledged by Respondent.

 

Complainant argues that the disputed domain name is confusingly similar to Complainant’s YAHOO! mark claiming that the disputed domain name only removes the exclamation point from the Complainant’s mark and adds hyphens, descriptive terms, and the gTLD “.com.” The Complainant contends that a hyphen is not permitted in a domain name and that the addition of gTLDs and hyphens are irrelevant to a Policy ¶ 4(a)(i) analysis. Complainant further argues that the additions of the descriptive terms “center” and “mail” to Complainant’s mark fail to alleviate the confusing similarity between the disputed domain name and Complainant’s mark.   

 

Respondent acknowledges the existence of a similarity between the disputed domain name and the YAHOO! mark limited to the word “yahoo”. The Respondent denies that the similarity is confusing when the Verplak website makes no claim to be related to or to have any association with Complainant.

 

The Panel notes that a Policy ¶ 4(a)(i) confusingly similar analysis centers on the comparison of the domain names and the mark, not on the resolving website.  Accordingly, the nature of the website to which the disputed domain name has been linked is not relevant to the issue of confusing similarity under the Policy. Further, the Panel notes that the disputed domain name contains the Complainant’s mark in its entirety with the exception of the exclamation point (which is not possible to register in a domain name) and with the addition of hyphens and the two words “center” and “mail”.  Also, the Panel notes that the domain name contains the gTLD “.com”.  The Panel finds that the combination of the words “center” and “mail” directly relates to the Complainant’s business and therefore are descriptive. Further, the Panel finds that the Complainant’s mark is the most distinctive element of the disputed domain name and that the addition of the descriptive words is insufficient to avoid a finding of confusing similarity.  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 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also  Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business)

 

The first element of the Policy is thus fulfilled.

 

Rights or Legitimate Interests

 

The Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to the 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)

 

Complainant claims that the Respondent is not commonly known by the disputed domain name.  Complainant alleges that nothing in the WHOIS information, which lists “Antonius Verplak” as the registrant of the disputed domain name, indicates that Respondent is commonly known by the domain name.  Complainant further claims that Complainant did not authorize Respondent to use the Complainant’s YAHOO! mark.

 

Respondent admits that it is not commonly known by the disputed domain name and does not adduce that it has been authorized by the Complainant to use the YAHOO! mark.

 

Complainant further contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of disputed domain name. Complainant argues that Respondent uses the disputed domain name to resolve the Verplak website. Complainant asserts that the Verplak website hosts hyperlinks to various third parties that compete with Complainant, such as Google, Usmart Sydney, and various real estate listings.  Complainant claims that the Respondent receives click-through fees from these hyperlinks. 

 

Respondent alleges that it has forwarded visitors of the disputed domain name to its Verplak website for the benefit of Respondent and its friends and family.  Respondent acknowledges that Internet users has been redirected to an unrelated third-party website but states that there has never been any intention to mislead or confuse.  Respondent claims that it has never received any advertising or click-through fees.

 

The Panel holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

The Panel notes, on the screenshots submitted by Complainant of the Verplak website that it does feature links to various third parties that are competitors to Complainant as well as a picture and the statement “the Verplak family: Tony, Arlene, Anton, Donya.”  By evidence submitted of redirections from the disputed domain name and the information given by Complainant as well as Respondent the Panel finds that Internet users of the disputed domain name have been redirected to the Verplak website. Due to the findings that Respondent is not known by the disputed domain name and that links to websites of Complainant’s competitors are presented on the Verplak website, the Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name.

 

As to Respondent’s ascertations above, the Panel finds that regardless of the intentions of the domain name registration, Respondent’s use of the disputed domain name diverts Internet users looking for Complainant’s products or services to a website unrelated to Complainant which features links to Complainant’s competitors. This use does not establish rights or legitimate interests under the Policy. See Seiko Kabushiki Kaisha d/b/a Seiko Corporation v. CS into Tech, FA 198795 (Nat. Arb. Forum December 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); 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). Also, the Panel finds that there is no evidence submitted by Respondent that proves that Respondent has rights or legitimate interests in respect of the disputed domain name.

 

In accordance with the Panel’s findings above, the second element of the Policy is thus fulfilled.

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent’s registration and use of the disputed domain name disrupts Complainant’s business.  Complainant accuses Respondent of redirecting Internet users to a commercial website with monetized hyperlinks to Complainant’s competitors. According to Complainant, Respondent is also attempting to attract, for commercial gain, Internet users to Complainant’s resolving website by creating a likelihood of confusion regarding Complainant’s affiliation with the disputed domain name.  Complainant notes that the disputed domain name is confusingly similar to Complainant’s YAHOO! mark, which Complainant argues is evidence that Respondent is attempting to create confusion with Complainant’s mark.  Complainant alleges that Respondent receives click-through fees from the aforementioned hyperlinks.  Complainant contends that Respondent had actual knowledge of Complainant’s rights in the YAHOO! mark due to the notoriety of Complainant’s mark. 

 

Respondent contends that it did not intend to disrupt Complainant’s business.  Respondent claims that it registered the disputed domain name for the purpose of testing forwarding domain names to Respondent’s Verplak website.  Respondent claims that it has elected to register the disputed domain name as offered by the Registrar without adding or removing any characters not being aware that the Complainant would have any objection as there was no intend or purpose to confuse anyone. Respondent claims that it never intended, and does not intend, to attract any Internet users to the Verplak website because the Verplak website does not sell anything.  Respondent argues that the Verplak website was created for its friends and family and that Respondent does not benefit commercially from the Verplak website. 

 

The Panel notes that Respondent acknowledges the Complainant’s rights in the YAHOO! trademark and that Respondent has not denied having actual knowledge of the Complainant’s trademark rights. On the contrary, in its Response, the Respondent states that it “was not aware that the Complainant would have any objection as there was no intend or purpose to confuse anyone”, suggesting well-awareness of Complainant’s rights at the time of the registration.

 

When registering a domain name, the domain-name holder inter alia warrants the registrar that “to your [the domain name holder] knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party;” Policy ¶ 2(b). The Panel finds that Respondent’s registration of Complainant’s trademark as the most distinctive part of its domain name with prior actual knowledge of the Complainant’s rights in YAHOO! constitutes a violation of the Policy and a registration 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).

 

As noted above, the Panel has found that the disputed domain name has been used to link Internet users to the Verplak website that inter alia presents hyperlinks to websites of Complainant’s competitors. Respondent argues that it has not received any fees or payment for these links. The Panel finds that Complainant has not proven that Respondent has registered with the purpose of or has obtained commercial gain from its use of the disputed domain name. However, the Panel holds that the notoriety of the YAHOO! mark, the highly confusing domain name, Respondent’s lack of rights and legitimate interest and the bad faith registration of the disputed domain name together with Respondent’s use of the disputed domain name to present links to the Complainant’s competitors to be sufficient evidence of bad faith use under the 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)); see also 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).

 

            The Panel finds that the third and final element of the Policy is fulfilled.

 

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-center-mail.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Jonas Gulliksson, Panelist

Dated:  October 3, 2012

 

 

 

 

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