Yahoo! Inc. v. Naples Florida Tech, LLC
Claim Number: FA1208001460768
Complainant is Yahoo! Inc. (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is Naples Florida Tech, LLC (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoocrawler.com>, registered with GoDaddy.com, LLC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2012; the National Arbitration Forum received payment on August 30, 2012.
On August 31, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <yahoocrawler.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 September 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 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@yahoocrawler.com. Also on September 4, 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 September 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Respondent’s <yahoocrawler.com> domain name, the domain name at issue, is confusingly similar to Complainant’s YAHOO! mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
i. The omission of punctuation and the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant under Policy ¶ 4(a)(i).
ii. The addition of a descriptive term to Complainant’s mark does not remove the disputed domain name from the realm of confusing similarity.
i. Respondent is not commonly known by the disputed domain name, as the WHOIS information identifies “Naples Florida Tech, LLC.” Complainant has not authorized Respondent to use its YAHOO! mark.
ii. Respondent is using the disputed domain name to host a commercial website that provides competing web portal links to search services, which is 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).
iii. Respondent offered to sell the disputed domain name for $50,000, which is well above its out-of-pocket registration costs.
i. Respondent has offered to sell the disputed domain name for $50,000.
ii. Respondent has engaged in a pattern of bad faith registration and use of the disputed domain name that has infringed on Complainant’s YAHOO! mark.
iii. Respondent is using the disputed domain name to host a commercial website featuring third-party links to competing companies with the intent of disrupting Complainant’s business.
iv. Respondent’s registration and use of the disputed domain name is also evidence of bad faith registration and use under Policy ¶ 4(b)(iv).
v. Respondent had actual knowledge of Complainant’s YAHOO! mark.
Respondent did not submit a Response.
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 owns several trademark registrations with the USPTO for the YAHOO! mark (e.g., Reg. No. 2,040,222 registered February 25, 1997). Such evidence is sufficient for Complainant to establish rights in the YAHOO! mark under Policy ¶ 4(a)(i). See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO).
Further, Respondent’s <yahoocrawler.com>
domain name is confusingly similar to the YAHOO! mark. The omission of punctuation and the addition of
the gTLD “.com” is irrelevant under Policy ¶ 4(a)(i). The addition of a descriptive term to
Complainant’s mark does not remove the disputed domain name from the realm of
confusing similarity. The term “crawler” appears to be a generic term with no
specific ties to Complainant that would render it descriptive of Complainant’s
services. Therefore, the Panel finds that Respondent’s <yahoocrawler.com>
domain name is confusingly similar to the YAHOO! mark under 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 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 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.”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the disputed domain name, as the WHOIS information identifies “Naples Florida Tech, LLC” as the registrant of the domain. Complainant has not authorized Respondent to use its YAHOO! mark. 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).
Respondent is using the disputed domain name to host a commercial website that provides competing web portal links to search services, which is 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’s resolving website appears to be parked courtesy of GoDaddy.com and contains general advertisements links to a variety of businesses and products. Respondent’s use of the disputed domain name does not amount to 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). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent offered to sell the disputed domain name for $50,000, which is well above Respondent’s out-of-pocket registration costs. Respondent’s resolving website contains a link to Respondent’s e-mail address with a heading that states, “This domain is for sale! If you wish to make an offer please contact [Respondent].” Complainant provides an e-mail from Respondent to Complainant’s counsel in which Respondent states that the disputed domain name is for sale for “$50,000 o/b/o.” Respondent’s offer to sell the disputed domain name to Complainant and the general public is evidence that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent offered to sell the disputed domain name for $50,000. As noted above, Respondent’s resolving website contains a link to Respondent’s e-mail address to make an offer for the purchase of the disputed domain name. Further, Complainant’s evidence shows that Respondent offered to sell the domain name to Complainant for $50,000. Respondent’s offer to sell the disputed domain name for $50,000 is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Respondent has engaged in a pattern of bad faith registration and use of the disputed domain name that has infringed on Complainant’s YAHOO! mark. Respondent has previously registered the <ya-hoo.us> domain name, as well as other domain names containing well-known marks such as Apple, Bing, Geek Squad, Google, Microsoft, and Walmart. The Respondent’s registration of a second domain name containing the YAHOO! mark, as well as other domain names containing third-party marks, is evidence of bad faith registration and use in this case under Policy ¶ 4(b)(ii). See 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)).
Respondent is using the disputed domain name to host a commercial website featuring third-party links to competing companies with the intent of disrupting Complainant’s business. The Panel finds that Respondent registered and is using 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)).
Further, Respondent’s registration and use of the disputed domain name is also evidence of bad faith registration and use under Policy ¶ 4(b)(iv). Respondent is using a domain name that is confusingly similar to the YAHOO! mark to present Internet users with links to various websites, including those to competing websites and has created confusion for Internet users regarding Complainant’s affiliation with the website. Respondent is profiting from click-through fees in relation to the website. Accordingly, Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Respondent had actual knowledge of Complainant’s YAHOO! mark because the mark has become internationally famous and is registered in the United States and around the world. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name 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 Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoocrawler.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 4, 2012
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