national arbitration forum

 

DECISION

 

Yodlee, Inc. v. Admin / Oversee Domain Management, LLC

Claim Number: FA1301001480893

 

PARTIES

Complainant is Yodlee, Inc. (“Complainant”), represented by Martin R. Greenstein of TechMark, a Law Corporation, California, USA.  Respondent is Admin / Oversee Domain Management, LLC (“Respondent”), represented by Todd H. Greene of Oversee.net, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yodleemoneycenter.com>, registered with Nameking.com, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

James Bridgeman as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2013; the National Arbitration Forum received payment on January 17, 2013.

 

On January 18, 2013, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <yodleemoneycenter.com> domain name is registered with Nameking.com, Inc. and that Respondent is the current registrant of the name.  Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, 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 January 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 2013 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@yodleemoneycenter.com.  Also on January 21, 2013, 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 February 8, 2013.

 

On February 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman 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

Complainant relies on the registered trademarks YODLEE and YODLEE MONEYCENTER, details of which are set out below, and submits that panels established under the Policy have consistently held that registrations of a mark with national trademark authorities “present a prima facie case of Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i).” See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005).

 

For the purpose of the present Complaint, Complainant relies in particular on the registrations in International Class 9, International Class 35, International Class 36, and International Class 42.

 

Complainant submits that pursuant to Policy ¶ 4(a)(i), the disputed domain name <yodleemoneycenter.com> is identical to Complainant’s registered trademark YODLEE MONEYCENTER and confusingly similar to Complainant’s registered trademark YODLEE.  In this regard, Complainant argues that the disputed domain name <yodleemoneycenter.com> incorporates the entirety of Complainant’s registered mark, YODLEE MONEYCENTER, as well as Complainant’s registered mark and corporate name, YODLEE, adding on only the generic top-level domain (“gTLD”) “.com”.

 

Complainant submits that it is well settled that the gTLD .com extension is of no significance in comparing the disputed domain name and the trademarks relied upon for the purpose of the Policy citing in particular the decision of the learned panel in The Forward Ass’n, Inc., v. Enters. Unlimited, FA 8000095491(Nat. Arb. Forum October 3, 2000).

 

Complainant further submits that panel decisions under the Policy have consistently held that it is sufficient for a complainant to show that the domain name in suit reproduces the entirety of a complainant’s trademark in order to establish that the domain name in suit is identical or confusingly similar to the complainant’s registered mark. See UgroupMedia Inc. v. Oversee Domain Mgmt. LLC/Admin, FA 1356032 (Nat. Arb. Form December 15, 2010).

 

Complainant argues that in the present Complaint, the disputed domain name reproduces both the YODLEE and YODLEE MONEYCENTER registered marks.

 

Complainant submits that as such, the disputed domain name is clearly identical or confusingly similar to Complainant’s registered marks.

 

Addressing Policy ¶ 4(a)(ii), Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name <yodleemoneycenter.com>.

 

Complainant submits that Respondent registered the disputed domain name <yodleemoneycenter.com> on December 13, 2007, many years after Complainant had successfully secured trademark registrations for the YODLEE and YODLEE MONEYCENTER marks  in the United States and other jurisdictions.

 

Complainant asserts that it does not license either the YODLEE or YODLEE MONEYCENTER marks, and certainly did not license or otherwise authorize Respondent to use the trademarks or apply for a domain name incorporating the trademarks.

 

Additionally, Complainant submits that Respondent is not commonly known by the disputed domain name. According to the WHOIS information, the registrant of the disputed domain name is Admin / Oversee Domain Management, LLC and submits that this fact demonstrates a lack of rights or legitimate interests in the disputed domain name. Citing Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

Additionally, Complainant submits that Respondent owns over 600,000 other domain names, none of which include any mention of Complainant’s marks aside from the domain name in dispute in this Complaint. In support of this assertion Complainant refers to a printout of Respondent’s website which is annexed to the Complaint. Complainant submits that with such a large array of differing domain names, Respondent cannot claim to be “commonly known” by any of them.

 

Lastly, Complainant refers to a print out of Respondent’s website that is annexed to the Complaint and submits that Respondent has not established a website at the address of the disputed domain name but has established a mere holding page to attract and then redirect interested users to different websites.

 

Complainant submits that it follows that Respondent’s only interest in the disputed domain name is to take advantage of its confusing similarity with Complainant’s mark. Complainant submits that It has been held that such confusingly similar use “tarnishes Complainant’s mark and does not evidence non-commercial or fair use of the domain name by the respondent.” Paws, Inc. v. Zuccarini, FA 1253688 (Nat. Arb. Forum November 15, 2002).

 

Complainant refers to Policy ¶ 4(a)(iii) and alleges that Respondent has registered and is using the disputed domain name in bad faith.

 

Complainant specifically refers to Policy ¶4(b)(iv) and submits that in the present case, by using the disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [their] web site or other on-line location, by creating a likelihood of confusion with the [C]omplainant's mark as to the source, sponsorship, affiliation, or endorsement of [their] web site.”

 

Complainant further submits that pursuant Policy ¶4(b)(iv), Respondent must have the intention of making a commercial gain. Here, Respondent’s main activity is the buying and selling of domain names, including the disputed domain name. These domain names are “parked” and have no real purpose other than to derive traffic. The web site associated with the disputed domain name merely hosts a variety of third party “pay-per-click” advertising links to products and services of Complainant’s competitors.

 

Not only does the website established at the address to which the disputed domain name <yodleemoneycenter.com> resolves only serve to derive traffic by impermissibly using Complainant’s registered trademarks, but Respondent’s use purposefully and intentionally directs traffic away from Complainant by specifically hosting “pay-per-click” links financial services that are directly competitive and/or related to Complainant’s financial services.

 

Respondent has clearly shown bad faith by registering the domain name that is confusingly similar to Complainant’s registered trademarks with the intent of commercial gain by purposefully and intentionally directing traffic away from Complainant and toward that of competitors.

 

Complainant further alleges that in addition, Respondent has a long history of intentionally registering domain names in bad faith that are confusingly similar to third-parties’ registered trademarks. See UgroupMedia, Inc. v. Oversee Domain Mgmt., LLC., FA 1356032, (Nat. Arb. Forum Dec. 15, 2010); see also Mead Johnson & Co., LLC v. Oversee Domain Mgmt., LLC., FA 1417919 (Nat. Arb. Forum Jan. 19, 2012); see also Nexcess.net, LLC. v. Oversee Domain Mgmt., LLC., FA 1433109 (Nat. Arb. Forum April 26, 2012). Complainant alleges that Respondent’s registration of the disputed domain name is part of a pattern of Respondent registering domain names that incorporate trademarks without authorisation, and using these “parked” domain names  purely to derive traffic by luring potential customers to Registrant’s site to profit from “pay-per-click” links to competitor’s web sites.

 

B. Respondent

Respondent submits that it is a California company that it is the owner of a portfolio of generic domain names which it acquired through lawful and fair methods.  As part of its business practice, it has a dispute resolution policy whereby it invites putative complainants to contact it regarding domain names that complainants believe violate a trademark.  And, it has a liberal transfer policy whereby it typically agrees to voluntarily transfer domain names, irrespective of the legitimacy of the complainant’s arguments, in an effort to avoid the needless time and expense associated with litigation and administrative hearings. 

 

Respondent states that ransfers are typically done within one (1) business day.  Respondent’s dispute resolution policy is made publicly available through a clickable link at the bottom of every web page it creates for the domain names it owns. 

Respondent states that it had never heard of either Complainant or its trademarks prior to the filing of this Complaint.  Upon learning of this matter and, pursuant to its business practices, in an effort to resolve this matter expeditiously and without a substantial investment of time and expense by either party or the Panel, Respondent contacted Complainant to offer a voluntary transfer of the domain name at issue pursuant to this policy.  Complainant did not accept this proposal. 

Therefore, without admitting fault or liability and without responding substantively to the allegations raised by Complainant herein, to expedite this matter for the Panel so that its time and resources are not otherwise wasted on this undisputed matter, Respondent stipulates that it is willing to voluntarily transfer the disputed domain name to the Complainant.  For the reasons stated below, Respondent respectfully requests that the transfer be ordered without findings of fact or conclusions as to Policy 4(a) other than the Domain Names be transferred. 

 

Respondent submits that in numerous prior UDRP decisions, Panels have consistently ruled that when a complaint has been filed and the respondent consents to the transfer of the domain name, it is inappropriate to issue any decision other than simply ordering the transfer of the domain name.  Such panels consistently hold that it would be improper to issue any findings of fact in such cases.  In support of this submission Respondent cites and quotes from numerous supportive decisions under the Policy and in particular quotes from  The Cartoon Network LP, LLLP v. Morgan, WIPO Case No. D2005-1132, The Body Shop Int’l plc v. Agri, Lacus & Caelum LLC, FA 679564 (Nat. Arb. Forum, May 25, 2006), Diners Club Int’l Ltd. v. Nokta Internet Techs., FA 720824 (Nat. Arb. Forum Aug. 2, 2006).

 

Accordingly, Respondent requests that the Domain Name be transferred to Complainant without further findings of fact or liability, including those related to the elements set forth in Paragraph 4(a) UDRP Policy.

 

FINDINGS

            Complainant is the  owner of the following registrations for the trademarks YODLEE MONEYCENTER and YODLEE:

 

United States registered trademark YODLEE MONEYCENTER registration number 3,189,179 registered on December 26, 2006 in classes 35, 36 and 42.

 

United States registered trademark YODLEE, registration number 3,002 161registered on September 27, 2005 in international classes 9, 35;

 

Canada registered trademark YODLEE, registration number TMA562, 615 registered on May 27, 2002 in international classes 9, 35 (equiv.);

 

Australia registered trademark YODLEE, registration number 834090 registered on February 5, 2002 in international classes 9, 36 and 42;

 

CTM YODLEE, regration number 1642248, registered on August 1, 2002 in international classes 9, 35, 38, 42; and

 

South Africa registered trademark YODLEE, registration number 2000/08558, registered on November 28, 2003 in class 42.

 

The disputed domain name was registered on December 13, 2007.

 

DISCUSSION

Policy ¶ 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."

 

Policy ¶ 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.

 

Preliminary Issue

Respondent requests that the transfer be ordered without findings of fact or conclusions as to Policy ¶ 4(a).

 

Respondent’s application poses two questions: firstly, does this Panel have jurisdiction to make such an Order? and secondly would it be appropriate to make such an Order in the circumstances of this case?

 

On the question of jurisdiction, this Panel has looked to the WIPO Overview of Panel Views for guidance.

 

At paragraph 4.13, in answer to the question “[c]an panel decide a case under the UDRP based on our respondent’s consent to transfer?” the Overview states that the consensus among panelists is:

 

Where the parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone.”

 

As to the criteria to be applied when deciding whether to make such an Order the Overview notes that:

“Some panels have done so on the basis of giving effect to party agreement as to outcome (sometimes, where the parties so request, on a no-fault basis), with a few also by deeming such consent to satisfy the requirement of the three elements of the UDRP (sometimes by virtue of deemed admission).”

 

This is not such a case as there is no consent on record from Complainant.The Overview goes on to state:-

 

“Some panels have declined to grant a remedy solely on the basis of the respondent's consent, but rather elected to proceed to a substantive determination of the merits; for example, because the panel needs to be certain that the complainant has shown that it possesses relevant trademark rights, or because there is ambiguity as to the genuineness of the respondent's consent, or because the respondent has not expressly admitted bad faith, or because the panel finds there is a conduct or other aspect to the proceedings which warrants a full determination on the record, or because the panel finds that the complainant has not agreed to a consent decision and the complainant is entitled to the decision for which it has paid in filing its complaint, or because the panel finds a broader interest in reaching and recording a substantive determination (e.g. in connection with patterns of conduct under paragraph 4(b)(iii) of the UDRP).”

 

The Overview cites the following relevant decisions: Sassybax, L.L.C. v. Tex. Int’l Prop. Assocs., WIPO Case No. D2007-1190, <sassybac.com>, Transfer; Brownells, Inc. v. Tex. Int’l Prop. Assocs., WIPO Case No. D2007-1211, <brwonells.com>, Transfer; Ticketmaster Corp. v. Global Access, WIPO Case No. D2007-1921, <ticketmast.com>, Transfer; Infonxx.Inc v. Lou Kerner, WildSites.com, WIPO Case No. D2008-0434, <infonxxx.com>, Transfer;President and Fellows of Harvard College v. Tex. Int’l Prop. Assocs. - NA NA, WIPO Case No. D2008-0597, <harvarduniversitypress.com>, Transfer.John Bowers QC v. Tom Keogan, WIPO Case No. D2008-1720, <johnbowersqc.com>, Transfer; Malley's Candies Inc. v. Tex. Int’l Prop. Assocs.- NA NA, WIPO Case No. D2008-1803, <malleychocolates.com> inter alia, Transfer; Research In Motion Ltd. v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320, <backberry.com>, Transfer.

 

In the case under consideration here, Respondent has expressly given its unilateral and unambiguous consent to the remedy sought by Complainant.

 

In consenting to the Order sought by Complainant to transfer the disputed domain name registration,  Respondent states that it has a dispute resolution policy whereby it invites putative Complainant’s to contact it regarding domain names that they believe violate their trademarks; and that it has a liberal transfer policy whereby it typically agrees to voluntary transfer of domain names, irrespective of the legitimacy of the complainant’s argument, in an effort to avoid needless time and expense associated with litigation and administrative hearings.

 

Respondent states that it acquired the disputed domain name through lawful and further methods and had never heard of either Complainant or its trademarks prior to the filing of this matter. Upon learning of this Complaint and pursuant to its business practices, in an effort to resolve this dispute with expedition and without a substantial investment of time and expense by either the parties or the Panel Respondent contacted Complainant to offer a voluntary transfer of the domain name at issue. Complainant however did not accept this proposal.

 

In the absence of any mandatory provision in the Policy or the Rules addressing the point, each application of this nature must be considered on its own merits.  While Complainant has not moved against this domain name registration for five years and did not contact Respondent before commencing these proceedings it was entitled to take this approach and may have had very good reasons for so doing. Furthermore, Complainant has paid in filing fee and there is an argument that it is entitled to a decision on the merits.  

 

On the other hand there is no evidence on record, of conduct on the part of Respondent, or other aspect to the proceedings on which this Panel should find a broader interest in reaching and recording a substantive determination. Furthermore there is no evidence of any prejudice to either Complainant or the Policy in making such an Order.

 

This panel also notes that while Complainant has cited two decisions:  Mead Johnson & Co., LLC v. Oversee Domain Mgmt., LLC., FA 1417919 (Nat. Arb. Forum January 19, 2012) and Nexcess.net, LLC. v. Oversee Domain Mgmt., LLC., FA 1433109 (Nat. Arb. Forum April 26, 2012) as evidence of bad faith registration by this particular Complainant, in both cited cases the panellists, (Sir Ian Barker in the former and Richard di Salle in the latter), made orders giving effect to Respondent’s consent without determining the issue of bad faith or any of the other issues.

 

This Panel had decided therefore to the Order sought without determining the substantive issues except for the threshold issue of the Complainant’s rights in a relevant trademark or service mark. The panel is reviewing this threshold issue because the Overview has noted that some panellists believe that in these circumstances, it is appropriate to ascertain that that a complainant has shown that it possesses relevant trademark rights.

Identical and/or Confusingly Similar

 

Complainant has shown that it possesses relevant trademark rights in the registered trademarks YODLEE MONEYCENTER and YODLEE through its above-listed trademark registrations.

 

The disputed domain name is identical to the former and confusingly similar to the latter as the first and dominant element of the disputed domain name is the word “yodlee” and the other two elements “money” and “center” are descriptive.

 

Rights or Legitimate Interests

 

For reasons given above it is not necessary to determine whether Respondent had rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

 

For reasons given above it is not necessary to determine whether the disputed domain name was registered or is being used in bad faith.

 

DECISION

 

For reasons given above it is Ordered that the <yodleemoneycenter.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

 

James Bridgeman Panelist

Dated:  March 2, 2013

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page