national arbitration forum

 

DECISION

 

Yahoo! Inc. v. James Murray / Energon

Claim Number: FA1308001512733

PARTIES

Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., United States.  Respondent is James Murray / Energon (“Respondent”), Texas, United States.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <socialyahoo.com>, registered with Godaddy.Com, LLC.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 1, 2013; the National Arbitration Forum received payment on August 1, 2013.

 

On August 5, 2013, Godaddy.Com, LLC confirmed by e-mail to the National Arbitration Forum that the <socialyahoo.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 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 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@socialyahoo.com.  Also on August 12, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant, Yahoo! Inc., is a global technology company that provides a wide array of products and services including social media-related products and services for users of PCs and mobile devices.

 

Complainant is the owner of various registrations of the YAHOO! mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,040,691, registered January 2, 1996).

 

Respondent’s <socialyahoo.com> domain name is confusingly similar to Complainant’s YAHOO! mark, because the domain name incorporates the YAHOO! mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.com” and the generic word “social.”

Policy  ¶ 4(a)(ii)

 

Respondent is not commonly known as <socialyahoo.com>, because nothing in the record, including the WHOIS information, suggests that Respondent is known by this name, and Complainant has not authorized Respondent to use its YAHOO! mark in a domain name.

Respondent’s use of the <socialyahoo.com> domain name is not protected as a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii), because the disputed domain name resolves to a website in which Respondent attempts to pass itself off as Complainant by imitating Complainant’s website located at <flickr.com>. Even if the Panel declines to hold that Respondent is using the disputed domain name to provide social media services that directly compete with those provided by Complainant is also not a use protected under Policy  ¶¶ 4(c)(i) or 4(c)(iii).

 

Respondent’s registration and use of the <socialyahoo.com> domain name constitutes bad faith disruption under Policy ¶ 4(b)(iii), because the disputed domain name targets Internet users seeking services under Complainant’s YAHOO! mark, diverting them to Respondent’s website, which in turn offers social media services the directly compete with the services offered under Complainant’s YAHOO! and FLICKR marks. Respondent has also demonstrated bad faith registration and use of the <socialyahoo.com> domain name under Policy ¶ 4(b)(iv), because the disputed domain name deliberately misleads Internet users seeking services offered by Complainant, and the Panel may presume that Respondent is profiting in some manner from its registration and use of the disputed domain name, whether directly or indirectly. Respondent is using the disputed domain name to pass itself off as Complainant, which demonstrates Respondent’s bad faith use and registration pursuant to Policy ¶ 4(a)(iii).

 

Respondent registered the disputed domain name with actual notice of Complainant’s rights in the YAHOO! mark, which tends to show Respondent acted in bad faith under Policy ¶ 4(a)(iii).

 

Respondent first registered the disputed domain name on August 15, 2012.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant had, and has, trademark rights in its YAHOO! mark at all times relevant to this proceeding.

 

Respondent has no authority to use Complainant’s trademark in a domain name or otherwise.

 

The at-issue domain name addresses a website that attempts to mimic Complainant’s official website at <flickr.com> and there offers social media services that compete with those provided by Complainant.

 

Respondent had actual knowledge of Complainant’s YAHOO! trademark at the time the at-issue domain name was registered.

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

Respondent’s domain name is confusingly similar to a trademark in which the Complainant has rights.

 

Complainant shows that it has numerous USPTO trademark registrations regarding its YAHOO! mark.  These registrations support a conclusive finding that Complainant has established rights in the YAHOO! mark pursuant to Policy ¶4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).

 

The <socialyahoo.com> domain name is formed by prefixing the descriptive word “social” to Complainant’s YAHOO! mark after removing the domain name illegal character “!,” and by appending the top level domain “.com” name thereto.  Neither the addition of the descriptive term “social,” the removal of the exclamation point “!,” nor the addition of the top level domain name “.com,” sufficiently differentiate the domain name from Complainant’s mark such that they are not confusingly similar under the Policy. In fact the inclusion of “social” in the at-issue domain name suggests Complainant’s business activities in the social media arena thus increasing any confusion between Complainant’s mark and the domain name. Therefore, the Panel concludes that the <socialyahoo.com> domain name is confusingly similar to Complainant’s YAHOO! mark under Policy ¶ 4(a)(i). See, Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”);  also see Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding that the absence of punctuation in a domain name “does not alter the fact that a name is identical to a mark.”); also see Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”).

 

Rights or Legitimate Interests

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.

 

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.

 

WHOIS information identifies “James Murray / Energon” as the at-issue domain name’s registrant.  Moreover, the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the <socialyahoo.com> domain name. The Panel thus concludes that Respondent is not commonly known by the at-issue domain name for the purposes of 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

The at-issue domain name addresses a website by which Respondent attempts to pass itself off as Complainant. Respondent imitates Complainant’s website located at <flickr.com> and features photographs displayed in a grid pattern that is substantially similar to the layout of Complainant’s website. Furthermore, Respondent’s website offers buttons that are substantially similar to the buttons offered on Complainant’s website that allow a user to share a photograph on third-party websites such as Facebook or Pinterest.  Respondent’s use of the <socialyahoo.com> domain name in this manner, to attempt to pass itself off as Complainant, is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (finding the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).

 

In light of the uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the domain name under Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).

 

Respondent’s scheme targets Internet users seeking services under Complainant’s YAHOO! mark and by using the confusingly similar domain name, diverts them to Respondent’s mock Flickr website.  There, Respondent offers social media services that directly compete with those offered by Complainant. Respondent’s registration and use of the <socialyahoo.com> domain name in this manner creates a disruption to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii).  Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supports a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).

 

Respondent’s primary use of the at-issue domain name is to mislead consumers seeking services offered under Complainant’s YAHOO! mark into visiting Respondent’s <socialyahoo.com> website. There, Respondent offers social media services that directly compete with those offered by Complainant; Respondent benefits from the waylaid visitors via click through fees, or otherwise. Respondent’s unauthorized use of the confusingly similar domain name to profit from Complainant’s trademark demonstrates bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (holding that the respondent acted in bad faith under Policy ¶ 4(b)(iv) when the disputed domain name was confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).

 

Finally, Respondent had actual knowledge of Complainant’s rights in the YAHOO! trademark before registering the <socialyahoo.com> domain name.  Respondent’s prior knowledge is evident from the notoriety of the YAHOO! mark and the fact that Respondent models its <socialyahoo.com> website after Complainant’s <flickr.com> website. Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See 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 had actual knowledge of Complainant's mark when registering the disputed domain name).

 

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 <socialyahoo.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Paul M. DeCicco, Panelist

Dated:  September 9, 2013

 

 

 

 

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