Yahoo! Inc. v. Yahoozone Services / Nitin Gupta
Claim Number: FA1308001512791
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is Yahoozone Services / Nitin Gupta (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahooz0ne.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.
Jaime Delgado as Panelist.
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 2, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <yahooz0ne.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 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 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@yahooz0ne.com. Also on August 5, 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 August 8, 2013.
On August 15, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jaime Delgado 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i):
Complainant has used the YAHOO! Mark for years in providing an array of online services to Internet users. Complainant has maintained a presence on the Internet through its YAHOO! mark throughout most of the time in which public Internet users have used the Internet for commercial or leisure purposes. Complainant has obtained trademark registrations for the YAHOO! mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,040,691 registered February 25, 1997); (Reg. No. 2,040,222 registered on February 25, 1997).
Respondent’s <yahooz0ne.com> domain name is confusingly similar to the YAHOO! mark. Respondent adds in the term “z0ne” and the generic top-level domain (“gTLD”) “.com.” The absence of the exclamation point is irrelevant as a domain name cannot contain such punctuation.
Policy ¶ 4(a)(ii):
Respondent has not been commonly known by this domain name.
Respondent has determined to use the <yahooz0ne.com> domain name to providing hacking services that allow Internet users to exploit Complainant’s infrastructure to obtain free YAHOO! services. The domain name’s resolving website features the phrase “YahooZone / your #1 gateway to yahoo world.” Respondent also hosts forums that discuss the best methods for hacking Complainant’s services, and encourage Internet users to learn the skills needed to hack Complainant’s websites. Respondent also charges a fee and provides Internet users with proxy-server and IP address shielding services. Respondent also has a plea to Internet users where it requests the user to provide Respondent with charitable donations to Respondent’s own PayPal account.
Policy ¶ 4(a)(iii):
Respondent’s hacking services through this <yahooz0ne.com> domain name serve to disrupt Complainant’s legitimate business.
Respondent creates a likelihood of confusion as to Complainant’s affiliation with the hacking endeavors occurring through the <yahooz0ne.com> domain name’s website.
Respondent had knowledge of Complainant’s rights in the YAHOO! mark when registering the domain name. Respondent explicitly references the YAHOO! mark and related services throughout the domain name’s websites, along with advice on how to best exploit Complainant’s business.
Respondent registered the <yahooz0ne.com> domain name on February 28, 2008.
B. Respondent
Respondent alleges that he registered the domain name to host jokes and puzzles for his friends.
Respondent requests a $50.00 refund from GoDaddy.com, LLC.
Complainant has obtained trademark registrations for the YAHOO! mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,040,691 registered February 25, 1997); (Reg. No. 2,040,222 registered on February 25, 1997).
On August 2, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <yahooz0ne.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.
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.
Complainant states that it has used the YAHOO! Mark for years in providing an array of online services to Internet users. Complainant argues that it has maintained a presence on the Internet through its YAHOO! mark throughout most of the time in which public Internet users have used the Internet for commercial or leisure purposes. Complainant has obtained trademark registrations for the YAHOO! mark with the USPTO (Reg. No. 2,040,691 registered February 25, 1996); (Reg. No. 2,040,222 registered February 25, 1997). In Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the panel noted that the Policy does not mandate a party to find rights in the particular country where a given respondent dwells. The Panel finds that Complainant’s USPTO registrations satisfactorily establishes its rights in the YAHOO! mark under 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).
Complainant next argues that Respondent’s <yahooz0ne.com> domain name is confusingly similar to the YAHOO! mark. Complainant notes that Respondent adds in the term “z0ne” (the “0” being a zero), and the gTLD “.com.” Complainant argues that the absence of the exclamation point is irrelevant, as a domain name cannot contain such punctuation. The Panel agrees that neither the deletion of the exclamation point, nor the addition of the gTLD, is relevant to this discussion. 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); Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel also agrees that the phrase “z0ne”—a misspelling of the term “zone”—is generic and does not distinguish the domain name in any way. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). The Panel concludes that the <yahooz0ne.com> domain name is confusingly similar to the YAHOO! mark under Policy ¶ 4(a)(i).
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.”).
Complainant argues that Respondent has not been commonly known by this domain name. The Panel notes that while the WHOIS information lists “Nitin Gupta / Yahoozone Services” as the registrant, the Response to this proceeding was filed and signed by “Prabudh Gupta.” In Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369, the Panel rejected the contention that a Respondent was commonly known by a domain name because there was no affirmative evidence beyond the Respondent’s plain assertions to illustrate the Respondent’s association with the domain name. The Panel likewise agrees that Respondent has not sufficiently illustrated that it is commonly known by the <yahooz0ne.com> domain name under Policy ¶ 4(c)(ii), and concludes that Respondent thus lacks rights or legitimate interests in the domain name.
Complainant claims that Respondent has determined to use the <yahooz0ne.com> domain name to providing hacking services that allow Internet users to exploit Complainant’s infrastructure to obtain free YAHOO! services. Complainant notes that the domain name’s resolving website features the phrase “YahooZone / your #1 gateway to yahoo world.” See Complainant’s Ex. 8. Complainant points out that Respondent also hosts forums that discuss the best methods for hacking Complainant’s services, and encourages Internet users to learn the skills needed to hack Complainant’s websites. Complainant claims that Respondent also charges a fee and provides Internet users with proxy-server and IP address shielding services, and promotes services in exchange for donations to its PayPal account. The Panel agrees that Complainant’s connections are verified by posts on the domain name’s websites from an Internet user who identifies itself as “Certified Ethical Hacker.” See Complainant’s Ex. 8. Respondent’s use of the domain name fails to provide a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Microsoft Corp. v. Webmasterz Entertainment, FA 1266932 (Nat. Arb. Forum Aug. 5, 2009) (determining that there was no bona fide offering, or legitimate use, when the domain name at issue was being used to hack into the accounts and services of the complainant and complainant’s customers).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant argues that Respondent’s hacking services through the <yahooz0ne.com> domain name disrupts Complainant’s legitimate business. Respondent provides an array of hacking products and services through the domain name’s resolving website. See Complainant’s Ex. 8. The Panel agrees that Respondent’s conduct through this domain name is both disruptive of Complainant’s business, as well as competitive with the commercial and profit-generating endeavor that Complainant seeks to make through the services that Respondent is hacking. See, e.g., Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). In Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008), the Panel determined that a Respondent disrupts a Complainant’s business even if the Respondent’s sole purpose for the domain name is to promote counterfeits of a Complainant’s goods, with no other competing merchandise. Respondent disrupts Complainant’s business in Policy ¶ 4(b)(iii) bad faith by using the domain name to sell goods and services that would allow Internet users to pay little or no charge for Complainant’s own commercial services.
Complainant also argues that Respondent creates a likelihood of confusion as to Complainant’s affiliation with the hacking endeavors occurring through the <yahooz0ne.com> domain name’s website. The Panel notes that the domain name’s website does reference the YAHOO! mark, and the content of the domain name discusses tricks and exploits that Internet users can purchase to hack YAHOO! services. See Complainant’s Ex. 8. Internet users would indeed confuse these hacking services with Complainant’s own business, thus Respondent engages in Policy ¶ 4(b)(iv) bad faith use and registration. See, e.g., Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant finally attests that Respondent had knowledge of Complainant’s rights in the YAHOO! mark when registering the domain name. Complainant claims that Respondent’s knowledge is clear, as Respondent explicitly references the YAHOO! mark and related services throughout the domain name’s websites, along with advice on how to best exploit Complainant’s business. Respondent itself admits that it was likely a mistake to choose a domain name incorporating the YAHOO! mark, as Respondent was a YAHOO! services user when it registered the mark. The Panel agrees with Complainant regarding Respondent's actual knowledge and concludes that Respondent registered the <yahooz0ne.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under 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 <yahooz0ne.com> domain name be TRANSFERRED from Respondent to Complainant.
Jaime Delgado, Panelist
Dated: August 23, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page