national arbitration forum

 

DECISION

 

Yahoo! Inc. v. N/A / asghar hasan zadeh

Claim Number: FA1308001517435

PARTIES

Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA.  Respondent is N/A / asghar hasan zadeh (“Respondent”), Iran.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fa-yahoo.com>, registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM.

 

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.

 

Hon. Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2013; the National Arbitration Forum received payment on August 30, 2013.

 

On September 4, 2013, PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <fa-yahoo.com> domain name is registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the names.  PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 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@fa-yahoo.com.  Also on September 4, 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 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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

  1. Complainant
    1. Complainant, Yahoo! Inc., is a global technology company that provides a wide array of products and services including search, content, and communications tools, on PCs and other devices such as mobile devices.
    2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the YAHOO! mark (e.g., Reg. No. 2,040,222, registered February 25, 1997).
    3. The domain name is confusingly similar to Complainant’s famous and federally registered YAHOO! mark because it is comprised of that mark, the letter “f” and “a” which can be viewed as additional letter or as the abbreviation “fa” for Farsi, and a hyphen. UDRP Panels have also held that punctuation such as hyphens or the exclamation point in the YAHOO! mark, and generic top-level domains (“gTLDs”) such as “.com” are irrelevant to a confusingly similarity analysis.
    4. Respondent has no rights or legitimate interests in the domain name.

                                          i.    Respondent is not and has not been commonly known by the domain name.

                                         ii.    Respondent is using the confusingly similar domain name to resolve to a website offering directly competing search and news services.

    1. Respondent registered and is using the disputed domain name in bad faith.

                                          i.    Respondent disrupts Complainant’s business by using the domain name for a website offering directly competing search and news services.

                                         ii.    Respondent uses the domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its YAHOO! mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent, its website, and/or the services offered therein.

                                        iii.    Respondent registered the domain name in bad faith with knowledge of Complainant and its YAHOO! mark given the fame of the YAHOO! mark, Respondent’s use of the domain name to offer directly competing services, and Respondent’s selection of the domain name that mimics Complainant’s URLs for its international websites.

    1. Respondent registered the <fa-yahoo.com> domain name on May 23, 2013.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.

 

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

Complainant argues that it is a global technology company that provides a wide array of products and services including search, content, and communications tools, on PCs and other devices such as mobile devices. Complainant claims that it is the owner of trademark registrations with the USPTO for the YAHOO! mark (e.g., Reg. No. 2,040,222, registered February 25, 1997). The Panel notes that Respondent appears to reside in Iran. The Panel finds that Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent resides, so long as it demonstrates rights in the mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel concludes that Complainant has established rights in the YAHOO! mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).

 

Complainant asserts that Respondent’s <fa-yahoo.com> domain name is confusingly similar to Complainant’s YAHOO! mark because it is comprised of that mark, the letter “f” and “a” which can be viewed as additional letters or as the abbreviation “fa” for Farsi, and a hyphen. The Panel holds that Respondent’s inclusion of additional letters to Complainant’s mark does not differentiate the domain name from the mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com> domain name is confusingly similar to the complainant’s AOL mark because “…the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks.”). The Panel also holds that Respondent’s omission of punctuation such as exclamation points and addition of a hyphen does not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Complainant argues that UDRP Panels have also held that punctuation such as hyphens or the exclamation point in the YAHOO! mark, and gTLDs such as “.com” are irrelevant to a confusingly similarity analysis. The Panel finds that Respondent’s addition of a gTLD to Complainant’s mark is inconsequential to a Policy ¶ 4(a)(i) determination. See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). Therefore, the Panel finds that Respondent’s <fa-yahoo.com> domain name is confusingly similar to Complainant’s YAHOO! mark pursuant to Policy ¶ 4(a)(i).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

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 is not and has not been commonly known by the domain name. Complainant asserts that nothing in the WHOIS information or the record demonstrates that Respondent is commonly known by the domain name, and Complainant has not authorized Respondent to use its YAHOO! mark. The Panel notes that the WHOIS information lists “N/A / asghar hasan zadeh” as the registrant of the domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that 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 respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Therefore, the Panel holds that Respondent is not commonly known by the <fa-yahoo.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant claims that Respondent is using the <fa-yahoo.com> domain name to resolve to a website offering directly competing search and news services. Prior panels have held that a respondent’s use of a domain name to provide competing services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

Complainant has proven this element.

Registration and Use in Bad Faith

Complainant argues that Respondent disrupts Complainant’s business by using the domain name for a website offering directly competing search and news services. Complainant claims that Respondent is using the <fa-yahoo.com> domain name to resolve to a website offering directly competing search and news services. Complainant asserts that although Respondent may not be a competitor of Complainant, the fact that Respondent’s activities are in opposition to Complainant is sufficient to define Respondent as a competitor under the UDRP. See Schering Corp. v. NGS Enters., Ltd, FA 198013 (Nat. Arb. Forum Nov. 7, 2003) (“The Panel declines to adopt a narrow interpretation of the term ‘competing,’ as urged by Respondent . . . The Panel agrees with Complainant that at least some confusion and/or diversion of consumers is likely here, even though Complainant's and Respondent's tablets address different medical issues.”). The Panel finds that Respondent is disrupting Complainant’s legitimate business, proving bad faith use and registration under Policy ¶ 4(b)(iii).

 

Complainant asserts that Respondent uses the domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its YAHOO! mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent, its website, and/or the services offered therein. Complainant contends that Respondent is using the <fa-yahoo.com> domain name to link to a website providing directly competing search and news services. Complainant argues that Respondent presumably is compensated for the disputed domain name. The Panel finds that Respondent is using the <fa-yahoo.com> domain name in connection with attracting Internet users to its own website for commercial gain and finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).

 

Complainant contends that Respondent registered the domain name in bad faith with knowledge of Complainant and its YAHOO! mark given the fame of the YAHOO! mark, Respondent’s use of the domain name to offer directly competing services, and Respondent’s selection of the domain name that mimics Complainant’s URLs for its international websites. 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").

 

Complainant has proven this element.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is ORDERED that the <fa-yahoo.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Hon. Karl V. Fink (Ret.), Panelist

Dated:  September 27, 2013

 

 

 

 

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