national arbitration forum

 

DECISION

 

Yahoo! Inc. v. Namespro.ca PrivateWHOIS

Claim Number: FA1309001520967

 

PARTIES

Complainant is Yahoo! Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA.  Respondent is Namespro.ca PrivateWHOIS (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yoyahoo.com>, registered with TLDS, LLC d/b/a SRSPLUS.

 

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2013; the National Arbitration Forum received payment on September 23, 2013.

 

On September 24, 2013, TLDS, LLC DBA SRSPLUS confirmed by e-mail to the National Arbitration Forum that the <yoyahoo.com> domain name is registered with TLDS, LLC DBA SRSPLUS and that Respondent is the current registrant of the name. TLDS, LLC DBA SRSPLUS has verified that Respondent is bound by the TLDS, LLC DBA SRSPLUS 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 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 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@yoyahoo.com.  Also on September 30, 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 October 23, 2013, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <yoyahoo.com> domain name, the domain name at issue, is confusingly similar to Complainant’s YAHOO mark.

 

2.    Respondent does not have any rights or legitimate interests in the domain name at issue.

 

3.    Respondent registered and used the domain name at issue in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has used the YAHOO! mark continuously since 1994, and it has become one of the most recognized brands in the world.  Complainant uses the YAHOO! mark in connection with a number of services, including web directory and search services, e-mail, chat, sports, games, stock quotes, real estate and mortgage information and rate quotes, movie reviews, news, weather, yellow pages directory services, maps, online shopping, travel reservations, classified advertising, audio and video streaming, web-store hosting and management.  Complainant has registered its YAHOO! mark in countries around the world, including the United States. See, e.g., United States Patent and Trademark Office (“USPTO”) Reg. No. 2,040,222 registered February 25, 1997.

 

The <yoyahoo.com> domain name is confusingly similar to Complainant’s YAHOO! mark, as it is comprised of Complainant’s mark and the generic word “yo.” The omission of the exclamation point in Complainant’s YAHOO! mark in the infringing domain name is irrelevant, as exclamation points are not permitted in domain names.

 

Respondent is not commonly known by the <yoyahoo.com> domain name.  Nothing in the disputed domain name’s WHOIS information or the record demonstrates that Respondent is commonly known by the disputed domain name.  Complainant has not authorized Respondent to use the YAHOO! mark. Respondent registered the disputed domain name with Complainant’s mark in mind and with the intention of diverting past, current, or future Internet traffic intended for Complainant. Respondent has yet to cause the disputed domain name to resolve to any content.  Respondent has used the <yoyahoo.com> domain name to unfairly capitalize on consumers’ familiarity with Complainant and its YAHOO! mark in order to intentionally attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant and its YAHOO! mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent and/or Respondent’s website.  The fact that Respondent has not caused the disputed domain name to resolve to any content provides further evidence of Respondent’s bad faith. Respondent was well aware of the valuable goodwill and reputation represented by Complainant’s YAHOO! mark upon Respondent’s registration of the disputed domain name. Respondent had actual knowledge of Complainant’s rights in the YAHOO! mark because the mark had already achieved international fame and was registered in the United States and elsewhere.  Respondent registered the <yoyahoo.com> domain name on June 17, 2012.

 

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, Yahoo! Inc., has used the YAHOO! mark continuously since 1994. As a result of its use of the mark in connection with a number of services, including web directory and search services, e-mail, chat, sports, games, stock quotes, real estate and mortgage information and rate quotes, movie reviews, news, weather, yellow pages directory services, maps, online shopping, travel reservations, classified advertising, audio and video streaming, web-store hosting and management, the YAHOO! mark has become one of the most recognized brands in the world. Complainant registered the YAHOO! mark in countries around the world, including the United States. See, e.g., USPTO Reg. No. 2,040,222 registered February 25, 1997.  Accordingly, Complainant has established its rights in the YAHOO! mark for the purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with the USPTO. 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).

 

The <yoyahoo.com> domain name is confusingly similar to Complainant’s YAHOO! mark as the domain is comprised of Complainant’s mark and the generic word “yo.”  The omission of the exclamation point in Complainant’s YAHOO! mark in the disputed domain name is irrelevant, as exclamation points are not permitted in domain names.  Neither the addition of the generic term “yo” nor the omission of the exclamation point found in Complainant’s mark distinguish the disputed domain name under Policy ¶ 4(a)(i). See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark); see also 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). The Panel notes that the disputed domain name also affixes the generic top-level domain “.com.”  This addition is irrelevant under Policy ¶ 4(a)(i) as well. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). In light of the foregoing, the Panel concludes that Respondent’s <yoyahoo.com> domain name is confusingly similar to Complainant’s YAHOO! mark within the meaning of Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

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.”).

 

Nothing in the disputed domain name’s WHOIS information or the record demonstrates that Respondent is commonly known by the disputed domain name. The WHOIS information for the disputed domain name purports to identify Respondent as “Namespro.ca PrivateWHOIS.” Complainant has not authorized Respondent to use the YAHOO! mark. In light of the nominally dissimilar WHOIS information, Respondent’s apparent lack of authorization to use the YAHOO! mark, and Respondent’s failure to submit a response, the Panel holds that Respondent is not commonly known by the <yoyahoo.com> domain name under Policy ¶ 4(c)(ii). See 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).

 

Moreover, Respondent is without rights or legitimate interests in the <yoyahoo.com> domain name because Respondent registered the domain with Complainant’s mark in mind and with the intention of diverting past, current, or future Internet traffic intended for Complainant.  Respondent has yet to cause the disputed domain name to resolve to any content. Respondent has failed to make an active use of the website resolving from the <yoyahoo.com> domain name,  so, accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the domain pursuant to Policy ¶ 4(a)(ii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).

 

The Panel finds that Policy ¶ 4(a)(ii) has been established. 

 

 

Registration and Use in Bad Faith

Respondent has used the disputed domain name to unfairly capitalize on consumers’ familiarity with Complainant and its YAHOO! mark in order to intentionally attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant and its YAHOO! mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent and/or Respondent’s website.   The Panel finds that Respondent has registered and uses the <yoyahoo.com> domain name in connection with improper attraction for commercial gain.  Accordingly, the Panel finds that Respondent has exhibited bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).

 

The fact that Respondent has not caused the disputed domain name to resolve to any content provides further evidence of Respondent’s bad faith. The Panel finds that Respondent registered and uses the domain in bad faith pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

 

Finally, Respondent was well aware of the valuable goodwill and reputation represented by Complainant’s YAHOO! mark upon Respondent’s registration of the <yoyahoo.com> domain name.  Respondent had actual knowledge of Complainant’s rights in the YAHOO! mark because the mark had already achieved international fame and was registered in the United States and elsewhere.  Accordingly, Respondent registered the <yoyahoo.com> domain name in bad faith according 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 "actual knowledge of Complainant's mark when registering the disputed domain name").

 

The Panel finds that Policy ¶ 4(a)(iii) has been established. 

 

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

 

 

James A. Carmody, Panelist

Dated:  November 3, 2013

 

 

 

 

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