Yahoo! Inc. v. Yaqoob / Yaqoob Yousif
Claim Number: FA1204001440141
Complainant is Yahoo! Inc. (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is Yaqoob / Yaqoob Yousif (“Respondent”), Bahrain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <maktoob.bz>, registered with eNom, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 19, 2012; the National Arbitration Forum received payment on April 19, 2012.
On April 27, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <maktoob.bz> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 April 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 2012 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@maktoob.bz. Also on April 27, 2012, 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 May 22, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1) Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MAKTOOB mark (e.g., Reg. No 2,563,368 registered April 23, 2002).
2) Complainant owns a trademark registration for the MAKTOOB mark with the Bahrain Directorate of Industrial Property (“BDIP”) (Reg. No. 4,196 registered June 7, 2000).
3) Complainant is a digital media company operating globally and offers content to Internet users including games, dating, news, shopping, photo sharing, and finance, among other services.
4) Complainant uses the MAKTOOB mark and the MAKTOOB-branded websites to provide online games to the Arab world’s web community and has provided these services since February 2007.
5) Respondent registered the <maktoob.bz> domain name on November 19, 2007.
6) Respondent’s domain name resolves to a website that provides online games, as well as hyperlinks and third-party advertisements.
7) Respondent receives “click-through” fees from the links and advertisements on its webpage.
8) Respondent’s domain name is identical to Complainant’s MAKTOOB mark.
9) Respondent is not commonly known by the domain name.
10) Respondent’s use of the disputed domain name to host a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
11) Respondent uses the domain name to intentionally disrupt Complainant’s business.
12) Respondent’s registration of an identical domain name linked to a competing website reveals that Respondent had the goal to attract Internet users to the competing website for commercial gain by creating a likelihood of confusion, which is evidence of bad faith under Policy ¶ 4(b)(iv).
13) Respondent had actual knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc., is a digital media company operating globally and offers content to Internet users including games, dating, news, shopping, photo sharing, and finance, among other services. Complainant uses the MAKTOOB mark and the MAKTOOB-branded websites to provide online games to the Arab world’s web community and has provided these services since February 2007.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MAKTOOB mark (e.g., Reg. No 2,563,368 registered April 23, 2002). Complainant owns a trademark registration for the MAKTOOB mark with the Bahrain Directorate of Industrial Property (“BDIP”) (Reg. No. 4,196 registered June 7, 2000).
Respondent, Yaqoob / Yaqoob Yousif, registered the <maktoob.bz> domain name on November 19, 2007. Respondent’s domain name resolves to a website that provides online games, as well as hyperlinks and third-party advertisements.
Respondent receives “click-through” fees from the links and advertisements on its webpage.
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.”).
Complainant owns rights in its MAKTOOB mark through its numerous registrations with the USPTO (e.g., Reg. No 2,563,368 registered April 23, 2002) and the BDIP (Reg. No. 4,196 registered June 7, 2000). The Panel finds that Complainant’s registrations of the MAKTOOB mark with the USPTO and the BDIP are sufficient to demonstrate rights in the mark for the purposes of Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (holding trademark registrations throughout the world establishes a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The <maktoob.bz> domain name is identical to the MAKTOOB mark. The domain name is identical in spelling and sound to its mark and despite the addition of the country code top-level domain (“ccTLD”) “.bz,” the domain name is identical to the mark. The Panel finds that the <maktoob.bz> domain name is identical to Complainant’s MAKTOOB mark pursuant to Policy ¶ 4(a)(i). See Casio Keisanki Kabushiki Kaisha v. Kobayashi, DBZ2010-0003 (WIPO Dec. 10, 2010)(the domain name <casio.bz> was identical to the complainant’s mark).
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).
The WHOIS information identifies Respondent as “Yaqoob Yaqoob Yousif,” which does not indicate that Respondent is commonly known by the <maktoob.bz> domain name. See Yahoo! Inc. v. Zheng, FA 1142567 (Nat. Arb. Forum March 25, 2008) (finding that there was no evidence on record or in the WHOIS information that showed that the respondent was commonly known by the disputed domain name). The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent uses the <maktoob.bz> domain name to host a website that redirects users to a website that provides competing online gaming services. The Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See ER Marks, Inc. v. Dholakia, FA 1375525 (Nat. Arb. Forum April 8, 2011) (concluding that the respondent’s use of the domain name to sell jewelry on its website in competition with Complainant by redirecting customers is not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Respondent registered the <maktoob.bz> domain name with the purpose of disrupting Complainant’s business by using the goodwill and fame associated with Complainant’s mark to divert Internet traffic to its own website, which offers online gaming services. The Panel finds that Respondent’s use of the disputed domain name to compete with Complainant’s business is disruptive to Complainant’s business and evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent makes a profit from its use of the <maktoob.bz> domain name by registering a domain name identical to Complainant’s MAKTOOB mark in order to confuse Internet users and attract them to Respondent’s competing website. The Panel finds that Respondent’s use of the disputed domain name to confuse consumers and attract Internet users to its competing website demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003)(use of the domain name in direct competition with the complainant qualified as bad faith registration and use of the domain name).
Respondent registered the <maktoob.bz> domain name in bad faith because it had actual knowledge of Complainant’s rights in the MAKTOOB mark. 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).").
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 <maktoob.bz> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 5, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page