Yahoo! Inc. v. Yahoo Web Hosting Services / Ahmed Hamed
Claim Number: FA1310001527400
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is Yahoo Web Hosting Services / Ahmed Hamed (“Respondent”), Egypt.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoo-eg.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 30, 2013; the National Arbitration Forum received payment on October 30, 2013.
On November 1, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <yahoo-eg.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. 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 November 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@yahoo-eg.com. Also on November 1, 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 November 25, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 alleges that it uses its YAHOO! mark in connection with its global technology company that offers web hosting services as well as a wide array of other products and services for PCs and mobile devices. Complainant states that it owns rights in the YAHOO! mark through its registrations of the mark with the USPTO (e.g., Reg. No. 2,040,222 registered December 3, 1996). The Panel notes that it has previously been held that a complainant’s registration of a mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). It has also been held that a complainant does not need to register its mark in the respondent’s country of origin in order to sufficiently establish its rights in the mark. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel holds that Complainant’s registration of the YAHOO! mark with the USPTO adequately demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant next alleges that the <yahoo-eg.com> domain name is confusingly similar to Complainant’s YAHOO! mark because the domain name is comprised of the mark, a hyphen, and the letters “eg,” the country-code for “Egypt.” The Panel notes that in addition, the disputed domain name adds the generic top-level domain (“gTLD”) “.com” and eliminates the exclamation mark found in Complainant’s YAHOO! mark. Previous panels have held that a domain name is confusingly similar to a complainant’s mark where the disputed domain name eliminates punctuation found in the mark and adds the gTLD “.com.” See Memoirs, Inc. v. Patel, FA 98244 (Nat. Arb. Forum Aug. 28, 2001) (finding the domain name to be confusingly similar where a period was omitted from the I.MEMOIRS mark and the gTLD “.com” was added). Similarly, it has previously been determined that a domain name’s use of punctuation such as a hyphen is not significant in determining whether a domain name is confusingly similar to a complainant’s mark. 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). In Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000), the panel held that the respondent’s domain name <net2phone-europe.com> was confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar." In the instant proceedings, the Panel notes that Respondent is listed as residing in Egypt, and thus accepts Complainant’s contention that the letters “eg” in the disputed domain name represent the country-code for Egypt. Thus, the Panel holds that the letters “eg” constitute a “geographic term” as was the case in Net2phone Inc., supra, and holds that the domain name’s inclusion of these letters does not sufficiently distinguish the <yahoo-eg.com> domain name from Complainant’s YAHOO! mark. For the foregoing reasons, the Panel holds that the disputed domain name is confusingly similar to Complainant’s YAHOO! mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 although the WHOIS information lists the registrant of the disputed domain name as “Yahoo Web Hosting Services,” Respondent is not commonly known as <yahoo-eg.com> or any other name incorporating Complainant’s YAHOO! mark. Complainant further argues that although Respondent uses the name “Yahoo Web Services” in Arabic on its website, this use has not been authorized by Complainant and infringes on Complainant’s rights in the YAHOO! mark, and is thus not evidence that Respondent is commonly known as <yahoo-eg.com>. Panels in previous default cases have held that a respondent is not commonly known by a disputed domain even though it the disputed domain is incorporated into the WHOIS information provided by the respondent. See, e.g., Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”). In Target Brands, Inc. v. Hosting Provider Serv., FA 187396 (Nat. Arb. Forum Sept. 30, 2003), the panel stated, “[w]hile [the] [r]espondent may have held itself out as TARGETPILLS.COM on its website at <targetpills.com>, there is no evidence that [the] [r]espondent was actually or commonly known by the disputed domain name.” The panel in Target Brands, supra, also reasoned that the respondent’s failure to respond to the complaint was further evidence that the respondent was not commonly known by the disputed domain name. In the instant proceedings, the Panel holds that in light of Respondent’s failure to submit a Response, the WHOIS information and Respondent’s holding itself out as “Yahoo Web Services” on its website is not sufficient evidence that Respondent is actually or commonly known as <yahoo-eg.com>. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent is using the <yahoo-eg.com> domain name to offer directly competing web hosting services, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel notes that Complainant has submitted a screenshot of the disputed domain name’s resolving website in its original Arabic, as well as a screenshot of the website when translated into English through a computer translation program. The Panel determines that the translated screenshot provided by Complainant suggest that Respondent is using the disputed domain name to provide web hosting services for “Windows services” and “VPS servers,” including services such as “Hosting Plans,” “Forum Offers” and “Design and Programming.” The Panel finds that the disputed domain name is being used to offer services that directly compete with the technology services offered by Complainant under its YAHOO! mark. In Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010), the Panel held that where the disputed domain name capitalized off the well-known mark of the complainant, the respondent’s use of the domain name to sell competing products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). In the Instant proceedings, the Panel finds that the <yahoo-eg.com> domain name capitalizes off of Complainant’s YAHOO! mark and that Respondent is using the disputed domain name to offer technology products that compete with Complainant. Therefore, the Panel holds that Respondent is not using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant has proven this element.
Complainant argues that Respondent’s use of the <yahoo-eg.com> domain name disrupts Complainant’s business by diverting potential customers to Respondent’s competing web hosting services website, and that Respondent has thus demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iii). Complainant has submitted evidence that suggests the disputed domain name resolves to a website offering web hosting services that directly compete with Complainant’s similar products. Previous panels have held that a respondent demonstrates bad faith under Policy ¶ 4(b)(iii) where the disputed domain name appropriates the complainant’s mark and is used to divert Internet users to the website of the respondent’s competing business. See, e.g., 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).”). In the instant case, the Panel finds that the <yahoo-eg.com> domain name appropriates Complainant’s YAHOO! mark and diverts potential YAHOO! customers to Respondent’s website, which offers web hosting services that directly compete with those offered under the YAHOO! mark. Therefore, the Panel holds that Respondent has disrupted Complainant’s business and has thus demonstrated bad faith registration and use of the <yahoo-eg.com> domain name pursuant to Policy ¶ 4(b)(iii).
Complainant next argues that Respondent has used the disputed domain name to attract and mislead Internet users seeking services under Complainant’s YAHOO! mark for Respondent’s own commercial benefit, and has thus demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). Complainant has submitted evidence that suggests the disputed domain name resolves to a website offering web hosting services that directly compete with Complainant’s similar products. In MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000), the panel found bad faith under Policy ¶ 4(b)(iv) where the respondent registered a confusing domain name that appropriated 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. The Panel notes that the <yahoo-eg.com> domain name appropriates Complainant’s YAHOO! mark and is thus likely to confuse Internet users as to Complainant’s sponsorship of the resolving website. The Panel finds that the resolving website offers similar web hosting services as those offered by Complainant, as was the case in MathForum.com, supra. Accordingly, the Panel holds that Respondent has demonstrated bad faith registration and use of the <yahoo-eg.com> domain name pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant argues that given the fame of Complainant’s YAHOO! mark, Respondent’s actual notice of Complainant’s rights in the mark can be inferred. Complainant further suggests that by registering the disputed domain name with actual notice of Complainant’s rights in the YAHOO! mark, Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(a)(iii). A respondent demonstrates bad faith under Policy ¶ 4(a)(iii) by registering an infringing domain name with actual notice of the complainant’s rights in the appropriated mark. See, e.g., Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Previous panels have inferred that a respondent registered a disputed domain name with actual notice of the complainant’s rights where the at-issue mark is extremely well-known. See, e.g., Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the respondent, at the time of registration, had notice of the complainant’s POKÉMON and PIKACHU trademarks given their extreme popularity). In the instant proceedings, Complainant has submitted evidence that shows that Complainant’s YAHOO! brand was one of the “Top 100 Brands” in 2012 according to Interbrand’s report “Best Global Brands 2012.” Accordingly, the Panel determines that the YAHOO! mark is so well-known that Respondent’s actual notice of Complainant’s rights in the mark can be inferred. Therefore, the Panel holds that Respondent demonstrated bad faith under Policy ¶ 4(a)(iii) by registering the <yahoo-eg.com> domain name with actual notice of Complainant’s rights in the YAHOO! mark.
Complainant has proven this element.
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 <yahoo-eg.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 4, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page