Yahoo! Inc. v. Mohit Arora / E-squad Technologies
Claim Number: FA1311001531666
Complainant is Yahoo! Inc. (“Complainant”), represented by David K. Caplan, California, USA. Respondent is Mohit Arora / E-squad Technologies (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahootechnicalhelp.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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 25, 2013; the National Arbitration Forum received payment on November 25, 2013.
On November 26, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <yahootechnicalhelp.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 November 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 17, 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@yahootechnicalhelp.com. Also on November 27, 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 December 23, 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.
i. Respondent is not commonly known by the infringing domain.
ii. Respondent used Complainant’s logo and trademark to offer technical support services which directly overlapped with services offered by Complainant under the YAHOO! mark.
iii. Respondent fails to make an active use of the infringing domain name.
i. Respondent demanded payment in exchange for the transfer of the infringing domain name in excess of the costs Respondent incurred in connection with the infringing domain name.
ii. Respondent has used the infringing domain name to capitalize on consumers’ familiarity with Complainant and its YAHOO! mark in order to intentionally attract Internet users, for financial gain, to Respondent’s website.
iii. Respondent undoubtedly registered the infringing domain name in bad faith with actual knowledge of Complainant’s rights in its YAHOO! mark.
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 contends that it is the owner of the trademark YAHOO!. Complainant asserts that its mark has become one of the most recognized brands in the world. Complainant claims that its services include web direct 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, and more. Complainant argues that it is the owner of trademark registrations with the USPTO for the YAHOO! mark (e.g., Reg. No. 2,403,227, registered November 14, 2000). The Panel finds that although Respondent appears to operate in India, it is irrelevant under Policy ¶ 4(a)(i) whether Complainant registered its mark in the country in which Respondent resides. 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). Thus, the Panel determines that Complainant’s registration of the YAHOO! mark with the USPTO sufficiently establishes its rights in the mark under Policy ¶ 4(a)(i). See 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)).
Complainant argues that Respondent’s <yahootechnicalhelp.com> domain name is identical or confusingly similar to Complainant’s YAHOO! mark. Complainant asserts that the infringing domain name is comprised of Complainant’s mark and the generic term “technical help.” The Panel finds that Respondent’s inclusion of a generic phrase does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Complainant contends that Respondent removes the exclamation point from Complainant’s mark for its disputed domain name. The Panel determines that Respondent’s removal of punctuation from Complainant’s mark is irrelevant to a Policy ¶ 4(a)(i) analysis. 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). The Panel notes that Respondent added the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. The Panel holds that Respondent’s addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) determination. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). The Panel finds that Respondent’s <yahootechnicalhelp.com> 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 asserts that Respondent is not commonly known by the <yahootechnicalhelp.com> domain name. Complainant contends that nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its YAHOO! mark. The Panel notes that the WHOIS information identifies “Mohit Arora / E-squad Technologies” as the registrant of the disputed domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that the 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 the complainant had not authorized the respondent to register a domain name containing its registered mark. Accordingly, the Panel finds that Respondent is not commonly known by the <yahootechnicalhelp.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant claims that prior to Respondent’s receipt of notice of infringement, Respondent used Complainant’s logo and trademark to offer technical support services which directly overlapped with services offered by Complainant under the YAHOO! mark. The Panel notes that Respondent’s <yahootechnicalhelp.com> domain name resolves to a webpage that providing technical services under “Yahoo Technical Help.” Prior panels have held that a respondent’s use of a disputed domain name to provide competing services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”). Therefore, the Panel finds that Respondent has not been using the <yahootechnicalhelp.com> 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 argues that Respondent currently fails to make an active use of the <yahootechnicalhelp.com> domain name. Complainant contends that in Respondent’s September 13, 2013 e-mail to Complainant’s counsel, Respondent states that he is “not using the domain right now.” Therefore, the Panel finds that Respondent is not using the <yahootechnicalhelp.com> 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 where it is failing to make an active use of the disputed domain name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant has proven this element.
Complainant contends that Respondent demanded payment in exchange for the transfer of the infringing domain name in excess of the costs Respondent incurred in connection with the <yahootechnicalhelp.com> domain name. Complainant argues that Respondent rejected Complainant’s offer to reimburse costs incurred in connection with the registration of the infringing domain name. Complainant claims that Respondent further stated it was discussing the sale of the domain name with “some companies.” In Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001), the panel found bad faith where respondent, a domain name dealer, rejected complainant’s nominal offer of the domain in lieu of greater consideration. Accordingly, the Panel finds that Respondent has registered and is using the <yahootechnicalhelp.com> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant claims that Respondent has used the <yahootechnicalhelp.com> domain name to capitalize on consumers’ familiarity with Complainant and its YAHOO! mark in order to intentionally attract Internet users, for financial gain, to Respondent’s website. The Panel notes that Respondent’s <yahootechnicalhelp.com> domain name resolves to a webpage that providing technical services under “Yahoo Technical Help.” Prior panels have determined that a respondent’s use of a disputed domain name to offer competing services for its own commercial gain evidences 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). Thus, the Panel holds that Respondent’s use of the <yahootechnicalhelp.com> domain name demonstrates bad faith use and registration pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent fails to make an active use of the <yahootechnicalhelp.com> domain name. Complainant contends that in Respondent’s September 13, 2013 e-mail to Complainant’s counsel, Respondent states that he is “not using the domain right now.” Therefore, the Panel finds that Respondent’s registration and current non-use of the <yahootechnicalhelp.com> domain name are a product of bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant asserts that Respondent undoubtedly registered the <yahootechnicalhelp.com> domain name in bad faith with actual knowledge of Complainant’s rights in its YAHOO! mark. Complainant contends that it first made use of Complainant’s mark in 1994, whereas Respondent did not register the infringing domain name until July 12, 2013. Complainant also alleges that Respondent’s actual knowledge of Complainant’s rights in the YAHOO! mark is evidenced because the mark is recognized and relied upon by online consumers throughout the world to identify and distinguish Complainant’s website and services from the goods and services of others. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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).
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 <yahootechnicalhelp.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 31, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page