Yahoo! Inc. v. YAHOO.COM / YAHOO! INC.
Claim Number: FA1311001532273
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is YAHOO.COM / YAHOO! INC. (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ymail.com.co>, registered with Cci Reg S.A.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 27, 2013; the National Arbitration Forum received payment on November 27, 2013.
On December 2, 2013, Cci Reg S.A. confirmed by e-mail to the National Arbitration Forum that the <ymail.com.co> domain name is registered with Cci Reg S.A. and that Respondent is the current registrant of the name. Cci Reg S.A. has verified that Respondent is bound by the Cci Reg S.A. 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 December 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@ymail.com.co. Also on December 3, 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 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 and has not been commonly known by the domain name.
ii. Respondent’s activities constitute passing off (in that Respondent is trying to pass itself off as Complainant).
i. Respondent disrupts Complainant’s business by attracting Internet users and building mistaken confidence that the domain name is owned and used by Complainant.
ii. Respondent uses the domain name to intentionally attract Internet users by creating a likelihood of confusion with Complainant and its Y!, YAHOO!, and YAHOO! MAIL marks as the source, sponsorship, affiliation, and/or endorsement of Respondent, its website, and/or its activities.
iii. Respondent registered and is using the domain name to falsely impersonate Complainant and to pass itself off as Complainant.
iv. There is no question that Respondent knew of Complainant’s rights in its Y!, YAHOO!, and YAHOO! MAIL marks when ti registered the domain name.
Respondent registered the <ymail.com.co> domain name on August 21, 2013.
PRELIMINARY ISSUE: UDRP Proceedings Concerning a Third-Level Domain
The Panel notes that the current <ymail.com.co> domain name includes a third-level domain, and would ordinarily fall outside of the UDRP’s default applicability to only second-level domains (e.g., UDRP proceedings allowed against <blackacre.com>, but not against <blackacre.brownacre.com>). However, as .CO Internet S.A.S., the registry administrating the “.co” top-level domain, has agreed to the application of the UDRP to its third-level domain names, such as the “.com.co” domain names, the Panel finds that the UDRP is applicable to this dispute.
1. Respondent’s <ymail.com.co> domain name is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <ymail.com.co > domain name.
3. Respondent registered or used the <ymail.com.co> domain name in bad faith.
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 a global technology company that provides a wide array of products and services, many of them personalized—including search, content, and communications tools, on PCs and other devices such as mobile devices, tablets, and TVs. Complainant asserts that it is the owner of trademark registrations with the USPTO for the Y! mark (Reg. No. 2,638,064, registered October 22, 2002) and for the YAHOO! mark (Reg. No. 2,159,115, registered May 19, 1998). See Complainant’s Exhibit 12. The Panel notes that because Respondent appears to reside within the United States, Complainant’s registration of the Y! and YAHOO! marks with the USPTO sufficiently proves its rights in the marks pursuant to 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)). Thus the Panel concludes that Complainant has established rights in its Y! and YAHOO! marks pursuant to Policy ¶ 4(a)(i).
Complainant also contends that it has rights in the YAHOO! MAIL mark. In Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007), the panel found that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark. Therefore, the Panel finds that Complainant has established common law rights in the mark, and finds that Complainant has rights in the YAHOO! MAIL mark under Policy ¶ 4(a)(i).
Complainant argues that it has rights in the YAHOO! MAIL mark based on its common law rights acquired through the substantial and continuous use of that mark by Complainant for many years prior to Respondent’s registration of the domain name. Complainant evidences the login page for its YAHOO! MAIL service. See Complainant’s Ex. 7. Previous panels have held that a complainant’s continuous use of a mark in commerce establishes secondary meaning in the mark under Policy ¶ 4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years). Thus, the Panel concludes that Complainant has established secondary meaning in the YAHOO! MAIL mark, showing common law rights under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <ymail.com.co> domain name is confusingly similar to Complainant’s famous and federally registered Y! mark because it is comprised of that mark and the generic or descriptive term “mail.” The Panel finds that Respondent’s addition of a generic or descriptive term is inconsequential to a Policy ¶ 4(a)(i) analysis. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel observes that Respondent removes the exclamation point in Complainant’s Y! mark for the disputed domain name. The Panel holds that Respondent’s elimination of punctuation does not distinguish the disputed domain name from Complainant’s mark according to Policy ¶ 4(a)(i). 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 utilizes the third-level domain name features offered through the “.co” registry, and that in this case Respondent’s domain name includes the top-level “.co” and second-level “.com” domains. The Panel finds that these additions are not wholly relevant to a Policy proceeding.See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”); see also Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). Consequently, the Panel finds that Respondent’s <ymail.com.co> domain name is confusingly similar to Complainant’s Y! mark under Policy ¶ 4(a)(i).
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 <ymail.com.co> domain name. Complainant alleges 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 Y!, YAHOO!, or YAHOO! MAIL marks. Complainant claims that Respondent falsely impersonates Complainant on the WHOIS record. The Panel observes that although the WHOIS record lists “YAHOO.COM / YAHOO! INC.” as the registrant of the disputed domain name, Respondent fails to provide any evidence that it is known by the domain name under Policy ¶ 4(c)(ii). See Complainant’s Exhibit 1. In Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003), the panel found that respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name.” Consequently, the Panel determines that Respondent is not commonly known by the <ymail.com.co> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent disrupts Complainant’s business by attracting Internet users and building mistaken confidence that the domain name is owned and used by Complainant. Complainant asserts that Respondent uses the <ymail.com.co> domain name for a webpage displaying the messages “Access Forbidden!” and “If you think this is a server error, please contact the webmaster,” which contains a link to Respondent’s email address “webmaster@ymail.com.com.” See Complainant’s Exhibit 14. The Panel finds that Respondent’s use of the disputed domain name is somehow competitive and disruptive towards Complainant’s business, and finds bad faith use and registration under Policy ¶ 4(b)(iii). 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.”).
Complainant claims that Respondent uses the <ymail.com.co> domain name to intentionally attract Internet users by creating a likelihood of confusion with Complainant and its Y!, YAHOO!, and YAHOO! MAIL marks as the source, sponsorship, affiliation, and/or endorsement of Respondent, its website, and/or its activities. Complainant alleges that Respondent uses the disputed domain name for a website displaying the messages “Access Forbidden!” and “If you think this is a server error, please contact the webmaster,” which contains a link to Respondent’s email address “webmaster@ymail.com.com.” See Complainant’s Exhibit 14. Complainant asserts that Respondent receives a benefit by exploiting the goodwill of Complainant’s marks. In Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000), the panel found bad faith where the domain name in question is obviously connected with complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain. Accordingly, the Panel determines that Respondent has registered and is using the <ymail.com.co> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant contends that Respondent is using the disputed domain name to resolve to a website displaying the messages “Access Forbidden!” and “If you think this is a server error, please contact the webmaster,” which contains a link to Respondent’s email address “webmaster@ymail.com.com.” See Complainant’s Exhibit 14. Therefore, the Panel finds that Respondent is failing to make an active use of the disputed domain name, demonstrating bad faith use and registration 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 there is no question that Respondent knew of Complainant’s rights in its Y!, YAHOO!, and YAHOO! MAIL marks when it registered the <ymail.com.co> domain name. Complainant argues that Respondent’s knowledge of Complainant’s rights in the Y!, YAHOO!, and YAHOO! MAIL marks are demonstrated by Respondent’s registration of the domain name in Complainant’s name and using Complainant’s contact information, the fame of Complainant’s Y!, YAHOO!, and YAHOO! MAIL marks, and Complainant’s extensive and long-term prior use of the virtually identical domain name <ymail.com>. 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 determine 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ymail.com.co> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 10, 2013
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