Yahoo! Inc. v. Domain Administrator / Fundacion Private Whois
Claim Number: FA1401001541475
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is Domain Administrator / Fundacion Private Whois (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hackyahoofree.com>, registered with Internet.bs Corp.
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 January 30, 2014; the National Arbitration Forum received payment on January 30, 2014.
On January 31, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <hackyahoofree.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 February 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2014 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@hackyahoofree.com. Also on February 3, 2014, 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 March 3, 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.
1. Policy ¶ 4(a)(i)
a. Complainant 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 has approximately 800,000,000 users located in more than 60 countries around the world.
b. Complainant has made continuous use of the YAHOO! mark in connection with its service since 1994.
c. Complainant holds numerous trademark registrations around the world, including United States Patent and Trademark Office (“USPTO”) registrations for the YAHOO! mark (e.g., Reg. No. 2,040,222 registered February 25, 1997).
d. Respondent’s <hackyahoofree.com> domain name is confusingly similar to Complainant’s YAHOO! mark because the domain is comprised of Complainant’s mark and generic terms.
2. Policy ¶ 4(a)(ii)
a. Respondent is not and has not been commonly known by the <hackyahoofree.com> domain name. Nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the domain name, and Complainant has not authorized Respondent to use its YAHOO! mark.
b. Respondent previously used the disputed domain name to resolve to a website offering a malicious software program that facilitated the theft of, and/or induced others to fraudulently obtain, the confidential information of Complainant’s users. Specifically, Respondent’s website offered “brute force software” to hack the passwords of Complainant’s users.
c. Respondent currently uses the disputed domain name to redirect Internet users to Complainant’s own website at <yahoo.com>.
d. Respondent makes unauthorized use of Complainant’s logo and signature color purple on its website.
3. Policy ¶ 4(a)(iii)
a. Respondent’s registration and use of the disputed domain name to facilitate the theft of, and/or induce others to fraudulently obtain, the confidential information of Complainant’s users constitutes bad faith under Policy ¶ 4(b)(iii) because Respondent disrupts Complainant’s business.
b. Respondent’s registration and use of the disputed domain name constitute bad faith under Policy ¶ 4(b)(iv) because Respondent uses the domain to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its YAHOO! mark.
i. Respondent’s use of Complainant’s Y! logo and use of Complainant’s signature color of purple on its website further demonstrate Respondent’s intention of causing a likelihood of confusion with Complainant.
c. Respondent registered the disputed domain name with knowledge of Complainant and its YAHOO! mark, given (a) the fame of Complainant’s YAHOO! mark, and (b) the numerous references on Respondent’s website to Complainant and its YAHOO! and Y! names, marks, and/or logos.
4. Respondent registered <hackyahoofree.com> on May 18, 2013.
Respondent did not submit a response to this proceeding.
1. Respondent’s <hackyahoofree.com> domain name is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <hackyahoofree.com> domain name.
3. Respondent registered or used the <hackyahoofree.com> 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 identifies itself as 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 claims to have made continuous use of the YAHOO! mark in connection with these products and services since 1994. According to Complainant, it has approximately 800,000,000 users located in more than 60 countries around the world. Complainant also claims to hold numerous trademark registrations around the world, and presents evidence of its USPTO registrations for the YAHOO! mark (e.g., Reg. No. 2,040,222 registered February 25, 1997). Past panels have considered USPTO registrations to be sufficient evidence to support rights in a mark under the Policy. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). The immediate Panel agrees that Complainant’s USPTO registrations for the YAHOO! mark confer rights under Policy ¶ 4(a)(i), regardless of the fact that Respondent appears to reside outside of the United States. 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).
Complainant insists that Respondent’s <hackyahoofree.com> domain name is confusingly similar to Complainant’s YAHOO! mark. Complainant contends that the disputed domain is merely comprised of Complainant’s mark and generic terms. Additionally, the Panel notes that Respondent appends the generic top-level domain (“gTLD”) “.com” and omits the exclamation from Complainant’s mark in forming the disputed domain name. In support of its argument, Complainant cites Yahoo! Inc. v. See ICANN RAA 3.7.5.7 Domain Subject To UDRP Dispute; Fundacion Private Whois / Domain Administrator, FA 1504609 (Nat. Arb. Forum Aug. 15, 2013), in which the panel held that the domain names <hack-yahoo.com> and <hack-yahoo-password.com> were confusingly similar to Complainant’s YAHOO! mark because “the addition of the generic terms ‘hack’ and ‘password’ do not sufficiently distinguish the disputed domain
names from Complainant’s mark,” “the exclamation point in Complainant’s mark cannot be added to a domain name and thus is irrelevant in analyzing the confusing similarity of the disputed domain name,” and “the addition of a gTLD is irrelevant for the purposes of Policy ¶ 4(a)(i) analysis.” The instant Panel similarly finds that the terms “hack” and “free” are merely generic terms incapable of distinguishing the disputed domain name from Complainant’s mark, and that punctuation and gTLDs do not affect Policy ¶ 4(a)(i). The Panel agrees that Respondent’s <hackyahoofree.com> domain name is confusingly similar to Complainant’s YAHOO! mark for the purposes of 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 alleges that Respondent is not and has not been commonly known by the <hackyahoofree.com> domain name. According to Complainant, nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the domain name. The Panel notes that the WHOIS record identifies Respondent as “Domain Administrator / Fundacion Private Whois.” Complainant also maintains that it has not authorized Respondent to use its YAHOO! mark. In Yahoo! Inc. v. Junlong Zheng c/o OnlineNIC, FA 1142567 (Nat. Arb. Forum Mar. 25, 2008), the panel held that the respondent had no rights or legitimate interests pursuant to Section 4(c)(ii) because there was no evidence in the record or WHOIS information indicating that respondent was commonly known by the disputed domain name and because Complainant did not authorize respondent to use its YAHOO! mark. The immediate Panel agrees that no evidence in the record supports the idea that Respondent is commonly known as <hackyahoofree.com>, and determines that Respondent is without rights and legitimate interests in the domain pursuant to Policy ¶ 4(c)(ii).
Complainant first alleges that Respondent’s previous use of the disputed domain name to host a website offering a malicious software program does not constitute a bona fide offering of goods or services or a noncommercial or fair use. Specifically, Complainant claims Respondent’s website offered “brute force software” to hack the confidential passwords of Complainant’s users. Complainant refers the Panel to Yahoo! Inc. v. Yahoozone Services / Nitin Gupta, FA 1512791 (Nat. Arb. Forum Aug. 23, 2013), in which it was held that the respondent’s use of the domain name <yahooz0ne.com> for a commercial website providing services to interfere with, or hack, Complainant’s services did not constitute a bona fide offering or legitimate noncommercial or fair use of the domain name. This Panel accepts that Respondent previously used the <hackyahoofree.com> domain name to offer software for “hacking” the confidential information of Complainant and its users, and agrees that such use represents neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant next alleges that Respondent’s current use of the disputed domain name to redirect Internet users to Complainant’s own website at <yahoo.com> does not constitute a bona fide offering of goods or services or a noncommercial or fair use. Complainant urges the Panel to find as the panel did in Disney Enters., Inc. and Am. Broad. Cos., Inc. v. J Kimmel, FA 1410423 (Nat. Arb. Forum November 11, 2011). In that case, the panel determined that the respondent’s redirection of the <jimmykimmelabc.com> domain name to complainant’s own website demonstrated respondent’s lack of rights and legitimate interests in the domain, reasoning that respondent may have been attempting to build up mistaken confidence in the domain name by having it resolve to the complainant’s official website. Consequently, the Panel determines that Respondent’s current use of the <hackyahoofree.com> domain name is protected by neither Policy ¶ 4(c)(i) nor Policy ¶ 4(c)(iii).
Complainant contends that Respondent’s former use of the disputed domain name to facilitate the theft of, and/or induce others to fraudulently obtain, the confidential information of Complainant’s users constitutes bad faith under Policy ¶ 4(b)(iii) because such use disrupts Complainant’s business. Complainant believes that the fact that Respondent’s activities are in opposition to Complainant is sufficient to define Respondent as a competitor for the purposes of Policy ¶ 4(b)(iii). See Yahoo! Inc. v. N/A / asghar hasan zadeh, FA 1517435 (Nat. Arb. Forum Aug. 9, 2006) (“Complainant asserts that although Respondent may not be a competitor of Complainant, the fact that Respondent’s activities are in opposition to Complainant is sufficient to define Respondent as a competitor under the UDRP. [citation omitted] The Panel finds that Respondent is disrupting Complainant’s legitimate business, proving bad faith use and registration under Policy ¶ 4(b)(iii).”). The Panel agrees that Respondent’s former use of the disputed domain name to provide services “in opposition” to Complainant is sufficient to satisfy the degree of competition required under Policy ¶ 4(b)(iii), and determines that Respondent registered and used <hackyahoofree.com> in bad faith by improperly disrupting Complainant’s business.
Complainant further contends that Respondent’s registration and use of the disputed domain name constitutes bad faith under Policy ¶ 4(b)(iv) because Respondent uses the domain to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its YAHOO! mark. Complainant argues that Respondent intention to cause a likelihood of confusion with Complainant is evident from Respondent’s use of Complainant’s Y! logo and use of Complainant’s signature color of purple on Respondent’s website, in addition to Respondent’s registration of a confusingly similar domain name. Complainant urges that Respondent’s activities constitute bad faith under Policy ¶ 4(b)(iv) regardless of whether Respondent profits directly (for example, in the form of selling Complainant’s users’ information collected via the software on its website) or indirectly (for example, in the form of gathering information on users). The Panel presumes that Respondent generates some form of pecuniary gain from the operation of its website, and holds that Respondent’s registration and use of the <hackyahoofree.com> domain name demonstrate bad faith according to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Finally, Complainant charges Respondent with having had knowledge of Complainant and its rights in the YAHOO! mark at the time Respondent registered the <hackyahoofree.com> domain name. Complainant cites both the fame of its mark and the numerous references on Respondent’s website to Complainant and its marks and logos as evidence that Respondent must have been aware of Complainant. Previous panels have required a showing of actual knowledge on the part of a respondent in order to support a finding of bad faith registration. 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 had "actual knowledge of Complainant's mark when registering the disputed domain name"). The Panel finds bad faith registration pursuant to Policy ¶ 4(a)(iii) and opines that Respondent registered the <hackyahoofree.com> domain name with actual knowledge of Complainant and its mark. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject 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 <hackyahoofree.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 14, 2014
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