Yodlee, Inc. v. rahadhian firmansyah / ASSA
Claim Number: FA1404001555039
Complainant is Yodlee, Inc. (“Complainant”), represented by Martin R. Greenstein of TechMark a Law Corporation, California, USA. Respondent is rahadhian firmansyah / ASSA (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yodleepaymentcenter.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 21, 2014; the National Arbitration Forum received payment on April 21, 2014.
On April 21, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <yodleepaymentcenter.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 April 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 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@yodleepaymentcenter.com. Also on April 22, 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 May 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 assertions:
1. Respondent’s <yodleepaymentcenter.com> domain name, the domain name at issue, is confusingly similar to Complainant’s YODLEE mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has rights in the YODLEE mark, used in connection with computer software for accessing data obtain from communications networks and providing information in the field of general consumer goods by means of electronic communications networks. Complainant owns a registration for the YODLEE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,002,161 registered September 27, 2005). Respondent’s <yodleepaymentcenter.com> domain name is confusingly similar to Complainant’s YODLEE mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the descriptive term “payment center” and the generic top-level domain (“gTLD”) “.com.”
Respondent does not have any rights or legitimate interests in the <yodleepaymentcenter.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its YODLEE mark in any way. The WHOIS information lists the registrant of the disputed domain name as “rahadhian firmansyah / ASSA.” Respondent is using the <yodleepaymentcenter.com> domain name to display blog posts with advertisements inserted therein, including the services of Complainant’s competitors in the financial services field.
Respondent is intentionally attempting to attract Internet users to the website associated with the disputed domain name for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s YODLEE mark. The disputed domain name resolves to a website from which Respondent makes both direct and indirect advertisements for Complainant’s competitors under the guise of blog posts. Respondent registered the <yodleepaymentcenter.com> domain name on July 26, 2010.
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 has rights in the YODLEE mark, used in connection with computer software for accessing data obtain from communications networks and providing information in the field of general consumer goods by means of electronic communications networks. Complainant owns a registration for the YODLEE mark with the USPTO (Reg. No. 3,002,161 registered September 27, 2005). Although, Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the YODLEE mark within the meaning of Policy ¶ 4(a)(i) because Complainant owns a valid trademark registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Respondent’s <yodleepaymentcenter.com> domain name is confusingly similar to Complainant’s YODLEE mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the descriptive term “payment center” and the gTLD “.com.” First, the addition of a descriptive term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Novell, Inc. v. Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Next, the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, Respondent’s <yodleepaymentcenter.com> domain name is confusingly similar to Complainant’s YODLEE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its YODLEE mark in any way. The WHOIS information lists the registrant of the disputed domain name as “rahadhian firmansyah / ASSA.” Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding 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 the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the YODLEE mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <yodleepaymentcenter.com> domain name under Policy ¶ 4(c)(ii).
Respondent is using the <yodleepaymentcenter.com> domain name to display blog posts with advertisements inserted therein, including the services of Complainant’s competitors in the financial services field. Past panels have found that using a confusingly similar domain name to promote a Complainant’s competitors does not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods and services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the Respondent is using the <yodleepaymentcenter.com> domain to display blog posts featuring links to Complainant’s competitors.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is intentionally attempting to attract Internet users to the disputed domain name for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s YODLEE mark. The disputed domain name resolves to a website from which Respondent makes both direct and indirect advertisements for Complainant’s competitors under the guise of blog posts. In previous cases, panels have held that using a confusingly similar domain name to display links to a complainant’s competitors demonstrates bad faith via attraction for commercial gain pursuant to Policy ¶ 4(a)(i). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Therefore, the Panel finds that Respondent registered and is using the <yodleepaymentcenter.com> domain name in bad faith under Policy ¶ 4(b)(iv) by using the disputed domain name to promote Complainant’s competitors through the use of blog posts.
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yodleepaymentcenter.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 17, 2014
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