Yahoo! Inc. v. GuoJianguang
Claim Number: FA1404001556647
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is GuoJianguang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahooos.com>, registered with eName Technology Co.,Ltd.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 29, 2014; the National Arbitration Forum received payment on April 29, 2014. The Complainant was submitted in both English and Chinese.
On May 3, 2014, eName Technology Co.,Ltd. confirmed by email to the National Arbitration Forum that the <yahooos.com> domain name is registered with eName Technology Co.,Ltd. and that Respondent is the current registrant of the name. eName Technology Co.,Ltd. has verified that Respondent is bound by the eName Technology Co.,Ltd. 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 May 8, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 28, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@yahooos.com. Also on May 8, 2014, the Chinese language Written Notice of the Complaint, notifying Respondent of the email 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 June 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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. In addition, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a global technology company that provides products and services including personalized search, content, and communications tools. Complainant has approximately 800 million users located in more than 60 countries. Complainant’s income is derived primarily from advertising and search advertising. Complainant’s YAHOO! mark has been in continuous use since 1994 and ranks among the 100 most recognized brands in the world. Complainant owns hundreds of trademark registrations for the YAHOO! mark in countries around the world.
Respondent registered the disputed domain name <yahooos.com> in 2013. Complainant contends that this domain name is confusingly similar to its YAHOO! mark. Complainant contends further that Respondent has no rights or legitimate interest in the domain name. In support thereof, Complainant states that Respondent is using the disputed domain name for a commercial website offering the domain name for sale and featuring a pay-per-click advertisement. Complainant alleges that Respondent’s use of the domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use, and argues that Respondent’s offer to sell the domain name is further evidence that Respondent lacks a legitimate interest in the domain name. Complainant states that Respondent has not been commonly known by the domain name and has not been authorized to use Complainant’s mark.
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith. Complainant asserts that Respondent registered the domain name primarily to sell it for a profit, and that Respondent is using the domain name to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant and its mark. Complainant also asserts that Respondent’s knowledge of Complainant’s mark at the time that it registered the domain name can be inferred based upon the fame of Complainant and its mark, and that this provides further evidence of Complainant’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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.”).
The disputed domain name incorporates Complainant’s registered mark YAHOO!, with punctuation omitted and the letters “os” and the “.com” top-level domain appended. These changes are insufficient to distinguish the domain name from Complainant’s mark. See, e.g., Yahoo! Inc. v. Seocho, FA 109050 (Nat. Arb. Forum May 13, 2002) (finding <yahooooo.com> and other domain names confusingly similar to YAHOO!). The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant’s mark without authorization, and apparently its sole use has been for a website that advertises the domain name for sale and displays pay-per-click advertising. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that the domain name was acquired “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name.” Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.” Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Respondent’s registration of a domain name that incorporates Complainant’s well-known mark, together with the use of that domain name for a website comprised of pay-per-click advertising and an offer to sell the domain name, is indicative of bad faith under all three of these provisions of the Policy. See, e.g., Yahoo! Inc. v. Mark Smith / YoureSecureWorld.com, FA 1344301 (Nat. Arb. Forum Oct. 17, 2010) (finding bad faith under similar circumstances); Yahoo! Inc. v. Kelvin Pham, FA 109699 (Nat. Arb. Forum May 21, 2002) (same). Accordingly, the Panel finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahooos.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 5, 2014
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