Yahoo! Inc. v. Toma Cristian / None
Claim Number: FA1404001556965
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is Toma Cristian / None (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ymsgr.net>, <ymland.com>, and <ydetector.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 30, 2014; the National Arbitration Forum received payment on April 30, 2014.
On May 1, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <ymsgr.net>, <ymland.com>, and <ydetector.org> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 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@ymsgr.net, postmaster@ymland.com, postmaster@ydetector.org. Also on May 13, 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 June 20, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant
BACKGROUND FACTS
A. Yahoo and its Services
1. Yahoo, together with its consolidated subsidiaries, 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. Yahoo is focused on making the world’s daily habits inspiring and entertaining. By creating highly personalized experiences for its users, Yahoo keeps people connected to what matters most to them, across devices and around the world. In turn, Yahoo creates value for advertisers by connecting them with the audiences that build their businesses. Yahoo’s products and services are available in more than 45 languages, and in 60 countries, regions, and territories.
2. Yahoo is the owner of the service mark and trademark YAHOO!, the trade name YAHOO, and the domain name YAHOO.COM. In continuous use since 1994, the YAHOO! mark has long been one of the most recognized brands in the world, and has been ranked by Interbrand as one of the top 100 global brands since at least as early as 1999. In addition, AdWeek recently reported that Yahoo ranked #2 for the “Top 100 Most Loved Companies,” according to an extensive study conducted by APCO Worldwide.
3. Yahoo has used the mark Y! as a shorthand for the YAHOO! mark since at least as early as 1997. As a result of Yahoo’s extensive use of its YAHOO! and Y! marks discussed in detail below, Internet users have long regarded the Y! mark as being synonymous and interchangeable with the YAHOO! mark. Further, the Y! mark has become famous by virtue of Yahoo’s extensive use and promotion of its Y! mark and its substantial commercial success under that mark.
4. Yahoo uses its Y! mark in block letters, and in stylized letters and in Yahoo’s Logo shown below:
[images redacted]
5. Many of Yahoo’s current online YAHOO! and Y! services are offered to the public free of charge, with Yahoo’s income being derived primarily from display advertising and search advertising on Yahoo’s online properties as well as some affiliate websites. Yahoo also sells sponsorships, promotions, and a wide array of other marketing services to its advertising clients. Yahoo serves advertisements for thousands of companies each year, and its advertising clients have included a majority of the “Fortune 100” largest advertisers. Yahoo also receives revenues from other sources including listings-based services, facilitating commercial transactions, royalties, and consumer and business premium fee-based services offered to consumers and businesses.
6. Yahoo has sold many billions of dollars worth of services and products under the YAHOO! and Y! marks over the years. For example, Yahoo’s revenues exceeded U.S. $4,900,000,000 in both 2011 and 2012.
7. Yahoo’s offerings are categorized by the three primary groups that Yahoo serves: users, advertisers and publishers, and developers. Some of Yahoo’s user offerings are described below, and has offerings for advertisers, publishers, and developers.
8. Yahoo has approximately 800,000,000 users located in more than 60 countries around the world. Yahoo’s user offerings include its YAHOO.COM website, a starting point that brings together the most relevant content and functionality from across the Internet, including original YAHOO! content. Yahoo’s YAHOO.COM website has long been one of the most highly trafficked websites on the Internet. For example, the news carousel at the top of the YAHOO.COM website receives 1,000,000,000 clicks every month. In addition, comScore recently ranked Yahoo’s websites as the most highly trafficked online property in the U.S. for five consecutive months: July 2013, August 2013, September 2013, October 2013, and November 2013.
9. In addition to Yahoo’s main YAHOO.COM website, Yahoo (either directly or through its licensees and related companies) operates numerous international sites under the YAHOO! mark and using YAHOO-formative marks and domain names, and has done so for more than 14 years. Yahoo’s international websites include sites in more than 45 languages and in 60 countries, regions, and territories.
10. Yahoo offers, and has offered for many years, a host of services and products to its users under the YAHOO! and Y! marks and related marks.
11. Yahoo offers, and has offered for many years, communications services under its Y!, YAHOO!, Y! MESSENGER, and YAHOO! MESSENGER marks, including instant messaging and mobile text messaging that provide an interactive and personalized way for users to communicate on a real-time basis. Screen shots showing Yahoo’s use of the Y!, YAHOO!, Y! MESSENGER, and YAHOO! MESSENGER marks for messaging services are shown in the smart-phone screen shots below:
[images redacted]
12. As shown above, Yahoo’s Y! MESSENGER service allows users to choose from the settings “available,” “busy,” or “invisible.” Yahoo’s users can also see, or “detect,” the “available” status of other users. Yahoo’s invisible setting allows users to sign into and use the Y! MESSENGER service, but not be visible to other users online.
13. As a result of Yahoo’s extensive use and promotion of its Y!, YAHOO!, Y! MESSENGER, and YAHOO! MESSENGER marks, and the success of Yahoo’s Marks as shown by the hundreds of millions of users that utilize Yahoo’s messaging services, Yahoo’s Marks have long been famous.
14. “YM” is a commonly used shorthand for “Yahoo Messenger.”
15. Additional examples of Yahoo’s user offerings provided under the YAHOO! and Y! marks and related marks are described below.
16. Yahoo offers, and has offered for many years, Internet search services under its YAHOO!, Y!, and YAHOO! SEARCH marks. Yahoo’s search services provides rich search results ranked and organized based on relevance to each user’s search query. A screen shot showing Yahoo’s use of the YAHOO!, Y!, and YAHOO! SEARCH marks for search services is shown below:
[image redacted]
17. Yahoo offers, and has offered for many years, a customizable browser add-on under its YAHOO!, Y!, and YAHOO! TOOLBAR marks to provide users with numerous online tools. A screen shot excerpt showing Yahoo’s use of these marks for its browser add-on is shown below:
[image redacted]
18. An additional examples of Yahoo’s user offerings include its financial news and information services offered under the marks YAHOO!, Y!, and YAHOO! FINANCE.
19. One hundred and thirty-four (134) UDRP decisions involving Yahoo’s marks have been issued in Yahoo’s favor. The Panels in more than forty (40) of these cases expressly found the YAHOO! mark to be famous, and the Panel in one case, Yahoo! v. OwnDomain.com (NAF FA0803001159938), also held Yahoo’s Y! mark is famous, stating “The Complainant owns trademarks in the strings YAHOO! and Y!. These marks are famous.”
B. Yahoo’s Trademark Holdings
20. Yahoo’s YAHOO! and Y! marks are protected in countries around the world including the United States and in the European Union.
21. Yahoo owns numerous trademark registrations for the Y! and YAHOO! marks in the U.S. and the European Union, which covers Romania, including the following representative examples:
a. U.S. Registration No. 2,638,064 for the Y! mark in block letters, first used March 9, 1998, filed May 14, 1999, issued October 22, 2002, covering delivery of messages by electronic transmission and other online communications services in International Class 38.
b. U.S. Registration No. 3,825,400 for the mark Y! and Design, filed March 25, 2004, issued July 27, 2010, covering electronic messaging services and other online services in International Class 38, and numerous additional services and products in International Classes 9, 16, 18, 21, 25, 28, 35, 36, 39, 41, 42, and 45.
c. U.S. Registration 2,403,227 for the mark YAHOO! in block letters, first used June 1994, filed August 13, 1998, issued November 14, 2000, covering telecommunications and online communications services, online computer services for a wide range of general interest information, online advertising and retail services, reservations services, and computer software in International Classes 38, 42, 35, 39, and 9.
d. European Community (CTM) Registration No. 000907840 for the Y! mark in stylized letters, filed August 17, 1998, issued December 11, 2012, covering communications services and chat services, namely, providing online facilities for real-time interaction with other computer users, and numerous additional products and services in International Classes 9, 16, 25, 28, 35, 38, and 42.
e. European Community (CTM) Registration No. 001384411 for the Y! mark in block letters, filed November 12, 1999, issued March 2, 2001, covering communications services and providing online facilities for real-time interaction with other computer users and numerous additional products and services in International Classes 9, 16, 25, 28, 35, 38, and 42.
f. European Community (CTM) Registration No. 002003150 for the mark YAHOO! in block letters, filed April 1, 1996 with a priority claim of January 24, 1996, issued March 5, 2002, covering goods and services in International Classes 9, 14, 16, 18, 21, 28, 35, 41, and 41, including online services.
g. European Community (CTM) Registration No. 000693127 for the mark YAHOO! in block letters, filed on November 28, 1997 with a priority claim of May 28, 1997, issued January 22, 2001, covering goods and services in International Classes 3, 11, 15, 20, 24, 26, 29, 30, 34, 35, 36, 38, 39, and 42, including online services.
22. Yahoo’s registrations constitute evidence of Yahoo’s rights under the UDRP, regardless of Respondent’s location. See, e.g., Yahoo! v. Domain Admin (NAF FA1312001532946) (“Evidence of a registration with the USPTO is sufficient evidence to establish rights in a given mark under Policy ¶4(a)(i). . . . Further, it is irrelevant whether a complainant registered a trademark in the country in which the respondent resides. . . . The Panel therefore concludes that Complainant has rights in the YAHOO! mark under Policy ¶4(a)(i).”)
23. Yahoo’s rights in the Y! MESSENGER and YAHOO! MESSENGER marks are based on its common-law rights acquired through the substantial and continuous use of those marks by Yahoo for many years prior to Respondent’s registration of the Domain Names. Common-law rights, such as Yahoo’s rights in the Y! MESSENGER and YAHOO! MESSENGER marks, have uniformly been found to be sufficient grounds for filing a complaint under the UDRP. See, e.g., H-D Michigan v. Martin (NAF FA0909001286735) (complainant’s common-law rights in the DARK CUSTOM mark sufficient to proceed under the UDRP); Disney Enterprises v. PushTravel.com (NAF FA0206000114626) (complainant’s common-law rights in its mark sufficient to proceed under the UDRP).
24. Yahoo’s trademark rights in its Marks and variations thereof predate Respondent’s registration of the Domain Names.
C. Respondent’s Infringing Activities and Bad-Faith Acts
25. Respondent registered the Domain Names long after Yahoo began using its Marks, long after those Marks became famous worldwide, and long after Yahoo registered its Y! and YAHOO! marks in the U.S., the European Community, and elsewhere.
26. There is no question that Respondent had knowledge of Yahoo’s rights in its Marks when he registered the Domain Names because Respondent uses and has used the Domain Names for websites offering a software tool (“Respondent’s Malicious Software”) to circumvent and/or interfere with Yahoo’s services offered under the Marks, as discussed in further detail below.
27. Respondent currently uses, and has used, the domain name YDETECTOR.ORG for a website featuring Respondent’s Malicious Software that circumvents and/or interferes with Yahoo’s services by detecting and showing (a) the online status of Yahoo’s users who set their Y! MESSENGER account to Invisible (i.e., Yahoo’s users that do not want their online status shown to other users), and/or (b) the online status of Yahoo’s users. By inviting users to enter YAHOO! user IDs, Respondent’s Malicious Software also allow Respondent to collect such IDs and related e-mail addresses of Yahoo’s users. Respondent’s website associated with the Domain Name also features, and has featured, pay-per-click advertisements for various commercial websites including directly competing websites. Respondent undoubtedly receives “click-through” commissions when Internet users connect to such websites via the advertisements on Respondent’s websites. Respondent has used the domain name YMSGR.NET to redirect Internet users to his YDETECTOR.ORG website.
28. Respondent’s YDETECTOR.ORG website has featured Yahoo’s Y! Logo and identified his Malicious Software by the name “Yahoo! Messenger Invisible Detector,” as shown below:
[image redacted]
29. Respondent currently uses the domain name YMSGR.NET for a website featuring his Malicious Software and pay-per-click advertisements. Respondent’s website displays the Domain Name with a stylized Y that is virtually identical to Yahoo’s Y! mark, and in a font style that Yahoo has used for years, as shown below:
30. Respondent has used the domain name YMLAND.COM for a website featuring Respondent’s Malicious Software, identified by the name “Yahoo Invisible Detector,” and pay-per-click advertisements. “YM” is a commonly used shorthand for “Yahoo Messenger.” Respondent currently uses this Domain Name to redirect to his YDETECTOR.ORG website that also features his Malicious Software and pay-per-click advertisements as shown above.
31. Respondent’s cybersquatting of Yahoo’s trademarks was the subject of a prior adverse decision, Yahoo! v. Toma Cristian (.EU Case No. 06281), regarding the domain name YAHOOSCAN.EU. In that case, Respondent was using the domain name YAHOOSCAN.EU to redirect Internet users to his YDETECTOR.ORG website which stated at the time, as described in the Decision, “‘A website for Yahoo! Messenger status checking. With Ydetector.org you can now bypass Yahoo! Messenger’s Invisible Settings with ease. It’s quick and intuitive interface, Ydetector.org offers you the ability to see if your friend is truly online or if they are invisible.’” Respondent also used the domain name YAHOOSCAN.EU to earn pay-per-click commissions. The Panel held that Respondent’s activities constituted bad faith, and ordered the domain name YAHOOSCAN.EU transferred to Yahoo.
32. In Fall 2013, Yahoo, through its undersigned counsel, objected to Respondent’s registration and use of the Domain Names on several occasions. Respondent agreed to transfer the domain name YMSGR.NET to Yahoo because “for that one is hopeless to change the website content because no one will believe that is not part of yahoo messenger.” Respondent, however, did not transfer that Domain Name to Yahoo as promised, and subsequently began using it for yet-another infringing website.
THE DOMAIN NAMES ARE CONFUSINGLY SIMILAR
TO COMPLAINANT’S MARKS
33. The domain name YMSGR.NET is confusingly similar to Complainant’s famous and federally registered Y! mark because it is comprised of that mark and an abbreviation of the generic or descriptive term “messenger.” Indeed, Respondent admitted the confusing similarity of this Domain Name as shown above. Likewise, the domain name YDETECTOR.ORG is confusingly similar to Complainant’s Y! mark because it is comprised of that mark and the generic or descriptive term “detector.” Similarly, the domain name YMLAND.COM is confusing similar to Complainant’s Y! mark because it is comprised of that mark combined with the letter “m,” a combination which clearly and obviously refers to the commonly used abbreviation “YM” for “Yahoo Messenger” and the generic or descriptive term “land.” Combining Complainant’s Y! mark with abbreviations and/or a generic or descriptive term are minor differences that render the Domain Name confusingly similar to Complainant’s mark. UDRP Panels have consistently held that domain names comprised of a mark and an abbreviation and/or a generic or descriptive term are confusingly similar to the mark at issue. UDRP Panels have also consistently held that punctuation (whether omitted, such as omitting the exclamation point of Complainant’s mark as required under the DNS system that prohibits exclamation points in domain names, or added) and gTLDs are irrelevant to confusingly similarity analysis. See, e.g., Yahoo! v. Sullivan (NAF FA0703000945961) (“Respondent’s <y-tunnel.com> domain name is confusingly similar to Complainant’s Y! mark because the domain name incorporates Complainant’s mark in its entirety (the ‘!’ special character is not allowed in a domain name), adds a hyphen, the generic term ‘tunnel,’ and the generic top-level domain ‘.com.’ Incorporating Complainant’s mark in its entirety with the mere addition of a hyphen, a generic term, and a top-level domain does not sufficiently distinguish Respondent’s domain name from Complainant’s mark under Policy ¶4(a)(i).”); Yahoo! v. YAHOO! INC. (NAF FA1311001532273) (finding the domain name <ymail.com.co> confusingly similar to Complainant’s Y! mark); Yahoo! v. Seocho (NAF FA0204000109050) (“… merely adding a generic term to the famous YAHOO! mark does not diminish the confusing similarity between the mark and the disputed domain names [e.g., <yahooco.com>, <yahoospades.com> ].”); Yahoo! v. Domain Admin (NAF FA1312001532946) (“Adding descriptive words to a registered mark does not sufficiently distinguish a domain name. . . . Respondent’s <yahoocheckinvisible.com> and <checkyahooinvisible.com> domain names are confusingly similar to Complainant’s YAHOO! mark under Policy ¶4(a)(i).”).
34. As shown above, Yahoo offers messaging services under its Y! mark and has done for many years, and users of Yahoo’s services can see, or “detect,” which of their friends are available to chat via the Y! MESSENGER service. Yahoo has also offered messaging services under its closely related marks Y! MESSENGER, YAHOO!, and YAHOO! MESSENGER for many years prior to Respondent’s selection and registration of the Domain Names. Accordingly, the domain names YMSGR.NET and YMLAND.COM, which contain abbreviations of Yahoo’s Y! MESSENGER and YAHOO! MESSENGER marks, and the domain name YDETECTOR.ORG, which contain Yahoo’s Y! mark and a generic or descriptive term relating to Yahoo’s business, is confusingly similar to Yahoo’s Marks. The Domain Names are also confusingly similar to Complainant’s famous and federally registered YAHOO! mark because Y! is a recognized shorthand for or abbreviation of YAHOO!. In a case directly on point, Yahoo! v. OwnDomain.com (NAF FA0803001159938), the Panel held that the domain name <ymessenger.com> confusingly similar to Complainant’s marks Y!, YAHOO!, and Y! MESSENGER because “the term ‘messenger’ directly relates to Complainant’s Y! Messenger services business and other uses of the Y! mark.” The Panel further held, “… the UDRP does not require that the disputed domain name contain all of the Complainant’s mark. It suffices that the disputed domain name be confusingly similar to the Complainant’s mark. . . . The mere omission of the exclamation mark ‘!’ (which in any case cannot be included in a domain name) is not sufficient to dispel the risk of confusion with the Complainant’s famous marks.” See also, e.g., Hanania v. Giardina (NAF FA0804001176643) (finding the domain names <vwoforangepark.com>, <vwoforangepark.net>, and <vworangepark.com>, among others, confusingly similar to the complainant’s VOLKSWAGEN OF ORANGE PARK mark despite respondent’s abbreviation of VOLKSWAGEN as VW); Cornell v. Grier (NAF FA1301001481748) (finding the domain name <nymakesworkpay.org> confusingly similar to complainant’s NEW YORK MAKES WORK PAY mark and holding the abbreviation “NEW YORK” from complainant’s mark as “NY” is not “capable of distinguishing the disputed domain from Complainant’s mark under Policy ¶4(a)(i).”); WL Ross & Co. v. Absolute Recovery Hedge Fund (NAF FA0803001169430) (“. . . Respondent’s <arhedgefund.com> domain name contains the abbreviation of Complainant’s ABSOLUTE RECOVERY HEDGE FUND mark without spaces and is confusingly similar under Policy ¶4(a)(i)” despite respondent’s abbreviation of the mark ABSOLUTE RECOVERY as “AR”).
RESPONDENT HAS NO LEGITIMATE INTEREST
IN THE DOMAIN NAMES
35. Respondent clearly has no rights or legitimate interest in the Domain Names for the following reasons.
36. First, Respondent’s use of the Domain Names for websites featuring software to circumvent and/or interfere with Complainant’s Y! MESSENGER service similarly does not constitute a bona fide offering of goods or services or noncommercial fair use. In a case directly on point, Yahoo! v. Domain Admin (NAF FA1312001532946), Complainant demonstrated that “. . . Respondent runs a commercial website offering software that circumvents and interferes with Complainant’s YAHOO! MESSENGER service, and allows Respondent to obtain confidential information of Complainant’s users. Both domain names [yahoocheckinvisible.com> and <checkyahooinvisible.com>] resolve to websites prominently displaying the color purple with the welcome message stating, ‘Hello, this website that can help you check status of Yahoo Messenger ID of your friends is Online, Offline or Invisible? You put a Yahoo Messenger ID in below box and click detect. It will detect and show you if the yahoo ID is Invisible, Online or Offline. It also shows that avatar and other information about Yahoo IDs.’ The websites then prompts the Internet user to ‘Please enter your friends (sic)Yahoo ID.’ Using a domain name to resolve to a website attempting to solicit personal information indicates a phishing scheme. . . . The Panel concludes that Respondent has no rights or legitimate interests in the disputed domain names because Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain names under Policy ¶¶4(c)(i) or (iii), by phishing for personal information.” See also, e.g., Microsoft v. Lafont (NAF FA1009001349611) (respondent’s use of the domain names <msn-reload.com> and <msnreplay.net> for a commercial website offering software that claims to hack complainant’s MSN Messenger and Hotmail services does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use).
37. Second, Respondent’s registration and use of the Domain Names for commercial websites featuring sponsored-link advertisements for directly competing websites and/or other commercial websites does not constitute a bona fide offering of goods or services or noncommercial fair use under the UDRP. UDRP Panels, including many deciding cases involving Complainant’s YAHOO! mark, have consistently found no legitimate interest in the use of a trademark-related domain name for websites with pay-per-click advertisements. See, e.g., Yahoo! v. Domain Admin (NAF FA1312001532946) (“Using a confusingly similar domain name to resolve to a website featuring advertisements that compete with a complainant does not indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. . . . The Panel concludes that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names [yahoocheckinvisible.com> and <checkyahooinvisible.com>] under Policy ¶¶4(c)(i) or (iii).”);
38. Third, Respondent has no legitimate interest in the Domain Names under UDRP ¶4(c)(ii). Initially, nothing in Respondent’s WHOIS information or the record demonstrates that Respondent was commonly known by the Domain Names prior to their registration, and Yahoo has not authorized Respondent to use its Marks. Moreover, Respondent’s use of the names “YDETECTOR.ORG,” “YMSGR.NET,” and “Y Detector”—each of which incorporated Yahoo’s Y! Logo or stylized Y! mark—on his websites does not demonstrate any legitimate interest of Respondent in the Domain Names because Respondent cannot justify his misappropriation of a trademark in a domain name merely through use of a trade name. See, e.g., Yahoo! v. Unix10.com (NAF FA1308001514758) (“. . . Respondent is not commonly known by the <yahoona.com> domain name pursuant to Policy ¶4(c)(ii), as a result of the inconsistent WHOIS information and Complainant’s lack of authorization to use the mark.”); CyBerCorp Holdings v. Allman (NAF FA0403000244090) (“Naming oneself with another’s trademark does not legitimatize the use of the name in a domain name. Therefore, Respondent cannot claim rights in the domain name pursuant to Policy ¶4(c)(ii).”).
39. In fact, Respondent’s prominent and unauthorized use of Complainant’s famous Y! Logos on his websites constitutes additional evidence that Respondent lacks a legitimate interest in the Domain Names. See, e.g., Yahoo! v. Sullivan (NAF FA0703000945961) (respondent’s use of the domain name <y-tunnel.com > among others for websites displaying Yahoo’s marks and sponsored links to third-party websites does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use).
RESPONDENT’S BAD FAITH UNDER UDRP ¶4(B)
40. Respondent’s registration and use of the Domain Names squarely meet the grounds of bad faith outlined in the UDRP and prior UDRP decisions.
41. First, Respondent’s registration and use of the Domain Name constitute bad faith under UDRP ¶4(b)(iv) because Respondent uses the Domain Name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its YAHOO! mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent, his websites, and the services offered and/or advertised therein. See, e.g., Yahoo! v. OwnDomain.com (NAF FA0803001159938) (respondent’s use of the domain name <ymessenger.com> for a website featuring sponsored links, “which created a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the web site” and from which respondent profited via click-through revenue, constitutes bad faith under UDRP ¶4(b)(iv)); Yahoo! v. Sullivan (NAF FA0703000945961) (respondent’s use of the domain name <y-tunnel.com > among others for websites featuring pay-per-click ads constitutes bad faith under UDRP ¶4(b)(iv)); Yahoo! v. See ICANN RAA (NAF FA1306001504609) (holding respondent’s use of the domain names <hack-yahoo.com> and <hack-yahoo-password.com> for commercial websites featuring Complainant’s signature color of purple, services that interfere Complainant’s services, and pay-per-click ads constitutes bad faith under UDRP ¶4(b)(iv)); Yahoo! v. Yahoozone Services (NAF FA1308001512791) (holding respondent’s use of the domain name <yahooz0ne.com> for a commercial website providing services to interfere with, or hack, Complainant’s services constitutes bad faith under UDRP ¶4(b)(iv)).
42. Second, Respondent’s unauthorized use of Complainant’s Y! logos on his website constitutes further evidence of Respondent’s bad faith under UDRP ¶4(b)(iv) as well as an independent ground of bad faith under prior UDRP decisions. See, e.g., Yahoo! v. Andersson (NAF FA0403000250001) (respondent’s copying of Yahoo’s logo on his website constituted bad faith).
43. Third, Respondent’s registration and use of the Domain Names constitute bad faith under UDRP ¶4(b)(iii) because Respondent disrupts Complainant’s business by using the Domain Names for commercial websites featuring advertisements and/or links for directly competing websites, and software that circumvents and/or interferes with Complainant’s Y! MESSENGER service and allows Respondent and others to obtain the confidential information of Complainant’s users. See, e.g., Yahoo! v. Yahoozone Services (NAF FA1308001512791) (holding respondent’s use of the domain name <yahooz0ne.com> for a commercial website providing services to interfere with, or hack, Complainant’s services constitutes bad faith under UDRP ¶4(b)(iii));Yahoo! v. ALHIJAZI (NAF FA1205001442196) (respondent’s use of the domain name <upyahoo.com> for a website featuring ads for competing services disrupts Complainant’s business in bad faith).
44. Fourth, Respondent’s registration of the four disputed Domain Names confusingly similar to Yahoo’s Marks constitutes bad faith under UDRP ¶4(b)(ii). See, e.g., Yahoo! v. Domain Admin (NAF FA1312001532946) (“Registering more than one domain name featuring a complainant’s mark indicates bad faith use and registration under Policy ¶4(b)(ii). . . . Respondent’s registration of two infringing domain names is evidence that Respondent registered and is using the disputed domain names in bad faith under Policy ¶4(b)(ii).” (emphasis added)).
45. Finally, there is overwhelming evidence in this case that Respondent registered the Domain Names in bad faith with knowledge of Yahoo’s Marks, including the fame of Yahoo’s Marks and the direct references on Respondent’s websites to Yahoo and its services. Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the UDRP. See, e.g., Yahoo! v. Domain Admin (NAF FA1312001532946) (“Complainant also contends that in light of the fame and notoriety of Complainant’s YAHOO! mark, it is inconceivable that Respondent could have registered the <yahoocheckinvisible.com> and <checkyahooinvisible.com> domain names without actual knowledge of Complainant’s rights in the mark. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the domain names which is evidence of bad faith under Policy ¶4(a)(iii).”)
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Consent to Transfer
The National Arbitration Forum was copied on documentation submitted from Respondent to Complainant. This correspondence did not amount for a formal response to this proceeding. Respondent consented to the transfer of the <ymsgr.net>, <ymland.com>, and <ydetector.org> domain names. The Panel is under no obligation to acknowledge any such documents.
PDR Ltd. d/b/a PublicDomainRegistry.com placed a hold on Respondent’s account once this proceeding began (as all registrars are required to do). Therefore Respondent cannot transfer the disputed domain names while this proceeding is still pending. Where Respondent agrees to transfer of the disputed domain names in question to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <ymsgr.net>, <ymland.com>, and <ydetector.org> domain names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Having established all three elements required under the ICANN Policy by consent of the parties, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <ymsgr.net>, <ymland.com>, and <ydetector.org> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, June 30, 2014
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