Yahoo! Inc. v. fahda alanzi
Claim Number: FA1405001557190
Complainant is Yahoo! Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is fahda alanzi (“Respondent”), Saudi Arabia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahooofree.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 May 1, 2014; the National Arbitration Forum received payment on May 1, 2014.
On May 1, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <yahooofree.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 May 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 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@yahooofree.com. Also on May 6, 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 29, 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 <yahoofree.com> domain name, the domain name at issue, is confusingly similar to Complainant’s YAHOO! 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.
i. Complainant, Yahoo! Inc., is a global technology company that provides services including web directory and search services, e-mail, chat, sports, games, stock quotes, real estate and mortgage information and rate quotes, movie reviews, news, weather, yellow pages directory services, maps, online shopping, travel reservations, classified advertising, audio and video streaming, web-store hosting and management, and more. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the YAHOO! mark (e.g., Reg. No. 2,040,691, registered February 25, 1997). Respondent’s <yahooofree.com> domain name is confusingly similar to Complainant’s YAHOO! Mark.
ii. Respondent is not commonly known by the disputed domain name. The disputed domain name previously resolved to a blog offering information on newly-released music and links to download the music, which also directed users to an Arabic website providing consulting services.
iii. Respondent used the disputed domain name to direct Internet users to a webpage offering services in the same nexus as Complainant’s services. Respondent registered the disputed domain name with the intent to cause confusion, and commercially benefit as a result. Respondent registered the disputed domain name with Complainant’s mark in mind on May 12, 2013.
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 is a global technology company that provides services including web directory and search services, e-mail, chat, sports, games, stock quotes, real estate and mortgage information and rate quotes, movie reviews, news, weather, yellow pages directory services, maps, online shopping, travel reservations, classified advertising, audio and video streaming, web-store hosting and management, and more. Complainant owns trademark registrations with the USPTO for the YAHOO! mark (e.g., Reg. No. 2,040,691, registered February 25, 1997). Respondent appears to reside in Saudi Arabia. However, Complainant does not need to register its mark in the country in which Respondent resides under Policy ¶ 4(a)(i). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Thus, Complainant’s registration of the YAHOO! mark with the USPTO sufficiently provides proof that it has rights in the mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s disputed domain name includes the entirety of Complainant’s mark. Respondent removes the exclamation point of Complainant’s YAHOO! mark in the disputed domain name. The removal of punctuation in a mark is irrelevant to a confusingly similar analysis under Policy ¶ 4(a)(i). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Respondent adds an additional letter “o” to the YAHOO! mark. The Panel finds that Respondent’s addition of another character to the mark does not differentiate the domain name from the mark under Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). Further, Respondent adds the generic term “free” to Complainant’s mark in the disputed domain name. The inclusion of a generic term does not negate a finding that the domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See Yahoo! Inc. v. Feiji Gao, D2013-0521 (WIPO May 27, 2013) (“the mere addition of a generic or descriptive term, such as ‘answer’, is not capable to dispel the confusing similarity arising from the incorporation of Complainant’s YAHOO! trademark into the dispute domain name [answer-yahoo.com]”). Finally, Respondent has added the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. Respondent’s addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) determination. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Consequently, the Panel finds that Respondent’s <yahooofree.com> domain name is confusingly similar to Complainant’s YAHOO! mark according to 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.”).
Nothing in Respondent’s WHOIS information or otherwise contained in the record demonstrates that Respondent is commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its YAHOO! mark in a domain name. Respondent is listed as “fahda alanzi” in the WHOIS information. Because Respondent has failed to submit a Response in this proceeding, based on the relevant evidence in the record, the Panel finds that Respondent is not commonly known by the <yahooofree.com> domain name pursuant to Policy ¶ 4(c)(ii). See Yahoo! Inc. v. Junlong Zheng c/o OnlineNIC, FA 1142567 (Nat. Arb. Forum Mar. 25, 2008) (holding respondent has no rights or legitimate interests pursuant to Section 4(c)(ii) because there is no evidence in the record or WHOIS information indicating respondent is commonly known by the disputed domain name and because Complainant did not authorize respondent to use its YAHOO mark).
Respondent’s <yahooofree.com> domain name previously resolved to a blog offering information on newly-released music and links to download the music. Each post displayed on the blog held the domain <http://fxp.mx>, the contents of which are displayed in Arabic. The Panel finds that Respondent’s use of the disputed domain name to promote Respondent’s own commercial website is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA156716 (Nat. Arb. Forum June 12, 2003) (finding there was no bona fide offering of goods or services under the Policy where the respondent presumably received a referral fee for redirecting Internet users to websites unrelated to the complainant’s mark).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent used the disputed domain name to direct Internet users to a webpage offering services in the same nexus as Complainant’s services. The disputed domain name resolved to a blog offering information on newly-released music and links to download the music. Each post on the blog held the domain <http://fxp.mx>, the contents of which display in Arabic. A rough translation of the Arabic page indicates that the website is commercial in nature, offering consultation services for start-up companies. The Panel finds that Respondent’s use of the disputed domain name in such manner disrupts Complainant’s own business efforts and therefore finds evidence of bad faith pursuant to Policy ¶ 4(b)(iii).
Respondent registered the <yahooofree.com> domain name with the intent to cause confusion and exploit that confusion for commercial gain. Respondent’s disputed domain name resolved to a blog offering information on newly-released music and links to download the music. Each post contained on the blog held the domain <http://fxp.mx>, the contents of which are displayed in Arabic. A rough translation of the Arabic therein shows that the website offers consultation services for start up companies. The Panel finds that Respondent registered the disputed domain name with the intent of diverting consumers to its own website for commercial gain and holds that Respondent registered and is using the <yahooofree.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Clearly, Respondent registered the <yahooofree.com> domain name with Complainant’s mark in mind. Complainant first made use of the YAHOO! mark in 1994, whereas Respondent did not register the disputed domain name until 2013. While many panels have concluded that constructive notice is not sufficient to support a bad faith finding, this Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the YAHOO! mark and Complainant's rights in the mark. Accordingly, the Panel finds that Respondent registered the <yahooofree.com> domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration.”)
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 <yahooofree.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 31, 2014
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