Yahoo! Inc. v. Latika Sharma
Claim Number: FA1406001566439
Complainant is Yahoo! Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Latika Sharma (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoopasswordrecovery.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR).
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2014; the National Arbitration Forum received payment on June 24, 2014.
On June 26, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) confirmed by e-mail to the National Arbitration Forum that the <yahoopasswordrecovery.org> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) 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 June 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 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@yahoopasswordrecovery.org. Also on June 30, 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 July 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
1. Complainant is a famous global technology company whose main website is at www.yahoo.com.
2. Complainant is the owner of a large number of trademark registrations for YAHOO! around the world, of which one example is Registration No. 2,403,327, registered with the United States Patent and Trademark Office (“USPTO”) first used in June 1994, filed on August 13, 1998 and issued on November 14, 2000.
3. Complainant’s websites are extremely popular with internet users around the world and it provides on those websites a wide variety of services under the YAHOO! mark.
4. Respondent’s domain name <yahoopasswordrecovery.org>, is confusingly similar to the YAHOO! mark as it includes the entirety of the mark and adds the generic expression “password recovery” which is integrally associated with Complainant’s business. The domain name is confusingly similar despite the fact that the website to which it resolves carries a purported disclaimer.
5. Respondent has no right or legitimate interest in the disputed domain name.
as Respondent uses it for a commercial website offering directly competing services to those of Complainant, namely customer support services which directly overlap with Complainant’s Yahoo Help services.
6. Moreover, Respondent is not commonly known by the disputed domain name and could not be so named as the YAHOO! mark incorporated in the domain name is an internationally famous name and mark.
7. Respondent registered and uses the disputed domain name in bad faith. That is so because Respondent has clearly traded on the YAHOO! mark being famous and with the intention of attracting internet users to the website to which the domain name resolves and has done so for financial gain.
8. Respondent registered the disputed domain name with Complainant’s mark in mind and with the intent to cause confusion among internet users.
9. Respondent’s use of the disputed domain name to offer competing services is itself evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a famous global technology company whose main website is at www.yahoo.com.
2. Complainant is the owner of a large number of trademark registrations for YAHOO! around the world, of which one example is Registration No.2, 403,327, registered with the United States Patent and Trademark Office (“USPTO”) first used in June 1994, filed on August 13, 1998 and issued on November 14, 2000.
3. Respondent registered the disputed <yahoopasswordrecovery.org> domain name on February 24, 2014.
4. The disputed domain name resolves to a website offering services to internet users which compete with those of Complainant.
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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant contends that it is the owner of many trademark registrations for the YAHOO! mark around the world and the Panel accepts the evidence adduced by Complainant to that effect. See Complainant’s Annex F. One of those trademarks is No. 2,403,327, registered with the USPTO for YAHOO!, first used in June 1994, filed on August 13, 1998 and issued on November 14, 2000.The Panel finds that Complainant’s USPTO registrations of the YAHOO! mark ( collectively “ the YAHOO! mark”) sufficiently show that it has rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The second issue that arises is whether the disputed <yahoopasswordrecovery.org> domain name is identical or confusingly similar to Complainant’s YAHOO! mark. Complainant submits that Respondent’s domain name is confusingly similar to Complainant’s registered YAHOO! trademark as it incorporates the YAHOO! mark in its entirety and adds the generic expression “password recovery” which is integrally associated with Complainant’s business and therefore conveys to the internet user the notion that the domain name relates to the recovery of passwords to utilise Complainant’s services on the internet. The Panel agrees with that submission. The Panel holds that the addition of a generic expression such as “password recovery” does not detract from confusing similarity that is otherwise present, as it is in the present case. See AOL Inc. v. Tech Helpdesk 247, FA1311001532064 (Nat. Arb. Forum Dec.31, 2013) where the trademark was AOL and the registrant of the domain name had added “tech support” to the trademark, making the domain name <aol-tech-support.com>. The panel found in that case that there was confusing similarity between the domain name and the trademark and observed, in remarks equally applicable to the present case:
” The Panel determines that Respondent’s addition of a generic phrase to Complainant’s mark does not differentiate the domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).””
The Panel also notes that Respondent adds the generic top-level domain (“gTLD”) “.org” to the mark in the disputed domain name. The Panel finds that Respondent’s addition of the gTLD to Complainant’s mark is irrelevant under Policy ¶ 4(a)(i). 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).
For these reasons, the Panel finds that the <yahoopasswordrecovery.org> domain name is confusingly similar to Complainant’s YAHOO! mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s YAHOO! mark and to use it in its domain name and has added the generic expression “ password recovery” which does not detract from the confusing similarity that is clearly present;
(b) Respondent registered the disputed domain name on February 24, 2014 and did so without the permission or authority of Complainant;
(c)The domain name resolves to an active commercial website offering directly competing services to those of Complainant, namely customer support services which directly overlap with Complainant’s Yahoo Help services. See Complainant’s Annexes L and O. The Panel accepts the evidence submitted by Complainant to that effect and therefore determines that Respondent is not using the <yahoopasswordrecovery.org> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”);
(d) Complainant also argues that Respondent is not commonly known by the <yahoopasswordrecovery.org> domain name. The Panel notes that the registrant
of the disputed domain name is listed as “Latika Sharma” in the WHOIS record for the domain name. The Panel also notes that Respondent has not provided any evidence showing that it is known by the disputed domain name. Thus, the Panel concludes that Respondent is not commonly known by the <yahoopasswordrecovery.org> domain name under Policy ¶ 4(c)(ii). 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 domain names).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s <yahoopasswordrecovery.org> domain name resolves to a website offering competing services to those offered by Complainant and that whereas Complainant offers its services free of charge, the services offered on Respondent’s website are provided for the benefit of Respondent and to the detriment of Complainant. The Panel accepts the evidence and submissions of Complainant to that effect and agrees with Complainant that its submission is supported by several prior UDRP decisions. Prior UDRP panels have determined that a respondent’s use of a domain name to provide links to competing products and services disrupts complainant’s business and shows bad faith under Policy ¶ 4(b)(iii). As the Panel finds that Respondent has used the domain name in the manner alleged, this constitutes bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).The Panel also agrees with the Complainant that this conclusion is supported by the decisions it cites, such as Yahoo! Inc. v. Mohit Arora / E-squad Technologies, FA1311001531666 (Nat. Arb. Forum Dec. 31, 2013) (finding bad faith use and registration where Respondent used the <yahootechnicalhelp.com> domain name to offer competing services for its own commercial gain). In any event it is axiomatic that this use of the domain name by Respondent shows that it registered and uses the domain name in bad faith.
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <yahoopasswordrecovery.org> domain name using the YAHOO! mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoopasswordrecovery.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 25, 2014
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