Yahoo! Inc. v. Dark Sun
Claim Number: FA1406001566452
Complainant is Yahoo! Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Dark Sun (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoo-mail.us>, registered with GODADDY.COM, INC.
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 June 24, 2014; the National Arbitration Forum received payment on June 24, 2014.
On June 25, 2014, GODADDY.COM, INC. confirmed by email to the National Arbitration Forum that the <yahoo-mail.us> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name. GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.COM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD 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 email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@yahoo-mail.us. Also on June 30, 2014, the 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.
A timely Response was received and determined to be complete on July 21, 2014.
On July 28, 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 Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 is a global technology company that provides web directory and search services, email, and a variety of other services. Complainant has approximately 800 million users. Many of its services are offered to the public free of charge, and its income is derived primarily from advertising.
Complainant’s YAHOO! mark has been in continuous use since 1994 and ranks among the 100 most recognized brands in the world; Complainant asserts that its mark is famous, and cites numerous panel decisions under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) that have so found. Complainant owns numerous trademark registrations for the YAHOO! mark in the United States and many other countries.
Respondent registered the disputed domain name <yahoo-mail.us> on November 24, 2013. The domain name does not resolve to an active website. Complainant states that according to the domain auction website Aftermarket.com, the domain name has been offered for sale since November 25, 2013. In a series of communications between the parties in December 2013 and January 2014, Respondent stated an intent to “drop” the domain name registration or transfer it to Complainant.
Complainant contends that the disputed domain name is confusingly similar to its YAHOO! mark; that Respondent has no right or legitimate interest in the domain name; and that Respondent registered and is using the domain name in bad faith. In support thereof, Complainant alleges that Respondent is not commonly known by the domain name; that Complainant has not authorized Respondent to use its mark; that Respondent registered the domain name with the intent to divert Internet traffic intended for Complainant for commercial gain by capitalizing on users’ familiarity with Complainant’s mark; and that Respondent’s offer to sell the domain name one day after registering it is further evidence of Respondent’s bad faith.
B. Respondent
Respondent states that “Yahoo” is a Hindi word meaning “not very intelligent or interested in culture.” Respondent states that he is willing to transfer the domain name directly to Complainant but has been hesitant to transfer the name to counsel that claims to be representing Complainant. Regarding the listing of the domain name for sale on Aftermarket.com, Respondent states only that “[a]n Aftermarket account is not registered with associated Whois data from domain name.” He states that he is willing to transfer the domain name, and denies that he has acted in bad faith.
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 or 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 or is being used in bad faith.
Given the similarity between the UDRP and the usTLD Policy, the Panel may consider relevant decisions under the UDRP as applicable in rendering its decision.
The disputed domain name incorporates Complainant’s registered mark YAHOO!, with punctuation omitted, along with the generic term “mail” and the “.us” top-level domain. These changes are insufficient to distinguish the domain name from Complainant’s mark. See, e.g., Yahoo! Inc. v. Rajesh Singh / w2c technologies, FA 1555871 (Nat. Arb. Forum June 2, 2014) (finding <yahoo‑mail‑support.com> confusingly similar to YAHOO!); Yahoo! Inc. v. Sachika Ratnayake, FA 1142577 (Nat. Arb. Forum Mar. 24, 2008) (finding <yahoomail.ws> 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. The Panel has considered the evidence submitted by the parties regarding the domain auction website Aftermarket.com, and based upon that evidence finds it likely that Respondent listed the domain name for sale immediately after registering the name. 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 or 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.”
In light of the fame and distinctiveness of Complainant’s mark, along with the findings set forth under Rights or Legitimate Interests above, the Panel considers it likely that the domain name was acquired primarily for the purpose of selling it at a profit to Complainant or a competitor thereof. Accordingly, the Panel finds that the domain name was registered in bad faith.
Having considered the three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoo-mail.us> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 29, 2014
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