Yahoo! Inc. v. Michael Dawson
Claim Number: FA1411001592189
Complainant is Yahoo! Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Michael Dawson (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoomessengerapp.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 25, 2014; the National Arbitration Forum received payment on November 25, 2014.
On November 26, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <yahoomessengerapp.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 November 26, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 16, 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@yahoomessengerapp.com. Also on November 26, 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 December 29, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 owns the YAHOO! mark through registration with numerous trademark agencies worldwide, including the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,403,227, registered Nov. 14, 2000). Complainant uses the YAHOO! mark to identify its web directory and search engine services, as well as offerings including but not limited to e-mail, chat, sports, games, and weather. The <yahoomessengerapp.com> domain name is confusingly similar to the YAHOO! mark as the domain name incorporates the mark and adds the generic or descriptive term “messenger app.” The addition of a generic top-level domain and omission of the exclamation point are irrelevant alterations.
Respondent has no rights or legitimate interests in the <yahoomessengerapp.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Before Respondent’s receipt of notice of this dispute, the disputed domain name did not resolve to an active website. Subsequent to notice of this dispute, Respondent has used the disputed domain name to provide blog services, as well as a disclaimer including language related to fair use under copyright law. Respondent’s adjusted use of the disputed domain name in furtherance of blog services competes with Complainant’s own messenger services and should not be considered a bona fide offering, or genuine noncommercial or fair use.
Respondent registered and has used the <yahoomessengerapp.com> domain name in bad faith. Respondent’s use of the disputed domain name in connection with blog services is competitive with Complainant’s own offerings, and therefore warrants a finding of bad faith under Policy ¶ 4(b)(iii). In addition, Respondent uses the <yahoomessengerapp.com> domain name to mislead users to Respondent’s own website by capitalizing on user familiarity with the YAHOO! mark. Given the fame of the YAHOO! mark, Respondent registered the disputed domain name with actual knowledge of Complainant and its rights in the YAHOO! mark. Respondent’s disclaimer does not mitigate bad faith as it does not prevent initial confusion.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc., owns the YAHOO! mark through registration with numerous trademark agencies worldwide, including the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,403,227, registered Nov. 14, 2000). Complainant uses the YAHOO! mark to identify its web directory and search engine services, as well as offerings including but not limited to e-mail, chat, sports, games, and weather.
Respondent, Michael Dawson, registered the <yahoomessengerapp.com> domain name on October 25, 2013. Before Respondent’s receipt of notice of this dispute, the disputed domain name did not resolve to an active website, but to a parked website displaying Complainant’s marks. Subsequent to notice of this dispute, Respondent has used the disputed domain name to provide blog services, as well as a disclaimer including language related to fair use under copyright law.
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 owns rights in the YAHOO! mark under the Policy ¶ 4(a)(i)) through registration with numerous trademark agencies worldwide, including the USPTO. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
The <yahoomessengerapp.com> domain name is confusingly similar to the YAHOO! mark under Policy ¶ 4(a)(i) as the domain name incorporates the mark in full and adds the generic or descriptive term “messenger app.” See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The omission of the exclamation point is not significant. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark)
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).
Respondent has no rights or legitimate interests in the <yahoomessengerapp.com> domain name. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), especially given the distinct nature of the YAHOO! name. The WHOIS record identifies “Michael Dawson” as the registrant of the domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); Compaq Info. Techs. Group, L.P. v. Express Tech., Inc., FA 104186 (Nat. Arb. Forum Mar. 13. 2002) (“The Panel finds that due to the distinct nature of Complainant's COMPAQ mark it is not possible for Respondent to be commonly known as <compaqspares.com> pursuant to Policy 4(c)(ii).”).
Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Before Respondent’s receipt of notice concerning this dispute, the disputed domain name did not resolve to an active website. Subsequent to such notice, Respondent has used the disputed domain name to provide blog services, as well as a disclaimer including language related to fair use under copyright law. Respondent’s adjusted use of the disputed domain name in furtherance of blog services competes with Complainant’s own messenger services and is not a bona fide offering, or genuine noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Respondent’s failure to make an active use of the domain name before it received notice of this potential dispute is evidence that Respondent did not make a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. A respondent’s inactive use of a domain name may demonstrate a lack of Policy ¶ 4(a)(ii) rights in the name. See, e.g., Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent registered and has used the disputed domain name in bad faith. Respondent’s use of the disputed domain name in connection with blog services competes with Complainant’s offerings, and therefore is evidence of Policy ¶ 4(b)(iii) bad faith disruption. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent uses the <yahoomessengerapp.com> domain name to mislead users to Respondent’s website by capitalizing on user familiarity with the YAHOO! mark. Respondent’s use of the domain name creates an opportunity for Respondent to profit from a likelihood of confusion and is evidence of bad faith under Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
Respondent’s use of a disclaimer does not mitigate bad faith as it does not prevent initial confusion. Respondent added the disclaimer after receipt of correspondence from Complainant detailing Respondent’s infringing use. Prior panels have generally found that the inclusion of a disclaimer does not mitigate bad faith. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii)”).
Given the fame of the YAHOO! mark, the Panel finds that Respondent registered the <yahoomessengerapp.com> domain name with actual knowledge of Complainant and its rights in the YAHOO! mark. Therefore, Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (finding actual knowledge and Policy ¶ 4(a)(iii) bad faith through the name used for the domain and the use of the name).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoomessengerapp.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 12, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page