Yahoo! Inc. v. glenn coffey / heavenlytouch corp
Claim Number: FA1412001593862
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is glenn coffey / heavenlytouch corp (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoo-beauty.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 5, 2014; the National Arbitration Forum received payment on December 5, 2014.
On December 10, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <yahoo-beauty.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 December 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@yahoo-beauty.com. Also on December 10, 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 January 6, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
1. Complainant is a global technology company that uses the YAHOO! mark to identify its products and services, including personalized search, content, and communication tools. Complainant owns the YAHOO! mark through trademark registration with agencies such as the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,403,227, registered Nov. 14, 2000). The <yahoo-beauty.com> domain name is confusingly similar to the YAHOO! mark.
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <yahoo-beauty.com> domain name. Further, Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, Respondent is using the disputed domain name to feature its own commercial website offering hair care products.
3. Respondent registered and has used the disputed domain name in bad faith. Respondent’s use of the disputed domain name serves to disrupt Complainant’s business as the domain name interferes with Complainant’s ability to control its mark. Further, Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion as to Complainant’s affiliation or role in the domain name. In addition, Respondent registered the disputed domain name shortly after Complainant launched its beauty-related website, which is suggestive of opportunistic bad faith. Lastly, Respondent registered the disputed domain name with knowledge of the YAHOO! mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Yahoo! Inc., which list its address as Sunnyvale, CA, USA. Complainant is the owner of domestic and international registrations for the mark YAHOO. Complainant has used the mark continuously since at least 1997 in conjunction with the offering of goods and services in the global communications and technology industry. Complainant’s offerings include its <yahoo.com> website that gathers relevant content and functionality from across the Internet.
Respondent is Glenn Coffey/Heavenlytouch corp, of San Diego, CA, USA. Respondent’s registrar’s address is not specifically listed but appears to be Scottsdale, AZ, USA. Respondent registered the disputed domain name on or about October 23, 2008.
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 uses the YAHOO! mark to identify its products and services, including personalized search, content, and communication tools. Complainant claims to own the YAHOO! mark through trademark registration with agencies such as the USPTO (e.g., Reg. No. 2,403,227, registered Nov. 14, 2000). The Panel finds that Complainant’s valid registration with the USPTO clearly demonstrates Complainant’s rights in the mark for purposes of 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).”).
Complainant argues that the <yahoo-beauty.com> domain name is confusingly similar to the YAHOO! mark. Complainant further asserts that the disputed domain name is comprised of the YAHOO! mark plus the term “beauty.” Complainant contends that “beauty” relates to Complainant’s business as it has offered beauty-related information services under the mark for many years, and therefore the inclusion of the term serves to heighten confusing similarity. Complainant also states that punctuation, such as an exclamation point or hyphen, and the addition of a gTLD are irrelevant to the confusing similarity analysis. Panels have found confusing similarity despite similar alterations. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also 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). The Panel here finds that the <yahoo-beauty.com> domain name is confusingly similar to the YAHOO! mark pursuant to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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), 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). The Complainant has met this burden.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues first that Respondent is not commonly known by the <yahoo-beauty.com> domain name. The Panel notes that the WHOIS information identifies “glenn coffey / heavenlytouch corp” as registrant. The Panel finds that no evidence has been provided that Respondent is commonly known by the disputed domain name, and thus no basis to refute Complainant’s Policy ¶ 4(c)(ii) showing. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant claims that Respondent is instead using the disputed domain name to feature its own commercial website offering hair care products. The Panel notes that Complainant has included screen grabs illustrating Respondent’s use of the name to advertise and sell hair care products. The Panel finds that Respondent’s efforts to promote it owns commercial website unrelated to Complainant under the <yahoo-beauty.com> domain name amounts to neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent’s use of the disputed domain name serves to disrupt Complainant’s business as the domain name interferes with Complainant’s ability to control its mark. Complainant states further that even if Respondent is not a direct competitor, Policy ¶ 4(b)(iii) is still implicated as Respondent’s activities are clearly in opposition to Complainant. Prior panels have supported this reading of Policy ¶ 4(b)(iii). See Schering Corp. v. NGS Enters., Ltd, FA 198013 (Nat. Arb. Forum Nov. 7, 2003) (“The Panel declines to adopt a narrow interpretation of the term ‘competing,’ as urged by Respondent . . . The Panel agrees with Complainant that at least some confusion and/or diversion of consumers is likely here, even though Complainant's and Respondent's tablets address different medical issues.”). The Panel here finds evidence of bad faith under Policy ¶ 4(b)(iii) based on Respondent’s use of the disputed domain name to sell hair care products in a manner that is disruptive of Complainant’s own offerings.
Further, Complainant argues that Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion as to Complainant’s affiliation or role in the domain name. The Panel again notes that the disputed domain name is used to promote Respondent’s own commercial offerings relating to hair care products. The Panel finds that Respondent’s commercial offerings at the <yahoo-beauty.com> domain name provides evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
In addition, Complainant claims that Respondent registered the disputed domain name shortly after Complainant launched its beauty-related website, and argues that such registration is suggestive of opportunistic bad faith. The Panel notes that Complainant has included a press release and relevant screen grabs of the Complainant’s beauty and fashion websites to corroborate this claim of opportunistic timing. In 3M Co. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005), the panel wrote, “Respondent’s registration of the disputed domain name the same day that Complainant issued the press release regarding the acquisition constitutes opportunistic bad faith.” The Panel here finds that Respondent’s registration of the <yahoo-beauty.com> domain name shortly after Complainant launched its own beauty related website demonstrates that Respondent engaged in opportunistic bad faith, which warrants a finding of bad faith pursuant to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoo-beauty.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 20, 2015
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