Yahoo! Inc. v. Rajesh Singh / w2c technologies / W2C Technologies
Claim Number: FA1412001594916
Complainant is Yahoo! Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Rajesh Singh / w2c technologies / W2C Technologies (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue is <yahootechnicalcontact.com> and <yahoomailtechnicalsupport.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com and GoDaddy.com, LLC, respectively.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 11, 2014; the National Arbitration Forum received payment on December 11, 2014.
On December 12, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <yahoomailtechnicalsupport.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 14, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <yahootechnicalcontact.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 January 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2015 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@yahootechnicalcontact.com, as well as postmaster@yahoomailtechnicalsupport.com. Also on January 6, 2015, 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 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, 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
i) Complainant has rights in the YAHOO! mark for purposes of Policy ¶ 4(a)(i). Complainant has registered the YAHOO! mark with numerous trademark authorities, including the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,040,222, registered Feb, 25, 1997). The <yahootechnicalcontact.com> and <yahoomailtechnicalsupport.com> domain names are confusingly similar to the YAHOO! mark. The disputed domain names include the YAHOO! mark in full, less the exclamation point, and merely add generic or descriptive terms. The omission of the exclamation point and addition of the gTLD “.com” are irrelevant to the confusing similarity analysis.
ii) Respondent lacks rights in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor is Respondent licensed to use the YAHOO! mark in domain names. Further, Respondent uses the disputed domain names for a commercial website offering services in competition with Complainant.
iii) Respondent registered and is using the disputed domain name in bad faith. As Respondent has been subject to previous UDRP cases relating to Complainant and the YAHOO! mark that resulted in the transfer of domain names, Respondent has a telling track record of bad faith. Further, these domain names are used by Respondent in an attempt to mislead users as to Complainant’s affiliation with the disputed domain names, with Respondent hoping to generate revenue from the resulting confusion. Respondent registered the disputed domain name with actual knowledge of Complainant’s famous YAHOO! mark. Respondent’s use of a disclaimer on the resolving websites does not prevent a finding of bad faith.
B. Respondent
Respondent did not submit a Response. The <yahootechnicalcontact.com> domain name was registered March 7, 2013 and the <yahoomailtechnicalsupport.com> domain name was registered October 10, 2013.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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 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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In demonstrating that the same entity is behind both registrations, Complainant points out that the WHOIS information for both domain names list “w2c Technologies” as the holding organization, and also lists the same support telephone number. See Compl., at Exs. A and O. The Panel agrees that Complainant has sufficiently demonstrated the two domain names at-issue are owned by the same singular Respondent.
Complainant argues that it has rights in the YAHOO! mark for purposes of Policy ¶ 4(a)(i). Complainant notes that it registered the YAHOO! mark with numerous trademark authorities, including the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,040,222, registered Feb, 25, 1997), and that it uses the YAHOO! mark for its web directory and search services. The Panel finds Complainant has demonstrated rights in the YAHOO! mark for purposes of Policy ¶ 4(a)(i) as the mark is registered with the likes of the USPTO. See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under Policy ¶4(a)(i), despite the fact Respondent resides outside of the United States.”).
Complainant goes on to argue that the <yahootechnicalcontact.com> and <yahoomailtechnicalsupport.com> domain names are confusingly similar to the YAHOO! mark. Complainant urges the disputed domain names include the YAHOO! mark in full, less the exclamation point, and merely add generic or descriptive terms, “technical contact” and “mail technical support.” Complainant adds that the omission of the exclamation point and addition of the gTLD “.com” are irrelevant to the confusing similarity analysis. Prior panels have found that the addition of a gTLD is inconsequential to the confusing similarity analysis, and similarly, that the removal of punctuation (such as the exclamation point here) is not a distinguishing alteration. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); 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). Further, panels have determined that the addition of a generic phrase to an otherwise incorporated mark does not sufficiently mitigate confusing similarity, especially where there added terms evoke the complainant’s business or offerings under the at-issue mark. 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)). Accordingly, the Panel determines that the <yahootechnicalcontact.com> and <yahoomailtechnicalsupport.com> domain names are confusingly similar to the YAHOO! mark pursuant to Policy ¶ 4(a)(i).
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.”).
Complainant argues that Respondent lacks rights in the disputed domain names. Specifically, Complainant claims Respondent is not commonly known by the disputed domain names, nor is Respondent licensed to use the YAHOO! mark in domain names. The Panel notes that the WHOIS record for the disputed domain names lists “Rajesh Singh / w2c technologies / W2C Technologies” as registrant. In light of the available record, the Panel finds there is no basis to hold Respondent commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). 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).
Further, Complainant argues that Respondent uses the disputed domain names for a commercial website offering services in competition with Complainant. The Panel observes that the disputed domain names resolve to promote “email technical support” services. See Compl., at Attached Ex. O. Prior panels have determined that the use of a disputed domain name to promote goods or services in competition with those offered under the at-issue mark provides strong evidence that the respondent lacks rights or legitimate interests in the disputed domain name. For example, in Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003), the panel found 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. The Panel agrees that Respondent’s use of the disputed domain names to offer competing services to those of Complainant amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant claims that Respondent’s bad faith in the present case is evidenced by Respondent’s history with the UDRP. Complainant explains that Respondent has been subject to previous UDRP cases relating to Complainant and its YAHOO! mark, which resulted in the transfer of domain names. See e.g., Yahoo! inc. v. Rajesh Singh / w2c technologies, FA 1555871 (Nat. Arb. Forum June 2, 2014); Yahoo! Inc. v. Rajesh Singh / w2c technologies, FA 1557115 (Nat. Arb. Forum June 5, 2014). The Panel agrees that these circumstances constitute a pattern of bad faith as envisioned by Policy ¶ 4(b)(ii), and therefore finds Respondent has again registered and used these <yahootechnicalcontact.com> and <yahoomailtechnicalsupport.com> domain names in bad faith. See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”); Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Further, Complainant argues that these domain names are used by Respondent in an attempt to mislead users as to Complainant’s affiliation with the disputed domain names, with Respondent hoping to generate revenue from the resulting confusion. The Panel recalls that the disputed domain names resolve to promote “email technical support” services in competition with Complainant’s comparable offerings. See Compl., at Attached Ex. O. The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv) as Respondent is using the disputed domain names in furtherance of competing computer support services, and likely generating profit through the misdirection. 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); Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
Lastly, Complainant claims that Respondent registered the disputed domain name with actual knowledge of Complainant’s famous YAHOO! mark, which demonstrates Respondent’s bad faith registration. Prior panels have inferred actual knowledge based on the fame and notoriety of the complainant’s mark. For example, in Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012), the panel wrote, “Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).” Further, panels have inferred actual knowledge where the disputed domain name is comprised and used in such a way that demonstrates the respondent’s familiarity with the complainant. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel infers Respondent registered the disputed domain name with actual knowledge of Complainant as the domain name incorporates the famous YAHOO! mark alongside terms relating to services synonymous with Complainant’s own offerings under the mark. As such, the Panel finds additional evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahootechnicalcontact.com> and <yahoomailtechnicalsupport.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 9, 2015
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