Yahoo! Inc. v. Marian Mitocariu
Claim Number: FA1502001603033
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Marian Mitocariu (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoolive.ro>, registered with Claus Web SRL.
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 Forum electronically on February 2, 2015; the Forum received payment on February 2, 2015. The Complaint was submitted in both English and Romanian.
On February 6, 2015, Claus Web SRL confirmed by e-mail to the Forum that the <yahoolive.ro> domain name is registered with Claus Web SRL and that Respondent is the current registrant of the name. Claus Web SRL has verified that Respondent is bound by the Claus Web SRL 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 February 10, 2015, the Forum served the Romanian language Complaint and all Annexes, including a Romanian language Written Notice of the Complaint, setting a deadline of March 2, 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@yahoolive.ro. Also on February 10, 2015, the Romanian language 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 9, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, 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 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 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 owns the YAHOO! mark through numerous trademark authorities, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,040,222, registered Feb. 25, 1997). Complainant is a global technology company that provides products and services including search, content, and communications tools and uses the YAHOO! mark in connection with those products and services. The <yahoolive.ro> domain name is confusingly similar to the YAHOO! mark. The domain name contains Complainant’s mark in full, adds the descriptive word “live,” omits the exclamation point, and adds the country-code top-level domain (“ccTLD”) “.ro” to the domain name.
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. Further, Complainant has never authorized Respondent’s use of the YAHOO! mark. Respondent’s lack of rights or legitimate interests in the <yahoolive.ro> domain name is evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services and has not made a legitimate noncommercial or fair use of the disputed domain name. Respondent’s disputed domain name features competing pay-per-click advertisements and offers software to circumvent and/or interfere with Complainant’s services.
3. Respondent has engaged in bad faith registration and use of the <yahoolive.ro> domain name. Respondent’s use of the disputed domain name disrupts Complainant’s business by using the domain name to feature advertisements that directly compete with Complainant’s services. Further, Respondent’s use of the disputed domain name intentionally attracts, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its mark. Finally, Respondent registered the domain name in bad faith with knowledge of Complainant’s famous YAHOO! mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Matter: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Romanian, thereby making Romanian the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Romanian language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
Complainant is Yahoo! Inc., which list its address as Sunnyvale, CA, USA. Complainant is the owner of the mark YAHOO, which it uses in conjunction with the offering of goods and services in the global communications and technology industry. Complainant has used the mark continuously since at least 1997 and has registered the mark both domestically and abroad. Complainant’s registrations include domain names such as its <yahoo.com> website that gathers relevant content and functionality from across the Internet.
Respondent is Marian Mitocariu who’s address is listed as Paris, France. Respondent’s registrar’s address indicates as Satu Mare, Romania. The Panel notes that the <yahoolive.ro> domain name was registered on or about January 12, 2011.
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 the YAHOO! mark through numerous trademark authorities, including the USPTO (e.g., Reg. No. 2,040,222, registered Feb. 25, 1997). Complainant is a global technology company that provides products and services including search, content, and communications tools and uses the YAHOO! mark in connection with those products and services. The Panel finds that Complainant’s valid registration of the YAHOO! mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant asserts the <yahoolive.ro> domain name is confusingly similar to the YAHOO! mark. The domain name contains Complainant’s mark in full, adds the descriptive word “live,” omits the exclamation point, and adds the ccTLD “.ro” to the domain name. Prior panels have found that simply adding descriptive words to an otherwise incorporated mark does nothing to distinguish the disputed domain name from the complainant’s registered trademark, particularly when the term used alludes to the complainant’s business. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Further, prior panels have found that adding or omitting a punctuation mark does not serve to adequately distinguish the disputed domain name from the registered mark. 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). Past panels have also found that the addition of a top-level domain is irrelevant for purposes of determining confusing similarity. See Am. Express Co. v. McWIlliam, FA 268423 (Nat. Arb. Forum July 6, 2004) (holding that the ccTLD “.us” does not negate confusing similarity under Policy ¶ 4(a)(i)). The Panel here finds that the disputed domain name is confusingly similar under 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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Specifically, Complainant asserts that Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect the Respondent by the disputed domain name. The Panel notes that the WHOIS record refers to “Marian Mitocariu” as the registrant of record. Further, Complainant has never licensed nor authorized Respondent’s use of the YAHOO! mark. In light of Respondent’s failure to provide any contrary evidence the Panel finds Complainant’s contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name. 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, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts Respondent’s lack of rights or legitimate interests in the <yahoolive.ro> domain name is evidenced by Respondent’s failure to use the domain name in connection with a bona fide offering of goods or services and that Respondent has not made a legitimate noncommercial or fair use of the domain name. Respondent’s disputed domain name features competing pay-per-click advertisements and offers software to circumvent and/or interfere with Complainant’s services. Prior panels have found no rights or legitimate interests in the use of a disputed domain name for pay-per-click advertisements promoting competing services. 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”). The Panel here finds that Respondent has not provided a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
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 has engaged in bad faith registration and use of the <yahoolive.ro> domain name. Respondent’s use of the disputed domain name disrupts Complainant’s business by using the domain name to feature advertisements that directly compete with Complainant’s services. In addition to competing links, Complainant alleges that Respondent’s website offers software that circumvents and/or interferes with Complainant’s services. Complainant asserts that such a disruption constitutes bad faith registration and use. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”). The Panel here finds bad faith registration and use under Policy ¶ 4(b)(iii).
Further, Complainant argues that Respondent’s use of the domain name intentionally attracts, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its mark. Prior panels have found that the use of competing hyperlinks, presumably for financial gain, establishes bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel here finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
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 <yahoolive.ro> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 23, 2015
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