Yahoo! Inc. v. Robby Saint-Cyr / My24x7Realty
Claim Number: FA1509001637665
Complainant is Yahoo! Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Robby Saint-Cyr / My24x7Realty (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yahooquickloans.com> and <yahoocashloans.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 14, 2015; the Forum received payment on September 14, 2015.
On September 15, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <yahooquickloans.com> and <yahoocashloans.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 September 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 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@yahooquickloans.com and postmaster@yahoocashloans.com. Also on September 16, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant uses the YAHOO! mark in connection with its business as a global technology company. Complainant has rights in the YAHOO! mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,040,222, registered February 25, 1997). Respondent’s disputed domain names are confusingly similar to Complainant’s YAHOO! mark. Respondent’s domain names remove the exclamation point from Complainant’s mark, add two generic terms, and the generic top-level domain (“gTLD”) “.com.” These differences are not sufficient to distinguish the disputed domain names from Complainant’s YAHOO! mark.
ii) Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not been commonly known by the disputed domain names as demonstrated by Respondent failing to receive authorization to use the YAHOO! mark, and WHOIS information indicating that Respondent registered the domain names using the name “Robby Saint-Cyr.” Further, Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent has used the disputed domain names to host the following: advertisements linking to third-party websites, inactive pages, and for <yahooquickloans.com> to resolve to a pornographic webpage.
iii) Respondent registered and is using the disputed domain names in bad faith. By registering two domains in the instant proceeding, Policy ¶ 4(b)(ii) bad faith has been evinced. Next, Respondent confuses and attracts Internet users for commercial gain through the use of domain names using Complainant’s YAHOO! mark which display competing services for commercial gain. Respondent also had knowledge of Complainant’s rights in the YAHOO! mark at the time of registration.
B. Respondent
Respondent has not submitted a formal Response in this proceeding. The Panel notes that the disputed domain name <yahooquickloans.com> was created on August 2, 2014 and <yahoocashloans.com> was created on July 26, 2014.
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.”).
Complainant claims to have rights in the YAHOO! mark through registration of the mark with the USPTO (e.g., Reg. No. 2,040,222, registered February 25, 1997). Previous panels regularly hold that registration of a mark with the USPTO demonstrates rights in the mark. See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Based on Complainant’s registration of the YAHOO! mark with the USPTO the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s disputed domain names <yahooquickloans.com> and <yahoocashloans.com> are confusingly similar to the YAHOO! mark. The disputed domain names differ from the YAHOO! mark through removal of the exclamation point from Complainant’s mark, the addition of two generic terms, and the addition of the gTLD “.com.” Although the disputed domain names remove the exclamation point from the YAHOO! mark, panels have held that presence or absence of punctuation is not significant under Policy ¶ 4(a)(i). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark). Similarly, the inclusion of the gTLD “.com” has been consistently found to be irrelevant when conducting a confusing similarity analysis. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Adding generic terms to a mark has also not been found to alleviate confusing similarity when the terms are added to distinctive marks. See Napster, Inc. v. Mededovic, D2005-1263 (WIPO Jan. 17, 2006) (finding confusing similarity where “[t]he disputed domain name comprises the highly distinctive NAPSTER trademark itself, combined with the suffix “togo.”). Under a Policy ¶ 4(a)(i) analysis the Panel may hold that Respondent’s disputed <yahooquickloans.com> and <yahoocashloans.com> domain names are confusingly similar to the YAHOO! mark in which Complainant claims to have rights under 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 claims that Respondent has no rights or legitimate interests in the disputed domain names. To support this claim, Complainant asserts that Respondent has not been commonly known by the disputed domain name based on a lack of authorization to use the YAHOO! mark and WHOIS information indicating that Respondent registered the disputed domain names using the name “Robby Saint-Cyr.” Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of evidence in the record indicating the contrary. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name.
Complainant asserts that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. When resolved for Complainant on or around September 2014, the disputed domain names resolved to webpage that displayed information and advice about financial information in competition with services offered by Complainant on its <finance.yahoo.com> domain name. In addition, on or around August 13, 2015 the <yahooquickloans.com> domain name resolved to a website displaying pornography. On September 14, 2015 the disputed domain names resolved to websites that seemed to be inactive and displayed the message “403 Forbidden.” Panels have held that using a disputed domain name to offer competing services is not within the parameters of Policy ¶ 4(c)(i) or (iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). A respondent’s domain resolving to an adult-oriented website has been found to not be a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Dipaolo v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003) (“Diversion to [adult-oriented material] is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).) Finally, a respondent’s failure to make use of disputed domain names has been held to demonstrate a lack of rights or legitimate interests. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Panel therefore finds that none of Respondent’s various uses of the disputed domain names constitutes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant claims that Respondent registered and used the disputed domain names in bad faith. To begin, the Panel notes that multiple domains have been registered in the instant proceeding: <yahooquickloans.com> and <yahoocashloans.com>. Panels have seen Policy ¶ 4(b)(ii) bad faith where two infringing domains were registered and brought at issue in a UDRP proceeding. See Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”). Therefore, the Panel sees merit in Complainant’s argument that Policy ¶ 4(b)(ii) bad faith is evident.
Complainant argues that Respondent’s previous uses of the <yahooquickloans.com> and <yahoocashloans.com> domain names, to resolve to websites hosting financial advice and to sell books related to financial services, demonstrates a bad faith attempting to attract and confuse Internet users for commercial gain. Respondent’s <yahoocashloans.com> displays books for sale with such titles as “Payday Loans: Everything You Need To Know A…” and “Payday Loan Regulation.” The <yahooquickloans.com> resolves to a webpage hosting various financial advice articles and advertisements with titles like, “Credit Card Loans Can Help With Your Debts,” “Good Reasons To Borrow Money,” and “A magic button that fixes your credit? Click Here!” Panels have found that a respondent using a domain name that is confusingly similar to a complainant’s mark for the purposes of hosting a website that competes with complainant’s services has demonstrated bad faith under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). The Panel concludes that Respondent’s previous use of the <yahooquickloans.com> and <yahoocashloans.com> demonstrates bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the YAHOO! mark. Complainant argues that Respondent's offering of services similar to Complainant's and the fame and notoriety of Complainant’s YAHOO! mark indicate that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel infers from the fame of Complainant’s mark and Respondent’s use of manner of the disputed domain names that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahooquickloans.com> and <yahoocashloans.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: October 22, 2015
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