Yahoo! Inc. v. HEIDI BUI
Claim Number: FA1509001638878
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is HEIDI BUI (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yahoo-mobile.com> and <yahoonews-exclusive.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 22, 2015; the Forum received payment on September 22, 2015.
On September 23, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <yahoo-mobile.com> and <yahoonews-exclusive.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 25, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@yahoo-mobile.com, postmaster@yahoonews-exclusive.com. Also on September 25, 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 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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(s) be transferred from Respondent to Complainant.
A. Complainant
Complainant is a global technology company providing Internet search, communications and digital content services under the YAHOO! mark.
Complainant holds a registration for the YAHOO! trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 2,040,222, registered on February 25, 1997).
Respondent registered the <yahoo-mobile.com> domain name on January 29, 2015 and the <yahoonews-exclusive.com> domain name on June 5, 2015.
The <yahoo-mobile.com> and <yahoonews-exclusive.com> domain names are confusingly similar to the YAHOO! mark.
Respondent has not been commonly known by either of the <yahoo-mobile.com> and <yahoonews-exclusive.com> domain names.
Complainant has not authorized Respondent to use its YAHOO! mark.
Respondent fails to use the domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use, in that each of them resolves to a website which attempts to pass off as being operated by Complainant and to profit from click-through fees.
Respondent has neither any rights to nor any legitimate interest in either of the domain names.
Respondent registered each of the domain names with actual knowledge of Complainant’s rights in the YAHOO! mark.
Respondent registered and uses the <yahoo-mobile.com> and <yahoonews-exclusive.com> domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will decide this proceeding pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it considers appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the YAHOO! trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding that a trademark registration with the USPTO was adequate to establish rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Canada). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding, under Policy ¶ 4(a)(i), that it does not matter whether a UDRP complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in the mark in some jurisdiction).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <yahoo-mobile.com> and <yahoonews-exclusive.com> domain names are confusingly similar to Complainant’s YAHOO! mark. Each of the domain names contains the mark, but for its exclamation point, and adding hyphens, descriptive terms which relate to aspects of Complainant’s business, and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain names, do no save them from the realm of confusing similarity under the standards of the Policy. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 17, 2004) (finding that adding a hyphen and a top-level domain to the mark of another in creating a domain name is irrelevant for purposes of the Policy).
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 to a mark).
Further see Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to a UDRP complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <yahoo-mobile.com> and <yahoonews-exclusive.com> domain names and that Complainant has not authorized Respondent to use its YAHOO! mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “HEIDI BUI,” which does not resemble either of the domain names. On this record we conclude that Respondent has failed to show that it has been commonly known by either of the domain names so as to have acquired rights to or legitimate interests in either of them within the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a UDRP respondent was not commonly known by the <lilpunk.com> domain name, and so failed to demonstrate that it had rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not authorize that respondent’s use of its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent fails to use the <yahoo-mobile.com> and <yahoonews-exclusive.com> domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use in that Respondent uses the resolving websites in an attempt to pass itself off as Complainant in order to generate fee income. This use of the domain names is neither a bona fide offering of goods or services which might confer rights or legitimate interests under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use which might do so under Policy ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007):
Because respondent in this case is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds the respondent is not using the … domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant’s has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the domain names <yahoo-mobile.com> and <yahoonews-exclusive.com>, as alleged in the Complaint, is an attempt to pass off as Complainant by means of domain names that are confusingly similar to Complainant’s YAHOO! mark, and that this is done for Respondent’s commercial gain. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in the registration and use of the domain names. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding, under Policy ¶ 4(b)(iv), that a disputed domain name was registered and used in bad faith where a domain name was used to attempt to attract Internet users to a deceptive website). See also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (finding that a respondent’s use of a disputed domain name to maintain a pay-per-click site displaying links unrelated to the business of a UDRP complainant to generate click-through revenue demonstrated bad faith registration and use under Policy ¶ 4(b)(iv)).
We are also convinced by the evidence that Respondent registered the <yahoo-mobile.com> and <yahoonews-exclusive.com> domain names with knowledge of Complainant and its rights in the YAHOO! mark. This is further proof of Respondent’s bad faith in registering the domain names. See, for example, Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith registration where the method by which a respondent acquired disputed domain names indicated that it was well aware that they incorporated marks in which a UDRP complainant had rights).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <yahoo-mobile.com> and <yahoonews-exclusive.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 26, 2015
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