Yahoo! Inc. v. sumit kalra / mam solution / mam solutions
Claim Number: FA1512001650447
Complainant is Yahoo! Inc. ("Complainant"), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is sumit kalra / mam solution / mam solutions ("Respondent"), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yahoo-password-help.com>, <yahoo-phone-number.org>, <yahoocustomersupport.org>, <yahooemailsupport.org>, <yahoophone-number.com>, <yahoophonesupport.com>, <yahootechnicalhelp.org>, <yahoocustomerservices.com>, and <yahoophonesupport.co>, registered with GODADDY.COM, INC. and 1API GmbH.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 1, 2015; the Forum received payment on December 1, 2015.
On December 2, 2015, GODADDY.COM, INC. confirmed by email to the Forum that the <yahoo-password-help.com>, <yahoophonesupport.co>, <yahoocustomersupport.org>, <yahooemailsupport.org>, <yahootechnicalhelp.org>, <yahoocustomerservices.com>, and <yahoophone-number.com> domain names are registered with GODADDY.COM, INC., and that Respondent is the current registrant of the names. GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.COM, 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 December 3, 2015 1API GmbH confirmed by email to the Forum that the, <yahoo-phone-number.org> and <yahoophonesupport.com> domain names are registered with 1API GmbH and that Respondent is the current registrant of the names. 1API GmbH has verified that Respondent is bound by the 1API GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On December 7, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 2015 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registrations as technical, administrative, and billing contacts, and to postmaster@yahoo-password-help.com, postmaster@yahoo-phone-number.org, postmaster@yahoocustomersupport.org, postmaster@yahooemailsupport.org, postmaster@yahoophone-number.com, postmaster@yahoophonesupport.com, postmaster@yahootechnicalhelp.org, postmaster@yahoocustomerservices.com, and postmaster@yahoophonesupport.co. Also on December 7, 2015, the Written Notice of the Complaint, notifying Respondent of the email 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 registrations as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 31, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant is a global technology company that provides web directory and search services, email, and a variety of other services. Complainant's global user base grew to more than 1 billion monthly active users in 2014. Complainant has used the YAHOO! mark continuously since 1994, and holds numerous registrations for the mark in the United States and other jurisdictions. Complainant asserts that its mark has become famous as a result of such use, and that it ranks among the 100 most recognized brands in the world.
The disputed domain names (<yahoo-password-help.com>, <yahoo-phone-number.org>, <yahoocustomersupport.org>, <yahooemailsupport.org>, <yahoophone-number.com>, <yahoophonesupport.com>, <yahootechnicalhelp.org>, <yahoocustomerservices.com>, and <yahoophonesupport.co>) were all registered by Respondent in 2015. Complainant contends that they are all confusingly similar to Complainant's YAHOO! mark; that Respondent has no rights or legitimate interest in these domain names; and that they were registered and are being used in bad faith. In support thereof, Complainant states inter alia that the domain names are being used to offer directly competing commercial support services to Complainant's customers, and to encourage such customers to download malware in furtherance of a phishing scheme. Complainant states further that it communicated with Respondent in 2014 regarding Respondent's registration of a similar domain name, and that Respondent therefore was aware of Complainant's trademark rights in 2015 when it registered the domain names that are the subject of this proceeding.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of each of the disputed domain names; and that each of the disputed domain names was registered and has been used 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.").
Each of the disputed domain names incorporates Complainant's famous registered mark YAHOO!, omitting only the exclamation point. Each domain name appends to the mark a generic term or phrase ("password help," "phone number," "customer support," "email support," and variations thereof); one or more hyphens in some instances; and a generic or country-code top-level domain (".com", ".org", or ".co"). These modifications do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Dell Inc. v. Geeks Technical Solutions Inc., FA 1637797 (Forum Oct. 13, 2015) (finding <dellcustomer-service.org>, <dellcustomersupport.org>, and <dellphonenumber.org> confusingly similar to DELL); Yahoo! Inc. v. Latika Sharma, FA 1566439 (Nat. Arb. Forum July 25, 2014) (finding <yahoopasswordrecovery.org> confusingly similar to YAHOO!); AOL Inc. v. Skylogic Technologies Private Limited aka Tanuj Mittal, FA 1498058 (Nat. Arb. Forum June 7, 2013) (finding <aolsupport.co> and <aolphonenumber.com> confusingly similar to AOL). The Panel therefore considers each of the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain names incorporate Complainant's mark without authorization, and their sole apparent use has been in connection with a fraudulent scheme aimed at Complainant's customers. See, e.g., Bloomberg Finance L.P. v. Janina Deikuna, FA 1634141 (Forum Sept. 22, 2015) (finding lack of rights or legitimate interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and have been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's registration of domain names obviously intended to create confusion with Complainant, together with its use of those domain names in connection with a fraudulent scheme involving passing itself off as Complainant and attempting to defraud Complainant's customers, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv). The Panel finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoo-password-help.com>, <yahoo-phone-number.org>, <yahoocustomersupport.org>, <yahooemailsupport.org>, <yahoophone-number.com>, <yahoophonesupport.com>, <yahootechnicalhelp.org>, <yahoocustomerservices.com>, and <yahoophonesupport.co> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: December 31, 2015
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