Yahoo! Inc. v. Michael Herlache
Claim Number: FA1602001660699
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Michael Herlache (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoobook.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 11, 2016; the Forum received payment on February 11, 2016.
On February 12, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <yahoobook.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 February 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2016 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@yahoobook.com. Also on February 12, 2016, 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 March 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Also on March 7, 2016, the Forum received an email from Respondent responding to the Complainant.
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
Complainant contends as follows:
Complainant uses the YAHOO! mark in connection with its online computer services for a wide range of general interest information, online advertising and retail services, and computer software.
Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,040,222, registered February 25, 1997), establishing its rights in the mark YAHOO!.
Respondent’s <yahoobook.com> domain name is confusingly similar to the YAHOO! mark as it incorporates the mark fully, while eliminating the “!” character and adding generic term the “book” and the “.com” generic top-level domain (“gTLD”) suffix.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its YAHOO! mark. Respondent is using the disputed domain name in connection with social media services that competes with Complainant. Further, Respondent has offered to sell the disputed domain name to Complainant for between $25 million to $50 million. As such, Respondent is not making any bona fide offering of goods and services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
By offering directly competing services at its <yahoobook.com> website, Respondent is evidencing bad faith under Policy ¶ 4(b)(iii) as Respondent’s use of the disputed domain name to provide competing social media services on the website disrupts Complainant’s business. Respondent is also intentionally attracting, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its YAHOO! mark as to the source, sponsorship, affiliation, or endorsement of Respondent and the services advertised and offered therein, which evinces bad faith under Policy ¶ 4(b)(iv). Lastly, Respondent registered the disputed domain name with actual and/or constructive knowledge of the YAHOO! mark and Complainant’s rights in the mark.
B. Respondent
Respondent did not submit a formal Response in this proceeding. However, Respondent responded to the dispute resolution provider via an email on, or about, March 7, 2016. Therein Respondent claims as follows:
Respondent tried to build a social network for Yahoo called Yahoobook which might be vital to Yahoo. Upon being contacted by Yahoo Respondent took down the website addressed by the domain name and deleted the account for Yahoobook.com from Respondent’s server. Respondent is now in the process of trying to sell the domain name to Yahoo since Yahoo indicated it wants the domain name. Respondent would like to have normal negotiations with Yahoo and not litigation.
Complainant had, and has, trademark rights in its YAHOO! mark at all times relevant to this proceeding.
Respondent has no authority to use Complainant’s trademark in a domain name or otherwise.
The at-issue domain name addressed a website that offered services competing with those services offered by Complainant.
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 formal Response and the substance of Respondent’s informal response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 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.”).
Respondent’s domain name is confusingly similar to a trademark in which the Complainant has rights.
Complainant shows that it has numerous USPTO trademark registrations regarding its YAHOO! mark. These registrations support a conclusive finding that Complainant has established rights in the YAHOO! mark pursuant to Policy ¶4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Respondent’s domain name incorporates the YAHOO! mark fully, while eliminating the “!” punctuation and adding the generic term “book” and the “.com” gTLD suffix. Neither the addition of the descriptive term “book,” the removal of the exclamation point “!” nor the addition of the top level domain name “.com,” sufficiently differentiate the domain name from Complainant’s mark such that they are not confusingly similar under the Policy. Therefore, the Panel concludes that the <yahoobook.com> domain name is confusingly similar to Complainant’s YAHOO! mark under Policy ¶ 4(a)(i). See 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); see also, Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding that the absence of punctuation in a domain name “does not alter the fact that a name is identical to a mark.”); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy ¶ 4(a)(ii) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Michael Herlache” as the at-issue domain name’s registrant. Moreover, the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the <yahoobook.com> domain name. The Panel thus concludes that Respondent is not commonly known by the at-issue domain name for the purposes of 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); see also 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).
Respondent used the at-issue domain name in connection with a social media service that directly competes with Complainant and from which Respondent presumably receives commercial gain. Using the domain name in this manner is neither a bona fide offering of goods and services or a legitimate noncommercial, nor a fair use per Policy ¶¶ 4(c)(i) or (iii). The fact that Respondent has offered the domain name for sale is further support for this conclusion. See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services).
In light of the uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
First, Respondent offered to sell Complainant the at-issue domain name for between $25 million and $50 million. Attempting to sell the domain name suggests Respondent has acted in bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Second, by offering directly competing services at its website, Respondent evidences bad faith disruption under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Third, Respondents use of the confusingly similar domain name to host a website with similar service to those offered by Complainant evinces bad faith registration under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Finally, Respondent had actual knowledge of Complainant’s rights in the YAHOO! mark before registering the <yahoobook.com> domain name. Respondent’s prior knowledge is evident from the notoriety of the YAHOO! mark. It is inconceivable to speculate that Respondent may have been unaware of Complainant’s trademark given Respondent’s use of the domain name as discussed above. Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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 had 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 <yahoobook.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 9, 2016
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