Yahoo! Inc. v. veyselkubat
Claim Number: FA1610001698998
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is veyselkubat (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoohit.com>, registered with Cronon AG.
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 October 19, 2016; the Forum received payment on October 19, 2016.
On October 31, 2016, Cronon AG confirmed by e-mail to the Forum that the <yahoohit.com> domain name is registered with Cronon AG and that Respondent is the current registrant of the name. Cronon AG has verified that Respondent is bound by the Cronon AG 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 October 26, 2016, the Forum served the Complaint and all Annexes, including a German language Written Notice of the Complaint, setting a deadline of November 15, 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@yahoohit.com. Also on October 26, 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.
On October 27, 2016, the Forum received an email submission from Respondent, which is identified in this proceeding as “Correspondence-Respondent” stating:
I have made the website (yahoohit.com) inactive (see the screenshot). It will remain inactive. It will be allowed to lapse when it comes up for renewal.
I did not understand your earlier emails. I have employed a translator to explain your correspondence to me and to help write this response.
If there is anything else required of me, please respond with an explanation.
Sincerely,
V. Kubat
Thus the Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel elects to not accept and not consider this Response as the response was not in compliance with ICANN Rule 5. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 17, 2016, 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant registered its world-famous YAHOO! mark with the United States patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,040,222, registered Feb. 25, 1997), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s domain name, <yahoohit.com>, is confusingly similar because it incorporates Complainant’s entire YAHOO! mark (but for the omission of a single exclamation point), and the addition of the descriptive term “hit” and a generic top-level domain do nothing to alleviate the confusing similarity.
ii) Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise granted any permission for Respondent to use its YAHOO! mark, and Respondent is not commonly known by <yahoohit.com>. Respondent is using the confusingly similar domain name to attempt to compete with Complainant’s internet search and marketing business. Such use cannot be construed as a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
iii) Respondent has registered and is using the disputed domain name in bad faith. As previously stated, Respondent is using <yahoohit.com> to resolve to a website that directly competes with Complainant. This use both disrupts Complainant’s business by diverting away Internet users, and is a bad faith attempt to commercially gain by confusion with Complainant’s YAHOO! mark. Respondent surely had actual notice of Complainant’s rights in the YAHOO! mark when it registered the disputed domain name, and Respondent even made a bad faith offer to sell the domain name to Complainant after it was notified of this proceeding. See Complainant's Exhibit (replying to cease and desist email with: “This domain is for sale .”).
B. Respondent
Respondent has not submitted a formal Response to this Complaint, but did submit an email to Forum stating in relevant part:
I have made the website ([<yahoohit.com>]) inactive (see the screenshot). It will remain inactive. It will be allowed to lapse when it comes up for renewal. I did not understand your earlier emails. I have employed a translator to explain your correspondence to me and to help write this response. If there is anything else required of me, please respond with an explanation.
Case File, Correspondence—Respondent (Oct. 27, 2016).
Respondent registered the <yahoohit.com> domain name on June 2, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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."
Preliminary Issue: Supported Language Request
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the German language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the German language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel weighs the relative time and expense in enforcing the German language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Complainant argues that Respondent has a knowledge or proficiency in English because of his use of English on the resolving website associated with the disputed domain name. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case such as Respondent's no objection to Complainant's Language Request, the absence of formal Response, etc., the Panel decides that the proceeding should be in English.
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(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 (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 contends it has registered its world-famous YAHOO! mark with the USPTO (e.g., Reg. No. 2,040,222, registered Feb. 25, 1997), and that it has rights in the mark under Policy ¶ 4(a)(i). Panels have found that USPTO registration confers rights in a mark, even when the registration is not in the country in which a respondent is operating. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Thus, the Panel finds that Complainant has rights in its YAHOO! mark under Policy ¶ 4(a)(i).
Complaint further asserts that Respondent’s <yahoohit.com> domain name is confusingly similar to its YAHOO! mark. Complainant argues that Respondent has incorporated the full dominant YAHOO portion of its YAHOO! mark and merely added the descriptive term “hit” and a gTLD. Complainant contends “hit” is descriptive of its Internet search related business because the searches result in “hits.” Panels have agreed that omitting a single character or punctuation from a mark can make them confusingly similar to a disputed domain name. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Panels have also held that adding terms descriptive of the complainant’s business does nothing to diffuse confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (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). Accordingly, the Panel holds that Respondent’s <yahoohit.com> domain name is confusingly similar to Complainant’s YAHOO! mark 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 (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 (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 contends that Respondent has no rights or legitimate interests in the <yahoohit.com> domain name. Complainant asserts that it has not licensed or otherwise authorized Respondent to use its YAHOO! mark in any fashion, and that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information for the domain name in question lists “Veysel Kubat” as the registrant. Previous panels have inferred that a respondent is not commonly known by a domain name from the WHOIS information and lack of contradicting evidence in the record. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Thus, the Panel finds that Respondent is not commonly known by <yahoohit.com>.
Complainant further asserts that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent is using <yahoohit.com> to directly compete with Complainant’s business. The Panel notes Complainant’s screen shots of Respondent’s domain name, where the content allegedly competes with Complainant’s Internet search and marketing business. Panels have consistently held that a respondent does not have rights or legitimate interests in a confusingly similar domain name where they use it to compete with the complainant. See j2 Global Canada, Inc. and Landslide Technologies, Inc. v. VIJAY S KUMAR / STRATEGIC OUTSOURCING SERVICES PVT LTD, FA 1647718 (Forum Jan. 4, 2016) (finding that the disputed domain purports to offer for sale goods and services in the field of electronic marketing, which directly overlap with the services covered by Complainant’s registrations and offered by Complainant online, and therefore Respondent does not have rights or legitimate interests through its competing use); see also Yahoo! Inc. v. Web Master, FA 127717 (Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services). Accordingly, the Panel holds that Respondent’s use of the disputed domain name is not a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant additionally contends that Respondent has offered to sell the domain name, and this is further evidence of a lack of rights and legitimate interests in the <yahoohit.com> domain name. Complainant alleges that when Respondent was sent a cease-and-desist letter, the Respondent responded, “This domain is for sale.” Panels have held that a respondent offering to sell a domain name can be used as evidence to demonstrate a lack of rights and legitimate interests. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant contends that Respondent has registered and is using the disputed domain name in bad faith. Complainant first alleges that when Respondent was sent a cease-and-desist letter in relation to <yahoohit.com>, the Respondent responded, “This domain is for sale.” Panels have found such an offer to sell the disputed domain name to the complainant to indicate bad faith. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). While the Respondent did not include a price for its alleged offer to sell <yahoohit.com>, the Panel holds Respondent in bad faith under Policy ¶ 4(b)(i) as it finds Complainant’s evidence persuasive.
Complainant additionally contends that Respondent’s primary purpose for registering the <yahoohit.com> domain name was to disrupt Complainant’s business. Complainant argues the content and links on Respondent’s resolving website at the disputed domain clearly shows an intent to compete in Internet search marketing related business. The Panel notes Complainant’s submission of Respondent’s website and links accessed through the disputed domain name. The Panel compares this with the evidence of Complainant’s business. Panels have typically construed “competitor” broadly and held that using a confusingly similar domain name to compete with a complainant is evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Disney Enters., Inc. v. Noel, FA 198805 (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).”). As the Panel believes that Respondent is commercially gaining from the confusion of the disputed domain name with Complainant’s YAHOO! mark, it holds Respondent in violation of Policy ¶¶ 4(b)(iii) and (iv).
Lastly Complainant contends that Respondent had actual notice of its rights in the YAHOO! mark when it registered the <yahoohit.com > domain name, and that such notice constitutes bad faith under Policy ¶ 4(a)(iii). Complainant cites (1) the worldwide fame that the YAHOO! mark has achieved, (2) the descriptive nature of the domain name, and (3) the fact that Respondent’s website references Complainant’s actual marks all as evidence that Respondent had actual notice of their rights in the mark. Although the UDRP does not recognize constructive notice as sufficient grounds to find bad faith under Policy ¶ 4(a)(iii), the Panel infers actual notice from any of Complainant’s three factors. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); see also University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Thus, the Panel finds that Respondent had actual notice of Complainant’s rights in the YAHOO! mark, and that Respondent’s registration was in bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoohit.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 28, 2016
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