Taboola.com Ltd. v. Raaj Brar
Claim Number: FA1710001752345
Complainant is Taboola.com Ltd. (“Complainant”), represented by Eric Misterovich of Revision Legal, Michigan, USA. Respondent is Raaj Brar (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <taboola.biz> and <taboola.info>, 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.
Michael Albert as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2017; the Forum received payment on October 5, 2017.
On October 6, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <taboola.biz> and <taboola.info> 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 October 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 2017 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@taboola.biz, postmaster@taboola.info. Also on October 11, 2017, 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 10, 2017 and October 29, 2017, the Forum was copied on email correspondence from Respondent to Complainant. On October 30, 2017, Complainant responded to the email, again copying the Forum.
On November 1, 2017, the Forum received a Response from Respondent. The Forum considers this Response to be deficient, as it was received after the October 31, 2017 deadline. The Panel, at its discretion, may choose whether to accept and consider this Response. 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.”). In the instant dispute, the Panel has decided to consider the Response that was one day late.
On November 6, 2017, the Forum received an Additional Submission from Complainant, which was filed in a timely manner according to Supplemental Rule 7.
On November 6, 2017, the Forum received an Additional Submission from Respondent, which was filed in a timely manner according to Supplemental Rule 7.
On November 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Michael Albert 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Taboola.com Ltd., operates the world’s largest and most advanced
discovery platform which delivers personalized recommendations to over one billion unique users every month. Complainant registered the TABOOLA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,481,994, registered Aug. 5, 2008). See Compl. Annexes E–H. Respondent’s <taboola.biz> and <taboola.info> domain names are identical to Complainant’s mark, as each incorporates the mark in its entirety, merely adding the “.biz” or “.info” generic top-level domains (“gTLDs”).
Respondent has no rights or legitimate interests in <taboola.biz> and <taboola.info>. Respondent is not commonly known by the disputed domain names. Complainant has not authorized or licensed Respondent to use the TABOOLA mark for any reason. Respondent has not made a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent’s <taboola.biz> domain name resolves to an inactive webpage that displays an error message. See Compl. Annex L1. Respondent’s <taboola.info> resolves to a webpage offering the domain name for sale. See Compl. Annex L2. Respondent is offering <taboola.biz> and <taboola.info> for sale in the amount of $500 each. See Compl. Annex M.
Respondent registered and is using <taboola.biz> and <taboola.info> in bad faith. Respondent is offering the domain names for sale for an amount in excess of out-of-pocket costs. The disputed domain names resolve to inactive pages with no demonstrable intent for active use. See Compl. Annexes L1–2. Respondent registered <taboola.biz> and <taboola.info> with actual and/or constructive knowledge of Complainant and its rights in the TABOOLA mark.
B. Respondent
Respondent, Raaj Brar, purchased the <taboola.biz> and <taboola.info> domain names on behalf of and for its client on January 2, 2017. Complainant’s mark is different from the disputed domain names, as the registered design mark includes two “o’s” with a smile beneath. See Compl. Annex H. Additionally, it is not clear that Complainant, “Taboola.com LTD,” has any legal relationship with the entity Taboola, Inc., which operates the <www.taboola.com> domain name. See Resp. Annex P. Further, Complainant’s failure to register the <taboola.biz> and <taboola.info> domain names, which were available during the ten years since the alleged 2007 founding of its brand, indicates a failure to act in the best interest of its corporate brand. The <taboola.biz> and <taboola.info> domain names never resolved to an error page; instead, the resolving webpage for <taboola.biz> describes the use to which Respondent’s client plans to put the domain name. See Resp. Annex O. The <taboola.biz> website is targeted at consumers who have an interest in reading content focused “on issues that are prohibited or restricted by social custom.” The target audience of Respondent’s
client is different than the business-to-business market served by Complainant.
Respondent has no intentions to sell the <taboola.biz> and <taboola.info> domain names, and the AfterNic account linked by Complainant does not belong to Respondent. The domain names were put up for sale by the previous registrant of the names and Respondent has since contacted AfterNic to have the out of date listings removed. Additionally, Respondent’s client looks to serve a completely different market than Complainant and offer non-competing services. Before purchasing the domain name, Respondent did a search for TABOOLA trademarks, and found the <taboola.com> domain name. It discovered that the domain name was owned by “Taboola Inc.,” and was unable to find any trademarks registered to that entity. See Resp. Annex P.
C. Additional Submissions
Complainant’s Additional Submission
Respondent was aware of Complainant before January 2, 2017, because Respondent was a former customer of Complainant. On February 21, 2014, Respondent, on behalf of another entity, signed a digital advertising agreement with Complainant, but failed to pay for Complainant’s services. Respondent accumulated a sizable unpaid bill and Complainant filed suit for breach of contract in the State of New York. Complainant alleged that Respondent should be held personally liable for breach of contract for abusing the corporate form. The Court agreed and held Respondent personally liable for damages and costs. Complainant moved to have the judgment domesticated and enforced in Respondent’s jurisdiction of Ontario, Canada. Respondent initiated bankruptcy proceedings to which Complainant has objected. The case is currently pending.
Respondent registered the <taboola.biz> domain name a month after the final judgment was entered in New York and used the website to post false and defamatory content regarding Complainant and its employees and attorneys. The false website attempted to mimic the look and feel of Complainant’s <taboola.com> site.
The blog post identified by Respondent to show a right or legitimate interest in the <taboola.biz> domain name is a “coming soon” type post and fails to show any legitimate operation of a business. Complainant states that all screenshots are true and accurate at the time the screenshot was taken.
Respondent’s bad faith is clear; he registered the domain names after hiring Complainant for services, not paying for those services, and being held personally liable for the debt.
Respondent’s Additional Submission
As far as the Panel can ascertain, Respondent’s Additional Submission does not add any relevant information concerning the dispute.
Complainant holds trademark rights for the TABOOLA mark. Respondent’s domain names are confusingly similar to Complainant’s TABOOLA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <taboola.biz> and <taboola.info> domain names and that Respondent registered and uses the domain names in bad faith.
The Additional Submissions were considered by the Panel, but did not impact the final decision which relies on the Complaint and Response.
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.
Complainant, Taboola.com Ltd., operates the world’s largest and most advanced
discovery platform which delivers personalized recommendations to over one billion unique users every month. Complainant claims it registered the TABOOLA mark with the USPTO (e.g., Reg. No. 3,481,994, registered Aug. 5, 2008). See Compl. Annexes E–H. The general consensus among panels is that registrations with the USPTO are sufficient to show rights in a mark. Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel concludes that Complainant’s USPTO registrations are sufficient to show rights in the TABOOLA mark.
Complainant argues that Respondent’s <taboola.biz> and <taboola.info> domain names are identical to Complainant’s mark, as each incorporates the mark in its entirety, merely adding the “.biz” or “.info.” gTLDs. “Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.” Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017). As such, the Panel concludes that Respondent’s <taboola.biz> and <taboola.info> are identical to Complainant’s TABOOLA 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 names 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 asserts that Respondent has no rights or legitimate interests in
<taboola.biz> and <taboola.info>. Complainant contends that Respondent is not commonly known by the disputed domain names. WHOIS information associated with this case identifies Respondent as “Raaj Brar.” The respondent is not deemed to be commonly known by the disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent is commonly known by that name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, “[g]iven the WHOIS contact information for the disputed domain [name],” the Panel may “infer that Respondent . . . is not commonly known by the [disputed domain name] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003). The Panel concludes that Respondent is not commonly known by the disputed domain name.
Complainant states it has not authorized or licensed Respondent to use the TABOOLA mark for any reason. Complainant argues that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use. To support its argument, Complainant demonstrates that Respondent’s <taboola.biz> domain name resolves to an inactive webpage that displays an error message, and <taboola.info> resolves to a webpage offering the domain name for sale. See Compl. Annexes L1–2. Additionally, Complainant asserts that Respondent is offering <taboola.biz> and <taboola.info> for sale in the amount of $500 each. See Compl. Annex M.
Respondent asserts that the <taboola.biz> domain name is currently being used by an entity to create a site devoted to “coverage on issues to consumers who have an interest in reading content focused ‘on issues that are prohibited or restricted by social custom.’” See Resp. Annex Q. However, the webpage shown contains only one post, dated January 6, 2016, a year before Respondent claims to have registered the domain name for the entity. See Resp. Annex Q. There does not appear to be any other post or use of the webpage. Thus, the Panel finds Respondent has failed to make active use of the <taboola.biz> domain name. “When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services.” Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017). Likewise, a respondent’s willingness to sell a domain name suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007). In the instant case, the Panel finds that Respondent lacks rights or legitimate interests in <taboola.biz> and <taboola.info> pursuant to Policy ¶¶ 4(c)(i) and (iii). The Complainant has satisfied the burden of proof under Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and is using <taboola.biz> and
<taboola.info> in bad faith. Complainant argues that Respondent is offering the domain names for sale for an amount in excess of out-of-pocket costs. “A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).” Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015).
Next, Complainant argues that the disputed domain names resolve to inactive pages with no demonstrable intent for active use. See Compl. Annexes L1–2. “Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015). Therefore, given the evidence provided, the Panel finds that Respondent registered <taboola.biz> and <taboola.info> in bad faith pursuant to Policy ¶¶ 4(b)(i) and 4(a)(iii).
Finally, Complainant contends that Respondent registered <taboola.biz> and
<taboola.info> with actual and/or constructive knowledge of Complainant and its rights in the TABOOLA mark. Respondent admits that he had actual knowledge of Complainant’s use of the TABOOLA mark as part of its <taboola.com> domain name. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Therefore, where the circumstances indicate that Respondent had actual knowledge of Complainant's mark when it registered <taboola.biz> and <taboola.info>, the Panel may find bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006). Accordingly, the Panel considers that Policy ¶ 4(a)(iii) has been satisfied, and that the facts of record establish that Respondent registered and used the disputed domain names in bad faith.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <taboola.biz> and <taboola.info> domain names be TRANSFERRED from Respondent to Complainant.
Michael Albert, Panelist
Dated: November 16, 2017
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