Yahoo! Inc. v. Directory Listing
Claim Number: FA1312001533527
Complainant is Yahoo! Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Directory Listing (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoodirectorylisting.com>, registered with eNom, Inc.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2013; the National Arbitration Forum received payment on December 6, 2013.
On December 9, 2013, eNom, Inc confirmed by e-mail to the National Arbitration Forum that the <yahoodirectorylisting.com> domain name is registered with eNom, Inc and that Respondent is the current registrant of the name. 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 December 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 2013 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@yahoodirectorylisting.com. Also on December 10, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
Complainant
a) Complainant is a global technology company and has been in business since 1994. Complainant’s technology services include web directory and search services, e-mail, chat, and classified advertising, among others.
b) Complainant has rights in the YAHOO! mark, used in connection with technology services. Complainant owns registrations for the YAHOO! mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,040,222 registered February 25, 1997).
c) Respondent’s <yahoodirectorylisting.com> domain name is confusingly similar to Complainant’s YAHOO! mark. The disputed domain name includes Complainant’s mark and only omits the exclamation point while adding the generic terms “directory” and “listing.”
d) Respondent does not have any rights or legitimate interests in the <yahoodirectorylisting.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its mark in any way.
b. Respondent is using the <yahoodirectorylisting.com> domain name to offer Complainant’s directory listing services.
e) Respondent registered and is using the <yahoodirectorylisting.com> domain name in bad faith.
a. Respondent is attempting to attract Internet users to the disputed domain name for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s YAHOO! mark. Respondent is using the <yahoodirectorylisting.com> domain name to offer competing directory services.
b. Respondent had knowledge of Complainant’s YAHOO! mark prior to registering the <yahoodirectorylisting.com> domain name because Respondent mentions Complainant by name on the resolving website, stating “Our firm offers seo yahoo directory listing service that promises to guaranteed to the website owner to listed on the dir.yahoo.com within 7 days.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant contends it has rights in the YAHOO! mark, used in connection with technology services. Complainant states it owns registrations for the YAHOO! mark with the USPTO (e.g., Reg. No. 2,040,222 registered February 25, 1997). Therefore, the Panel finds that Complainant has rights in the YAHOO! mark pursuant to Policy ¶ 4(a)(i) because Complainant owns a valid trademark registration with the USPTO. See 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)).
Complainant asserts that Respondent’s <yahoodirectorylisting.com> domain name is confusingly similar to Complainant’s YAHOO! mark. Complainant states that the disputed domain name includes Complainant’s mark and only omits the exclamation point while adding the generic terms “directory” and “listing.” The Panel notes that the disputed domain name also includes the generic top-level domain (“gTLD”) “.com.” The Panel finds that the removal of the exclamation point in Complainant’s mark does not sufficiently differentiate the disputed domain name from Complainant’s trademark. See Yahoo! Inc. v. Scott McVey, D2011-1486 (WIPO Nov. 15, 2011) (“this Panel finds that the relevant trademark YAHOO! is recognizable as such within each disputed domain names, albeit without the exclamation mark ‘!’. The exclamation mark is not relevant for any aural comparison.”) The Panel finds that the addition of generic terms to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). The Panel finds that the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <yahoodirectorylisting.com> domain name is confusingly similar to Complainant’s YAHOO! mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 (Nat. Arb. 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 (Nat. Arb. 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 claims Respondent does not have any rights or legitimate interests in the <yahoodirectorylisting.com> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “DIRECTORY LISTING” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the YAHOO! mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <yahoodirectorylisting.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues Respondent is using the <yahoodirectorylisting.com> domain name to offer competing directory listing services. In previous cases, panels have found that using a confusingly similar domain name to offer goods or services in competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), because Respondent is using the <yahoodirectorylisting.com> domain name to offer competing directory listing services.
Complainant has proven this element.
Complainant contends Respondent registered and is using the <yahoodirectorylisting.com> domain name in bad faith. Complainant asserts that Respondent is attempting to attract Internet users to the disputed domain name for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s YAHOO! mark. Complainant states that Respondent is using the <yahoodirectorylisting.com> domain name to offer competing directory services. Previous panels have held that using a confusingly similar domain name to offer goods or services that compete with Complainant demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market). Therefore, the Panel finds that Respondent registered and is using the <yahoodirectorylisting.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is using the <yahoodirectorylisting.com> domain name to offer competing directory services.
Complainant claim Respondent had knowledge of Complainant’s YAHOO! mark prior to registering the <yahoodirectorylisting.com> domain name because Respondent mentions Complainant by name on the resolving website, stating “Our firm offers seo yahoo directory listing service that promises to guaranteed to the website owner to listed on the dir.yahoo.com within 7 days.” The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). The Panel determines Respondent was well aware of Complainant’s mark and concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
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 <yahoodirectorylisting.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 8, 2014
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