Yahoo! Inc. v. Shalu Sharma
Claim Number: FA1312001535207
Complainant is Yahoo! Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Shalu Sharma (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoocustomercare.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on December 18, 2013; the National Arbitration Forum received payment on December 18, 2013.
On December 18, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <yahoocustomercare.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the do-main name. GoDaddy.com, LLC has verified that Respondent is bound by the registration agreement of GoDaddy.com, LLC, 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 23, 2013, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of January 13, 2014 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, adminis-trative, and billing contacts, and to postmaster@yahoocustomercare.com. Also on December 23, 2013, the Written Notice of the Complaint, notifying Respond-ent of the e-mail addresses served and the deadline for a Response, was trans-mitted to Respondent via post and fax, to all entities and persons listed on Re-spondent’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 15, 2014, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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.
A. Complainant
Complainant uses the YAHOO! mark in connection with its widely known and successful global technology business, which offers web directory and search services, e-mail, chat, and games, among other products and services.
Complainant holds rights in the YAHOO! trademark and service mark through registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (including Registry No. 2,040,222, registered February 25, 1997).
Respondent registered the <yahoocustomercare.com> domain name on June 14, 2013.
The domain name is confusingly similar to Complainant’s YAHOO! mark.
Respondent has not been commonly known by the disputed domain name.
Complainant has not authorized Respondent to use its YAHOO! mark.
Prior to receiving notice of this dispute, Respondent used the domain name to operate a commercial website that was unrelated to Complainant’s business.
Since receiving notice of this dispute, Respondent has removed from the re-solving website the content that was once associated with the domain name.
Respondent’s inactive holding of the domain name is evidence that it lacks either rights to or legitimate interests in the domain name.
Respondent has offered to sell the disputed domain name to Complainant for $12,999.00, further demonstrating its lack of rights to or legitimate interests in the domain name.
The domain name creates a likelihood of confusion among Internet users as to the possibility of Complainant’s association with it.
Respondent has attempted to profit from this confusion.
Respondent knew of Complainant and its rights in the YAHOO! mark when it registered the domain name.
Respondent has both registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respond-
ent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusing-
ly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the YAHOO! trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trade-mark authority, the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from registration in a jurisdiction (here the United States) other than that in which Re-spondent resides or does business (here India). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that, under Policy ¶ 4(a)(i), it is irrelevant whether a UDRP complainant has registered its trademark in the country of a respondent’s residence).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that the <yahoocustomercare.com> domain name is confus-ingly similar to Complainant’s YAHOO! trademark and service mark. The domain name includes Complainant’s entire mark, with the elimination of the exclamation point and the addition of the generic phrase “customer care,” which relates to an aspect of Complainant’s business, plus the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in creating the domain name, fail to save the domain name from the realm of confusing similarity under the standards of the Policy. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to the mark of another in form-ing a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Similarly, see Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determin-ing the question of confusing similarity as between a domain name and the mark from which it was derived).
Finally, see Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding, under Policy ¶ 4(a)(i), that the addition of generic terms to a complainant’s HARRY POTTER mark in forming a respondent’s domain names, <shop4harrypotter.com> and <shopforharrypotter.com>, failed to avoid confusing similarity as between the mark and the domain names).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name, and that Complainant has not authorized Respondent to use its YAHOO! mark.
Moreover, the pertinent WHOIS information identifies the registrant of the dis-puted <yahoocustomercare.com>domain name only as “Shalu Sharma,” which does not resemble the domain name. On this record, we conclude that Re-spondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a UDRP respondent was not com-monly known by the <coppertown.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We next observe that Complainant asserts, without objection from Respondent, that, prior to receiving notice of this dispute, Respondent used the contested <yahoocustomercare.com> domain name to operate a commercial website that was unrelated to Complainant’s business. Such use was not 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). See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003), the panel there finding that a respondent’s use of a UDRP complainant’s mark to attract Internet users to an unrelated business was not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant further asserts, again without objection from Respondent, that, since receiving notice of this dispute, Respondent has removed the content that was once associated with the disputed domain name, leaving the domain name inactive held. This too is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004):
Respondent is wholly appropriating Complainant’s mark and is not using the … domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s undenied offer to sell the <yahoocustomercare.com> domain name to Complainant for $12,999.00, a sum demonstrably in excess of Respondent’s costs in registering the domain name, shows bad faith in the registration and use of the domain name under Policy ¶ 4(b)(i). See, for example, Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003):
Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).
We are also convinced by the evidence that the <yahoocustomercare.com> do-main name, which is confusingly similar to Complainant’s YAHOO! trademark and service mark, creates a likelihood of confusion among Internet users as to the possibility of Complainant’s association with the domain name and its resolv-ing website. That Respondent has attempted to profit from such confusion is proof of bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001), the panel there concluding that a UDRP respondent registered and used a disputed domain name in bad faith under Policy ¶ 4(b)(iv), where a domain name resolved to a commercial website that a complainant’s customers were likely to confuse with the source of that complainant’s products.
Moreover, that the disputed domain name currently resolves to an inactive web-site is itself evidence of bad faith in its registration and use. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith, under Policy ¶ 4(a)(iii), where a respondent made no use of the domain name in question).
Additionally, it is evident that Respondent registered the disputed domain name while knowing of Complainant and its rights in the YAHOO! trademark and ser-vice mark. Under Policy ¶ 4(a)(iii), this, too, is evidence of Respondent’s bad faith in the registration of the domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was “well-aware” of a complainant’s mark at the time of registration of a domain name confusingly similar to it). To the same effect, see also: Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the respondent, at the time of registration, had notice of a UDRP complainant’s POKÉMON and PIKACHU trademarks).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <yahoocustomercare.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 28, 2014
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