Yahoo! Inc. v. Rajesh Singh / w2c technologies
Claim Number: FA1405001557115
Complainant is Yahoo! Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Rajesh Singh / w2c technologies (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoo-support.us>, registered with GODADDY.COM, INC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2014; the National Arbitration Forum received a hard copy of the Complainant May 1, 2014.
On May 1, 2014, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <yahoo-support.us> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name. GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.COM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Disputed Resolution Policy (the “Policy”).
On May 8, 2014, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 2014 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (“the Rule”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, 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 is a global technology company. Complainant offers a wide variety of services, including support services on the YAHOO! Help webpage located at <help.yahoo.com>.
Complainant has rights in the YAHOO! mark, used in connection with global technology services. Complainant owns registrations for the YAHOO! mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,040,691 registered February 25, 1997) as well as with other registrars worldwide.
Respondent’s <yahoo-support.us> domain name is confusingly similar to Complainant’s YAHOO mark. The disputed domain name incorporates Complainant’s mark in its entirety while only excluding the exclamation point and adding the generic term “support” and the country-code top-level domain (“ccTLD”) “.us.”
Respondent does not have any rights or legitimate interests in the <yahoo-support.us> domain name. Respondent is not commonly known by the dispute domain name, and Complainant has not authorized Respondent to use its YAHOO! mark in any way. Respondent is using the <yahoo-support.us> domain name to offer customer support services that compete directly with Complainant’s free YAHOO! Help services.
Respondent registered and is using the <yahoo-support.us> domain name in bad faith. Respondent registered two other infringing domain names, <yahoosupport.org> and <yahoo-mail-support.com>, on the same day Respondent registered the <yahoo-support.us> domain name. This demonstrates a pattern of bad faith registration and use. Respondent is attempting to attract Internet users to the confusingly similar domain name for Respondent’s own commercial gain. Respondent charges users for the customer support services offered via the disputed domain name. Respondent’s use of a disclaimer does not defeat bad faith.
Respondent had knowledge of Complainant’s YAHOO! mark prior to registering the <yahoo-support.us> domain name because Respondent indicates on the homepage of the resolving website that Respondent is aware of Complainant and its mark. Respondent registered the <yahoo-support.us> domain name on October 10, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the YAHOO! mark through registration of the mark with the USPTO.
Respondent registered the at-issue domain name subsequent to Complainant acquiring rights in the YAHOO! mark.
Respondent uses the <yahoo-support.us> domain name to address a website offering customer support services for a fee that compete with Complainant’s free support services.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 (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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant owns trademark rights in the YAHOO! mark through its registration thereof with the USPTO. It is irrelevant that Respondent may operate outside the jurisdiction of the trademark registrar. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
The at-issue domain name contains Complainant’s entire trademark less the exclamation point, adds a hyphen, adds the generic term “support,” and appends the top-level country code domain name “.us” thereto. The addition of the generic term “support” to Complainant’s abbreviated mark does not differentiate the domain name from the mark, nor does the removal of the exclamation point and addition of a hyphen. Similarly, the inclusion of a necessary top-level domain name is immaterial to the Panel’s analysis. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); see also, Yahoo! Inc. v. Jesper Hansen, D2011-2227 (WIPO Feb. 17, 2012) (noting that the omission of the exclamation mark from the <yahooshows.com> domain is irrelevant); see also, Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). Therefore, the Panel concludes that the at-issue domain name is confusingly similar to Complainant’s YAHOO! trademark pursuant to Policy ¶4(a)(i).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
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, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name lists “Rajesh Singh” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <yahoo-support.us> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that a respondent is not commonly known by the domain name).
Furthermore, Respondent is using the <yahoo-support.us> domain name to offer customer support services that compete directly with Complainant’s free YAHOO! Help services. Using a confusingly similar domain name to offer goods or services in competition with Complainant is a neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(ii), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden and absent evidence to the contrary conclusively demonstrates that Respondent lacks both rights and interests in respect of the at-issue domain name pursuant to 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 paragraph 4(a)(iii) of the Policy.
Respondent registered two additional domain names containing a significant portion of Complainant’s YAHOO! trademark, <yahoosupport.org> and <yahoo-mail-support.com>. Both domain names were registered on the same day Respondent registered the at-issue <yahoo-support.us> domain name; both were ordered transferred to Complainant on June 2, 2014 pursuant to a UDRP decision. See Yahoo! Inc. v. Rajesh Singh / w2c technologies, FA 1555871 (Nat. Arb. Forum June 2, 2014). Respondent’s multiple domain name registrations, each confusingly similar to Complainant’s YAHOO! trademark, suggests Respondent’s bad faith under Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Additionally and as mentioned above, Respondent charges users for the customer support services it offers via its <yahoo-support.us> website. In doing so, Respondent competes with Complainant. Respondent’s desire to attract Internet users to its confusingly similar domain name’s website for commercial gain demonstrates Respondent’s bad faith 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 knowledge of Complainant’s YAHOO! mark prior to registering the <yahoo-support.us> domain name. The Panel reaches this conclusion in light the fact that Respondent’s at-issue website indicates that Respondent is aware of Complainant and its mark, as well because of the notoriety of Complainant’s well-known YAHOO! trademark. Respondent’s prior knowledge of Complainant’s trademark demonstrates bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoo-support.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 5, 2014
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