Yahoo! Inc. v. AKT Corporation LLC
Claim Number: FA1405001558713
Complainant is Yahoo! Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is AKT Corporation LLC (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoocityads.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 9, 2014; the National Arbitration Forum received payment May 9, 2014.
On May 12, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <yahoocityads.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC 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 May 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 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, administrative, and billing contacts, and to postmaster@yahoocityads.com. Also on May 13, 2014, 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 June 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
1. Complainant owns the YAHOO! mark and has used it continuously since 1994. Complainant uses the YAHOO! mark in correlation with its web directory and search services, e-mail, chat, sports, games, stock quotes, real estate and mortgage information and rate quotes, movie reviews, news, weather, yellow pages directory services, maps, and various other related uses.
a. Complainant provides evidence of its registrations for the YAHOO! mark in countries worldwide, including the United States as follows:
i. United States Patent and Trademark Office (“USPTO”) (E.g., Reg. No. 2,040,222 registered February 25, 1997).
2. Respondent’s <yahoocityads.com> domain name is confusingly similar to Complainant’s YAHOO! mark.
a. Respondent incorporates Complainant’s YAHOO! mark in its entirety in the <yahoocityads.com> domain name.
b. Complainant’s YAHOO! mark is distinctive and arbitrary.
c. Respondent adds generic or descriptive terms to Complainant’s famous YAHOO! mark. The Panel observes that Respondent adds the term “City ads.”
d. Respondent’s omission of the exclamation point from the infringing domain name is irrelevant, as exclamation points are not permitted in domain names.
3. Respondent has no rights to or legitimate interests in the <yahoocityads.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. Nothing in Respondent’s WHOIS information demonstrates that Respondent is commonly known by the disputed domain name. Additionally, Complainant has not authorized Respondent to use the YAHOO! mark in any way.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
i. Respondent uses the disputed domain name to resolve to a parked website used to advertise the websites of other businesses, which closely overlap with services offered by the Complainant under the YAHOO! mark. See Complainant’s Annex N and P.
4. Respondent registered and is using the <yahoocityads.com> domain name in bad faith.
a. Respondent states in a prior communication with Complainant that it intends to sell the disputed domain name to a third-party. Complainant submits a string of e-mail communications with Respondent where Respondent indicates that it has removed the logo from the resolving website and will be selling the domain name. Respondent encourages Complainant to notify Respondent if Complainant wishes to make a bid on the domain name.
b. Respondent uses the <yahoocityads.com> domain name to capitalize on the fame of the YAHOO! mark in order to intentionally attract Internet users to Respondent’s website, for commercial gain. Respondent intends to create a likelihood of confusion with Complainant and the YAHOO! mark as to the source or affiliation of Respondent and Respondent’s resolving website.
c. Respondent had actual notice of Complainant and Complainant’s YAHOO! mark at the time Respondent registered the disputed domain name. Complainant points out that Respondent did not register the disputed domain name until March 26, 2013.
1. The WHOIS information for the <yahoocityads.com> domain name lists “AKT Corporation LLC” as registrant.
2. The WHOIS record also shows that Respondent registered the disputed domain name in 2013, some 17 years after Complainant’s registration and 20 years after Complainant’s first use.
Complainant established that it has rights in the mark used in its entirety within 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 or held 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."
Paragraph 4(a) of the Policy requires Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant asserts that it owns the YAHOO! mark and has used it continuously since 1994. Additionally, Complainant claims that it uses the YAHOO! mark in correlation with its web directory and search services, e-mail, chat, sports, games, stock quotes, real estate and mortgage information and rate quotes, movie reviews, news, weather, yellow pages directory services, maps, and various other related uses. The Panel notes that Complainant provides evidence of its registrations for the YAHOO! mark in countries worldwide, including the United States; USPTO (e.g., Reg. No. 2,040,222 registered February 25, 1997). See Complainant’s Annex F. Previous panels have determined that a complainant’s registration with a trademark agency is sufficient to establish the complainant’s rights in the registered trademark regardless of whether the respondent resides in the jurisdiction of the registration agency. In W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010), the panel wrote that, “ [the Respondent’s] USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”. Consistent with such precedent, the Panel finds that Complainant’s USPTO registrations establish Complainant’s rights in the YAHOO! mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <yahoocityads.com> domain name is confusingly similar to Complainant’s YAHOO! mark. Complainant asserts that Respondent incorporates Complainant’s distinctive and arbitrary YAHOO! mark in its entirety in the <yahoocityads.com> domain name. Additionally, Complainant points out that Respondent adds generic or descriptive terms to Complainant’s famous YAHOO! mark, i.e., the term “City ads.” See Yahoo! Inc. v. Feiji Gao, D2013-0521 (WIPO May 27, 2013) (“the mere addition of a generic or descriptive term, such as “answer”, is not capable to dispel the confusing similarity arising from the incorporation of Complainant’s YAHOO! trademark into the disputed domain name.”). Further, Complainant states that Respondent’s omission of the exclamation point from the infringing domain name is irrelevant, as exclamation points are not permitted in domain names. 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.”). In the past, panels have also found that addition of a generic top-level domain (“gTLD”) such as “.com” does not distinguish a disputed domain name, and is in fact necessary in the formation of domain names. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel thus finds that Respondent’s <yahoocityads.com> domain name is confusingly similar to Complainant’s YAHOO! mark inasmuch as additions of generic words and a gTLD do not differentiate a disputed domain name from a registered mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 argues that Respondent has no rights to or legitimate interests in the <yahoocityads.com> domain name. As such, Complainant contends that Respondent is not commonly known by the disputed domain name and that nothing in Respondent’s WHOIS information demonstrates that Respondent is commonly known by the disputed domain name. Additionally, Complainant states that it has never authorized Respondent to use the YAHOO! mark in any way. Respondent did not file a Response in the proceeding, and therefore, has not refuted Complainant’s contentions. The Panel also notes that Respondent is identified as “AKT Corporation LLC” in the WHOIS records. As such, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant further urges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant contends that Respondent uses the disputed domain name to resolve to a parked website used to advertise the websites of other businesses, which very closely overlaps with services offered by the Complainant under the YAHOO! mark. See Complainant’s Annex N and P. The Panel notes Complainant’s Annex N to see that some of the links provided on Respondent’s resolving website include “Install Google Chrome,” “Post Free Classified Ad,” “Watch TV Now,” “Brain Exercises,” and “Job Openings.” Complainant asserts that no doubt exists relative to Respondent’s use of the <yahoocityads.com> domain name that aims at misleading and diverting Internet users to Respondent’s parked website for Respondent’s commercial gain. In Yahoo! Inc. v. yahooteb/rezai, FA 1517431 (Nat. Arb. Forum Oct. 2, 2013) the panel found that Respondent’s use of the confusingly similar domain name for a commercial website that offers directly competing services to that of the complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel therefore finds that Respondent is not using the <yahoocityads.com> domain name to provide 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) by causing the disputed domain name to resolve to a webpage promoting websites that belong to other businesses.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent registered and is using the <yahoocityads.com> domain name in bad faith under Policy ¶ 4(b)(i). Complainant provides evidence that Respondent states in a prior communication with Complainant that it intends to sell the disputed domain name to a third-party. The Panel notes that Complainant’s Annex O includes several e-mail communications with Respondent where Respondent indicates that it has removed the logo from the resolving website and will be selling the domain name. Additionally, the e-mail progression results in Respondent’s encouraging Complainant to notify Respondent if Complainant wishes to make a bid on the domain name. Panels have previously found that offering to sell a confusingly similar domain name to a Complainant indicates bad faith use and registration. See Yahoo! Inc. v. Wooyoun Cho, FA 146934 (Nat. Arb. Forum April 16, 2003) (“Respondent acted in bad faith when he offered to sell the domain name to Yahoo for more than his documented out-of-pocket expenses.”). The Panel finds accordingly, and notes as well that Respondent neglected to accept Complainant’s offer to purchase the disputed domain name for the registration reimbursement price of $10.99.
Complainant next asserts that Respondent uses the <yahoocityads.com> domain name to capitalize on the fame of the YAHOO! mark in order to intentionally attract Internet users to Respondent’s website, for commercial gain. Respondent intends to create a likelihood of confusion with Complainant and the YAHOO! mark as to the source or affiliation of Respondent and Respondent’s resolving website. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel wrote, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” In the present case Respondent uses a confusingly similar domain name to resolve to a website that displays links that the panel assumes earns revenue for Respondent. The Panel therefore finds that Respondent registered and is using the <yahoocityads.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant additionally contends that Respondent had actual notice of Complainant and Complainant’s YAHOO! mark at the time Respondent registered the disputed domain name. Complainant points out that Respondent did not register the disputed domain name until March 26, 2013, whereas Complainant had been using the YAHOO! mark since1994. Additionally, Complainant assures the Panel that its YAHOO! mark is famous and is used by online consumers throughout the world to identify and distinguish Complainant’s website and services from goods and services of others. The Panel agrees with Complainant’s contentions that Respondent knew about Complainant’s rights in the YAHOO! mark at the time it registered the disputed domain name. See Yahoo! Inc. v. Butler, (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”).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used or held the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <yahoocityads.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 16, 2014
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