Yellowpages.com LLC v. FRANK-RUNE SELLEVOLL
Claim Number: FA1407001569262
Complainant is Yellowpages.com LLC (“Complainant”), represented by Tiffani D. Otey of Womble Carlyle Sandridge & Rice PLLC, North Carolina, USA. Respondent is FRANK-RUNE SELLEVOLL (“Respondent”), Norway.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yp-us.com>, registered with ENOM, INC.
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 July 11, 2014; the National Arbitration Forum received payment July 11, 2014.
On July 14, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <yp-us.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. verified that Respondent is bound by the ENOM, INC. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 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@yp-us.com. Also on July 17, 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 August 11, 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.
Complainant makes the following contentions in this proceeding:
Complainant uses the YP mark to promote advertisements and telephone number directories. Complainant protected its YP mark with USPTO registration(e.g., Reg. No. 4,400,504 registered September 10, 2013). The <yp-us.com> domain name merely affixes the generic top-level domain ("gTLD") “.com,” and the geographic indication “-us” onto the YP mark.
Respondent has no rights or legitimate interests in this domain name. First, Respondent has never been known by the domain name. Second, Respondent uses this domain name to phish for the personal information of Internet users by sending e-mails from “@yp-us.com” accounts that give the impression the recipient is being contacted by Complainant.
Respondent’s use and registration of the <yp-us.com> domain name are in bad faith. First, Respondent is disrupting Complainant’s enterprise by scamming Internet users with a phishing scheme. Further, Respondent had to have actual notice of Complainant’s rights when registering and using the domain name because the <yp-us.com> domain name is used by Respondent to represent itself as Complainant.
Respondent did not submit a Response in this proceeding:
Respondent did not submit a response.
The Panel notes that Respondent registered the disputed domain name June 23, 2014.
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests in the mark or domain name.
Respondent registered a domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and used the domain name containing Complainant’s protected mark 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.
Identical or Confusingly Similar
Complainant uses the YP mark to promote advertisements and telephone number directories. Complainant protected the YP mark with USPTO registration (e.g., Reg. No. 4,400,504 registered September 10, 2013). The Panel agrees that this USPTO registration is sufficient evidence of Complainant’s rights, irrespective of where Respondent resides. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant notes that the <yp-us.com> domain name merely affixes the generic top-level domain ("gTLD") “.com,” and the geographic indication “-us” onto the YP mark. The Panel finds confusing similarity between the <yp-us.com> domain name and YP mark in that a mere gTLD and geographic descriptor are not enough to distinguish a domain name from a mark in any meaningful way. See, e.g., Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to the complainant’s famous mark).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and 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 claims that Respondent has never been known by the domain name. The Panel notes that Respondent listed “FRANK-RUNE SELLEVOLL” as the registrant of record for the disputed domain name’s WHOIS information. The Panel agrees that the information available does not tend to suggest that Respondent has ever been known as the disputed <yp-us.com> domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Second, Complainant claims that Respondent uses this domain name to phish for the personal information of Internet users by sending e-mails from “@yp-us.com” accounts that give the impression the recipient is being contacted by Complainant. See Compl., at Attached Ex. 11. The Panel agrees that this petty scheme of passing off is intolerable under the Policy, and as such Respondent has provided neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use for this domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
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
Complainant claims Respondent is disrupting Complainant’s enterprise by scamming Internet users with a phishing scheme. The Panel again notes the domain name is used to pressure Internet users into providing Respondent with copies of photo IDs, passports, and driver’s licenses. See Compl., at Attached Ex. 11. The Panel agrees that Respondent’s operations are without any value, merit, or legitimacy and as such do little more than disrupt Complainant’s business and swindle Internet users. See, e.g., Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). The Panel here agrees that by parading as Complainant through e-mail, Respondent has likewise proven itself to be a bad faith user of this domain name within the meaning of Policy ¶ 4(b)(iii).
Further, Complainant argues that Respondent had to have actual notice of Complainant’s rights when registering and using the domain name because the <yp-us.com> domain name is used by Respondent to represent itself as Complainant. As such, the Panel agrees that Respondent actually knew of Complainant’s rights in the mark and as such Respondent’s conduct supports findings of bad faith registration and use under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used 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 the requested relief shall be GRANTED.
Accordingly, it is Ordered that the <yp-us.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 21, 2014.
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