Yahoo Holdings, Inc. v. Dean Jones / Southland Business Development Partnership
Claim Number: FA1706001737515
Complainant is Yahoo Holdings, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is Dean Jones / Southland Business Development Partnership (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoogogo.com>, registered with Tucows Domains Inc.
The undersigned certifies that he or she 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 27, 2017; the Forum received payment on June 27, 2017.
On June 28, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <yahoogogo.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 June 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2017 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@yahoogogo.com. Also on June 28, 2017, 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.
A timely Response was received and determined to be complete on July 17, 2017.
On July 19, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <yahoogogo.com> domain name is confusingly similar to Complainant’s YAHOO mark.
2. Respondent does not have any rights or legitimate interests in the <yahoogogo.com> domain name.
3. Respondent registered and uses the <yahoogogo.com> domain name in bad faith.
B. Respondent
1. Respondent’s <yahoogogo.com> domain name is not being used to represent YAHOO!.
2. Respondent is using the <yahoogogo.com> domain name as a “generic dictionary name” for a community website.
3. Respondent’s <yahoogogo.com> domain name is not disrupting Complainant’s business.
Complainant holds a registration for its well-known YAHOO! mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,040,222, registered Feb. 25, 1997).
Respondent registered the <yahoogogo.com> domain name on October 28, 2016, and uses the resolving page for a commercial website that features affiliate links and pay-per-click ads, and solicits donations.
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.
The Panel finds that Complainant has established rights in the YAHOO! mark for purposes of Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <yahoogogo.com> domain name is confusingly similar to Complainant’s mark as it contains the dominant portion of Complainant’s mark, and adds “gogo” along with the gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds that Respondent’s <yahoogogo.com> domain name is confusingly similar to Complainant’s YAHOO! mark.
The Panel finds that Complainant has satisfied Policy ¶4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 (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 (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 or legitimate interests in the disputed domain name. Respondent identifies itself as Dean Jones, from the Southland Business Development Partnership Corporation. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the YAHOO! mark. Complainant alleges that Respondent is not affiliated with Complainant in any way, nor has Complainant given Respondent permission to use the mark in a domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant further alleges that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant provides a screenshot showing Respondent uses the disputed domain name in connection with a commercial website that features affiliate links and pay-per-click ads, and solicits donations. Using a confusingly similar domain name to park hyperlinks does not constitute a bona fide offering of goods or services. The Panel notes that some of the links are job-related, as alleged by Respondent. However, Respondent is not entitled to use Complainant’s trademark to divert traffic to its postings. See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum August 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business). The Panel finds that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant also claims that Respondent offered to sell the disputed domain name to Complainant when it contacted Respondent about transferring it. While Respondent indicates that it may have been willing to transfer the disputed domain name at one time, the Panel finds that there was no specific offer and certainly no meeting of the minds, and therefore declines to make a finding on this issue.
The Panel finds that Complainant has satisfied Policy ¶4(a)(ii).
Complainant argues that Respondent has a pattern of registering domain names in bad faith, which supports a finding of bad faith in this case. Complainant provides evidence of Respondent’s other registered domain names that contain famous marks appended by the term “gogo,” such as <amazongogo.com>. The Panel finds that this is clear evidence that Respondent is targeting famous trademarks in a pattern of bad faith registration, and that there is bad faith in the registration and use of the <yahoogogo.com> domain name. See Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).
Complainant further argues that Respondent registered and uses the <yahoogogo.com> domain name in bad faith by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, in order to commercially benefit by offering services unrelated to Complainant. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum August 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). The Panel finds that Respondent uses the disputed domain name to host a website that displays links for its own commercial gain, in bad faith under Policy ¶ 4(b)(iv).
Complainant also claims that Respondent had actual knowledge of Complainant’s YAHOO! mark, which also supports a finding of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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). Complainant contends that Respondent must have had actual knowledge of the mark given the fame of the YAHOO! mark and Respondent’s pattern of cybersquatting. The Panel agrees with Complainant and finds that Respondent had actual knowledge of Complainant’s mark, further demonstrating bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied 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 <yahoogogo.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 20, 2017
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