DECISION

 

Taboola.com Ltd. v. Domain Manager / samirnet -domain names for sale

Claim Number: FA1710001752333

PARTIES

Complainant is Taboola.com Ltd. (“Complainant”), represented by Eric Misterovich of Revision Legal, Michigan, USA.  Respondent is Domain Manager / samirnet -domain names for sale (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <taboola.org>, registered with !#No1Registrar, LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 5, 2017; the Forum received payment on October 5, 2017.

 

On October 12, 2017, !#No1Registrar, LLC confirmed by e-mail to the Forum that the <taboola.org> domain name is registered with !#No1Registrar, LLC and that Respondent is the current registrant of the name.  !#No1Registrar, LLC has verified that Respondent is bound by the !#No1Registrar, 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 October 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 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@taboola.org.  Also on October 12, 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.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On November 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, Taboola.com Ltd., is a content discovery platform that delivers personalized recommendations to over one billion Internet users every month. Complainant uses its TABOOLA mark to promote its services and registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,481,994, registered Aug. 5, 2008). See Compl. Annex E. Respondent’s <taboola.org> is identical to Complainant’s mark because it appends the generic top-level domain

(“gTLD”) “.org” to the fully incorporated TABOOLA mark.

2.    Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its mark in any fashion, and Respondent is not commonly known by the <taboola.org> domain name, as the WHOIS record identifies “Domain Manager Samirnet – domain names for sale” as the Registrant of the domain name. See Compl. Annex K. Respondent is not using the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, <taboola.org> resolves to a webpage featuring pay-per-click advertisements. See Compl. Annex L. Further, Respondent is currently offering the domain name for sale for $688.00. Id.

3.    Respondent registered and is using the disputed domain name in bad faith. Respondent includes a link on the website to sell the domain name to the general public for $688.00. See Compl. Annex L. Further, Respondent attempts to disrupt the business of Complainant —under Policy ¶ 4(b)(iii)—by offering competing services. Respondent is also attempting to attract Internet traffic and commercially benefit from the goodwill of the TABOOLA mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its parked website by featuring pay-per-click hyperlinks that compete with Complainant’s business. Id. Finally, Respondent passively holds the domain name without any indication of demonstrable preparations to actively use the domain name. Id.

 

B.   Respondent

1.    Respondent did not submit a Response.

 

FINDINGS

1.    Respondent’s <taboola.org> domain name is confusingly similar to Complainant’s TABOOLA mark.

2.    Respondent does not have any rights or legitimate interests in the <taboola.org> domain name.

3.    Respondent registered or used the <taboola.org> domain name in bad faith.

 

DISCUSSION

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.

 

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 (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 and/or Confusingly Similar

Complainant contends it registered its TABOOLA mark with the USPTO (e.g. Reg. No. 3,481,994, registered Aug. 5, 2008). See Compl. Annex E. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Therefore, the Panel holds that Complainant has rights in the TABOOLA mark.

 

Complainant also contends that Respondent’s <taboola.org> domain name is identical to Complainant’s mark because it appends the gTLD “.org” to the fully incorporated TABOOLA mark. The appendage of a gTLD to a fully incorporated mark does not sufficiently distinguish a domain name from a mark. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel finds that the disputed domain name is identical to Complainant’s mark.”). As such, the Panel concludes that Respondent’s <taboola.org> domain name is identical to Complainant’s mark for the purposes of 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 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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its TABOOLA mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. 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). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information on the record indicates the registrant as “Domain Manager / samirnet -domain names for sale.” See Compl. Annex K. Accordingly, the Panel holds that Respondent is not commonly known by <taboola.org> under Policy ¶ 4(c)(ii).

 

Further, Complainant alleges that Respondent is not using the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Complainant contends that the <taboola.org> domain name resolves to a webpage featuring pay-per-click advertisements for Complainant’s competitors. Use of a domain name to resolve to a parked webpage that displays competing pay-per-click hyperlinks is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services 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 pursuant to Policy ¶ 4(c)(iii).”). Complainant provided screenshots of the <taboola.org> resolving website which appears to feature competing and unrelated pay-per-click advertisements, such as “Taboola,” “TEST REVCONTENT – LARGEST DISCOVERY NETWORK,” and “Ceramic Coating for Headers.” See Compl. Annex L. As such, the Panel concludes that Respondent hosted a competing parked webpage, and thus does not use the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.

 

Additionally, Complainant contends that Respondent is currently offering to sell the domain name for $688.00. An offer to sell a disputed domain name at a price that exceeds regular fees associated with a domain name transfer can evince a lack of rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”). The Panel notes that the WHOIS registrant information lists “samirnet – domain name for sale.” See Compl. Annex K. The WHOIS registry also lists the domain name as available and advertises that “the owner of the domain you are researching has it listed for sale at $688.” Id. Therefore, the Panel holds that Respondent offers the domain name for sale, indicative of lacking rights and legitimate interests in the domain name.

 

Registration and Use in Bad Faith

Complainant claims that Respondent offers the <taboola.org> domain name for sale. Offering a confusingly similar domain name for sale can evince bad faith registration under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Complainant’s provided screenshot indicates that Respondent includes a link on the website to sell the domain name to the general public for $688.00. See Compl. Annex L. Accordingly, the Panel uses Respondent’s offering of the domain name for sale to the general public as evidence of bad faith registration.

 

Further, Complainant contends that Respondent registered and is using the disputed domain name in bad faith. Respondent attempts to disrupt the business of Complainant —under Policy ¶ 4(b)(iii)—by displaying competing hyperlinks. Use of a domain name’s resolving webpage to feature pay-per-click competing hyperlinks disrupts a Complainant’s business and is evidence of bad faith. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy

¶ 4(b)(iii).”). Here, screenshots of the <taboola.org> resolving website indicate that the site hosts competing and unrelated pay-per-click advertisements for sites such as “Taboola,” “TEST REVCONTENT – LARGEST DISCOVERY NETWORK,” and “Ceramic Coating for Headers.” See Compl. Annex L. Accordingly, the Panel concludes that Respondent is attempting to disrupt Complainant’s business and, therefore, registered and is using the disputed domain name in bad faith.

 

Additionally, Complainant asserts that Respondent’s use of the <taboola.org> resolving website to host competing pay-per-click hyperlinks supports a finding of bad faith under Policy ¶ 4(b)(iv). Complainant alleges that Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the TABOOLA mark. Use of a domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of its website can evince bad faith registration and use. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As such, the Panel holds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).

 

Finally, Complainant claims that Respondent, by using the domain as a parked webpage, inactively holds the domain name, and has not demonstrated any  preparations to actively use the resolving domain. Inactively holding a confusingly similar domain name can evince bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The screenshot confirms this parked use of the resolving domain. See Compl. Annex L. The Panel agrees that Respondent fails to actively use the domain name, and thus registered and uses the domain name in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <taboola.org> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  November 22, 2017