Taboola.com Ltd. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1810001811228
Complainant is Taboola.com Ltd. (“Complainant”), represented by Eric Misterovich of Revision Legal, Michigan, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cdn-taboola.com>, registered with Internet Domain Service BS Corp.
The undersigned certifies that she 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 here as Panelist.
Complainant submitted a Complaint to the Forum electronically October 11, 2018; the Forum received payment October 11, 2018.
On October 12, 2018, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <cdn-taboola.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp verified that Respondent is bound by the Internet Domain Service BS Corp 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 October 15, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 2018, 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@cdn-taboola.com. Also on October 15, 2018, 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 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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’s Contentions in this Proceeding:
Complainant, Taboola.com Ltd., operates the leading online platform for publishers to reach users interested in their content. Complainant has rights in the TABOOLA mark based upon the registration with the United States Patent Office (“USPTO”) (e.g., Reg. No. 3,481,994, registered Aug. 5, 2008). See Compl. Annex E. Respondent’s <cdn-taboola.com> is confusingly similar to Complainant’s mark as Respondent incorporates the entire TABOOLA mark, merely adds the letters “cdn”, a hyphen and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <cdn-taboola.com> domain name. Respondent is not licensed or authorized to use Complainant’s TABOOLA mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the <cdn-taboola.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent fails to make an active use of the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith. Respondent attempts to divert Complainant’s users to Respondent’s own page. Additionally, Respondent fails to make an active use of the disputed domain name. Finally, Respondent had actual and/or constructive knowledge of the TABOOLA mark when it registered and subsequently used the <cdn-taboola.com> domain name.
B. Respondent’s Contentions in this Proceeding:
Respondent did not submit a Response. The Panel notes that Respondent registered the <cdn-taboola.com> domain name August 30, 2018. See Compl. Annex K.
Complainant established rights to and legitimate interests in the mark and disputed domain name that contains in its entirety Complainant’s protected mark.
Respondent has no such rights to or legitimate interests in Complainant’s protected mark and the disputed domain name containing Complainant’s protected mark in its entirety.
Respondent registered a disputed domain name containing Complainant’s protected mark that is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed 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.
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(f), 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 (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 or Confusingly Similar:
Complainant has rights in the TABOOLA mark based upon its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i). Complainant provides copies of its USPTO registrations for the TABOOLA mark (e.g., Reg. No. 3,481,994, registered Aug. 5, 2008). See Compl. Annex E. Therefore, the Panel finds that Complainant has rights in the TABOOLA mark per Policy ¶ 4(a)(i).
Complainant asserts that the <cdn-taboola.com> domain name is confusingly similar to the TABOOLA mark as it contains the mark in its entirety, merely adding the letters “cdn”, a hyphen and the “.com” gTLD. Additions of letters, a hyphen, or a gTLD may not sufficiently negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See AbbVie Inc. v. Season Advertising, S.L., FA1704001727071 (Forum Jun. 12, 2017) (finding confusing similarity where the disputed domain name <abbvie-hcv.com> incorporated complainant’s entire mark and appended “a hyphen, followed by two or three additional letters and the gTLD ‘.com’”). The Panel agrees with Complainant and finds that the <cdn-taboola.com> is confusingly similar to Complainant’s TABOOLA mark under a Policy ¶ 4(a)(i) analysis.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name containing Complainant’s protected mark and the domain name is confusingly similar to Complainant’s 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), then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent has no rights or legitimate interests in <cdn-taboola.com> as Complainant never authorized Respondent to use Complainant’s TABOOLA mark and is not commonly known by the disputed domain name. Where no Response is filed, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports any finding that respondent does not have rights or legitimate interests in the disputed domain name. 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). The Panel notes that Respondent used a privacy service. See Compl. Annex K. As a result, the Panel finds that the WHOIS information of record identifies registrant as “Domain Admin / Whois Privacy Corp.” Id. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Moreover, Complainant argues that Respondent is not using the <cdn-taboola.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make an active use of the disputed domain name. Failure to make active use of a domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum Aug. 7, 2012). In Michelin North, the panel found that inactive use, or “passive holding,” of the disputed domain name by a respondent “permits the inference that [the respondent] lacks rights and legitimate interests in the domain names.” Here, Complainant provides screenshots of the disputed domain name, which resolves to an inactive site, which currently features am “404 Not Found” notice. See Compl. Annex L. The Panel agrees with Complainant that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii).
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 containing in its entirety complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent registered and is using the <cdn-taboola.com> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name and Respondent’s subsequent nonuse of the disputed domain name. Diverting users to a disputed domain name for commercial gain can evidence bad faith registration and use per Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). This Panel notes that Complainant fails to provide any evidence to support this assertion; however, Complainant simply provides a screenshot of the disputed domain name’s resolving website. See Compl. Annex L. Therefore, the Panel finds this sufficient to show that Respondent attempted to commercially benefit from Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Complainant also asserts that Respondent fails to make an active use and is holding passively the domain name. Failure to make an active use of a domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent failed to make an active use of the disputed domain name.”) As noted previously, Complainant provides screenshots of the disputed domain name’s resolving website, which is currently blank and features a “404 Not Found” notice. See Compl,. Annex L. Therefore, the Panel finds that Respondent’s inactive holding or nonuse of the disputed domain name supports findings of bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, Complainant argues Respondent must have had actual and constructive knowledge of Complainant’s TABOOLA mark. The Panel remembers that while constructive notice of a complainant’s mark is insufficient for a finding of bad faith, actual knowledge is sufficient and may be proven through a totality of circumstances pursuant to Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Given Respondent’s use of Complainant’s famous TABOOLA mark and Respondent’s inactive holding of the disputed domain name, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the TABOOLA mark and this supports findings of bad faith under 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 <cdn-taboola.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 22, 2018.
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