Taboola.com Ltd. v. Fusberta Fraser
Claim Number: FA1810001813357
Complainant is Taboola.com Ltd. (“Complainant”), represented by Eric Misterovich of Revision Legal, PLLC, Michigan, USA. Respondent is Fusberta Fraser (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trc-taboola.com>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on October 24, 2018; the Forum received payment on October 24, 2018.
On October 24, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <trc-taboola.com> domain name (the “Domain Name”) is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 October 25, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of November 14, 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@trc-taboola.com. Also on October 25, 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 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Since its founding in 2007, Complainant has been building the world’s largest and most advanced discovery platform, delivering personalized recommendations to over one billion users per month on many of the web’s most innovative and highly-visited websites. Complainant asserts rights in the TABOOLA mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,481,994 registered Aug. 5, 2008). Respondent’s Domain Name is confusingly similar to Complainant’s mark because it includes Complainant’s entire mark plus the letters “trc,” a hyphen, and the “.com” generic top-level domain (gTLD).
Respondent lacks rights and legitimate interests in the Domain Name. Complainant has not licensed, authorized, or otherwise permitted Respondent to use the TABOOLA mark in any way, and it is not commonly known by the Domain Name. Further, Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, the Domain Name resolves to a blank page; Respondent is not making an active use of it.
Respondent registered and uses the Domain Name in bad faith. It uses the name to divert Internet users to its own blank webpage, which disrupts Complainant’s business and creates a likelihood of confusion as to sponsorship, affiliation and source. Further, Respondent had actual and/or constructive notice of Complainant’s rights in the mark prior to registering the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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.”).
The Panel finds as follows with respect to the matters at issue in this proceeding.
Respondent’s Domain Name is confusingly similar to Complainant’s mark, as it incorporates the mark verbatim, altering it only by adding the letters “trc,” a hyphen, and the gTLD “.com.” These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark).
For the reasons discussed above, the Panel finds that the Domain Name is identical or confusingly similar to the TABOOLA mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) it is not affiliated with, nor does it have permission from Complainant to use the TABOOLA mark, (ii) it is not commonly known by the Domain Name, and (iii) it is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because it resolves to a web site that is completely blank; Respondent is not making any active use of it. These allegations are supported by competent evidence.
Complainant states that Respondent is not affiliated with it in any way, and that it has never licensed or authorized Respondent to use its TABOOLA mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
According to the information furnished to The Forum by the registrar, NameCheap, Inc., the registrant of the Domain Name is “Fusberta Fraser.” This name bears no resemblance to the Domain Name. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complaint Annex L is a screenshot of the web page resolving from the Domain Name. Except for the Domain Name and a number of labels printed across the top of the page, none of which has any apparent connection to Respondent’s name or to any particular matter, it is completely blank. Use of a domain name to operate a blank page has often been held not to qualify as a bona fide offering of goods and services within the meaning of Policy ¶ 4(c)(i) or as a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct;
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s web site or location or of a product of service on respondent’s web site or location.
The evidence of Respondent’s use of the Domain Name discussed above in connection with the rights or legitimate interests analysis also supports a finding of bad faith use and registration. The Domain Name is not only confusingly similar to Complainant’s mark, it is almost identical to <trc.taboola.com>, the domain name which Complainant uses to host its principal business web site. From this it is obvious that Respondent intentionally registered and is using the Domain Name to divert Internet users seeking Complainant’s web site to its blank web page. This disrupts and injures Complainant’s business in that Complainant, as one of the world leaders in content delivery, would not be expected to permit its domains to resolve to blank pages. The Policy recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a domain to divert Internet traffic intended for a complainant has been held to evidence bad faith even if the respondent is not in the strictest sense of the word a competitor of the complainant, as envisioned by Policy ¶ 4(b)(iii). PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)).
Moreover, Respondent registered the Domain Name on August 28, 2018. See, Complaint Annex E. It was not actively using the Domain Name when the Complaint was filed, and there is no evidence that it has ever made an active use of it since the registration date. Considering the nonexclusive nature of Policy ¶ 4(b), passive holding of a domain name has often been held to be evidence of bad faith. 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).”), Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).
Finally, in light of the famous and distinctive nature of the TABOOLA mark, and the close similarity between Complainant’s TABOOLA mark and its <trc.taboola.com> domain name on the one hand and Respondent’s Domain Name on the other, it is obvious that Respondent had actual knowledge of Complainant’s rights in the mark when it registered the Domain Name. Again, considering the nonexclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s mark has often been held to be evidence of bad faith. 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).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trc-taboola.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
November 20, 2018
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