Yoti Holding Ltd v. Whois Privacy Protection Service by onamae.com
Claim Number: FA1902001829582
Complainant: Yoti Holding Ltd of London, United Kingdom.
Complainant Representative: Aaron B Newell of London, United Kingdom.
Respondent: Whois Privacy Protection Service by onamae.com of Shibuya-ku, Tokyo, International, JP.
Respondent Representative: None
REGISTRIES and REGISTRARS
Registries: DotSite Inc.
Registrars: GMO Internet, Inc. d/b/a Onamae.com
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Examiner in this proceeding.
Terry F. Peppard, as Examiner.
Complainant submitted: February 13, 2019
Commencement: February 14, 2019
Default Date: March 1, 2019
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") to provide to Respondent notice of the commencement of this proceeding and an opportunity to contest the allegations of the Complaint filed herein.
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
URS Procedure 1.2.6. requires that, to obtain an order that a domain name should be suspended, Complainant must make out a prima facie case, proven by clear and convincing evidence, for each of the following three elements:
1. The registered domain name is identical or confusingly similar
to a mark for which Complainant holds a valid national or regional registration and that it is in current use;
2. Respondent has no right to or legitimate interest in the domain name; and
3. The same domain name was registered and is being used by
Respondent in bad faith.
Identity or Confusing Similarity
In its Complaint, Complainant shows that it holds a valid registration for the YOTI trade mark, which is on file with the European Union Intellectual Property Office as Registry No. 1294482, registered as of November 20, 2015, in International Classes 09 [downloadable software and application software for the scanning and downloading of biometric data, etc.], 16 [printed matter and publications, etc.], 20 [identification plates, etc.], 24 [labels, etc.], 35 [business services and data management services, etc.], 39 [physical storage of electronically stored data, etc.], 41 [publication of material accessible from databases, etc.], 42 [providing temporary use of on-line non-downloadable software and application software for the scanning and downloading of biometric data, etc.] and 45 [identity verification and validation services, etc.], and that the mark is in current use. Respondent does not dispute any of this.
It also appears from the pertinent WHOIS record that Respondent registered the domain name <yoti.site> on January 3, 2019. Again Respondent does not deny this. Accordingly, Complainant’s rights in its YOTI mark are senior in time to any rights that Respondent might claim in the domain name.
The generic Top Level Domain “.site” may be disregarded for purposes of assessing whether the challenged domain name is identical or confusingly similar to Complainant’s YOTI mark. This is because every domain name requires a gTLD. It is therefore incontestable that the <yoti.site> domain name is substantively identical and confusingly similar to Complainant’s mark. For this reason, and because there is no dispute in the record that Complainant holds a valid registration for the mark and that it is in current use, we find that Complainant has met the proof requirements of URS Procedure 1.2.6.1.
Registrant’s Rights or Interests
Complainant alleges, and Respondent does not deny, that Respondent has not been commonly known by the <yoti.site> domain name, that Respondent has not been authorized by Complainant to use its YOTI mark, whether in a domain name or otherwise, that Respondent employs the domain name to impersonate Complainant online, that the website resolving from the domain name features suggestive adult content, that Respondent seeks to profit financially from the operation of that website, and that Respondent has concealed its identity and location in the course of registering the domain name.
On these undenied facts, we find that Respondent has neither any rights to nor any legitimate interests in the <yoti.site> domain name.
Respondent’s Bad Faith
Under the URS Procedure, essentially the same considerations that establish that Respondent has no rights to or legitimate interests in the <yoti.site> domain name are also pertinent to an analysis of whether the domain name has been registered and is being used in bad faith. See URS Procedure 5.7. Accordingly, a finding of bad faith in the registration and use of the domain name follows directly from the discussion above of the absence of any rights to or legitimate interests accruing to the benefit of Respondent from the facts presented in the Complaint filed in this proceeding.
We find from a review of the record that the Complaint was not brought in an abuse of this proceeding and that it contains no material falsehoods.
Upon review of Complainant’s uncontested submissions, we therefore find that Complainant has proven all three required elements of the URS by clear and convincing evidence. We therefore Order that the <yoti.site> domain name be SUSPENDED for the duration of its registration.
Terry F. Peppard, Examiner
Dated: March 4, 2019
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