Yext, Inc. v. Clearview Domains
Claim Number: FA1904001839573
Complainant is Yext, Inc. (“Complainant”), represented by Vanessa A. Ignacio of Lowenstein Sandler LLP, USA. Respondent is Clearview Domains (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yext.tech> registered with GoDaddy.com, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 18, 2019; the Forum received payment on April 18, 2019.
On April 19, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <yext.tech> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 24, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2019 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@yext.tech. Also on April 24, 2019, 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 May 16, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Complainant states that it is the leading provider of digital knowledge management technology and advertising solutions. Its platform and technology give companies control over their online brand experiences throughout maps, apps, search engines, voice assistants, and other intelligent services by connecting the companies’ information to platforms used by their customers. Thousands of businesses use Complainant’s platform and technology to manage their digital knowledge in order to boost brand engagement, drive foot traffic, and increase sales. Complainant has rights in the YEXT mark through its trademark registration in the United States in 2010.
Complainant alleges that the disputed domain name is identical to its YEXT mark as it incorporates the mark in its entirety while adding the “.tech” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not licensed or otherwise authorized to use Complainant’s YEXT mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a parked webpage that features pay-per-click links and offers the domain name for sale. Further, Respondent stated that it planned to use the disputed domain name to solicit investors and shareholders to join a class action lawsuit against Complainant which is not a legitimate noncommercial or fair use. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith because the name resolves to a parked page that offers to sell the disputed domain name. Respondent uses the disputed domain name to redirect users to unrelated websites through click-through links. Respondent’s alleged attempt to encourage litigation also disrupts Complainant’s business. Further, Respondent had actual knowledge of Complainant’s mark and attempts to trade off of the reputation of the YEXT mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark YEXT and uses it to market digital knowledge management technology and advertising solutions.
Complainant’s rights in its marks date back to at least 2010.
The disputed domain name was registered in 2018.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The resolving website offered to sell the disputed domain name for a price well above out-of-pocket costs. Further, it contains pay-per-click advertisements to products and services that are not related to those of Complainant.
As there is no written evidence regarding any actual or purported intent to use the disputed domain name to solicit investors and shareholders to join class action lawsuits against Complainant, the Panel will not consider this allegation any further.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain name is identical to Complainant’s mark because it incorporates the mark in its entirety adding only a gTLD. Incorporating a complainant’s mark in its entirety and adding only a gTLD may be insufficient to defeat a finding of confusing similarity under Policy ¶ 4(a)(i). See 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). In the present case, the gTLD describes Complainant’s business, which exacerbates the similarity between the domain name and the mark. See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA 1732665 (Forum July 1, 2017) (“Appending a top-level domain that describes a complainant’s business adds to confusing similarity.”). Therefore, the Panel finds that the <yext.tech> domain name is identical to Complainant’s YEXT mark under Policy ¶ 4(a)(i).
Respondent is not authorized or permitted to use Complainant’s YEXT mark in any way. Respondent is not commonly known by the disputed domain name: where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson,FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Here, the WHOIS of record identifies Respondent as “Clearview Domains.” Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to resolve to a parked page that offered the domain name for sale for $3,700, which is well above out-of-pocket costs. Using a parked page to offer a disputed domain name for sale may not be a bona fide offering or a legitimate noncommercial or fair use. See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”). Therefore, the Panel finds that Respondent makes no bona fide offerings or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Further, Respondent uses the parked page at the resolving website to promote pay-per-click hyperlinks advertising products and services not related to Complainant. Advertisements that divert traffic to third-party websites do not constitute a bona fide offering of goods or services, or a noncommercial or fair use per Policies ¶¶ 4(c)(i) & (iii). See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). The Panel finds that too this is not bona fide offerings or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
For all the reasons given above, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent offered to sell the disputed domain name for a price well above out-of-pocket costs. This may evince bad faith 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).”); see also loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (finding that where a respondent’s only employment of a substantially identical domain name is to attempt to sell the name, there exist sufficient grounds to find the respondent registered and used the name in bad faith per Policy ¶ 4(b)(i)). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Further, again as already noted, the resolving website displays pay-per-click links to unrelated products and services; Respondent likely profits from those links. Such use of a disputed domain name may be bad faith under Policy ¶ 4(b)(iv). See Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links); see also Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”). Therefore, the Panel finds bad faith registration and use also under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yext.tech> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 16, 2019
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