Oath Inc. v. Ultrashield Technology Pvt. ltd. / ultrashield technology
Claim Number: FA1910001866013
Complainant is Oath Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Ultrashield Technology Pvt. ltd. / ultrashield technology (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at-issue are <yahooassist.com>, and <yahoosupport.net>, and <aolhelpnumber.com>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 9, 2019; the Forum received payment on October 9, 2019.
On October 10, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <yahooassist.com>, <yahoosupport.net>, and <aolhelpnumber.com> 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 October 11, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org. Also on October 11, 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 November 5, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Complainant contends as follows:
Complainant is the owner of a web portal and online service that provides a variety of Internet-based services, including email and search engine services. Complainant has rights in the both the AOL and YAHOO! through its registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <yahooassist.com>, <yahoosupport.net>, and <aolhelpnumber.com> domain names are confusingly similar to Complainant’s AOL and/or YAHOO! marks as Respondent incorporates either the AOL or YAHOO! mark and adds the generic terms of “assist,” “support,” or “help number” along with either the “.com” or “.net” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interest in the <yahooassist.com>, <yahoosupport.net>, and <aolhelpnumber.com> domain names as Respondent is not commonly known by the disputed domain names. Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the at-issue domain names to promote technical support numbers in competition with Complainant. Respondent also engages in a phishing scheme in an attempting to obtain internet users personal information. Furthermore, Respondent has attempted to offer to sell the disputed domain names to Complainant for $50,000.00.
Respondent registered and used the <yahooassist.com>, <yahoosupport.net>, and <aolhelpnumber.com> domain names in bad faith. Respondent attempts to sell the disputed domain names to Complainant for more than out-of-pocket costs. Respondent also attempts to divert internet traffic to Respondent’s competing domain names. Furthermore, Respondent engages in a phishing scheme. Lastly, Respondent had actual knowledge of Complainant’s rights in the AOL and YAHOO! marks due to the long standing use and fame of the marks.
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the AOL and YAHOO! marks through its registration of such marks with the USPTO.
Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the AOL and YAHOO! trademarks.
Respondent uses the at-issue domain names to address websites which offer services that compete with services offered by Complainant and to phish for the private information of website visitors.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registrations for its AOL and YAHOO! marks evidences Complainant’s rights in such marks for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Additionally, the at-issue domain names each contain Complainant’s entire AOL or YAHOO! trademark followed by either the generic term “help number” or the generic terms “assist” or “support,” respectively, and conclude with the top level domain name “.com” or “.net.” The differences between the at-issue <yahooassist.com>, <yahoosupport.net>, and <aolhelpnumber.com> domain names and Complainant’s trademarks are insufficient to distinguish any of the at-issue domain names from Complainant’s relevant trademarks for the purposes of the Policy. In fact, the inclusion of the terms “assist,” “support” and “help number” in the domain names enhances any confusion between the domain names and Complainant’s trademarks as the terms suggest the customer service/help aspect of Complainant’s business. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <yahooassist.com>, <yahoosupport.net>, and <aolhelpnumber.com> domain names are each confusingly similar to Complainant’s AOL or YAHOO! trademarks. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also, Caterpillar Inc. v. Greg Poole d/b/a Industrial Tests, Inc., FA 1303230 (Forum March 12, 2010) (finding the domain name <caterpillarservices.com> confusingly similar to Complainant’s CATERPILLAR mark because “It is well established that combining descriptive or generic words with another party’s trademark in a domain name will not normally serve to avoid confusion between the domain name and the trademark. This is particularly so when the descriptive or generic word has an obvious relationship to the trademark owner’s business, products, or services. . . . The Panel is of the view that an average person seeing the Primary Domain Name [<caterpillarservices.com>] would likely believe that those words refer to services offered by Complainant.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Ultrashield Technology Pvt. Ltd / ultrashield technology” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by any of the <yahooassist.com>, <yahoosupport.net>, or <aolhelpnumber.com> domain names. The Panel therefore concludes that Respondent is not commonly known by any at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s domain names address websites that offer competing technical support services for Complainant’s products. Respondent’s use of the confusingly similar domain names for the unauthorized exploitation of Complainant’s trademarks in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy¶ 4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain names were each registered and used in bad faith. As discussed below without limitation, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii) with regard to each domain name.
First, Respondent offered to sell the at-issue domain names to Complainant. Respondent’s offer to sell the domain names for $50,000, an amount in excess of Respondent’s out-of-pocket costs related to such domain names, indicates Respondent’s bad faith pursuant to 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).”).
Next, Respondent uses the <yahooassist.com>, <yahoosupport.net>, and <aolhelpnumber.com> domain names to address websites designed to exploit the trademark value of such domain names in furtherance of promoting services that directly compete with those services offered by Complainant. Respondent’s use of the domain names to direct internet traffic to competing webpages shows Respondent’s bad faith registration and use of each of the at-issue domain names per Policy ¶¶ 4(b)(iii) and (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
Furthermore, Respondent uses the <yahooassist.com>, <yahoosupport.net>, and <aolhelpnumber.com> domain names to engage in a phishing scheme wherein Respondent obtains third parties personal information such as passwords and user information. This too shows that Respondent is acting in bad faith under Policy ¶ 4(a)(iii). See United States Postal Service v. kyle javier, FA 1787265 (Forum June 12, 2018) (“Use of a domain name to phish for Internet users’ personal information is evidence of bad faith.”).
Finally, Respondent had actual knowledge of Complainant’s rights in the AOL and YAHOO! marks when it registered the <yahooassist.com>, <yahoosupport.net>, and <aolhelpnumber.com> domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademarks, from the fact that Respondent registered three domain names containing two of Complainant’s trademarks; from Respondent’s use of Complainant’s trademarks on the websites addressed by the at-issue domain names; and from Respondent’s use of the domain names to compete with Complainant. The fact that Respondent had actual knowledge of Respondent’s domain name when it registered the at-issue domain names indicates bad faith registration and use of such domain names pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahooassist.com>, and <yahoosupport.net>, and <aolhelpnumber.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 5, 2019
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