Taboola.com Ltd. v. Whois privacy protection service / Internet Invest, Ltd. dba Imena.ua
Claim Number: FA1912001876393
Complainant is Taboola.com Ltd. (“Complainant”), represented by Ezra Katzen of Taboola.com Ltd.’s Corporate Counsel and Secretary, Israel. Respondent is Whois privacy protection service / Internet Invest, Ltd. dba Imena.ua (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <taboola.news>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 23, 2019; the Forum received payment on December 23, 2019.
On December 24, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <taboola.news> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 December 30, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 21, 2020 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@taboola.news. Also on December 30, 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 January 22, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 is a website discovery platform that delivers personalized recommendations to users every month on the web’s most innovative and highly-visited sites. Complainant has rights in the trademark TABOOLA through its use in commerce since 2007 and its trademark registration with the United States Patent and Trademark Office (“USPTO”) in 2008. Complainant also owns a United States Trademark Registration for the mark TABOOLA NEWSROOM and it uses the phrase TABOOLA NEWS on its website at <www.taboola.com>. Respondent’s <taboola.news> domain name, registered on June 29, 2017, is identical or confusingly similar to Complainant’s mark as it includes the TABOOLA mark in its entirety, merely adding the “.news” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <taboola.news> domain name. Respondent is not commonly known by the disputed domain name and Respondent is not a licensee or authorized to use the Complainant’s TABOOLA marks in any manner. In addition, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <taboola.news> domain name to redirect users to Respondent’s news website that directly competes with Complainant’s business, especially its TABOOLA NEWS service.
Respondent registered and uses the <taboola.news> domain name in bad faith. Respondent’s disputed domain name resolves to a news webpage which will confuse Internet users as to Complainant’s affiliation with Respondent. Further, Respondent had actual or constructive knowledge of Complainant’s rights in the TABOOLA mark prior to its registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 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”).
Complainant asserts rights in the TABOOLA mark based on registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) Complainant provides copies of its registration of the TABOOLA and TABOOLA NEWSROOM marks with the USPTO. Accordingly, the Panel finds that Complainant has established rights in the TABOOLA mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <taboola.news> domain name is identical or confusingly similar to the Complainant’s mark as it includes the TABOOLA mark in its entirety, adding the “.news” gTLD. Mere addition of a gTLD does not distinguish a domain name for purposes of Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). See also Weight Watchers International, Inc. v. ashok ashok et al., FA 1775858 (Forum Apr. 1, 2018) (weightwatchers.news held confusingly similar to the Complainant’s mark where “the descriptive term ‘news,’ … does not distinguish the domain name from Complainant’s protected mark”). The Panel therefore finds that the disputed domain name is identical and/or confusingly similar to the TABOOLA mark under Policy ¶ 4(a)(i).
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). Should it succeed in that effort, the burden then shifts to Respondent to show that it does have 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 contends that Respondent lacks rights or legitimate interests in the <taboola.news> domain name. Specifically, Complainant argues that Respondent is not commonly known by the disputed domain name and Respondent is not a licensee or authorized to use Complainant’s TABOOLA mark. In considering this issue, WHOIS information may be used to determine whether a respondent is or is not commonly known by the disputed domain name 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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes that the WHOIS information for the disputed domain name lists the registrant as “Whois privacy protection service” and “Internet Invest, Ltd. dba Imena.ua,” and there is no other evidence to suggest that Respondent was authorized to use the TABOOLA mark. Therefore, in the absence of a Response or other submission by the Respondent, the Panel finds no evidence that Respondent is commonly known by the disputed domain name per ¶ 4(c)(ii).
In addition, Complainant argues that Respondent uses the <taboola.news> domain name to redirect users to Respondent’s competing website. Use of a disputed domain name to offer competing products and services may not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) & (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).”) Complainant submits evidence that Respondent’s disputed domain name resolves to a website with news and advertising content that appears deceptively similar to Complainant’s own products and services. The Panel finds that this use of the <taboola.news> domain name to offer competing services is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).
Complainant argues that Respondent registered and uses the <taboola.news> domain name in bad faith as Respondent had actual or constructive knowledge of Complainant’s rights in the TABOOLA mark prior to its registration of the disputed domain name. Actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize constructive notice as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); 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.) Complainant asserts the strong reputation of its TABOOLA mark and provides a signed Declaration by its Corporate Counsel & Secretary stating, in part, that “Complainant is the world’s leading content discovery platform, serving 450B recommendations to over 1B unique visitors each month” and that “The global ‘reach’ of Taboola as measured by Comscore is 41.5%, ahead of Facebook and second only to Google. Taboola’s US reach, at 83.9%, leads all others including Google.” It further argues that Respondent’s use of the well-known TABOOLA mark to display news content similar to Complainant demonstrates Respondent had actual knowledge of Complainant’s rights in the TABOOLA mark prior to registering and using the disputed domain name. In the absence of any contrary evidence by the Respondent, the Panel agrees with Complainant and finds it more likely than not that Respondent had actual knowledge of the TABOOLA mark at the time it registered the <taboola.news> domain name.
Complainant next argues that Respondent registered and uses the <taboola.news> domain name in bad faith as Respondent’s disputed domain name resolves to a page displaying content similar to Complainant’s that will confuse Internet users as to Complainant’s affiliation with Respondent. A respondent’s use of a disputed domain name to display content similar to a complainant’s is evidence of bad faith passing off under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”) Complainant provides screenshots of the webpage that resolves from Respondent’s disputed domain name and this displays news and advertising content similar to Complainant’s content. Therefore, the Panel finds that Respondent registered and uses the disputed domain name to pass itself off as Complainant in bad faith 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 <taboola.news> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: January 23, 2020
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