Taboola.com Ltd. v. Steven Csepreghi / Taboola Ltd
Claim Number: FA2010001918360
Complainant is Taboola.com Ltd. (“Complainant”), represented by Ezra Katzen, Israel. Respondent is Steven Csepreghi / Taboola Ltd (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <taboolahk.com>, registered with Google 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 26, 2020; the Forum received payment on October 26, 2020.
On October 27, 2020, Google LLC confirmed by e-mail to the Forum that the <taboolahk.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 28, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 17, 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@taboolahk.com. Also on October 28, 2020, 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 18, 2020, 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.
A. Complainant
Complainant contends as follows:
Complainant, Taboola.com Ltd., is the world’s leading content discovery platform.
Complainant has rights in the TABOOLA mark based on registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <taboolahk.com> domain name is confusingly similar to Complainant’s mark because it contains the entire TABOOLA mark and simply adds the letters “hk” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <taboolahk.com> domain name. Respondent is not commonly known by the at-issue domain name and Complainant has not licensed or authorized Respondent to use the TABOOLA mark. Additionally, Respondent’s lack of rights or legitimate interests is evidenced by the fact that the domain name resolves to Complainant’s own website.
Respondent registered and uses the <taboolahk.com> domain name in bad faith. Respondent uses the at-issue domain name to confuse users as to the ownership and affiliation of the domain with Complainant. Additionally, Respondent redirects the at-issue domain name to Complainant’s own website. Furthermore, Respondent has actual and/or constructive knowledge of Complainant’s rights in the TABOOLA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the TABOOLA trademark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the TABOOLA trademark.
Respondent uses the at-issue domain name to redirect internet traffic to Complainant’s official website.
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 shows that it has a USPTO trademark registration for its TABOOLA mark. Complainant’s national registration of its TABOOLA mark is sufficient to demonstrate Complainant’s rights in a mark under 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.”).
Respondent’s <taboolahk.com>domain name contains Complainant’s TABOOLA trademark, followed by the characters “hk” with all followed by a domain name-necessary top-level name, here “.com”. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <taboolahk.com> domain name from Complainant’s TABOOLA trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <taboolahk.com> domain name is confusingly similar to Complainant’s trademark See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”).
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 name. 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 the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Steven Csepreghi / Taboola Ltd” while the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <taboolahk.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <taboolahk.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”); see also, 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));
Additionally, Respondent currently uses the <taboolahk.com> domain name to direct internet traffic to Complainant’s official website. Respondent’s use of the confusingly similar domain name indicates neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <taboolahk.com> domain name was registered and used in bad faith. Although Complainant does not make any contentions that are within the express purview of Policy ¶ 4(b), paragraph 4(b) provisions are purely illustrative of a respondent’s bad faith and not exhaustive. Thus, Respondent’s bad faith may nevertheless be demonstrated by evidence exclusive of that found under Policy ¶ 4(b)(i) by considering any other other bad faith circumstances shown within the record. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). As discussed below without limitation, bad faith circumstances are present in the instant case which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent’s confusingly similar <taboolahk.com> domain name is now used to address Complainant’s official website but may easily shift focus in the future. The trademark laden domain name implies a connection between itself and Complainant where there is none. Importantly, Respondent’s future use(s) of <taboolahk.com> might easily and falsely associate Complainant with any content, email address, or nefarious use conceived by Respondent while on the other hand there is no cognizable good faith use of the domain name that can be garnered from the record. Therefore, the Panel finds that Respondent’s registration and use of the confusingly similar at-issue domain name indicates Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains the complainant’s mark in its entirety, (2) the mark is a coined word, well-known and in use prior to the respondent’s registration of the domain name, and (3) the respondent fails to allege any good faith basis for use of the domain name).
Moreover, Respondent registered <taboolahk.com> knowing that Complainant had trademark rights in the TABOOLA mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of the domain name to direct traffic to Complainant’s genuine website. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <taboolahk.com> domain name in bad faith 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"); see also Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <taboolahk.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 18, 2020
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