Oath Inc. v. Achintya Sharma
Claim Number: FA2102001933811
Complainant is Oath Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Achintya Sharma (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoo-helpcentral.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 26, 2021; the Forum received payment on February 25, 2021.
On March 1, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <yahoo-helpcentral.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 March 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 2021 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@yahoo-helpcentral.com. Also on March 3, 2021, 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 March 29, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the YAHOO! mark acquired through its ownership of its portfolio of service mark registrations described below and the goodwill that it has accrued in the mark through its extensive use on its website located at its website at www.yahoo.com, as well as its other sites operated under the YAHOO! mark.
Complainant submits that its websites are recognized as leading websites on the Internet. In October 2016, Complainant’s website at <www.yahoo.com> ranked number three in the comScore Media Metrix Rankings of the Top 50 Properties in the United States, garnering more than 200 million monthly unique visitors in the United States alone. . In April 2020, Yahoo Mail had 176.3 million monthly unique visitors worldwide and Yahoo News had 188.4M monthly unique visitors worldwide.
Complainant submits that the disputed domain name is confusingly similar to the YAHOO! trademark and service mark in which it has rights arguing that the disputed domain name contains the YAHOO! mark in its entirety, except for the omission of the exclamation point. Complainant submits that this is sufficient to establish confusing similarity. Citing Hoffman La-Roche Inc. v. Hightech Industries, Andrew Browne, D2010-0240 (WIPO March 31, 2010) (“incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark.”).
Complainant adds that the hyphen and the descriptive terms “help” and “central” in the disputed domain name do nothing to abate the confusing similarity because the hyphen may be ignored and the other elements merely describe a means of receiving help, assistance, or support, from Complainant’s support services.
Complainant submits that panels established under the Policy have consistently held the addition of generic or descriptive terms is not sufficient to distinguish a disputed domain name from a complainant’s mark, and additions relating to a complainant’s business actually supports the likelihood of confusion and association between the domain name holder and the trademark owner. See WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9.
Complainant adds that the inclusion of the generic Top-Level Domain (“gTLD”) <.com> extension in the disputed domain name <yahoo-helpcentral.com> does not affect a finding of confusing similarity. Citing Tumblr, Inc. v. Above.com Domain Privacy/Transure Enterprise Ltd., Host Master, D2013-0213 (WIPO March 29, 2013) (“the use of the generic top-level domain (gTLD) ‘.com’ in a disputed domain name does not affect a finding of similarity.”).
Complainant also contends that the omission of the exclamation point of Complainant’s YAHOO! mark from the disputed domain name is also irrelevant to the analysis of confusing similarity, arguing that exclamation points are not permitted in domain names, and Complainant’s main website is available at <www.yahoo.com> which does not contain an exclamation point.
Moreover, Complainant argues that the dominant portion of Complainant’s mark is the word YAHOO, so the disputed domain name would be confusingly similar even if exclamation points were permissible. Complainant adds that punctuation such as an exclamation point is routinely discounted by panels when conducting analysis of confusing similarity.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name arguing firstly that there is no relationship between Complainant and Respondent that would give Respondent the right to own or use any domain name incorporating Complainant’s YAHOO! mark. Citing Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, D2004-0312 (WIPO July 2, 2004) (finding no legitimate right or interest in the disputed domain name because the use of Complainant’s mark was “at no point licensed or approved by the Complainant.”).
Complainant further contends that nothing in Respondent’s Whois information suggests Respondent is commonly known by the disputed domain name. Citing Yahoo! Inc. v. Junlong Zheng c/o OnlineNIC, FA 1142567 (Forum March 25, 2008) (holding respondent has no rights or legitimate interests because there is no evidence in the record or Whois information indicating respondent is commonly known by the disputed domain name and because Complainant did not authorize respondent to use its YAHOO mark).
Complainant also argues that YAHOO! is an internationally famous name and mark and thus Respondent cannot be known by the disputed domain name. Citing Yahoo! Inc. and GeoCities v. Eitan Zviely a/k/a comyahoo.com, et al., FA 162060 (Forum July 24, 2003) (“The worldwide fame of Complainant’s marks permit a finding that anyone other than Complainant could [not] be commonly known as YAHOO!...” and that the respondent could therefore not have shown that it was commonly known by any of the disputed domain names pursuant to Section 4(c)(ii) of the UDRP).
Complainant adds that Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services, nor making a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i), 4(c)(iii). Rather, Respondent has used the disputed domain name to promote purported technical support phone numbers in competition with Complainant’s own support services, for Respondent’s financial gain and to phish for log-in information from Internet users.
Complainant submits that the disputed domain name was registered and is being used in bad faith alleging that Complainant first made use of Complainant’s mark in 1994. Respondent registered the disputed domain name on December 11, 2019, well after Complainant’s YAHOO! mark became famous. Respondent’s use of the disputed domain name in connection with the infringing website that uses Complainant’s YAHOO! mark and co-opts various aspects of Complainant’s services demonstrates actual knowledge of Complainant’s mark. Citing Garmin Switzerland GmbH v. Narinder Padda, FA1806001794452 (Forum July 30, 2018) (use of the complainant’s mark on the respondent’s website was evidence of actual knowledge of complainant’s rights, supporting a finding of bad faith).
Complainant further contends that Respondent’s use of the disputed domain name to divert Internet traffic for Respondent’s financial gain constitutes bad faith under the Policy. As the infringing website promotes Respondent’s commercial technical support services, the disputed domain name is being used to generate revenue to benefit Respondent financially in bad faith. Citing AOL Inc. v. Skylogic Technologies Private Limited aka Tanuj Mittal, FA1305001498058 (Forum June 7, 2013) (finding bad faith where the disputed domains were used to divert users to respondent’s technical support websites for respondent’s financial gain).
Complainant adds that Respondent’s registration and use of the disputed domain name constitutes bad faith because Respondent has used the disputed domain name to divert those seeking Complainant’s support services to Respondent’s website to perpetrate a phishing scheme. Panels established under the Policy have found that use of a domain name to perpetrate a phishing scheme intended to defraud users is evidence of bad faith registration and use. Citing Yahoo! Inc. v. Vinay Kochhar, avv, D2017-0478 (WIPO May 5, 2017) (“The Panel observes that it is difficult to envisage any circumstances in which the registration of a domain name that incorporates [YAHOO] could ever be otherwise than in bad faith and that the use of such a domain name for a bogus customer support website is clearly an act of bad faith.”).
Complainant submits that Respondent is using the color purple in connection with the name “Yahoo Help” on his website, and right below appears a banner with the text “Help For Yahoo Mail.” Complainant asks this Panel to consider that the color purple is also used in the Brower tab of Complainant’s website.
On Respondent’s website there are a number of sections entitled “Help for your Yahoo Account” with headlines, such as “Fix problems signing into your Yahoo account”, “Secure your Yahoo account,” and “Fix issues with Yahoo Account Key.”
Of particular concern to Complainant is that on the top right-hand corner of the page is a webpage heading called “Contact Yahoo”. The “Contact Yahoo” webpage has a message toward the middle of the page in bold text that reads “If you are facing any issues and you want to contact yahoo then you can give us full description of your issue below”, and right below that message is a form imbedded into the webpage requesting full name, email, phone number, and comment or message. After this information is submitted, the webpage displays a message indicating Respondent will be in touch shortly.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the www.yahoo.com search engine and holds numerous trademark registrations for the YAHOO! mark around the world, including:
· United States registered trademark YAHOO! registration number 2040222 registered on the Principal Register on Feb. 25, 1997 for goods and services in international class 9;
· United States registered service mark YAHOO! registration number 2040691, registered on the Principal Register on February 25, 1997 for goods and services in international class 42;
· United States registered service mark YAHOO! registration number 2187292, registered on the Principal Register on September 8, 1998 for services in international class 35;
· United States registered service mark and trademark YAHOO! registration number 2403227, registered on the Principal Register on November 14, 2000 for goods and services in international classes 9, 35, 38, 39 and 42 and 38.
The disputed domain name was registered on December 11, 2019 and resolves to a website that that purports to offer customer support services in connection with Complainant’s services including at a phone number listed on the website.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the Registrar’s response to the Forum’s request for verification of the registration details of the disputed domain name in the course of this proceeding.
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 has provided clear, convincing and uncontested evidence of its rights in the YAHOO! mark acquired through its ownership of its portfolio of service mark registrations described above and the goodwill that it has accrued in the mark through its extensive use on its internationally renewed website located at <www.yahoo.com>. In April 2020, Yahoo Mail had 176.3 million monthly unique visitors worldwide and Yahoo News had 188.4 million monthly unique visitors worldwide.
The disputed domain name consists of Complainant’s YAHOO! mark minus the exclamation mark, in combination with a hyphen, the descriptive terms “help” and “central” and the gTLD <.com> extension.
Complainant’s mark, albeit minus the exclamation mark, is the initial, dominant and only distinctive element of the disputed domain name.
The hyphen and the descriptive elements “help” and “central” have no distinctive character and in the context of the present case the gTLD <.com> extension would be perceived by Internet users as a necessary technical element for a domain name.
In the case of the YAHOO! mark, the omission of the exclamation point from the disputed domain name would not reduce the confusing character of the disputed domain name, as it has no impact on the aural similarity and it would not be a permitted element in a domain name.
This Panel finds therefore the disputed domain name is confusingly similar to the YAHOO! mark in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i) has been satisfied.
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name contending that:
· there is no relationship between Complainant and Respondent that would give Respondent the right to own or use any domain name incorporating Complainant’s YAHOO! mark;
· nothing in Respondent’s WhoIs information suggests Respondent is commonly known by the disputed domain name;
· YAHOO! is an internationally famous name and mark and thus Respondent cannot be known by the disputed domain name;
· Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services, nor making a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i), 4(c)(iii);
· the website to which the disputed domain name resolves purports to promote purported technical support phone numbers in competition with Complainant’s own support services, for Respondent’s financial gain and to phish for Internet users login information; and in this regard Complainant has submitted a screenshot of the website in an annex to the Complaint.
It is well established that once a complainant makes out a prima facie case that a Respondent has no rights or legitimate interests in a domain name in issue, the burden of production shifts to the respondent to prove such rights or legitimate interests. Respondent has failed to discharge the burden of production and therefore this Panel must find that Complainant has succeeded in proving on the balance of probabilities that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant first made use of the YAHOO! mark in 1994 and it has become one of the most famous marks on the Internet. The disputed domain name on December 11, 2019, long after Complainant’s YAHOO! mark achieved its international reputation. It is implausible that the registrant of the disputed domain name was not aware of Complainant’s mark, name and search engine when the disputed domain name was chosen and registered.
By combining Complainant’s famous mark with the words “help” and “central” the registrant, on the balance of probabilities intended to take predatory advantage of Complainant’s reputation and goodwill to divert Internet users to the website to which the disputed domain name resolves.
The subsequent use of the disputed domain name as the address of a website that purports to offer assistance to users of Complainant’s services illustrates that the disputed domain name was registered in bad faith to target Internet traffic bound for Complainant’s websites.
The banner at the bottom of Respondent’s website contains the following disclaimer: “Yahoo helpcentral.com is a communal website that is a portal for users to find help on problems regarding the yahoo mail service Yahoo! Our motive is to provide users with solutions that they might be searching for. We do not have any affiliation with yahoo. All the information on the website are (sic) informative purpose only”. While this disclaimer appears at the bottom of the webpage, it could be argued that it alerts Internet users to the fact that Respondent is not associated with Complainant. Complainant did not address this issues but neither did Respondent.
Complainant has asserted that upon information and belief, Respondent’s offer of customer support services is part of a common phishing scheme used to deceptively gain access to users’ computers and personal information. The uncontested evidence is that Respondent’s website contains an invitation to make contact using an embedded form. This is certainly indicative of phishing for information for commercial use but does not actually prove the phishing activity as alleged.
Nonetheless, it is clear that, in this uncontested Complaint, the evidence on record shows that Respondent is using the YAHOO! mark as bait, to attract and divert Internet traffic away from Complainant’s website.
Respondent’s business model is unclear but Respondent’s claim in its disclaimer that it is “a communal website” appears to be disingenuous and the disputed domain name, which incorporates Complainant’s trademark in a confusingly similar manner is, on the balance of probabilities, being used with the intention of benefitting Respondent financially. There is no other plausible explanation for establishing and maintaining a website to offer advice on Complainant’s web services. Whether this is in a phishing scheme remains unproven, but it is an unauthorized use of the YAHOO! mark and the disputed domain name in bad faith.
The initial interest confusion created by Respondent’s use of the disputed domain name, even if it were to be dispelled by a careful reading of the disclaimer at the bottom of Respondent’s website, is sufficient to establish on the balance of probabilities that the disputed domain name is being used in bad faith.
Additionally, if Respondent is in fact using the disputed domain name to offer technical support services, such use of Complainant’s mark in the disputed domain name to divert Internet traffic, offer technical support services in competition with Complainant, is an abusive use of Complainant’s mark and the disputed domain name in bad faith because Complainant also offers such service for paying Yahoo subscribers. The disclaimer would not prevent a finding of bad faith in circumstances where there is unauthorized use of Complainant’s mark to lure Internet users to avail of Respondent’s competing services.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. The third element of the test in Policy ¶ 4(a)(iii) has been satisfied and Complainant is entitled to succeed in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoo-helpcentral.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: March 31, 2021
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