Yahoo Inc. / AOL Membership Services LLC v. Nazim Ali
Claim Number: FA2205001995305
Complainant is Yahoo Inc. / AOL Membership Services LLC (“Complainant”), represented by Joseph Daniels-Salamanca of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Nazim Ali (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <desktopsgold.com>, (‘the Domain Name’) registered with IONOS SE.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 6, 2022; the Forum received payment on May 6, 2022.
On May 11, 2022, IONOS SE confirmed by e-mail to the Forum that the <desktopsgold.com> Domain Name is registered with IONOS SE and that Respondent is the current registrant of the name. IONOS SE has verified that Respondent is bound by the IONOS SE 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 May 13, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 2022 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@desktopsgold.com. Also on May 13, 2022, 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 June 9, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” The Complainant companies are in the same group and each owns one of the trademarks cited in the Complaint, the common element being DESKTOP GOLD. The Panel finds that the Complainant companies have satisfied the nexus required.
A. Complainant
The Complainant’s contentions can be summarized as follows:
In 2016, Complainant launched AOL Desktop Gold, an all-in-one desktop navigation tool for its Internet-based services. In addition to Complainant’s trademark registrations listed above, it owns, under Yahoo Inc., United States Trademark Registration No. 5836380, for the AOL DESKTOP GOLD word mark, and, under AOL Membership Services LLC, United States Trademark Registration No. 6125345 for the DESKTOP GOLD word mark, both registered for downloadable software.
The Domain Name registered in 2021 is confusingly similar to the Complainant’s DESKTOP GOLD mark, wholly incorporating it and adding only the letter ‘s’ and the gTLD “.com” which does not distinguish the Domain Name from the Complainant’s mark.
Respondent is not commonly known by the DESKTOP GOLD mark and has no permission from the Complainant to use the Complainant’s mark or its logos. The Domain Name has been used for a web site offering technical support services for the Complainant’s products under a logo which is highly similar to the Complainant’s AOL and AOL DESKTOP GOLD logos as a masthead and confusing wording to suggest the site is an official site of the Complainant. There is a small disclaimer at the bottom of the page, but this is not sufficient to counteract the overriding impression that the site if connected with the Complainant. The site could be used for possible phishing. This cannot be a bona fide offering of goods and services or a noncommercial legitimate fair use. The Respondent has no rights or legitimate interests in the Domain Name.
The Respondent registered the Domain Name to direct it to a site that mimics official sites of the Complainant and uses a logo highly similar to the Complainant’s logos to confuse Internet users into believing the Respondent’s web site and Domain Name are associated with the Complainant. The mimicking of the Complainant and reference to its products shows the Respondent is aware of the Complainant and its business. The Domain Name has been registered and used in bad faith to confuse Internet users under Policy 4(b)(iv) and for possible phishing.
B. Respondent
Respondent failed to submit a Response in this proceeding.
In 2016, Complainant launched AOL Desktop Gold, an all-in-one desktop navigation tool for its Internet-based services. In addition to Complainant’s trademark registrations listed above, it owns, under Yahoo Inc., United States Trademark Registration No. 5836380, for the AOL DESKTOP GOLD word mark, and, under AOL Membership Services LLC, United States Trademark Registration No. 6125345 for the DESKTOP GOLD word mark, both registered for downloadable software.
The Domain Name registered in 2021 has been used for a site offering competing technical support services for the Complainant’s products using a logo highly similar to the Complainant’s AOL and AOL DESKTOP GOLD logos as a masthead giving an appearance of an official site of the Complainant.
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 Domain Name consists of the Complainant's DESKTOP GOLD mark (which is registered in USA for computer related services since 2016), the letter ‘s’ and the gTLD “.com” which do not distinguish the Domain Name from the Complainant’s mark.
The Panel agrees that misspellings such as the addition of a letter ‘s’ does not distinguish the Domain Name from the Complainant's DESKTOP GOLD trade mark pursuant to the Policy. See Twitch Interactive Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) (where an additional ‘c’ was added).
The gTLD “.com” does not serve to distinguish a Domain Name from a Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s DESKTOP GOLD registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its marks. There is no evidence or reason other than the web site content complained of to suggest the Respondent is commonly known by the Domain Name. 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).
The Panel notes the Complainant’s reference to possible phishing, but there is no actual evidence presented to prove this.
The web site attached to the Domain Name uses a sign highly similar to the Complainant’s AOL and AOL DESKTOP GOLD logos as a masthead so that the Respondent’s site appeared to be an official site of the Complainant. The small disclaimer at the bottom of the page is not enough to counteract this impression. The Panel finds this use is deceptive and passing off. As such it cannot amount to the bona fide offering of goods and services. See iFinex Inc. v. Yuri Heifetz/Genie-Solution, FA 1789385 (Forum July 9, 2018) (holding that the respondent’s mimicking the complainant’s web site in order to cause existing or potential customers of the Complainant’s to believe they are dealing with the complainant is prima facie evidence of the respondent’s lack of rights and legitimate interests in the disputed domain name).
The Domain Name also appears to be a typosquatting registration differing only by one letter ‘s’ from the Complainant DESKTOP GOLD mark. Typosquatting is also an indication of a lack of rights or a legitimate interests. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it uses a sign highly similar to logos of the Complainant as a masthead. The use of this sign and the reference to the Complainant’s products on the site shows that the Respondent is aware of the Complainant and its rights, business and services.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site or services offered on it under Policy 4(b)(iv) likely to disrupt the business of the Complainant under Policy 4(b)(iii). See Allianz of AM. Corp v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use where the respondent was diverting Internet users searching for the complainant to its own website).
Additionally, the Domain Name appears to attempt to seek to take advantage of the situation where Internet users may make a typographical error and add an additional ‘s’ to the Complainant’s mark. Typosquatting itself is evidence of relevant bad faith registration and use. See Diners Club int'l Ltd. v. Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (registering a domain name in the hope that Internet users will mistype the Complainant’s mark and be taken to the Respondent’s site is registration and use in bad faith).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paras 4(b)(iv) and 4(b)(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 <desktopsgold.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: June 10, 2022
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