Taboola.com Ltd. v. ma long
Claim Number: FA2209002010823
Complainant is Taboola.com Ltd. (“Complainant”), represented by Jessica Galluccio of Taboola.com Ltd., Israel. Respondent is ma long (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <taboolapro.com>, registered with NameCheap, Inc..
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on September 2, 2022; Forum received payment on September 2, 2022.
On September 2, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <taboolapro.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 September 6, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 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@taboolapro.com. Also on September 6, 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, Forum transmitted to the parties a Notification of Respondent Default.
On October 3, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
i) Complainant, Taboola.com Ltd., operates an advanced online discovery platform that delivers personalized recommendations to over one billion unique users every month. Complainant claims rights in the TABOOLA mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,481,994, registered Aug. 5, 2008). The disputed domain name is identical or confusingly similar to Complainant’s TABOOLA mark as it wholly incorporates the mark , and adds the generic term “pro”, as well as the “.com” generic top-level domain (“gTLD”) to form.
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its TABOOLA mark in the disputed domain name. Respondent does not use the domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Respondent uses Complainant’s mark in the disputed domain name in order to misleadingly divert Internet users to Respondent’s own website with a false impression of affiliation with Complainant.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the confusingly similar nature of the disputed domain name in order to attract users with a false impression of association with Complainant and disrupt Complainant’s business. Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s rights in the TABOOLA mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on August 23, 2022.
2. Complainant has established rights in the TABOOLA mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,481,994, registered Aug. 5, 2008).
3. The disputed domain name resolves to a blank landing page.
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 claims rights in the TABOOLA mark through its registration with the USPTO (e.g. Reg. No. 3,481,994, registered Aug. 5, 2008). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Ecolab USA Inc. v. (name redacted), FA 2003001888902 (Forum Apr. 20, 2020) (“Complainant’s ownership of a USPTO registration for ECOLAB is sufficient to demonstrate its rights in a mark for the purposes of Policy ¶ 4(a)(i).”). As Complainant provides evidence of its registration with the USPTO, the Panel finds Complainant has rights in the TABOOLA mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <taboolapro.com> is identical or confusingly similar to Complainant’s TABOOLA mark. Under Policy ¶ 4(a)(i), the addition of a generic term is insufficient in differentiating a disputed domain name from a protected mark. See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The disputed domain name fully incorporates Complainant’s TABOOLA mark and adds the generic term “pro”, along with the “.com” gTLD. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark pursuant to 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), then the burden shifts to Respondent to show 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 disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed to Respondent any rights in the TABOOLA mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed 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 WHOIS information for the disputed domain name lists the registrant as “ma long.” Additionally, there is no evidence to suggest that Respondent was authorized to use Complainant’s TABOOLA mark in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Complainant specifically points out that Respondent fully incorporates Complainant’s TABOOLA mark in the disputed domain name in order to divert Internet users seeking Complainant to Respondent’s own webpage, which currently resolves to a blank page. The Panel agrees and finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent uses the confusingly similar nature of the disputed domain name in order to attract users with a false impression of association with Complainant and disrupt Complainant’s business. The Panel notes that the disputed domain name resolves to a blank landing page that reads “It Works.” The Panel observes that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant under the TABOOLA mark, has been building one of the world’s largest and most advanced discovery platforms or “search engines in reverse”delivering personalized recommendations to over one billion unique users every month, on many of the web’s most innovative and highly visited websites. Complainant serves 450 billion recommendations to over 1 billion unique visitors each month on the web's most innovative publisher sites, including NBC, USA Today, ESPN, CBS, and Fox Sports. The global “reach” of TABOOLA mark 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. Complainant has offices in major cities around the world. As such, Complainant’s ‘TABOOLA’ mark is considered as being a well-known and reputable trademark; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Complainant additionally asserts that Respondent registered the disputed domain name with constructive and/or actual knowledge of Complainant’s rights in the TABOOLA mark. While constructive notice is not sufficient for a finding of bad faith, under Policy ¶ 4(a)(iii), actual knowledge is enough in demonstrating bad faith, and may be established through incorporation of a well-known/registered mark into a domain name. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). The Panel infers, due to the notoriety of Complainant’s mark that Respondent had knowledge of Complainant’s rights in the TABOOLA mark prior to the registration of the disputed domain name, which supports a finding of bad faith registration 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 <taboolapro.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: October 7, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page