Yahoo Inc. v. Jitendra Rathore
Claim Number: FA2211002020820
Complainant is Yahoo Inc. (“Complainant”), represented by Joseph Daniels-Salamanca of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Jitendra Rathore (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yahoobackuptool.com> and <yahoomailmigration.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on November 17, 2022; Forum received payment on November 17, 2022.
On November 18, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <yahoobackuptool.com> and <yahoomailmigration.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 November 23, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 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@yahoobackuptool.com, postmaster@yahoomailmigration.com. Also on November 23, 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. Respondent did however send an email to the Forum, see below.
On December 20, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a global Internet communications, media, and commerce company that delivers a wide range of products and services, including e-mail software and services, technical support services, online advertising and marketing, online publications and livestreams featuring information and news on business, finance, and related fields, web directory and search services, sports, sports betting, games, business management, movie reviews, news, weather, online shopping, audio and video streaming, and more. Complainant asserts rights in the mark YAHOO! through its registration in the United States in 1988. The mark is famous.
Complainant alleges that the disputed domain names are confusingly similar to its YAHOO! mark as they wholly incorporate the mark, less the exclamation point, and merely add generic terms and the “.com” generic top-level-domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its mark. Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent passes off as Complainant to offer software that competes with that of Complainant. Respondent conducts a phishing scheme. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent passes off as Complainant to offer competing software. Respondent conducts a phishing scheme. Respondent had actual knowledge of Complainant’s rights in the YAHOO! mark prior to registration of the disputed domain name. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding. In its email to Forum, Respondent states, in pertinent part: “I guess I have to cancel the domain due to copyright strike i guess. However, my point is how Godaddy letting me to buy these domains if these comes under copyright trademark and all. … Anyway, let me know my next step. Should I cancel the domain or can I list it for sale.”
For the reasons set forth below, the Panel will not list here any findings of fact.
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.
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."
In the present case, Respondent states that it is willing to cancel its registration of the disputed domain names and asks how it is that it was allowed to buy a name that conflicts with a trademark. The answer is that there are no restrictions for registrations under “.com” and that the remedy available to a trademark owner is the UDRP, that is, the instant proceeding. In light of the evidence presented by Complainant, Respondent cannot legitimately sell the disputed domain names.
Therefore the Panel interprets Respondent’s email to the Forum as consent to transfer the disputed domain name. Thus, the parties have both asked for the domain name to be transferred to the Complainant. In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.
See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
Given the common request of the Parties, it is Ordered that the <yahoobackuptool.com> and <yahoomailmigration.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 21, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page