Yahoo Inc. v. mohammad salman bakshi
Claim Number: FA2211002021386
Complainant is Yahoo Inc. (“Complainant”), represented by Griffin Barnett of Perkins Coie LLP, District of Columbia, USA. Respondent is mohammad salman bakshi (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aolgold-download.com>, (‘the Domain Name’) registered with Google LLC.
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 Forum electronically on November 22, 2022; Forum received payment on November 22, 2022.
On November 22, 2022, Google LLC confirmed by e-mail to Forum that the <aolgold-download.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 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@aolgold-download.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.
On December 16, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarised as follows:
The Complainant is, inter alia, the owner of the trade marks AOL and AOL DESKTOP GOLD registered, inter alia, in the USA for computer related goods and services with first use recorded as 1989 and 2016 respectively.
The Domain Name registered in 2022 is confusingly similar to the Complainant’s marks incorporating the AOL mark in its entirety. Also it incorporates the ‘AOL’ and ‘GOLD’ elements of the AOL DESKTOP GOLD mark, merely omitting the ‘DESKTOP’ element of this mark from the Domain Name. Respondent has entirely incorporated the AOL mark, and added the GOLD element of the AOL DESKTOP GOLD mark, followed by a hyphen, the generic software-related term ‘download’ and the gTLD ‘.com’ to the Domain Name.
The Respondent is not commonly known by the Domain Name and has no permission from the Complainant to use the Complainant’s marks. The Respondent has no rights or legitimate interests in the Domain Name. The Domain Name has been used for a competing site which uses the Complainant’s marks in its masthead to purport to offer downloads of the Complainant’s software requiring a log in, therefore collecting details from Internet users. This is phishing and is not a bona fide offering of goods and services or a non commercial legitimate fair use. This use is opportunistic registration and use in bad faith of a well known mark. It deceives Internet users into thinking the web site attached to the Domain Name is associated with the Complainant to collect customer information for phishing purposes and disrupts the Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is, inter alia, the owner of the trade marks AOL and AOL DESKTOP GOLD registered in the USA for computer related goods and services with first use recorded as 1989 and 2016 respectively.
The Domain Name registered in 2022 has been used for a site using the Complainant’s marks in its masthead to purport to be an official source of the Complainant’s software and requesting customers to input their AOL login credentials.
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 AOL mark (which is registered, inter alia, in the USA for computer related services and has been used since 1989), a hyphen, ‘gold’ a dictionary word which also appears in the Complainant’s AOL DESKTOP GOLD mark, the generic word ‘download’ and the gTLD .com.
Previous panels have found confusing similarity when a respondent merely deletes or adds generic terms to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic terms ‘gold’ and ‘download’ to the Complainant's AOL mark does not prevent confusing similarity between the Domain Name and the Complainant's AOL trade mark pursuant to the Policy. Nor does deleting ‘desktop’ from the Complainant’s AOL DESKTOP GOLD mark. The mere abbreviation of a mark to a sign with its distinctive element combined with a gTLD does not sufficiently distinguish a disputed domain name from a mark. See Sainato's Restaurant and Catering Limited v. chen xue ming, FA 1781748 (Forum June 4, 2018) (finding the <sainatos.com> domain name is confusingly similar to the SAINATO’S RESTAURANT mark as it “appends the gTLD “.com” to an abbreviated version of the mark.”). Nor does the addition of a hyphen. See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4(a)(i).”).
The gTLD .com does not serve to distinguish the Domain Name from the Complainant’s AOL mark, which is the distinctive component of the Domain Name. 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 for the purpose of the Policy to the Complainant’s marks.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. There is no evidence or reason 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 September 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 web site attached to the Domain Name uses the Complainant's marks in its masthead to offer downloads of the Complainant’s software via a log in screen inviting a user to input their AOL log in credentials, so that the Respondent’s site could be taken to be an official site of the Complainant. It does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing and deceptive. As such it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to advertise services which competed with the Complainant's business did not constitute a bona fide use of goods and services.) Further, use of a disputed domain name to display a complainant’s mark to confuse internet users and engage in a phishing scheme by obtaining personal email addresses and passwords is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”), see also Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant as presented herein.
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 the Complainant’s marks in its masthead to purport to offer the Complainant’s software via a log in screen. The reference to the Complainant’s software shows that the Respondent is aware of the Complainant and its rights and business.
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 well known trade marks as to the source, sponsorship, affiliation or endorsement of the web site and services or products offered on it likely to disrupt the business of the Complainant. See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name would be obviously connected with the complainant’s well-known BEST BUY mark). See also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”) Also this appears to be collection of log in details for phishing purposes. see also United States Postal Service v. kyle javier, FA 1787265(Forum June 12, 2018) (“Use of a domain name to phish for Internet users’ personal information is evidence of 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 para 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aolgold-download.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December 16, 2022
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