Yahoo Inc. v. Zanybh Solutions
Claim Number: FA2212002022496
Complainant is Yahoo Inc. (“Complainant”), USA, represented by Griffin Barnett of Perkins Coie LLP, District of Columbia, USA. Respondent is Zanybh Solutions (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <engadgetonline.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 December 1, 2022; Forum received payment on December 1, 2022.
On December 1, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <engadgetonline.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 December 5, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@engadgetonline.com. Also on December 5, 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.
On December 5, 2022, Respondent submitted a formal Response to the Forum.
On December 8, 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, Yahoo Inc., is a provider of online Internet and content services, including ENGADGET, a technology blog network. Complainant has rights in the ENGADGET mark through several trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,232,307, which was registered on April 24, 2007). The disputed domain name is identical or confusingly similar to the ENGADGET mark because it includes the mark in its entirety, merely appending a generic term and a generic top-level domain (“gTLD”).
ii) Respondent lack rights or a legitimate interest in the disputed domain name since Respondent is not commonly known by the name and Complainant has not authorized or licensed Respondent to use the ENGADGET mark. 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. Instead, Respondent hosts a website to offer services that compete with Complainant and was on notice of Complainant’s strong trademark rights.
iii) Respondent registered and uses the disputed domain name in bad faith by trading off Complainant’s famous ENGADGET mark, intentionally attracting confused Internet users to display competing services. Respondent offered to sell the disputed domain name for a price far in excess of registration costs. Respondent had actual knowledge of Complainant’s rights.
B. Respondent
1. The disputed domain name was registered on July 19, 2022.
2. Complainant has established rights in the ENGADGET mark through several trademark registrations, including with the USPTO (e.g., Reg. No. 3,232,307, which was registered on April 24, 2007).
3. The disputed domain name is being used in connection with a technology and marketing blog website that is similar to, and competes with, Complainant’s ENGADGET technology blog websites.
4. Respondent uses the disputed domain name to direct to a website that mimics or directly competes with Complainant’s technology blog websites provided under its mark.
5. Respondent offered to sell the disputed domain name to Complainant for $5,000.
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.
Complainant claims rights in the ENGADGET mark through numerous trademarks, including with the USPTO (e.g., Reg. No. 3,232,307, which was registered on April 24, 2007). See Compl. Exhibit G. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant provides evidence of registration of the ENGADGET mark with the USPTO, the Panel finds Complainant has established rights in the ENGADGET mark per Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <engadgetonline.com> is confusingly similar to its ENGADGET mark because it wholly incorporates the ENGADGET mark, simply appending the generic term “online” and “.com” gTLD. When a disputed domain name includes the entirety of a mark, additional terms and gTLDs have been found insufficient to defeat a finding of confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s ENGADGET mark under 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 argues that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and Complainant has never licensed rights to or authorized Respondent to use the ENGADGET mark. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
The unmasked WHOIS information for the disputed domain name lists the registrant as “Zanybh Solutions.” There is no other evidence to suggest that Respondent was authorized to use the ENGADGET mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as Respondent passes itself off as Complainant through its use of a website displaying the ENGADGET ONLINE mark, which is confusingly similar to Complainant’s ENGADGET mark under which Respondent offers competing services. Previous panels have determined offering for sale or displaying services that compete with a complainant’s services does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). In this case, Complainant provides screenshots of Respondent’s website, which contains technology and marketing blog posts that are similar or identical to those on Complainant’s own technology blog. The Panel agrees and finds that Respondent lacks any bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Given the considerations above, the Panel finds that Complainant has made out a prima facie case. As the onus thus shifts to Respondent, the Panel must now see if Respondent has rebutted the prima face case and shown that it has a right or legitimate interest in the disputed domain name.
Respondent contends that Complainant made his domain available on Namecheap Domain Registrar, whereas trademark right holders had the option to make it unavailable. Respondent purchased the disputed domain as it was available on NameCheap Domain Registrar, and thus it should be allowed to keep the disputed domain name.
The Panel is of the view that Complainant’s absence of taking measures to prevent availability of a third party’s registration of domain names similar to Complainant’s trademark neither justifies nor confers rights or legitimate interests to the registration of such domain names. The Panel therefore finds that Respondent has failed to rebut the prima facie case against it, and thus it concludes that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent registered and uses the disputed domain name in bad faith because Respondent offered to sell the name to Complainant at a price exceeding the registration cost. When a respondent engages in such behavior, panels have found bad faith under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Complainant provides evidence of Respondent’s offer to transfer the domain name to Complainant for $5,000. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Complainant next argues that the disputed domain name is being used in connection with a technology and marketing blog website that is similar to, and competes with Complainant’s ENGADGET technology blog websites. Complainant has provided screenshots of the disputed domain name’s resolving website and Complainant’s own website.
The Panel notes that Respondent uses the disputed domain name to direct to a website that mimics or directly competes with Complainant’s technology blog websites provided under its mark. Use of a disputed domain name to pass off as a complainant and offer competing or counterfeit versions of its products may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant further argues that Respondent had knowledge of Complainant’s rights in the ENGADGET mark because Complainant’s mark is a well-known mark and the disputed domain name’s resolving website features Complainant’s ENGADGET mark. Although panels have generally not regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of a complainant’s rights in the mark prior to registering a disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in its ENGADGET mark at the time of registering the disputed domain name, which constitutes bad faith registration under Policy ¶ 4(a)(iii).
Respondent rebuts to the effect that Complainant made his domain available on Namecheap Domain Registrar, whereas trademark right holders had the option to make it unavailable. Respondent purchased the disputed domain as it was available on NameCheap Domain Registrar, and thus it should be allowed to keep the disputed domain name. As noted above, the Panel is of the view that Complainant’s absence of taking measures to prevent the availability of Respondent’s registration of the disputed domain name that is confusingly similar to Complainant’s trademark does not excuse Respondent’s registration and use of the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <engadgetonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: December 12, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page