Yahoo Inc. v. domain share
Claim Number: FA2301002028739
Complainant is Yahoo Inc. (“Complainant”), USA, represented by Joseph Daniels-Salamanca of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is domain share (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tutyahoo.com>, registered with NameSilo, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on January 23, 2023; Forum received payment on January 23, 2023.
On January 24, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <tutyahoo.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 January 25, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2023 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@tutyahoo.com. Also on January 25, 2023, 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 February 16, 2023, 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 well-known media company. Complainant has rights in the YAHOO! mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No., 2,040,222, registered February 25, 1997). The disputed domain name is confusingly similar to Complainant’s YAHOO! mark because the disputed domain name adds the descriptive term “tut” and the generic top level domain (“gTLD”) “.com”, and omits the exclamation point.
ii) Complainant asserts Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use. Instead, Respondent is diverting consumers to an infringing website offering competing goods. Respondent is perpetrating a phishing scheme.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent is using the disputed domain name to divert Internet users to its infringing website and conduct a phishing scheme. Respondent has a history of similar bad faith conduct. Additionally, Respondent had actual knowledge of Complainant’s rights in the YAHOO! mark prior to registration of the disputed domain name.
B. Respondent
Respondent did not submit a Response.
1. The disputed domain name was registered on January 10, 2023.
2. Complainant has established rights in the YAHOO! mark based upon registration with the USPTO (e.g., Reg. No. 2,040,222, registered February 25, 1997).
3. The disputed domain name's resolving website displays Complainant’s mark and logo, offers competing retail and e-commerce services, and solicits personal and financial information.
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 asserts rights in the YAHOO! mark (e.g., Reg. No., 2,040,222, registered February 25, 1997) based upon registration with the USPTO. Registration with a governmental trademark authority is sufficient to demonstrate rights in a mark per Policy 4(a)(i). As Complainant provides evidence of trademark registration, the Panel finds that Complainant has established rights in the YAHOO! mark per Policy ¶ 4(a)(i).
Complainant argues the disputed domain name <tutyahoo.com> is confusingly similar to Complainant’s YAHOO! mark because the disputed domain name adds the descriptive term “tut” and the“.com” gTLD. Further, Complainant asserts, the disputed domain name omits the exclamation point. The addition of a descriptive term as well as a gTLD may not defeat an argument of confusing similarity per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The omission of punctuation is similarly insufficient to defeat a finding of confusingly similarity per Policy ¶ 4(a)(i). See Yahoo! Inc. v. HEIDI BUI, FA 1638878 (Forum Oct. 26, 2015) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per 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 Respondent is not commonly known by the disputed domain name. Where there is no response, WHOIS information can substantiate a finding that a respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, a lack of authorization to use a complainant’s mark may also indicate that a respondent is not commonly known by the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The unmasked WHOIS information of record lists “domain share” as the registrant of the disputed domain name. Complainant further asserts it has not licensed or otherwise authorized Respondent to use Complainant’s YAHOO! mark. The Panel therefore finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for any legitimate or fair use because Respondent is using the disputed domain name to impersonate Complainant in an effort to divert Complainant’s user base to the infringing website featuring competing and overlapping goods and services. Passing off as a complainant in order to sell competing goods or services is not a bona fide offering of goods and services or a legitimate or fair use per Policy ¶ 4(c)(i) and (iii). See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017) (“A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Here, Complainant provides a screenshot of the resolving website displaying Complainant’s mark and logo and offering competing retail and e-commerce services. Therefore, the Panel finds that Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services or for any legitimate or fair use
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 asserts Respondent registered and uses the disputed domain name in bad faith. Respondent is diverting those seeking Complainant’s goods and services to the infringing website to perpetrate a phishing scheme and to create an appearance that Respondent is somehow affiliated with Complainant, and offers competing services. Use of a disputed domain name to divert Internet users to an infringing website and perpetrate a phishing scheme is evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) 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.”); see also 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) The Panel recalls that Complainant provides a screenshot of the disputed domain name's resolving website displaying Complainant’s mark and logo, offering competing retail and e-commerce services, and soliciting personal and financial information. 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 contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the YAHOO! mark. Constructive knowledge is insufficient for a finding of bad faith registration of a disputed domain name; actual knowledge, however, is sufficient for a finding of bad faith per 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.”). Here, Complainant contends Respondent had actual knowledge of Complainant’s rights in the YAHOO! mark as the Respondent used the infringing domain name in connection with the infringing website that uses the Complainant’s mark and logo and co-opts various aspects of Complainant’s goods and services. The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain name that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the YAHOO! mark, which constitutes bad faith registration of the disputed domain name per 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 <tutyahoo.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: February 19, 2023
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