Yahoo Inc. v. Negrean Ovidiu
Claim Number: FA2302002033708
Complainant is Yahoo Inc. (“Complainant”), represented by Joseph Daniels-Salamanca of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Negrean Ovidiu (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoomessenger.ro>, registered with Romarg SRL.
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on February 27, 2023; Forum received payment on February 27, 2023.
On February 28, 2023, Romarg SRL confirmed by e-mail to Forum that the <yahoomessenger.ro> domain name is registered with Romarg SRL and that Respondent is the current registrant of the name. Romarg SRL has verified that Respondent is bound by the Romarg SRL 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 March 1, 2023, Forum served the Complaint and all Annexes, including a Romanian and English Written Notice of the Complaint, setting a deadline of March 21, 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@yahoomessenger.ro. Also on March 1, 2023, the Romanian and English 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 March 24, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement relating to the disputed domain name is written in the Romanian language, thereby making the language of the proceedings Romanian. However, the Panel has a discretion to decide in all the circumstances, pursuant to Rule 11(a), that another language is more appropriate.
Complainant submits that because Respondent is conversant and proficient in the English language, the proceeding should be conducted in English. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement, because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends in support that both the disputed domain name and the website available at the disputed domain name uses English characters and words, suggesting that Respondent is proficient in the English language. Further, Complainant is not conversant nor proficient in the Romanian language and it would require delay and unnecessary costs to translate the documents into that language.
Accordingly, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to show that the Respondent is conversant and proficient in the English language. After considering all of the circumstance of the present case, the Panel finds that the proceeding should be conducted in the English language.
A. Complainant
Complainant made the following contentions.
Complainant operates a wide array of services online, including electronic messaging. Complainant has rights in the YAHOO! and YAHOO! MESSENGER marks through Complainant’s registration of the marks with multiple governmental agencies around the world. Respondent’s <yahoomessenger.ro> domain name is identical or confusingly similar to Complainant’s YAHOO! and YAHOO! MESSENGER marks, uses the entirety of both marks and deletes the exclamation point from each mark, and adds the “.ro” country code top-level-domain name ("ccTLD").
Respondent lacks rights or legitimate interests in the <yahoomessenger.ro> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the YAHOO! mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent passes off as Complainant using a distinctive and famous mark. Additionally, Respondent is using the disputed domain name to pass off as Complainant and offer the download of unauthorized software. Finally, Respondent is using the disputed domain name to deceive and divert Complainant’s users to third-party websites for commercial gain.
Respondent registered and uses the <yahoomessenger.ro> domain name in bad faith. Respondent’s website disrupts Complainant’s business as Respondent registered the disputed domain name to pass off as Complainant and confuse and mislead Complainant’s users for commercial gain. Further, Respondent had actual knowledge of Complainant’s rights in the YAHOO! Mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates a wide array of communication services online, including electronic messaging.
2. Complainant has established its rights in the YAHOO! and YAHOO! MESSENGER marks through its registration of the marks with multiple governmental agencies around the world.
3. Respondent registered the <yahoomessenger.ro> domain name on December 29, 2015.
4.Respondent has caused the disputed domain name to be used to pass itself off as Complainant, offer the downloading of unauthorized software and deceive and divert Complainant’s users to third-party websites for commercial gain.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the YAHOO! and YAHOO! MESSENGER marks through its registration of the marks with governmental trademark agencies in countries around the world, including but not limited to the European Union. Those registrations are extensive and Complainant has adduced evidence that establishes the registrations and its rights in them and that those rights were acquired prior to the registration of the domain name. See Amend. Compl. Annexes 8 and 9. Registration of a mark with a governmental agency is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”). Therefore, the Panel finds Complainant has demonstrated rights in the YAHOO! and YAHOO! MESSENGER marks per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s YAHOO! and YAHOO! MESSENGER marks. Complainant submits that Respondent’s <yahoomessenger.ro> domain name is confusingly similar to Complainant’s YAHOO! mark as it merely deletes the exclamation point, adds the generic word “messenger” and the “.ro” country code top-level-domain name ("ccTLD"). Exclamation points are not permitted in domain names and the addition of a generic word or descriptive term and a ccTLD fails to distinguish a disputed domain name sufficiently from a mark 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).”). Moreover, the evidence is that Complainant previously conducted one of its businesses under the name Yahoo! Messenger Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s YAHOO! and YAHOO! MESSENGER marks within the meaning of Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s trademarks and to use them in its domain name, deleting the exclamation points in the trademarks, and adding the generic word “messenger” and the “.ro” country code top-level-domain ("ccTLD"), none of which negates the confusing similarity between the domain name and the trademarks;
(b) Respondent registered the <yahoomessenger.ro> domain name on December 29, 2015;
(c) Respondent has caused the disputed domain name to be used to pass itself off as Complainant, offer the downloading of unauthorized software and deceive and divert Complainant’s users to third-party websites for commercial gain.
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent lacks rights or legitimate interests in the <yahoomessenger.ro> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the YAHOO! or and YAHOO! MESSENGER marks. When 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 H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). The WHOIS information for the disputed domain name lists the registrant as “Negrean Ovidiu” and Complainant submits that there is no other evidence to suggest that Respondent was authorized by Complainant to use the YAHOO! or YAHOO! MESSENGER marks. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant contends that Respondent lacks rights or legitimate interests in the <yahoomessenger.ro> domain name because Complainant’s YAHOO! and YAHOO! MESSENGER marks are internationally famous. Using a famous mark in a disputed domain name demonstrates respondent’s lack of a legitimate interest under ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. CHLEO TEMPLE, FA 1731844 (Forum June 16, 2017) (acknowledging the likelihood of a respondent’s lack of legitimate interests in a disputed domain name when the name incorporates a famous mark belonging to another entity). Complainant argues that the YAHOO! and YAHOO! MESSENGER marks are internationally famous names and distinctive marks and, on the evidence, the Panel agrees. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(g) Complainant argues that Respondent fails to use the <yahoomessenger.ro> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent is using the disputed domain name to impersonate Complainant and divert users to the disputed domain name and offer downloads of unauthorized software that compete with Complainant. Using a disputed domain name to pass off as complainant for the purpose of enticing users to download software is not a bona fide offering of goods or services or a 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).”). Complainant provides screenshots of the resolving website that feature a hyperlinked text directing users to “Download Yahoo Messenger”. See Amend. Compl. p. 6. Complainant has offered instant messaging services under the YAHOO! MESSENGER mark from 1999 through 2018, although this service is no longer active. The Panel therefore finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii);
(h) Complainant argues that Respondent fails to use the <yahoomessenger.ro> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as the resolving website has third-party advertisements from which Respondent receives commercial gain. Using a disputed domain name to divert users to a website offering third-party advertising for commercial gain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”) Complainant provides screenshots of the disputed domain name showing advertising and links to third-party websites. See Amend. Compl. pp. 6-7, Annex 18 and 20. Complainant argues that Respondent receives commercial gain from these hyperlinks and advertisements which the Panel accepts is probably so. The Panel therefore finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent registered and uses the <yahoomessenger.ro> domain name in bad faith as Respondent registered and has used the disputed domain name to pass itself off as Complainant and disrupt Complainant’s business by diverting users to the disputed domain name for financial gain. Registration of a confusingly similar domain name with the intent to disrupt business by passing off as a complainant to confuse users for the purpose of financial gain can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 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.”); As the Panel recalls, Complainant provides screenshots showing Respondent’s resolving website with hyperlinks to third party websites and software downloads. See Amend. Compl. pp. 6-7. Complainant submits that Respondent uses the disputed domain name to create an appearance of affiliation with Complainant that confuses and misleads users. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent registered the <yahoomessenger.ro> domain name with actual knowledge of Complainant’s rights in the YAHOO! mark based on Respondent’s use of the YAHOO! mark and Respondent’s resolving website directly using several combinations of the YAHOO! mark. Use of a mark to divert Internet traffic to a disputed domain name where a respondent passes itself off as a complainant can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant argues that Respondent’s use of the YAHOO! mark and Respondent’s resolving website demonstrate Respondent’s actual knowledge of Complainant’s rights in the marks prior to registration of the disputed domain name. As the Panel agrees, it finds Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoomessenger.ro> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: March 25, 2023
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