Yahoo Inc. v. Linus Scott / gnext technologies inc
Claim Number: FA2307002055573
Complainant is Yahoo Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Linus Scott / gnext technologies inc (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <golddesktop.shop>, (‘the Domain Name’) registered with NameSilo, LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on July 31, 2023; Forum received payment on July 31, 2023.
On August 1, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <golddesktop.shop> 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 August 1, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@golddesktop.shop. Also on August 1, 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 August 22, 2023 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 and/or other members of its group are the owner of the trade mark DESKTOP GOLD registered, inter alia, in the USA for computer related goods and services with first use recorded as 2016.
The Domain Name registered in 2023 is confusingly similar to the Complainant’s mark incorporating all elements of it and adding the gTLD ‘.shop’ 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 mark. The Respondent has no rights or legitimate interests in the Domain Name.
The Domain Name has been used for a competing site which uses all elements of the Complainant’s mark in its masthead, both ‘gold’ and ‘desktop’ to purport to offer downloads of the Complainant’s software requiring a log in, therefore collecting details from Internet users. It also uses the AOL mark owned by another member of the Complainant’s group to purport to be associated with the Complainant. 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.
The Respondent has also provided false details to the WhoIS database, in itself an indication of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant and/or other members of its group are the owner of the mark DESKTOP GOLD registered, inter alia, in the USA for computer related goods and services with first use recorded as 2016.
The Domain Name registered in 2023 has been used for a competing site which used all elements of the Complainant’s mark in its masthead, both ‘gold’ and ‘desktop’ to purport to offer downloads of the Complainant’s software requiring a log in, therefore collecting details from Internet users. It also used the AOL mark owned by another member of the Complainant’s group to purport to be associated with the Complainant. The Respondent has provided false details to the WhoIs database.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 all elements of the Complainant's DESKTOP GOLD mark (which is registered, inter alia, in the USA for computer related services and has been used since 2016), merely inverting the elements of the Complainant’s mark and adding the gTLD .shop.
Merely inverting the elements of a Complainant’s mark does not prevent confusing similarity for the purposes of the Policy. Hourglass Angel, LLC v. Pham Dinh Nhut, FA 1556334 (Forum June 12, 2014) (“Complainant also alleges that Respondent merely transposes the words “hourglass” and “angel” in the domain name and adds the generic top-level domain (“gTLD”) “.com.” … Likewise, the Panel concludes that Respondent’s is confusingly similar to Complainant’s HOURGLASS ANGEL mark because it transposes the words in the mark, adds a gTLD, and eliminates the space between the words.”).
The gTLD .shop does not serve to distinguish the Domain Name from the Complainant’s mark. 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 DESKTOP GOLD mark.
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 marks. 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 all elements of the Complainant's DESKTOP GOLD mark in its masthead to offer downloads of the Complainant’s software 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 or AOL another member of its group. It does not make it clear that there is no commercial connection with the Complainant or its corporate group. 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 all elements of the Complainant’s DESKTOP GOLD mark in its masthead to purport to offer the Complainant’s software requiring log in details. The reference to the AOL mark owned by a member of the Complainant’s group on the Respondent’s site shows that the Respondent is aware of the Complainant and its corporate group and their rights and business.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's 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). 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.”).
Providing false information at the time of a domain name’s registration may be evidence of respondent’s bad faith registration and use under Policy 4(a)(iii). See Farouk Systems, Inc. v. Jack King / SLB, FA1505001618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name). Here in the context of phishing providing false address details seems clearly in 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 <golddesktop.shop> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: August 23, 2023
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