DECISION

 

Yext, Inc. v. Registration Private / Domains By Proxy, LLC

Claim Number: FA2310002065117

 

PARTIES

Complainant is Yext, Inc. ("Complainant"), represented by Matthew P. Hintz of Lowenstein Sandler LLP, New Jersey, USA. Respondent is Registration Private / Domains By Proxy, LLC ("Respondent"), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <yext.ai>, registered with 1API GmbH.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 5, 2023; Forum received payment on October 5, 2023.

 

On October 9, 2023, 1API GmbH confirmed by e-mail to Forum that the <yext.ai> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 October 10, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@yext.ai. Also on October 10, 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 October 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

Complainant is an online marketing and search company. It is the leading provider of digital knowledge management technology and advertising solutions. Its platform and technology give companies control over their online brand experiences throughout maps, apps, search engines, voice assistants, and other intelligent services by connecting the companies' information to platforms used by their customers.

 

Complainant has rights in the YEXT trademark as it has registered such mark with the USPTO.

 

Complainant's YEXT trademark is confusingly similar or identical to Respondent's domain name as Respondent merely adds the top-level "al" to Complainant's mark to form the at-issue domain name.

 

Respondent lacks rights and legitimate interests in the at-issue domain name. Complainant has not authorized Respondent to use its trademark for any purpose.  Respondent is not commonly known by the domain name. Respondent fails to use the domain name for a bona fide offering of goods or services instead Respondent uses the domain name to redirect to a website providing online marketing and search services that compete with Complainant's offering.

 

Respondent registered and uses the at-issue domain name in bad faith. The at-issue domain name was registered and used to profit from the exploitation of Complainant's trademark by diverting traffic intended for Complainant to Respondent's website. Respondent used a privacy service in registering the domain name. Respondent had actual knowledge of Complainant's rights in YEXT when it registered the <yext.ai> domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in the YEXT trademark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired rights in the YEXT trademark.

 

Respondent uses the at-issue domain name to redirect internet traffic to a website where services are offered that compete with Complainant's offering.

 

DISCUSSION

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").

 

Identical and/or Confusingly Similar

The at-issue domain is confusingly similar to a trademark in which Complainant has rights.

 

Complainant's USPTO registration for YEXT establishes Complainant's rights in YEXT for the purposes of Policy 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant's USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).

 

The at-issue domain name consists of Complainant's YEXT trademark followed by the ".ai" top level. The differences between Respondent's domain name and Complainant's trademark are insufficient to distinguish Respondent's <yext.ai> domain name from Complainant's trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent's <yext.ai> domain name is confusingly similar to Complainant's YEXT trademark. See Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) ("Complainant asserts Respondent's <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).").

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant's prima facie showing acts conclusively.

 

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of the at-issue 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)").

 

The WHOIS information for <yext.ai> reveals that "Registration Private Domains by Proxy, LLC" is the domain name's registrant and there is nothing in the record that suggests that Respondent is known by the at-issue domain name. Therefore, the Panel finds that Respondent is not commonly known by <yext.ai> under Policy ¶ 4(c)(iii). See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) ("The WHOIS information of record lists the registrant as "Robert Chris," and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).").

 

Respondent uses the <yext.ai> domain name to address a website related to products that compete with Complainant's offering. Such use of the domain name is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) ("Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use."); see also, Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent's use of the complainant's LIFESTYLE LOUNGE mark to redirect internet users to respondent's own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and demonstrates Respondent's lack of rights and lack of legitimate interests in respect of the at-issue domain name.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, bad faith circumstances are present which permit the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

 

First, Respondent uses its confusingly similar domain name to misdirect internet users seeking Complainant to Respondent's website. Respondent's use of the <yext.ai> domain name to redirect internet traffic intended for Complainant to Respondent's designated website is disruptive to Complainant's business and demonstrates Respondent's bad faith registration and use of the at-issue domain name under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(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); see also, Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent's competing website); see also, Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA 1409001579141 (Forum Oct. 15, 2014) ("Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.").

 

Moreover, Respondent had actual knowledge of Complainant's rights in the YEXT mark when it registered <yext.ai> as a domain name. Respondent's actual knowledge is evident from the notoriety of Complainant's trademark and from Respondent's use of the domain name to direct traffic intended for Complainant to Respondent's competing website at <yext.ai>.  Respondent's registration and use of the confusingly similar or identical <yext.ai> domain name with knowledge of Complainant's rights in YEXT further shows Respondent's bad faith pursuant to Policy ¶4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant's field of operation); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <yext.ai> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: November 1, 2023