DECISION

 

Yahoo Inc. v. sunting / ya hu dian shang / sun ting / ya hu shang cheng

Claim Number: FA2401002077564

 

PARTIES

Complainant is Yahoo Inc. ("Complainant"), represented by Joseph C. Daniels-Salamanca of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is sunting / ya hu dian shang / sun ting / ya hu shang cheng ("Respondent"), Vietnam.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <yahoocco.xyz>, <yahoocco.shop>, <yahoocco.top>, <yahoocco.co>, <yahoocco.org>, <yahoocco.net> and <yahoocco.com>, (the "Domain Names") registered with Gname.com Pte. Ltd. and Dynadot Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 3, 2024; Forum received payment on January 3, 2024.

 

On January 4, 2024, Gname.com Pte. Ltd. and Dynadot Inc confirmed by e-mail to Forum that the <yahoocco.xyz>, <yahoocco.shop>, <yahoocco.top>,<yahoocco.co>, <yahoocco.org>, <yahoocco.net> and <yahoocco.com> Domain Names are registered with Gname.com Pte. Ltd. and Dynadot Inc and that Respondent is the current registrant of the names. Gname.com Pte. Ltd. and Dynadot Inc have verified that Respondent is bound by the Gname.com Pte. Ltd. and Dynadot Inc registration agreements 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 10, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2024 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@yahoocco.xyz, postmaster@yahoocco.shop, postmaster@yahoocco.top, postmaster@yahoocco.co, postmaster@yahoocco.org, postmaster@yahoocco.net and postmaster@yahoocco.com. Also on January 10, 2024, 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 January 31, 2024 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder." The Domain Names are all similarly constructed with the addition of the random letters 'cco'. The Complainant has linked the WhoIs details for the Domain Names which hold many identical or similar details including the same e mail address, telephone number and city for the registrant. Further, all the Domain Names point to almost identical sites using the Complainant's YAHOO! mark without its exclamation mark but otherwise in its logo form in their mastheads offering competing on line shopping services. The Respondent has not answered this Complainant or challenged any of these assertions. The Panel finds it more likely than not that the Domain Names have been registered by the same entity and this Complaint may proceed against all of them.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant's contentions can be summarised as follows:

 

The Complainant is the owner of the mark YAHOO! registered, inter alia, in the USA for on line shopping services with first use recorded as 2013.

 

The Domain Names registered in 2023 are confusingly similar to the Complainant's mark removing its exclamation mark and adding only the additional letters "cco" and the gTLDs .xyz .shop .top .net .org or .com or the ccTLD .co none of which prevents such confusing similarity.

 

Respondent has no rights or legitimate interests in the Domain Names, is not commonly known by them and is not authorised by the Complainant.

 

The Domain Names have been used for near identical sites offering competing on line shopping services using the Complainant's trade mark without its exclamation mark, but otherwise in its logo form in their mastheads using a purple colour scheme similar to the Complainant. This is registration and use in bad faith diverting and confusing Internet users in full knowledge of the Complainant for commercial gain.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the mark YAHOO! registered, inter alia, in the USA for on line shopping services with first use recorded as 2013.

 

The Domain Names registered in 2023 have all been used for near identical sites offer competing on line shopping services using the Complainant's trade mark without its exclamation mark, but otherwise in its logo form in their mastheads using a purple colour scheme similar to the Complainant.

 

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 Domain Names consist of a version of the Complainant's YAHOO mark (which is registered, inter alia, in the USA for on line shopping services with first use recorded as 2013) without its exclamation mark, adding the letters 'cco' and the gTLDs .com, .xyz, .shop, .top, .net, or .org or the ccTLD .co.

 

Removal of the exclamation mark from the Complainant's mark as punctuation does not prevent confusing similarity between the Complainant's mark and the Domain Names or any of them. Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark).

 

Adding random letters and a TLD to a mark does not prevent confusion between a resultant domain name and that mark. See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds "the letters 'btc' and the gTLD .com which do not distinguish the Domain Name from Complainant's mark.") See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant's entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain names and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).

 

Accordingly, the Panel holds that the Domain Names are all confusingly similar to the Complainant's registered 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 mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names or any of them. 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 Domain Names have been used for commercial purposes which is not legitimate non commercial fair use.

 

The Domain Names have all been used for near identical sites which offer competing shopping services using the Complainant's mark in its logo form, albeit without its exclamation mark, in their mastheads and a similar purple colour scheme to the Complainant. The Panel finds this confusing and impersonation. Offering competing 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 Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) ("Respondent's use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use" where "Respondent is apparently using the disputed domain name to offer for sale competing services."). 

 

The Respondent has not answered this Complaint or rebutted the prima face case evidenced by the Complainant as set out herein.

 

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

The use of the Complainant's logo and purple colour scheme as a masthead shows the Respondent had actual knowledge of the Complainant and its business and services. Diverting and confusing Internet users by providing competing services for commercial gain is confusing and disruptive and evinces bad faith registration and use. See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent's use of the disputed domain name to offer competing loan services disrupts Complainant's business under Policy ¶ 4(b)(iii)); See also Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) ("Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.").

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under para 4 (b)(iii) and (iv).

 

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 <yahoocco.xyz>, <yahoocco.shop>, <yahoocco.top>, <yahoocco.co>, <yahoocco.org>, <yahoocco.net> and <yahoocco.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Dawn Osborne, Panelist

Dated: January 31, 2024