DECISION

 

Yahoo Inc. v. Aadil Afzal

Claim Number: FA2402002083463

 

PARTIES

Complainant is Yahoo Inc. ("Complainant"), represented by Griffin Barnett of Perkins Coie LLP, District of Columbia, USA. Respondent is Aadil Afzal ("Respondent"), Pakistan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bestengadget.com>, registered with OnlineNIC, Inc.

 

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 12, 2024; Forum received payment on February 12, 2024.

 

On , OnlineNIC, Inc. confirmed by e-mail to Forum that the <bestengadget.com> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, Inc. 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 February 15, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 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@bestengadget.com. Also on February 15, 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 March 7, 2024, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant is a well-known Internet and online content services company, and the owner of the ENGADGET technology blog network, which was founded in 2004. The ENGADGET blogs provide daily coverage relating to consumer electronics and other technology products. Engadget reaches over 20 million readers per month, and its social media accounts have millions of followers. Complainant has rights in the ENGADGET mark based upon trademark registrations, inter alia, with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,232,307 registered on April 24, 2007). The disputed domain name is confusingly similar to Complainant's ENGADGET mark because it contains Complainant's mark in its entirety adding a descriptive term "best" and the ".com" gTLD .

 

ii) Respondent has no legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the ENGADGET mark.  Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name is used in connection with a blog website that features technology articles that are highly similar to, and competes with, Complainant's Engadget technology blog websites. Respondent has no colorable argument that he registered the disputed domain name containing the ENGADGET mark coincidentally and without knowledge of Complainant's rights in this mark.

 

iii) Respondent registered and uses the disputed domain name in bad faith. The unique qualities of the ENGADGET mark, which was adopted and registered well prior to the registration of the disputed domain name, make it extremely unlikely that Respondent created the disputed domain name independently. Given Respondent's registration of the disputed domain name that fully incorporates the ENGADGET mark, it is impossible to conceive of any potential legitimate use of the disputed domain name. As the disputed domain name is so obviously connected with Complainant's well-known name and products, Respondent's use of the disputed domain name suggests opportunistic bad faith. Respondent's use of the disputed domain name to redirect Internet users seeking Complainant's services to the disputed domain name's resolving website offering identical or competing services evinces bad faith. Respondent's failure to respond to Complainant's demand letter is further evidence of Respondent's bad faith registration and use of the disputed domain name.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on November 24, 2023.

 

2. Complainant has established rights in the ENGADGET mark based upon registration, inter alia, with the USPTO (e.g., Reg. No. 3,232,307 registered on April 24, 2007).

 

3. The disputed domain name is used in connection with a blog website that features technology articles that are highly similar to, and competes with, Complainant's Engadget technology blog websites.

 

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

Complainant claims rights in the ENGADGET mark based upon registration, inter alia, with the USPTO (e.g., Reg. No. 3,232,307 registered on April 24, 2007). Registration of a mark with the USPTO is a valid showing of rights in a mark. Since Complainant provides evidence of registration of the ENGADGET mark with the USPTO, the Panel finds that Complainant has established rights in the mark under Policy 4(a)(i).

 

Complainant contends that the disputed domain name <bestengadget.com> is confusingly similar to Complainant's ENGADGET mark because it contains Complainant's mark in its entirety. The addition of the descriptive term "best" and the ".com" gTLD does not negate the confusingly similarity of the disputed domain name. The use of a mark in its entirety with the mere addition of a descriptive term or a gTLD fails to sufficiently distinguish a disputed domain name for the purposes of Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) ("When a respondent's domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), ".com", then the Panel may find that the disputed domain name is identical to Complainant's mark."); 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).").  Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant's mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 that Respondent has no rights or legitimate interests in the disputed domain name.  Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. 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). The Panel notes that the WHOIS information identifies "Aadil Afzal" as the registrant.  Complainant asserts that nothing in the record demonstrates that Respondent is commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its ENGADGET mark. The Panel thus finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name in connection with a blog website that features technology articles that are highly similar to, and competes with, Complainant's Engadget technology blog websites. The use of a disputed domain name to offer goods and/or services that compete with a complainant's business is neither a bona fide offering of goods or services per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(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."); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that "use of a domain to sell products and/or services that compete directly with a complainant's business does not constitute 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).").

 

Complainant provides a screenshot of the disputed domain name's resolving website, which features technology articles that are highly similar to, and competes with, Complainant's Engadget technology blog websites. Therefore, the Panel finds Respondent does not use the disputed domain name for any bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

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.

 

Registration and Use in Bad Faith

Complainant contends that Respondent's use and registration of the disputed domain name constitutes bad faith because Respondent uses the disputed domain name in connection with a blog website that features technology articles that are highly similar to, and competes with, Complainant's Engadget technology blog websites. The use of a disputed domain name to offer competing services and/or goods is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA 1579141 (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."); see also Bank of America, National Association v. Marcos Alexis Nelson, FA 1621654 (Forum July 2, 2015) (finding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where it used the disputed domain name to promote its business in real estate and financial services, which were services that competed with the services the complainant offered).

 

The Panel recalls that Complainant provides a screenshot of the disputed domain name's resolving website, which features technology articles that are highly similar to, and competes with, Complainant's Engadget technology blog websites. The Panel finds that using a confusingly similar domain name to host a website that seeks to divert from and directly competes with Complainant's business is considered bad faith disruption and attraction for commercial gain. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 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 <bestengadget.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: March 7, 2024