DECISION

 

Yahoo Inc. v. no / lar frank

Claim Number: FA2502002138603

 

PARTIES

Complainant is Yahoo Inc. ("Complainant"), represented by Joseph C. Daniels-Salamanca of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is no / lar frank ("Respondent"), Philippines.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yalhoo.co>, registered with NameSilo, LLC.

 

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 4, 2025; Forum received payment on February 4, 2025.

 

On February 4, 2025, NameSilo, LLC confirmed by e-mail to Forum that the <yalhoo.co> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the names. 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 February 10, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2025 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@yalhoo.co. Also on February 10, 2025, 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 4, 2025, 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, Yahoo Inc., is a well-known media company. Complainant has rights in the YAHOO! mark based on its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,040,222, registered February 25, 1997). The disputed domain name is confusingly similar to Complainant's YAHOO! mark because it merely inserts a single letter "L" between the "A" and "H," which constitutes an evident case of typosquatting, and appends the ".co" top-level domain while omitting the exclamation point.

 

ii) Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or for any legitimate or fair use. Instead, Respondent employs the disputed domain name to impersonate and pass itself off as Complainant by operating a website that mimics Yahoo's official Taiwan-specific Yahoo! News site in furtherance of a phishing scheme.

 

iii) Respondent registered and is using the disputed domain name in bad faith. Respondent utilizes the disputed domain name to impersonate Complainant and disrupt Complainant's business. Respondent's actions include impersonating and passing itself off as Complainant by hosting a website that replicates Yahoo's official Taiwan-specific Yahoo! News site as part of a phishing scheme. The resolving website prominently displays an infringing reproduction of Complainant's well-known YAHOO! mark, identical in font, color, and stylization, alongside Chinese characters in the header. Additionally, links on the infringing website direct users to the official Taiwan-specific Yahoo! News site. Respondent has a documented history of engaging in similar bad faith conduct. Furthermore, Respondent had actual knowledge of Complainant's rights in the YAHOO! mark before registering the disputed domain name.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on December 1, 2024.

 

2. Complainant has established rights in the YAHOO! mark based on its registration with the USPTO (e.g., Reg. No. 2,040,222, registered February 25, 1997).

 

3. The disputed domain name resolves to a website that mimics Yahoo's official Taiwan-specific Yahoo! News site. The resolving website prominently displays an infringing reproduction of Complainant's well-known YAHOO! mark, identical in font, color, and stylization, accompanied by Chinese characters in the header.

 

4. Links on the infringing website redirect users to the official Taiwan-specific Yahoo! News site.

 

5. Respondent has a documented history of engaging in similar bad faith conduct in prior UDRP proceedings.

 

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 asserts rights in the YAHOO! mark (e.g., Reg. No. 2,040,222, registered February 25, 1997) based on its registration with the USPTO. Registration with a governmental trademark authority is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). As Complainant provides evidence of trademark registration, the Panel finds that Complainant has established rights in the YAHOO! mark under Policy ¶ 4(a)(i).

 

Complainant argues that the disputed domain name, <yalhoo.co>, is confusingly similar to Complainant's YAHOO! mark because it merely inserts a singular letter "L" between the "A" and "H," which constitutes an evident case of typosquatting, and appends the ".co" top-level domain while omitting the exclamation point. The inclusion of the dominant portion of a complainant's mark, as well as a typo-squatted version of the mark, does not preclude a finding of confusing similarity under Policy ¶ 4(a)(i). See Alliant Energy Corporation v. See PrivacyGuardian.org / Domain Administrator, FA2056442 (Forum Sep. 2, 2023) ("[T]he Panel finds that the addition of a letter and a generic term such as 'inc' and a gTLD fails to sufficiently distinguish the disputed domain name from Complainant's mark under Policy ¶ 4(a)(i)"); see also Chevron Intellectual Property LLC v. Rodrigue Wahib, FA1990964 (Forum May 9, 2022) ("[Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the newly fashioned string in a domain name, hoping that internet users will inadvertently type the malformed string when searching for products or services associated with the target trademark*]"). The omission of punctuation is similarly insufficient to negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Yahoo! Inc. v. HEIDI BUI, FA 1638878 (Forum Oct. 26, 2015) (finding that punctuation is not significant in determining the similarity of a domain name and a mark). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's mark under 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 Section 2.1, WIPO Jurisprudential Overview 3.0 ("Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").

 

Complainant argues that Respondent has no rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use Complainant's mark, and Respondent is not affiliated with Complainant. Relevant information, such as WHOIS information, can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The Panel notes that the WHOIS data lists "no / lar frank" as the registrant, and there is no evidence in the record to suggest Respondent was authorized to use the mark. Therefore, the Panel 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 for any legitimate or fair use because Respondent employs the disputed domain name to impersonate Complainant in an effort to divert Complainant's user base to the infringing website, which features competing and overlapping goods and services. Passing off as a complainant in order to sell competing goods or services does not constitute a bona fide offering of goods or services or a legitimate or fair use under Policy ¶ 4(c)(i) and (iii). See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017) ("A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.").

 

Here, Complainant provides a screenshot of the resolving website, which mimics Yahoo's official Taiwan-specific Yahoo! News site. The resolving website prominently displays an infringing reproduction of Complainant's well-known YAHOO! mark, identical in font, color, and stylization, accompanied by Chinese characters in the header. Additionally, links on the infringing website redirect users to the official Taiwan-specific Yahoo! News site. Therefore, the Panel finds that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate or fair use.

 

The Panel finds that Complainant has made out a prima facie case based on the considerations above. Each of these factors contributes to establishing a prima facie case against Respondent. As Respondent has neither filed a Response nor 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 asserts that Respondent registered and is using the disputed domain name in bad faith. Respondent diverts those seeking Complainant's goods and services to the infringing website to carry out a phishing scheme and create the false impression that Respondent is somehow affiliated with Complainant while offering competing services.

 

Use of a disputed domain name to divert Internet users to an infringing website and perpetrate a phishing scheme constitutes evidence of bad faith under Policy ¶ 4(b)(iii) and (iv). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent's apparent use of the disputed domain name in furtherance of a "phishing" scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith under 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."); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith under 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).

 

The Panel notes that Complainant provides a screenshot of the disputed domain name's resolving website, which mimics Yahoo's official Taiwan-specific Yahoo! News site. The resolving website prominently displays an infringing reproduction of Complainant's well-known YAHOO! mark, identical in font, color, and stylization, accompanied by Chinese characters in the header. Links on the infringing website redirect users to the official Taiwan-specific Yahoo! News site. The Panel determines that these actions by Respondent constitute bad faith conduct that disrupts Complainant's business. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii) and (iv).

 

Complainant further contends that Respondent registered the disputed domain name with knowledge of Complainant's rights in the YAHOO! mark. Constructive knowledge is insufficient for a finding of bad faith registration of a disputed domain name; actual knowledge, however, is sufficient for a finding of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.").

 

The Panel notes that Respondent used the disputed domain name in connection with the infringing website that features Complainant's mark and logo and incorporates various aspects of Complainant's services. The Panel infers, due to the notoriety of Complainant's mark and the manner in which the disputed domain name is used, that Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the YAHOO! mark, which constitutes bad faith registration of the disputed domain name under Policy ¶ 4(a)(iii).

 

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 <yalhoo.co> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: March 5, 2025