Oath Inc. v. Mira Hold / Mira Holdings, Inc
Claim Number: FA1908001858330
Complainant is Oath Inc. (“Complainant”), represented by David Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Mira Hold / Mira Holdings, Inc (“Respondent”), represented by Howard Neu of Law Office of Howard Neu, P.A., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ymobile.com>, registered with DropCatch.com 790 LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Karl V. Fink (Ret). (Chair); Steven M. Levy and The Honourable Neil Anthony Brown QC as Panelists.
Complainant submitted a Complaint to the Forum electronically on August 20, 2019; the Forum received payment on August 20, 2019.
On August 21, 2019, DropCatch.com 790 LLC confirmed by e-mail to the Forum that the <ymobile.com> domain name is registered with DropCatch.com 790 LLC and that Respondent is the current registrant of the name. DropCatch.com 790 LLC has verified that Respondent is bound by the DropCatch.com 790 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 27, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2019 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 firstname.lastname@example.org. Also on August 27, 2019, 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.
A timely Response was received and determined to be complete on September 19, 2019.
On September 24, 2019, Complainant’s timely additional submission was received.
On September 26, 2019, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Karl V. Fink (Ret). (Chair); Steven M. Levy and The Honourable Neil Anthony Brown QC as Panelists.
On September 30, 2019, Respondent’s timely additional submission was received.
All submissions were considered by the Panel.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant claims use, registration and ownership of the YAHOO, Y! and YMOBILE marks used in connection with a variety of internet-based goods and services including mobile software applications. Complainant has rights in the YMOBILE mark through its use in commerce as well as trademark registrations with the Japanese Intellectual Property Office (e.g., YMOBILE - Reg. No. 5,705,727, registered Sep. 26, 2014) and the Y! mark through United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,638,064, registered Oct. 22, 2002). Respondent’s <ymobile.com> domain name is confusingly similar to both Complainant’s Y! and YMOBILE marks as: (1) it incorporates the mark in its entirety, (2) adds the descriptive term “mobile” to the Y! mark, and (3) adds a “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <ymobile.com> domain name. Respondent is not authorized to use Complainant’s marks and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to generate click-through revenue from competing hyperlinks. Respondent also attempts to sell the disputed domain name to the public for $75,000.00.
Respondent registered and uses the <ymobile.com> domain name in bad faith. Furthermore, Respondent attempts to attract, for commercial gain, users to the disputed domain name where it features pay-per-click links to Complainant’s competitors. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the YMOBILE and Y! marks prior to registering the disputed domain name.
Respondent is a Minnesota Corporation that does not do business in Japan, nor had any knowledge of Complainant’s mark at the time it purchased the <ymobile.com> domain name on April 14, 2019 for $5,150.00. Respondent’s USPTO search yielded no results for Complainant’s alleged rights in the YMOBILE mark. Complainant only has trademarks in the stylized “Y” and Y! marks. Respondent’s disputed domain name is not confusingly similar to Complainant’s Y! mark and Respondent has not attempted to mislead or create confusion.
Respondent has legitimate interests in the <ymobile.com> domain name. Respondent is a generic domain name reseller. Respondent purchased the disputed domain name as it is a valuable generic business name. A single letter in front of the generic term “mobile” is valuable. Respondent does not attempt to exploit Complainant’s trademark and there is no reference to Complainant’s Y! mark at the disputed domain name’s resolving website. Respondent is also preparing to use the disputed domain name, which is currently up and running.
Respondent did not register or use the <ymobile.com> domain name in bad faith. Respondent did not attempt to target Complainant’s YMOBILE mark when it offered to sell the disputed domain name to the public. Respondent is a generic domain name reseller who is in the business of registering domain names that incorporate letters coupled with generic terms (i.e. “mobile”). Respondent did not have knowledge of Complainant’s YMOBILE mark and it is likely not as famous as Complainant alleges.
C. Complainant’s Additional Submission
Complainant has proven it has rights in the Y!, Y, and YMOBILE Marks under the UDRP Policy.
Registration of a mark with a governmental authority is sufficient to prove rights under Policy ¶ 4(a)(i).
The Law does not require Complainant to prove actual confusion to satisfy UDRP Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the Infringing Domain Name; and the Infringing Domain Name was registered and is being used in bad faith.
Respondent has not proven that it made use or demonstrable preparations to use the Infringing Domain Name in connection with a bone fide offering of goods or services before any notice to Respondent of this dispute as required by UDRP Policy ¶ 4(c)(i).
Despite Respondent’s claim to only register domain names containing common dictionary terms, it has also registered numerous domain names incorporating famous marks and common misspellings of famous marks including <craigslist.org>, <marriottsilver.com>, and <mercedescenter.com>. This demonstrates a pattern of bad faith registration under Policy ¶ 4(b)(ii).
D. Respondent’s Additional Submission
Complainant, Oath, Inc., has no standing to bring this action. Complaint’s ANNEX 4 shows that all trademarks alleged to be registered by Complainant were actually registered by Yahoo!, Inc. but there is no record of transference of the assets of Yahoo!, Inc. to Oath, Inc. nor is there any allegation in the Complaint that Oath, Inc. is a Successor-in-interest to the assets of Yahoo!, Inc.
Complainant wrongfully alleges that Respondent requires that Complainant had to have a U.S. trademark to prevail. There is no requirement in UDRP cases or Rules that the Respondent must go to every agency in the world to determine whether there is a trademark that is identical or confusingly similar to a domain name.
Respondent showed many examples of names that it and others owned that combined alphabetical letters, including the letter Y, with generic words that have a valuable meaning.
Respondent’s registration of other domain names that incorporate third-party trademarks does not demonstrate a pattern of bad faith registration as Respondent participates in the authorized programs of such websites as ProtectedParking.com and Siteplug.com by which traffic to such domain names is sent back to the correct domain of the respective trademark owner.
After reviewing Complainant’s and Respondent’s submissions, the Panel finds the following:
(1) the domain name registered by Respondent is confusingly similar to a mark in which Complainant has established trademark rights;
(2) Respondent has rights or legitimate interests in respect of the domain name; and
(3) the domain name has not been registered and used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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.
Complainant claims rights in the Y! mark based upon registration of the mark with the USPTO (e.g., Reg. No. 2,638,064, registered Oct. 22, 2002) and the YMOBILE mark with the Japanese Intellectual Property Office (e.g., YMOBILE - Reg. No. 5,705,727, registered Sep. 26, 2014). The USPTO Records show assignment of Complainant’s registrations to Complainant Oath, Inc. Registration of a mark with one or multiple trademark offices around the world is sufficient to establish rights in that mark. See Teleflex Incorporated v. Leisa Idalski, FA 1794131 (Forum July 31, 2018) (“Registration of a mark with governmental trademark agencies is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i).”); see also Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”). A complainant is not required to register a mark in the country where the respondent resides. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel finds that Complainant’s registration of the Y! mark with the USPTO and the YMOBILE mark with the Japanese Intellectual Property Office is sufficient to establish rights in the marks under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <ymobile.com> domain name is confusingly similar to the Y! or YMOBILE mark, as the name incorporates the mark in its entirety, merely adds the term “mobile” to the Y!, and adds a “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The exclusion of the exclamation point is also irrelevant. See 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). The Panel finds that the <ymobile.com> domain name is confusingly similar to the YMOBILE mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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”).
The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
Respondent claims to have legitimate interests in the <ymobile.com> domain name. Respondent argues that it acquired the disputed domain name in 2019 as it is a valuable generic business name, which is comprised of the letter “y” followed by the generic term “mobile.” Generic domain name reselling is considered to be a legitimate business so long as it does not appear that the Respondent attempts to target the Complainant’s mark. See Platterz Inc. v. Andrew Melcher, FA 1729887 (Forum June 19, 2017) (holding that “investing in genuinely generic terms, for purpose of resale, is a legitimate business and that the acquisition of domain names consisting of common, dictionary terms for resale can confer rights and legitimate interests upon entrepreneurs who engage in this activity”); see also Walsh Bishop Assocs. v. Honggi, Honggi Kim, FA 907521 (Forum Mar. 6, 2007) (“[A] respondent may have a legitimate interest in a domain name if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word.”). Respondent provides examples of domain names that incorporate a letter followed by the “mobile.com” domain names in support of its generic domain name argument.
Respondent further contends that it has legitimate interests in selling the <ymobile.com> domain name as it is comprised of generic terms. Furthermore, Respondent argues that it did not intend to capitalize on Complainant’s YMOBILE mark, a mark it had no notice of prior to acquiring the disputed domain name. Generic domain name resellers may have legitimate interests in selling generic domain names at a premium under a Policy ¶ 4(a)(ii) analysis. See Front Range Internet, Inc. v. Murphy, FA 145231 (Forum Apr. 4, 2003) (“In some circumstances, the trading of domain name registrations is considered a bona fide offering of goods and services.”); see also Alphalogix Inc. v. DNS Servs., FA 491557 (Forum July 26, 2005) (“Respondent is in the business of creating and supplying names for new entities, including acquiring expired domain names. This is a legitimate activity in which there are numerous suppliers in the United States.”). Respondent does provide searches with the USPTO for the YMOBILE mark and examples of other domain names that incorporate a letter attached to “mobile.com.” The Panel finds that Respondent does have rights and legitimate interests in respect of the disputed domain name per Policy ¶ 4(a)(ii).
Complainant has not proved this element.
Respondent contends that its offer to sell the <ymobile.com> domain name does not demonstrate bad faith as it was not attempting to target Complainant’s Y! or YMOBILE mark, and Respondent had no knowledge of the YMOBILE mark’s existence. A respondent may have legitimate interests to sell a domain name that is fully comprised of generic terms, so long as it does not appear that it intended to capitalize on a mark’s goodwill. See JCM Germany GmbH v. McClatchey Jr., D2004-0538 (WIPO Sept. 17, 2004) (holding that the respondent did not violate Policy ¶ 4(b)(i) by attempting to sell the disputed domain name for profit because the respondent did not register the domain name with the intent to sell it to the complainant or one of its competitors); see also Aftermarket Auto Parts Alliance, Inc. v. This Domain for Sale, Toll Free: 866-822-9073 Worldwide: 339-222-5132 a/k/a BuyDomains.com, FA1202001428939 (Forum Mar. 16, 2012) (finding that the respondent did not register the domain name primarily for the purpose of selling the disputed domain name to the complainant or its competitors under Policy ¶ 4(b)(i), where the respondent stated that it buys domain names considered to be generic so that it may resell them at a later date). Respondent also provides searches with the USPTO for the YMOBILE mark and examples of other domain names that incorporate a letter attached to “mobile.com.”
Respondent further contends that the disputed domain name’s resolving website makes no mention of Complainant’s Y! mark nor redirects users to Complainant’s competitors. There is no evidence that Respondent is targeting Complaint. Respondent has not mentioned Complainant or attempted to pass itself off as Complainant. A respondent may be found to have registered a domain name in good faith where it is fully comprised of generic terms and does not attempt to capitalize on the fame of a mark. See Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Forum Feb. 13, 2001) (holding that, where the domain name is comprised of a generic term, it is difficult to conclude that there was a deliberate attempt to confuse on behalf of the respondent, and stating that “[i]t is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them”); see also Goepfert v. Rogers, FA 861124 (Forum Jan. 17, 2007) (“The common usage of the terms “sentiment” and “trader” in the financial services industry further support [the] respondent’s claim that he did not deliberately register the disputed domain name in bad faith.”). Respondent further contends that it had no notice of Complainant’s YMOBILE mark and provides searches for the mark with the USPTO and Google search for the “Y” and “Y!” mark, alleging that the marks are not as famous as Complainant claims.
The Panel finds that Respondent did not register and use the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has not proved this element.
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall NOT BE GRANTED.
Accordingly, it is ORDERED that the <ymobile.com> domain name REMAIN with Respondent.
Hon. Karl V. Fink (Ret). (Chair); Steven M. Levy and The Honourable Neil Anthony Brown QC as Panelists.
Hon. Karl V. Fink (Ret.), for the Panel
Dated: October 8, 2019
I respectfully dissent.
While I concur with my fellow Panelists that the Complainant has demonstrated its rights in the YMOBILE trademark and that the <ymobile.com> domain name is confusingly similar thereto, I disagree with their findings under Policy ¶ 4(a)(ii) and (iii).
Complainant has established a prima facie case under Policy ¶ 4(a)(ii) which Respondent has not adequately rebutted. Investing in generic domain names and using them to display pay-per-click links can be a bona fide offering of services. However, the disputed domain name has been found to be confusingly similar to the Complainant’s trademarks and the pay-per-click links on its resulting website do relate to Complainant’s field of business (e.g., headings titled “Download software for free”, “Games for Download”, and “Download for free”). Apart from the fact that Complainant does publish a mobile app, it is also well-known for its online games and other software offerings (email, news, social, etc.). As such, I disagree with the majority’s statement that the disputed domain name does not “redirect users to Complainant’s competitors” and would find that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i). Respondent’s citation of other single-letter + “mobile” domain names has no bearing on the use to which it puts the disputed domain or, at a minimum, leaves much room for assumption that is not supported by any evidence in this case. As such, taking into account the full context of this case, I cannot conclude that the disputed domain name is merely generic or that the links at its resolving website are related only to the generic meaning in the terms of which it is composed.
As to the issue of bad faith under Policy ¶ 4(a)(iii), I note that while the Respondent claims it did some investigation into the YMOBILE name, it failed to take the most basic step of inputting the term “ymobile” into a readily available search engine and that this would have quickly alerted it to the Complainant’s mark and the likelihood that the <ymobile.com> domain name would impinge upon that mark.
In its Additional Submission, Respondent claims that it “reviewed the U.S.P.T.O for а trademark for У MOBILE, which did not exist and that Respondent was not required to determine if Complainant had а registered trademark in Japan.” It goes on to point out that “[t]here is no requirement in UDRP cases or Rules that the Respondent must go to every agency in the world to determine whether the Complainant has a trademark.” While I agree that the Policy does not require that domain investors go to any extraordinary lengths mentioned by Respondent, it is noteworthy that Respondent, as a longstanding professional domain investor, reviewed USPTO records for the letter-string YMOBILE and further notes, in its Response, that “a GOOGLE search for ‘Y’ and ‘Y!’ shows no reference to the Complainant on the first 10 pages.” By taking these actions Respondent indicates that it is sufficiently sophisticated to conduct at least some form of investigation into the possibility that trademark rights exist for domain names that it is considering acquiring.
Under the theory of willful blindness, a sophisticated domain name investor with large holdings is held to a higher standard. It cannot turn a blind eye to the possibility that certain domain names in its portfolio run afoul of the Policy by copying a trademark in which some other party has rights and by using those domain names in a manner that inadvertently targets such rights. In Compart AG v. Compart.com / Vertical Axis, Inc., D2009-0462 (WIPO July 9, 2009), the Panel ordered the transfer of the domain <compart.com> and stated:
Even if the Respondent did not specifically know of the Complainant or of its trade mark rights when it registered the disputed domain name, the finding of bad faith registration would be confirmed under the circumstances of this case by the Respondent’s “willful blindness”. The Respondent is evidently a professional domainer. Previous panels have found that a sophisticated domainer who regularly registers domain names for use as PPC landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights (see, for example, Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006, <lanson.com>).
* * *
Accordingly, the very strong inference in this case is that either the Respondent in fact closed its eyes to whether the Domain Name was identical or confusingly similar to a trademark in which a third party had rights, or the Respondent did make some enquiries and as a result had knowledge of the Complainant at the time of registration. Without deciding whether either of these inferences standing alone would support a finding of bad faith registration, the Panel concludes that such a finding is appropriate in this case.
Id. See also, mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., D2007-1141 (WIPO Nov. 30, 2007) (“a sophisticated domainer who regularly registers domain names for use as [pay-per-click] landing pages cannot be willfully blind to whether a particular domain may violate trade mark rights.”); The Fragrance Foundation Inc. v. Texas International Property Associates, D2008-0982 (WIPO Aug. 28, 2008) (“Especially when the trademark is already publicly registered … prior to domain name registration, and the respondent is involved in the business of registering thousands of domain names, panels consider a higher standard of diligence on the part of domainers to be appropriate.” * * * “[P]eople who make a living from registering vast numbers of domain names must make a reasonable effort ... to ensure that they are not infringing on the rights of others.”); Mobile Communication Service Inc. v. WebReg, RN, D2005-1304 (WIPO Feb. 24, 2006) (Respondent, an experienced domainer, was not entitled to shield its conduct by “closing its eyes” to whether the names it was registering were identical or confusingly similar to a third party’s trade mark).
Further, the WIPO Overview 3.0, at par. 3.2.3 Willful blindness and the duty to search for and avoid trademark abusive registrations notes that Panels may consider whether a domain name investor has “undertaken good faith efforts to screen such registrations against readily available online databases to avoid the registration of trademark abusive domain names.” [emphasis added].
Under the circumstances of the present case, I cannot conclude that the Respondent, a professional and sophisticated domain investor with a large portfolio, took reasonable steps to avoid an abusive registration of the <ymobile.com> domain name. Had it input the term “ymobile” into the Google.com or another readily available search engine it would have immediately seen that the results prominently and almost exclusively relate to Complainant and its YMOBILE mark and that the disputed domain name was very likely to target such mark.
Finally, the Respondent disputes Complainant’s claim that it has engaged in a pattern of conduct by registering domain names that copy the trademarks of others (e.g., <craigslist.org>, <marriottsilver.com>, and <mercedescenter.com>). It states that these domains were essentially registered with the permission of the respective trademark owners and claims that Respondent participates in such programs as ProtectedParking.com and Siteplug.com through which user traffic for typo and other brand-driven domain names is redirected to the respective trademark owner’s legitimate website. However, it provides no evidence to support this rather unusual and important defense to the Complainant’s claim of bad faith under Policy ¶ 4(b)(ii).[i]
For reasons stated above, I find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv) and, thus, under 4(a)(iii).
Steven M. Levy
Dated: October 8, 2019
[i] Respondent’s failure to submit a critical piece of evidence seems particularly suspect in view of its incorrect statement that “there is no record of transference of the assets of Yahoo!, Inc. to Oath, Inc. nor is there any allegation in the Complaint that Oath, Inc. is a Successor-in-interest to the assets of Yahoo!, Inc.” Recorded assignments of Complainant’s cited U.S. trademark registrations from Yahoo!, Inc. to Oath, Inc. are readily accessible at the USPTO website with which Respondent has already noted its familiarity.
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