The Complainant is Yahoo! Inc. of Sunnyvale, California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is Wankeqiang of Beijing, China / LinYu, Xiamen eName Technology Co.,Ltd. of Xiamen, Fujian Province, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eName Technology Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint and first amended Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 11, 2014 and April 14, 2014 respectively. On April 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 16, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 18, 2014.
On April 16, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On April 18, 2014, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended Complaints satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on April 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 14, 2014.
The Center appointed Douglas Clark as the sole panelist in this matter on May 16, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant provides services on the Internet including web directory and search services, email, chat, sports, games, stock quotes, real estate and mortgage information and rate quotes, movie reviews, news, weather, yellow pages directory services, maps, online shopping, travel reservations, classified advertising, audio and video streaming, and web-store hosting and management.
The Complainant was established in 1994 and trades under the name Yahoo! as well as the domain name . The Complainant has registered the trademark YAHOO! in a variety of classes in the United States since the late 1990s. The Complainant also has numerous registrations for YAHOO! in China.
The disputed domain name was registered on October 4, 2011. It does not resolve to any page. 5. Parties' Contentions A. Complainant
The Complainant's contentions are set out below.
The Complainant submits that the disputed domain name consists of the registered trademark YAHOO! (minus the exclamation mark) and the descriptive and generic word "screen". The disputed domain name is therefore made up of a generic or descriptive word and the Complainant's trademark and is thereby confusingly similar to the Complainant's trademark.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. It is not normally known by the name Yahoo or Yahooscreen. It has received no consent or license from the Complainant to use the Complainant's trademark in the disputed domain name.
The Complainant submits that the disputed domain name was registered and used in bad faith with the intention of attracting Internet users to the website. Despite the fact the web page the disputed domain name resolves to is not in operation the only possible use that could be made of the disputed domain name would be to infringe the Complainant's rights. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Language of the Proceeding
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The Complainant requested the language of the proceeding to be English the grounds that the Complainant did not understand Chinese and the costs of translation would be excessive given the nature of the proceeding. The Complainant added that English is the primary language in which the Complainant does business and that the disputed domain name contains English language words. The Respondent did not respond to this request.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with the Panel. As a first point, the Panel does not consider the Complainant's submission that it does not understand Chinese to be particularly strong. As an international business, it will conduct business in languages other than English.
Nevertheless, as was determined in Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008 1191, , a Respondent's failure to respond to a preliminary determination by the Center as to the language of the proceeding "should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint."
Further, as set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays in this matter.
Accordingly, as the only pleading before the Panel is in English, the Panel will render its decision in English. Substantive Decision
The Panel finds that this is a clear case of cybersquatting that the UDRP was designed to stop. The Panel agrees fully with the Complainant's arguments and accordingly will make on a short decision. A. Identical or Confusingly Similar
The disputed domain name is made up of the Complainant's registered trademark YAHOO! (minus the exclamation mark) and the generic word "screen". It is confusingly similar to the Complainant's registered trademark.
Paragraph 1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the "WIPO Overview 2.0"), sets out the test for determining confusing similarity. Paragraph 1.2 provides (in part):
"The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms […] typically being regarded as insufficient to prevent threshold Internet user confusion [...]"
The first element of the Policy is made out. B. Rights or Legitimate Interests
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the dispute domain name. The Respondent has not responded to the Complaint to assert any rights or legitimate interests in the disputed domain name. Clearly, none of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
The Panel finds that the second element of the Policy is made out. C. Registered and Used in Bad Faith
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain name was registered in bad faith and is being used in bad faith.
The fact that the disputed domain name is only passively held does not preclude a finding of use in bad faith. As set out in paragraph 3.2 of the WIPO Overview 2.0 states (in part) in relation to passive holding:
"The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa."
In this case, a well-known mark has been used for the disputed domain name without any cogent explanation. The panel cannot imagine any circumstances the disputed domain name could be used without infringing the Complainant's rights.
The Panel finds that the third element of the Policy is made out 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Douglas Clark
Sole Panelist
Date: May 27, 2014
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