The Complainant is Yahoo! Inc. of Sunnyvale, California, United States of America (“United States” or “US”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Vinay Kochhar, avv of Delhi, India. 2. The Domain Name and Registrar
The disputed domain names and are registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2017. On March 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 8, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2017. In accordance with the Rules, paragraph 5, due date for Response was April 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2017.
The Center appointed Jane Lambert as the sole panelist in this matter on April 28, 2017. 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 is a US technology company with subsidiary and associate companies around the world. In conjunction with those subsidiaries and associates the Complainant offers a wide range of services including online searches, news, email and advertising. Its main website is at “” but it has other websites corresponding to country code Top-Level Domains (ccTLDs) in which it does business.
The Yahoo brand is widely known and is registered as a trade mark in many countries. For example, the word mark YAHOO! is registered since November 14, 2000 with the US Patent and Trademark Office for a wide range of telecommunications and online computer services including general interest information, online advertising, retail and transportation services as well as computer software in classes 38, 42, 35, 39, and 9 under registration number 2,403,227.
The disputed domain names and were registered on January 7, 2017. The Respondent has used the disputed domain names to lead Internet users to websites offering bogus customer support services. In the past, such websites have been used to gain access to individuals’ personal computers and the information stored on them which has been used for spam or fraud or sold to those who wish to use such information for those purposes. 5. Parties’ Contentions A. Complainant
The Complainant requests the transfer of the disputed domain names on the following grounds:
- The disputed domain names are confusingly similar to trade marks or service marks in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- The Respondent has registered the disputed domain names and is using them in bad faith.
In support of the first ground, the Complainant has produced voluminous records of registrations of the word mark YAHOO!, including the registration mentioned in paragraph 4 above. It points out that both disputed domain names incorporate the Complainant’s trade mark in its entirety together with the words “email”, “support” and “number” and the generic Top-Level Domain (gTLD) “.org”, and, “support” and “number” and the gTLD “.com”. It argues that the incorporation of the Complainant’s mark is likely to induce the public to believe that the domain names are registered by or at least licensed or authorized by, or otherwise associated with, the Complainant.
As for the second ground, the Complainant argues that once it had established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden shifts to the Respondent to rebut the Complainant’s contentions. The Complainant has addressed all the circumstances listed in paragraph 4(c) of the Policy that could demonstrate a right or legitimate interest in the disputed domain names and submits that none of them applies. The Complainant also points to the use to which the disputed domain names have been put which is anything but legitimate.
In view of the reputation of its marks, the Complainant doubts the possibility of the registration of a domain name that incorporates the Complainant’s marks in good faith. The use of the disputed domain names for phishing websites is manifestly an act of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Respondent’s registration agreement incorporates the following paragraph of the Policy:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.” A. Identical or Confusingly Similar
The Panel finds the first element to be present.
As both disputed domain names incorporate the word mark YAHOO! in its entirety, with the exception of the exclamation mark which is irrelevant for the purposes of this analysis, the similarity with the Complainant’s trade mark is obvious.
The combination of the trade mark with the words “email”, “support” and “number” and the gTLD “.org” as well as “support” and “number” and the gTLD “.com” is likely to lead at least some members of the public to believe that those disputed domain names will lead them to online services offered, licensed or authorized by, or somehow connected with, the Complainant. A belief in such a connection would be confusing and would result from the similarity of the disputed domain names to the Complainant’s trade mark. B. Rights or Legitimate Interests
The Panel also finds the second element to be present.
As to the burden of proof, the Panel accepts the Complainant’s submission that the Complainant is not expected to prove a negative. Once it has shown on the balance of probabilities that the Respondent is unlikely to have any rights or legitimate interests in the disputed domain names, it is up to the Respondent to rebut this prima facie showing.
There is nothing in the materials before the Panel to indicate that any of the circumstances in paragraph 4(c) of the Policy applies or that there is any other reason to suppose that the Respondent has any rights or legitimate interests in the disputed domain names.
There is evidence as to how the Respondent has actually used the disputed domain names which is to offer unauthorized customer support services that have all the hallmarks of a phishing scheme. This does not amount to a bona fide offering of goods or services, or to a legitimate noncommercial or fair use of the disputed domain names.
The Respondent had an opportunity to explain why he might be entitled to the disputed domain names but did not avail himself of that opportunity. C. Registered and Used in Bad Faith
The Panel finds the third element to be present.
Paragraph 4(b) of the Policy lists a number of circumstances which, if found to be present, shall be evidence of the registration and use of a domain name in bad faith.
The fourth of those circumstances is that by using a disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location or of a product or service on your website or location.
The Panel has already found that the disputed domain names are confusingly similar to the YAHOO! mark. It is therefore likely that at least some members of the public will be attracted by those domain names to the Respondent’s websites in the belief that they will find a customer support service that has been offered or at least authorized or licensed by or otherwise connected with the Complainant. Should they use such site, it is very likely that they risk exposing information that could be used for spam or even fraud from which the Respondent would derive commercial gain.
As all the ingredients of paragraph 4(b)(iv) are present, the Panel has evidence of registration and use of the disputed domain names in bad faith. In the absence of any countervailing evidence from the Respondent that is enough for a finding in favor of the Complainant.
The Panel observes that it is difficult to envisage any circumstances in which the registration of a domain name that incorporates a well-known trade mark could ever be otherwise than in bad faith and that the use of such a domain name for a bogus customer support website is clearly an act of bad faith. 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 names, and be transferred to the Complainant.
Jane Lambert
Sole Panelist
Date: May 5, 2017
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