Complainant is Yahoo Holdings, Inc. of Sunnyvale, California, United States of America (“United States”), represented by Kilpatrick Stockton, LLP, United States.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Technonics Solutions of Dallas, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2017. On July 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2017, 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 Complainant on July 13, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 13, 2017.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on July 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent of Respondent’s default on August 5, 2017.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on August 10, 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
Complainant, Yahoo Holdings, Inc., offers Internet-based services including web directory and search services, email, web-store management, and audio and video streaming. Since 1994, Complainant has used the service mark and trademark YAHOO! in commerce. As Internet use gained popularity, so did the YAHOO! mark. In 2014, the Yahoo brand ranked 69 in BRANDZ Top 100 Most Powerful Brands report. Complaint has acquired several trademark registrations for YAHOO! in the United States. For example, Registration No. 2,0404,691 issued to Complainant on February 25, 1997, for the use of the YAHOO! mark in connection with on-line computer services. Other registrations for the mark followed, including Registration Nos. 2187292 (issued on September 8, 1998) and 2403227 (issued on November 14, 2000). Complainant’s services are accessible through the website “,” which logged 200 million visitors in October 2016 in the United States alone.
Respondent registered the disputed domain name on November 19, 2016. The disputed domain name resolved to a website purporting to extend “instant tech support” to users of the Yahoo brand of services. The website “www.” provided United States-based and United Kingdom of Great Britain and Northern Ireland-based customer service phone numbers for customers in need of “Yahoo help.” 5. Parties’ Contentions A. Complainant
Complainant asserts that it has long-established rights in the YAHOO! mark and that the disputed domain name is confusingly similar to its mark as it incorporates the name “yahoo” in its entirety and merely adds the descriptive terms “domain” and “support”.
Complainant contends that Respondent has no rights or legitimate interest in the disputed domain name; that Respondent was not authorized to use the YAHOO! mark in the disputed domain name; that there is no indication that Respondent is commonly known by the domain name; and that Respondent’s only use of the disputed domain name has been be to perpetrate a phishing scheme to lure unsuspecting web-users to Respondent’s website in an attempt to obtain the users’ personal information.
Complainant argues that the famous nature of its mark and Respondent’s registration of the disputed domain name that resolves to a website purporting to offer support for Complainant’s own services establishes Respondent’s actual knowledge of Complainant’s mark and its prior rights in the mark. According to Complainant, Respondent’s blatant disregard for Complainant’s rights in registering the disputed domain name and its use to perpetrate a fraudulent scheme establish Respondent’s bad faith registration and use of the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant’s trademark registrations establish Complainant’s rights in the YAHOO! mark. The disputed domain name is confusingly similar to the mark as it incorporates the mark. The addition of the descriptive terms “domain” and “support” to the mark does nothing to dispel the potential for confusion. The confusion is not ameliorated by the inclusion of the “.com” generic Top-Level Domain.
Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complaint has presented a prima facie case for Respondent’s lack of rights or legitimate interest in the disputed domain name. Respondent has failed to respond and offer evidence in rebuttal even in face of Complainant’s accusation of serious misuse of the disputed domain name.
Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Respondent registered and has used the disputed domain name in bad faith. The Panel finds that the YAHOO! mark is famous and has sustained a well-known online presence since 1994. It is reasonable, therefore, to infer that Respondent was aware of the mark and Complainant’s rights in it when Respondent registered the disputed domain name incorporating the mark in 2016. Respondent’s use of the mark in conjunction with domain support confirms Respondent’s awareness of the mark and its association with Internet services; an awareness underscored by the content of the website accessible by the disputed domain name, which expressly targets Yahoo-branded services.
The evidence supports the inference that Respondent sought to use the disputed domain name to create a false association with Complainant to perpetuate a phishing scam. Although Respondent has no affiliation with Complainant, the website associated with the disputed domain name purports to offer technical support for Yahoo-branded services and urges customers seeking assistance to call a provided phone number.
Phishing is bad faith use under the Policy. The examples listed in paragraph 4(b) of the Policy are “without limitation”. “‘Phishing’ is a form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user ids, passwords, etc.” Confédération Nationale du Crédit Mutuel v. Daniel Delcore,WIPO Case No. DLC2009-0001. The use of a disputed domain name in a phishing scheme “is in itself evidence that the disputed domain name was registered and is being used in bad faith.” BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson,WIPO Case No. D2016-0364.
The Panel finds that the disputed domain name was registered and used in 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 name, , be transferred to Complainant.
Lawrence K. Nodine
Sole Panelist
Date: August 11, 2017
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