The Complainant is Yahoo Holdings, Inc. of Sunnyvale, California, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Prashant Chhibber of New Delhi, Delhi, India, represented by Avinash Tripathi, India. 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 November 10, 2017. On November 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 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 the Complainant on November 16, 2017 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 November 16, 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 the Respondent of the Complaint, and the proceedings commenced on December 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2017. The Center received three email communications from the Respondent between November 17, 2017 and December 27, 2017. On January 2, 2018, the Center notified the Parties of the commencement of the panel appointment process.
A Response was filed with the Center on January 19, 2018. The Center acknowledged receipt of the Response on January 19, 2018. The Center also informed the Respondent that as the specified due date for submission of a Response had already passed, and the Rules make no express provision for the filing of materials by either party after the due date for submission of a Response, except as may be specifically requested by the Panel, it would be at the Panel’s discretion as to whether the Response was considered.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on January 22, 2018. 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 the owner of the service mark and trademark YAHOO!, the trade name “YAHOO” as well as the domain name . In continuous use since 1994, the trademark YAHOO! has become widely recognized throughout the world. The Complainant’s services include web directory and search services, email, chat, sports, stock quotes, movie reviews, news, weather, yellow pages directory services, online shopping classified advertising, audio and video streaming, web-store hosting, management and more.
The Complainant owns numerous trademark registrations for the YAHOO! mark around the world, including but not limited to the following examples of trademark registrations in the United States:
Trademark
Registration No.
Registration Date
Class(es)
YAHOO!
2,403,227
November 14, 2000
9, 35, 38, 39 and 42
YAHOO!
2,187,292
September 8, 1998
35
YAHOO!
2,040,222
February 25, 1997
9, 16, 35 and 42
YAHOO!
2,040,691
February 25, 1997
42
The Complainant’s main website is located at the domain name . The Complainant also operates many other sites under the YAHOO! mark and typically offers its services using the YAHOO! mark together with a descriptive name of the service in question. For example, the Complainant’s support services for users are offered on the YAHOO! Help webpage located at the website “www.help.”. The Complainant also operates sites under the YAHOO! mark using YAHOO-formative trademarks and domain names, including sites specific to particular countries, regions, and/or languages.
The disputed domain name was registered on March 25, 2017 (the “Relevant Date”). Prior to the filing of the current dispute, the disputed domain name resolved to a website called “Yahoo Support Help” purporting to offer “hassle free Yahoo Support” over the phone. The website used the Complainant’s Y logo in the browser tab and website content. Currently, the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant asserts it has rights in the YAHOO! trademark. It contends that the disputed domain name is likely to cause consumer confusion and initial interest confusion and is therefore confusingly similar to the Complainant’s mark. The only differences between the Complainant’s mark and the disputed domain name are the addition of the generic terms “support” and “help”, the omission of the exclamation point of the Complainant’s YAHOO! mark and the addition of the “.com” generic Top-Level Domain (“gTLD”). The Complainant contends the addition of generic terms is not sufficient to distinguish the disputed domain name from the Complainant’s mark and that the omission of the exclamation mark “!” and addition of “.com” are irrelevant in a confusingly similar analysis.
The Complainant also contends that the Respondent has no rights in respect of the disputed domain name; the Complainant has not authorized the Respondent’s use of the disputed domain name and there is no affiliation between the Complainant or the Respondent.
The Complainant further contends that the Respondent has no legitimate interests in respect of the disputed domain name. Given that YAHOO! is an internationally famous name and mark, the Complainant argues the Respondent cannot be known by the disputed domain name.
In addition, the Complainant contends that the Respondent is using the disputed domain name to perpetrate a phishing scheme. Upon information and belief, the Complainant asserts that the Respondent’s offer of customer support services is part of a common phishing scheme used to deceptively gain access to user’s personal information and for financial gain and to divert Internet traffic intended for the Complainant’s own customer services websites to the disputed domain name. Therefore, the Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
The Complainant also contends that the Respondent’s relatively inconspicuous disclaimer at the bottom of the website, to which the disputed domain name resolves, is wholly inadequate to disclaim a relationship with the Complainant.
Finally, the Complainant contends that the disputed domain name was registered in bad faith. The Complainant asserts that the words comprising the disputed domain name together with the website content show that the Respondent had knowledge of the Complainant’s rights in the YAHOO! mark before the disputed domain name was registered. Therefore, the Respondent registered the disputed domain name with the Complainant’s mark in mind and with intent to cause confusion for the purposes of perpetuating a phishing scheme for financial gain. B. Respondent
As noted earlier the Respondent submitted informal communications to the Center on November 17, 2017, December 20, 2017, and December 27, 2017. In the Respondent’s communication of December 27, 2017, the Respondent denied any wrongdoing, stating that it was engaged in website design and that it had purchased the disputed domain name on behalf of a client. The Respondent filed a late Response with the Center on January 19, 2018. In Section III of the Response, the Respondent states that “The Respondent without prejudice to any rights, consents to the remedy requested by the Complainant and agrees to transfer the YAHOO-SUPPORTS.COM to the Complainant”. Although this section of the Response evidences an intention to transfer, the domain name actually stated in Section III is in fact which is the subject of a separate and concurrent complaint between the Complainant and the Respondent. The disputed name in issue here is . The Respondent appears to have intended to refer to the correct domain name because the header of the Response document states “YAHOOSUPPORTHELP.COM”. The Panel is obviously obliged to note the discrepancy. 6. Discussion and Findings
In this case, the Respondent apparently consents to the remedy requested by the Complainant, which is to transfer the disputed domain name to the Complainant. Though panels in prior UDRP decisions have differed on whether a panel can transfer the disputed domain name without consideration of the UDRP factors, it is clear that a panel has discretion whether to continue with the analysis or immediately transfer the disputed domain name. See, e.g., Brownells, Inc v Texas International Properties Associates,WIPO Case No. D2007-1211.
This Panel finds that the Respondent’s consent to transfer provides a basis for an order for transfer without a need for consideration of the UDRP grounds. See Pierre Balmain SA v Domains by Proxy LLC/Daniel Philips,WIPO Case No. D2015-0189, and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.10.
However, even though the Response evidences consent to transfer out of an abundance of caution and because a different domain name is named in Section III of the Response, this Panel will consider the UDRP factors.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) That the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trademark YAHOO! by virtue of its numerous trademark registrations around the world as well as its extensive use of that mark.
The Panel finds that the Complainant’s trademark YAHOO! is recognizable as such within the disputed domain name, albeit without the exclamation mark “!”. Exclamation marks are not permitted in domain names and therefore omission of an exclamation mark may be disregarded for the purposes of comparison under the first element. It is also well established that the addition of descriptive words such as “support” and “help” do not serve sufficiently to distinguish the disputed domain name from the Complainant’s mark and that the gTLD “.com” may be disregarded for the purposes of comparison under the first element.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s mark and that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any one of the following elements:
(i) That before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to a disputed domain name in connection with a bona fide offering of goods or services; or
(ii) That the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(iii) That the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers to or tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interest in respect of the disputed domain name lies with the Complainant.
The Complainant has stated, and the Panel accepts, that it has not authorized the Respondent’s use of its trademark and the Respondent is not sponsored by or in any way affiliated with the Complainant.
The use of the disputed domain name in connection with a page purporting to offer customer support services that compete with the services of the Complainant does not in circumstances of the present case give rise to any rights or legitimate interests in the disputed domain name within the meaning of the Policy.
The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent, and accordingly finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
The Panel is also entitled to have regard to the absence of any claim to rights in the disputed domain name in the Response and to the Respondent’s apparent willingness to transfer it. C. Registered and Used in Bad Faith
The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons, taken cumulatively:
(i) At the time of registering the disputed domain name, the Respondent must have been aware of the Complainant, its mark YAHOO! and the Complainant’s exclusive rights in that mark, and the reputation and fame of that mark. The Panel accepts the Complainant’s assertion that YAHOO! is an internationally famous name and mark, which has been in continuous use since 1994. Numerous decisions under the Policy have also found the Complainant’s mark to be famous and well known.
(ii) The Respondent’s use of the Complainant’s Y logo in the browser tab and content of the website hosted at the disputed domain name supports a finding that the Respondent knew of the Complainant and its trademark at the Relevant Date.
(iii) Further, paragraph 2 of the UDRP puts a burden on registrants where it states “By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that … to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party … it is your responsibility to determine whether your domain name infringes or violates someone else’s rights.” In a communication with the Center dated December 27, 2017, the Respondent has stated “I just want to tell you that I am running a business for website designing and our client told us to purchase the domain and prepare a website for them.” The Panel considers that even if the Respondent was undertaking work for a client, that would not alter the fact that the use to which the disputed domain name has been put clearly seeks to take unfair advantage of the Complainant’s trademark. A most cursory trademark or other online search or any online search of existing domain names prior to the Respondent registering the disputed domain name would have instantly revealed the Complainant and its trademark. See in this regard section 3.2.3 of WIPO Overview 3.0. Further, the fact that the Respondent included the Yahoo Y logo in the front page of the website at the disputed domain name plus the combination “Yahoo Support Help” (being services associated with Yahoo) strongly points to the fact that the Respondent did know of the Complainant’s prior rights.
The Panel is also satisfied that the disputed domain name has been used in bad faith. By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s YAHOO! trademark as to the source, sponsorship, affiliation, or endorsement of that website. The Respondent has created a likelihood of confusion as the Complainant’s screenshots show both the Complainant’s Y logo and the word “YAHOO” displayed on the website available at the disputed domain name. This would lead Internet users to believe that the Complainant is the source of the Respondent’s website and services, and/or the Respondent is sponsored by, or affiliated with, the Complainant. The Panel accepts the Complainant’s assertion that the disclaimer present on the Respondent’s website is wholly inadequate to dispel this belief as it does not specifically mention the Complainant.
The Panel finds that the above likelihood of confusion was created for the purposes of commercial gain. The website displayed at the disputed domain name purports to offer “hassle free Yahoo Support” over the phone for any problem the Internet user may be facing with Yahoo, along with proper guidance for its settlement. This directly competes with the Complainant’s own customer support services. The Panel finds this supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.
The Panel also accepts the Complainant’s assertion that the website appears to be part of a phishing scheme to deceptively gain access to users’ personal information. The website displayed at the disputed domain name offers the Internet user help with, e.g., changing their Yahoo password or resetting a forgotten password. The Panel finds this also supports a finding of use in bad faith under paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant. 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.
Andrew Brown Q.C.
Sole Panelist
Date: January 31, 2018
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