The Complainant is Yahoo Holdings, Inc. of Sunnyvale, California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is Ravi of Gurgaon, Haryana, India. 2. The Domain Name and Registrar
The disputed domain name is registered with BigRock Solutions Limited (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 14, 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 November 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2017.
The Center appointed David Stone as the sole Panelist in this matter on December 21, 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 YAHOO! brand was founded in the United States of America in 1994 and it has since become a recognised brand around the world. In 2002 it was ranked as the “number one destination on the Internet for the twenty-first straight month”. The Complainant owns multiple registered trademarks around the world, including, but not limited to, the following examples registered in the United States:
- YAHOO!, registration number 2,403,227, registered on November 14, 2000, in international classes 9, 35, 38, 39 and 42;
- YAHOO!, registration number 2,040,222, registered on February 25, 1997, in international classes 9, 16, 35 and 42;
- YAHOO!, registration number 2,187,292, registered on September 8, 1998, in international class 35; and
- YAHOO!, registration number 2,040,691, registered on February 25, 1997, in international class 42.
The YAHOO trade name has been used continuously since 1994. The Complainant’s main website domain name is “” and it also owns the YAHOO! Help webpage located at “”. The Complainant offers a wide variety of services to its customers, the names of which incorporate the YAHOO! trademark. Such services include YAHOO! Mail, YAHOO! Answers and YAHOO! Messenger.
The disputed domain name was registered on July 29, 2017. The website at the disputed domain name shows the Complainant’s “Y logo” and registered YAHOO! stylised mark. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its YAHOO! trademark. The disputed domain name incorporates the YAHOO! trademark in its entirety and differs from “YAHOO!” only in the omission of the exclamation mark and the addition of the descriptive terms “email”, “support” and “number”. The incorporation of a trademark in its entirety may be sufficient when assessing the question of confusing similarity. The generic Top-Level Domain “.com”, does not serve to distinguish the disputed domain name from the trademark. See, for example, Tumblr, Inc. v. Domain Privacy/Transure Enterprise Ltd., Host Master, WIPO Case No. D2013-0213. As illustrated by the Complainant’s own main website domain name, exclamation points are not permitted in domain names. Accordingly, the omission of the exclamation point of the Complainant’s YAHOO! trademark from the disputed domain name is not relevant to the question of confusingly similar. See, for example, Yahoo! Inc. v. Scott McVey, WIPO Case No. D2011-1486.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name and the Respondent has not been permitted to use the YAHOO! trademark by the Complainant. The website to which the disputed domain name resolves does not make legitimate non-commercial use or fair use of the YAHOO! trademark, but instead it is part of a phishing scheme that offers customer service support in connection with the Complainant’s email services. The Complainant’s “Y logo” and YAHOO! stylised mark are utilised on the Respondent’s website and so the disputed domain name must, therefore, be being used for financial gain, by diverting customers to the Respondent’s website which promotes its own support services. The Respondent does not accurately and prominently disclose its relationship with the Complainant, although any such disclaimer would be inadequate. It is clear that the Respondent registered the disputed domain name with the Complainant’s trademark in mind and with the intention of diverting Internet traffic, intended for the Complainant, in order to make a financial gain.
Finally, the Complainant contends that the Respondent has registered and is using the domain name in bad faith. The YAHOO! trademark has been registered for over twenty years and, throughout the world, it is recognised and relied upon by online customers to distinguish the Complainant’s goods and services from those of others. The Respondent has used the disputed domain name to capitalise on the Complainant’s famous trademark intentionally to attract customers to its website so as to perpetrate a phishing scheme for financial gain. It is clear that the Respondent is trading off the Complainant’s trademark, goodwill and reputation for the Respondent’s own commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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
To be confusingly similar to a trademark, notwithstanding the addition of other descriptive words, it is enough that the domain name includes the trademark in its entirety. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 and Yahoo! Inc. v. Scott McVey, supra. As held by previous UDRP panels, the addition of generic words and / or the omission of punctuation does not render the combination different enough from the trademark to avoid a finding of confusing similarity. See, for example, Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434 and Yahoo! Inc. v. wangwe gaohaolvshishiwusuo/shaoxiaogen, wang tian, ni maiwo, fangjincheng,WIPO Case No. D2014-0714. The disputed domain name is therefore identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has satisfied the condition in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name was in connection with a bona fide offering of goods or services; or
(ii) as an individual, business or other organisation, the Respondent has been commonly known by the disputed domain name even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent has been making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
The Respondent’s use of the Complainant’s “Y logo” and YAHOO! stylised mark, on the website at the disputed domain name, demonstrate a clear attempt to benefit from the reputation of the YAHOO! trademark, and to direct visitors to the Respondent’s website in order to benefit from the goodwill of the YAHOO! trademark. Additionally, the Respondent is not commonly known by the disputed domain name, nor has it received the Complainant’s permission to use the YAHOO! trademark. This amounts to a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent is seeking to capitalise on the Complainant’s brand for its own commercial gain. The Respondent failed to respond to rebut the prima facie case. The Panel therefore finds that the Complainant has satisfied the condition in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of
the Policy, bad faith constitutes the intention to register and use a domain name in order to:
(i) sell, rent or transfer the domain name to the trademark owner (or a competitor thereof) for a profit;
(ii) prevent the trademark owner from registering its trademark in a domain name;
(iii) disrupt the business of a competitor; or
(iv) divert Internet traffic for commercial gain
Where a domain name incorporates a sufficiently well-known trademark, and the Respondent knew, or ought to have known, of the trademark’s existence, and the Respondent had no legitimate rights or interests in it, the domain name is considered to have been registered in bad faith. See, for example, DHL International GmbH v. Hop Nguyen, Pohnguyen,WIPO Case No. D2017-1725. In the present case, the trademark is recognised around the world and used by the Respondent on the website at the disputed domain name. Hence, the Panel is satisfied that the Respondent knew, or in any event ought to have known, of the trademark’s existence. Additionally, the Respondent was providing similar email services to those provided by the Complainant under the guise of a purported association with the Complainant. The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant has satisfied the condition in paragraph 4(a)(iii) of the Policy. 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.
David Stone
Sole Panelist
Date: January 3, 2018
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