The Complainant is Oath Inc., United States of America (“United States”), internally represented.
The Respondent is Cheng Jiu Zhang, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2021. On August 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 6, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on August 9, 2021 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 amendment to the Complaint on August 11, 2021.
The Center verified that the Complaint together with the amendment to 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 August 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2021.
The Center appointed Ian Lowe as the sole panelist in this matter on September 13, 2021. 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 BackgroundThe Complainant is the provider of a number of online services. The Complainant (taken to include its predecessor Yahoo, Inc.) has provided a range of services including web directory and search services, news, online shopping and classified advertising, under the YAHOO! mark since 1994. The Complainant has spent billions of United States dollars since that date, advertising and promoting Yahoo-branded products and services throughout the world.
The Complainant is the proprietor of numerous registered trademarks comprising “yahoo” throughout the world, including United States trademark number 2040222 YAHOO! registered on February 25, 1997 and China trademark number 1115500 YAHOO! registered on September 28, 1997.
The Domain Name was registered on July 1, 2021. It presently resolves to a website headed “FOAXSTORE” offering a range of products for sale at purported discounts of up to 91%. The “About Us” page states that “AMERICAN STORE is an retail online shop” and refers to the “AMERICAN STORETEAM”. The “Shipping” page refers to “Shipping from China Warehouse”. At the time of filing of the Complaint, the Domain Name resolved to an almost identical website headed “AMERICAN STORE”.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the Domain Name is confusingly similar to its YAHOO! mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsFor this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has uncontested rights in its famous YAHOO! trademark (the “Mark”), both by virtue of its numerous trademark registrations and as a result of the very substantial goodwill and reputation acquired through its use of the mark over more than 25 years. Ignoring the generic Top-Level Domain (“gTLD”) “.com” and the exclamation mark, the Domain Name comprises the entirety of the Mark together with the insertion of the word “city”. In the view of the Panel, the addition of this dictionary word does not prevent a finding of confusing similarity between the Mark and the Domain Name. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsThe Complainant has made out a strong prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name. In light of its undoubted notoriety, the Panel is satisfied that “Yahoo” could only be taken to refer to the Complainant. The Complainant has not authorised the Respondent to use its trademark in a domain name or in connection with its purported services. In the view of the Panel, the operation of a website purporting to offer a range of products at hugely discounted prices, using a domain name incorporating the Mark, does not amount to a bona fide offering of goods or services. The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad FaithIn the view of the Panel, given the nature of the Domain Name as indicated above, the use to which the Domain Name has been put, and the notoriety of the Complainant’s Mark, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name. The Panel is further satisfied that the Respondent registered the Domain Name for commercial gain with a view to taking unfair advantage of the Complainant’s rights in the Mark by confusing Internet users into believing that the Domain Name was being operated by or authorised by the Complainant for legitimate purposes related to the Complainant’s activities. The Respondent thereby drew in users to its website purporting to offer a range of products at very substantially discounted prices. In the Panel’s view this amounts to paradigm bad faith registration and use for the purposes of paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Ian Lowe
Sole Panelist
Date: September 27, 2021