The Complainant is Yahoo! Inc. of Sunnyvale, California, United States of America ("United States"), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Mac Patchers, Ravi Singh of Dayton, Ohio, United States / Dayzed Pty Ltd, Ravi Singh of North Wollongong, New South Wales, Australia. 2. The Domain Names and Registrars
The disputed domain name is registered with GoD, LLC (the "First Registrar"). The disputed domain names and are registered with TPP Wholesale Pty Ltd (the "Second Registrar"). The First Registrar and the Second Registrar are collectively referred to below as the "Registrars". 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 4, 2017. On the same day, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On April 4, 2017, the First Registrar transmitted by email to the Center its verification response confirming that the Respondent Mac Patchers is listed as the registrant for the disputed domain name and providing the Respondent's contact details. On April 7, 2017, the Second Registrar transmitted by email to the Center its verification response confirming that the Respondent Dayzed Pty Ltd, Ravi Singh is listed as the registrant for the disputed domain names and and providing the Respondent's contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "auDRP"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 10, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 1, 2017.
The Center appointed Matthew Kennedy as the sole panelist in this matter on May 5, 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 provides 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 and management and other services. The Complainant owns registrations of the trademark YAHOO! in multiple jurisdictions, including Australian trademark registration number 709752, registered from June 3, 1996, specifying goods and services in classes 9, 16, 35, and 42, including computer software and computer services; Australian trademark registration number 754964, registered from February 13, 1998, specifying services in class 38 including electronic mail and telephony; and Australian trademark registration number 785463, registered from February 15, 1999, specifying a wide range of goods and services in classes 9, 35, 39, 41 and 42. The Complainant operates its main official website at "" and many other sites with domain names beginning with the term "yahoo".
The Respondent Mac Patchers is the registrant of the disputed domain name . The Respondent Dayzed Pty Ltd, Ravi Singh is the registrant of the disputed domain names and . They are both referred to as "the Respondent" for the reasons set out in Section 6.1 below. Due to the fact that the contact addresses in the Registrar's WhoIs database were incomplete or wrong, the written notices of the Complaint could not be delivered by courier.
The disputed domain name was registered on October 19, 2015, and the disputed domain name was registered on November 11, 2015. They do not resolve to any active website. The disputed domain name was registered on June 21, 2016 and resolves to an email customer service website titled "YahooSupport" that prominently displays an Australian telephone number beneath the words "Yahoo Support Number Australia". The website purports to offer support services for password recovery and Yahoo technical issues. The homepage describes the services offered, explains that major services incur a charge and refers to payment plans. After the Internet user scrolls down, the text mentions in passing that "the company is not connected with Yahoo". Further down, another disclaimer appears across the bottom of the homepage, in a smaller font, which reads as follows:
"This is not Yahoo official website and at any point don't claim to be associated with Yahoo7 in any way. We have not registered this domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. We have not used logo or trade mark anywhere in this site to mislead or to make visitors believe we are the official site, in fact we have visible discclaimer [sic] saying we are third party service provider. We have not registered the domain name to discrupt [sic] the business of Yahoo7 or any of its brands."
Previous administrative panels under the auDRP have found that Ravi Singh registered and used domain names in bad faith in circumstances similar to the present case. See Yahoo! Inc. v. Ravi Singh, Dayzed Pty Ltd,WIPO Case No. DAU2016-0013 (regarding ) and Google Inc. v. Ravi Singh,WIPO Case No. DAU2016-0039 (regarding ). 5. Parties' Contentions A. Complainant
The disputed domain names are confusingly similar to the Complainant's YAHOO! trademark. The Complainant's YAHOO! trademark has been in continuous use since 1994 and has become one of the most recognized brands in the world. The disputed domain names incorporate the entirety of the Complainant's trademark along with descriptive words that call to mind the Complainant's online support services. The addition of the generic domains ".com" and ".net" and the country code Top-Level Domain ("ccTLD") ".au" does nothing to diminish confusion.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not commonly known by the disputed domain names. The Complainant has not authorized the Respondent to use the YAHOO! trademark. The Respondent is not using the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The website to which it resolves is a technical support scam operation. The name of the website, "YahooSupport", represents falsely that the listed contact details are those of the Complainant's support helpline. The disclaimer is insufficient to undo the confusion generated by the use of the Complainant's trademark in the disputed domain name. The other two disputed domain names do not resolve to a website but the Respondent used or intended to use them in the same illegitimate manner.
The disputed domain names were registered and are being used in bad faith. The Respondent knew of the YAHOO! trademark at the time of registration of the disputed domain names. The YAHOO! trademark has been registered in Australia and elsewhere since before 2000 and is well known. The inclusion of the words "support", "support Australia" and "support number" was calculated for the purpose of diverting Internet users seeking the Complainant's support services in Australia. The Respondent is intentionally attracting, for commercial gain, Internet users to its website or other online location by creating a likelihood of confusion with the Complainant's YAHOO! trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website and purported services. The Respondent has engaged in a pattern of bad faith conduct as demonstrated by previous domain name dispute resolution proceedings. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Consolidation of Multiple Disputes
The Complaint initiates disputes in relation to two nominally different domain name holders. One disputed domain name is registered in the name of "Mac Patchers" while the other two are registered in the name of "Dayzed Pty Ltd" as the registrant organisation also naming "Ravi Singh". The Complainant requests consolidation of these disputes on the basis that the true registrant of all the disputed domain names is the same person, that is, Ravi Singh. Neither of the domain name holders, nor Mr. Singh, commented on the Complainant's request.
Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. However, a panel in a previous proceeding under the auDRP permitted the consolidation of disputes in relation to multiple registrants where they were sufficiently closely associated or related to mean that the domain names were subject to common control. See Smart Voucher Ltd T/A Ukash v. Chowdhury, MD Abu Russel and Sydney Business & Technology Group Pty Ltd,WIPO Case No. DAU2013-0006. On the other hand, a strict interpretation of this Rule would require separate proceedings and could lead to considerable duplication of effort. See Jacuzzi, Inc. v. Wangra Pty Ltd,WIPO Case No. DAU2005-0001; Jacuzzi, Inc. v. Jacuzzi Unit Trust,WIPO Case No. DAU2005-0002; and Jacuzzi, Inc. v. Jacuzzi Pty. Ltd.,WIPO Case No. DAU2005-0003.
In the present proceeding, the Complainant alleges not only that the disputed domain names are under common control but that a single person has registered the disputed domain names in other persons' names. The Panel does not consider that paragraph 3(c) of the Rules was intended to enable a person in such circumstances to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name holders, particularly when the disputes raise some of the same issues of fact and law. Therefore, the Panel considers that the consolidation of disputes in relation to the domain names at issue in this proceeding should be permitted in the interests of efficiency if (i) the disputed domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
As regards the issue of common control, the Panel observes that the contact person for all three disputed domain names is Ravi Singh whose contact email address uses the domain name . Two of the disputed domain names are registered in the organisation name "Dayzed Pty Ltd". As the Complainant points out, a recent proceeding under the auDRP concerned another domain name beginning with the element "yahoosupport" that was registered on the same day as one of these disputed domain names, in the names of Ravi Singh and Dayzed Pty Ltd. During that proceeding, Dayzed Pty Ltd sent an email to the Center advising that neither it nor its directors had any association with Ravi Singh or his businesses and that PC Patchers is an Indian company with which its clients refused to deal. See Yahoo! Inc. v. Ravi Singh, Dayzed Pty Ltd, supra. Therefore, the registration of two disputed domain names in the name of Dayzed Pty Ltd with Ravi Singh as the contact person for both appears to be a ruse to conceal that those two disputed domain names are under the control of Ravi Singh. The other disputed domain name, registered in the name of Mac Patchers, was registered two months after the panel's decision in that previous proceeding and is identical to the domain name at issue in that proceeding but for the addition of the word "Australia". It is also similar to the other disputed domain names in the present proceeding, both of which, minus the Second-Level Domain ("2LD") suffixes "." and ".", are words featured on the website to which this third disputed domain name resolves. The content of this website is similar to that displayed at the website to which the domain name in that previous proceeding redirected, which was at the address "www.macpatchers.". "Mac Patchers" is also the registrant of the domain name , while the contact email addresses for the two disputed domain names registered in the name of "Dayzed Pty Ltd" is […]@. In view of the above evidence, the Panel is persuaded that all the disputed domain names are under the common control of Ravi Singh.
As regards fairness and equity, the Panel observes that neither Mac Patchers, Dayzed Pty Ltd nor Ravi Singh has expressed any interest in responding to the Complaint regarding any of the disputed domain names or otherwise participating in this proceeding. The Panel sees no reason why the consolidation of the disputes would not be fair and equitable to all parties.
Accordingly, the Panel decides to consolidate the disputes regarding the two different domain name holders in a single proceeding. 6.2 Substantive Issues
Paragraph 4(a) of the auDRP provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered orsubsequently used in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the YAHOO! trademark.
All disputed domain names incorporate the Complainant's YAHOO! trademark, but for the exclamation mark, as their dominant and only distinctive element. The omission of the exclamation mark can be disregarded in a comparison with the Complainant's trademark because domain names cannot include exclamation marks for technical reasons.
All disputed domain names include the dictionary word "support" after "yahoo" and one of them also includes the dictionary word "number". Dictionary words are generally incapable of dispelling confusing similarity for the purposes of the auDRP. If anything, the inclusion of the words "support" and "number" in the disputed domain name may increase the association with the Complainant's mark because they indicate certain types of service in connection with which the Complainant uses its trademark. One of the disputed domain names also includes the country name "Australia". A geographical term is generally incapable of dispelling confusing similarity between a domain name and a trademark for the purposes of the auDRP. See, for example, Jaguar Land Rover Limited v. The Trustee for the Trivett Family Trust,WIPO Case No. DAU2016-0033.
All disputed domain names include the open 2LD suffix "." or ".". This element is generally disregarded in an assessment of confusing similarity between a domain name and a trademark for the purposes of the auDRP. See BT Financial Group Pty Limited v. Basketball Times Pty Ltd,WIPO Case No. DAU2004-0001; Telstra Corporation Limited v. CQ Media Group Pty Ltd,WIPO Case No. DAU2008-0023.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the auDRP. B. Rights or Legitimate Interests
Paragraph 4(c) of the auDRP sets out circumstances which, without limitation, if found by the Panel to be proven based on its evaluation of all evidence presented, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the auDRP:
(i) before any notice to [the respondent] of the subject matter of the dispute, [the respondent's] bona fide use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) [the respondent] (as an individual, business, or other organization) [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 is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
One of the disputed domain names, , is used in connection with an offering of services. The key question is whether that offering is bona fide. The Panel has already found that the disputed domain names are confusingly similar to the Complainant's YAHOO! trademark. The Complainant submits that it has not authorized the Respondent to use that trademark. It is unnecessary for the Panel to determine whether the website to which this disputed domain name resolves is a phishing operation intended to obtain the Complainant's customers' passwords and private information. Even though the website does not display the Complainant's logos or the YAHOO! trademark with the exclamation mark, Internet users visiting the site are likely to be misled into believing that it is operated by an Australian subsidiary or associate of the Complainant. Internet users visiting the website can see the list of services and the customer support telephone number, which is very prominently displayed, without ever seeing the disclaimers. Some users are likely to be misled, call the number and engage the services, including those which incur a charge. Some users may scroll down to the bottom of the website's homepage and see the disclaimers but by that time the objective of using the Complainant's trademark to attract the Complainant's customers for commercial gain has been achieved. This does not constitute use in connection with a bona fide offering of services within the terms of the first circumstance of paragraph 4(c) of the auDRP.
The names of the disputed domain name holders are "Mac Patchers" and "Dayzed Pty Ltd" and their contact person is "Ravi Singh", not "yahoosupport", "yahoosupportnumber", "yahoosupportaustralia" or even "yahoo". There is no evidence that the Respondent has been commonly known by the disputed domain names within the terms of the second circumstance of paragraph 4(c) of the auDRP.
The disputed domain name resolves to a website offering services in exchange for payment while the other two disputed domain names do not resolve to any active website. These are not legitimate non-commercial or fair uses within the terms of the third circumstance of paragraph 4(c) of the auDRP.
Based on the above, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent did not rebut that case because it did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the auDRP. C. Registered or Subsequently Used in Bad Faith
Paragraph 4(b) of the auDRP provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith, although it is not an exhaustive list of such circumstances. The fourth circumstance is as follows:
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.
The disputed domain name incorporates the YAHOO! trademark as its dominant and only distinctive element, omitting only the exclamation mark for technical reasons. This disputed domain name was registered in 2016 in the name of Mac Patchers, with Ravi Singh as the contact person, soon after a panel found that the domain name had been registered and was being used in bad faith. See Yahoo! Inc. v. Ravi Singh, Dayzed Pty Ltd, supra. This disputed domain name incorporates the same trademark as the domain name at issue in that previous proceeding and resolves to a similar website. Therefore, the Panel finds that this disputed domain name has been registered in bad faith. Further, for the reasons set out in Section 6.2B above, the Panel finds that this disputed domain name is being used intentionally to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant's trademark as to the affiliation of that website and the services offered on that website within the terms of paragraph 4(b)(iv) of the auDRP.
The disputed domain names and do not resolve to any active website. However, passive holding does not exclude a finding of registration or use of a domain name in bad faith. See Produits Berger v. Lay Tee Ong,WIPO Case No. DAU2004-0008, and Mr. Jean Heitz v. Truly Natural Products PTY. Limited/ Mr. Cordeiro,WIPO Case No. DAU2011-0017. The Panel notes that these two disputed domain names were registered many years after the Complainant had registered and made very extensive use of its YAHOO! trademark in Australia. The initial elements of both these disputed domain names are the words "yahoo" and "support" that were featured on the website to which the domain name resolved. That domain name was registered and used in bad faith. See Yahoo! Inc. v. Ravi Singh, Dayzed Pty Ltd, supra. Further, both these disputed domain names, minus the 2LD suffixes, are words featured on the website to which the disputed domain name resolves. That domain name was also registered and used in bad faith. In the Panel's view, the most likely explanation is that the disputed domain names and were registered with the intention of using them in connection with these websites, or similar websites. In these circumstances, the Panel is persuaded that these two disputed domain names were also registered in bad faith.
Therefore, the Panel finds that the disputed domain names have been registered or are being used in bad faith, or both. The Complainant has satisfied the third element in paragraph 4(a) of the auDRP. 7. Decision
For all 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.
Matthew Kennedy
Sole Panelist
Date: May 19, 2017
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