WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. v. Mr. Omid Pournazar
Case No. D2012-1612
1. The Parties
The Complainant is Yahoo! inc. of Sunnyvale, California, United States of America (“US”), represented by Saba & Co. IP, Lebanon.
The Respondent is Mr. Omid Pournazar of Astaneh-ye Ashrafieh, Guilan Province, Islamic republic of Iran.
2. The domain name and registrar
The disputed domain name <ياهو.com> (<xn--mgb8dd93c.com>) is registered with Tucows inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2012. On August 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 2012, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on September 7, 2012.
The Center appointed Mohamed-Hossam Loutfi as the sole Panelist in this matter on October 5, 2012. 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, “Yahoo! Inc.”, has several trademarks registrations for YAHOO. The Complainant registered YAHOO! as a Community Trademark on June 7, 2000 The Iranian trademark “Yahoo! in English and Persian” was registered by the Complainant in October 2011.
The disputed domain name was registered on March 16, 2012. On March 26, 2012, the Respondent sent an email to the Complainant’s agent in Iran, informing him of the registration of the disputed domain name and offering to sell it to the Complainant.
The Complainant sent the Respondent a cease and desist letter on April 17, 2012.
The Respondent did not respond to the Complainant’s cease and desist letter, so the Complainant filed a UDRP Complaint to obtain a transfer of the disputed domain name.
5. Parties’ contentions
The Complainant asserts that:
- The disputed domain name <ياهو.com> is confusingly similar to the Complainant’s famous YAHOO mark. The disputed domain name in Farsi is phonetically and confusingly similar to the famous YAHOO mark. Specifically, the Complainant registered the trademark “Yahoo! in English and Persian” and obtained an Iranian trademark registration in October 2011.
- At the time when the Respondent registered the disputed domain name, the well-known YAHOO mark was already widely famous and familiar to countless consumers around the globe.
- The registration was in bad faith as the disputed domain name was registered to sell to the highest bidder. The registration of the disputed domain name took place with the knowledge of the rights of the well-known trademark YAHOO which is clear evidence of bad faith.
- The Respondent had no permission from the Complainant and was not licensed to use the disputed domain name.
- The disputed domain name is misleading to Internet users because the average Internet user will assume that the disputed domain name is sponsored by or affiliated with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussions and Findings
Scope of the Policy
As required by paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 and is being used in bad faith.
A. Identical or confusingly similar
The Complainant must show that the disputed domain name <ياهو.com> is identical or confusingly similar to the Complainant’s well-known YAHOO mark.
The disputed domain name is a transliteration (the representation in letters or words in the corresponding characters of another alphabet) of the YAHOO trademark from English to Persian. Because the disputed domain name comprises the Complainant’s YAHOO mark in its entirety in Persian, the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights.
The Panel therefore concludes that paragraph 4(a)(i) of the Policy has been established.
B. Rights or legitimate interests
Paragraph 4(b) of the Policy provides that a complainant must establish that a respondent has no rights or legitimate interests in the disputed domain name.
The Respondent does not appear to be known by the name “Yahoo!”, nor does the Respondent have a license or any sort of permission from the Complainant to use its YAHOO mark in a domain name. The disputed domain name does not currently resolve, and the Panel does not view this type of use as bona fide as described in the Policy.
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and has established paragraph 4(a)(ii) of the Policy.
C. Registered and used in bad faith
Paragraph 4(b) of the Policy states that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant has provided evidence that the Respondent purchased the disputed domain name in order to sell it in gross excess of the registration costs. The wording of the Respondent’s email of March 26, 2012 (Annex 6 to the Complaint) leaves no doubt in this Panel’s mind that the Respondent directed his offer to sell the disputed domain name to the Complainant ten days after it registered the disputed domain name on March 16, 2012. This conduct shows the Respondent’s full knowledge of the existence of the Complainant and its YAHOO marks.
Additional evidence to the Panel of the Respondent’s bad faith is the Respondent’s failure to comply with the Complainant’s cease and desist letter. Other UDRP panels have found the failure to comply with a cease and desist letter to may evidence of bad faith. See Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632. Additionally, the Respondent offered to sell the disputed domain name to the Complainant on March 26, April 18, April 21, and April 27, 2012. The offers were in excess of the Respondent’s registration costs (the last offer being USD 85,258). The Respondent also stated that it would “post the disputed domain name on an auction site i.e. aryiadomain.com”. The Panel finds that the Respondent’s behavior excludes any ambiguity about its bad faith intent.
Moreover, the Panel is confident that the Respondent has taken the disputed domain name without lawful interest to misleadingly and deceptively divert Internet users to its website for commercial gain. See Yahoo!, Inc. v. David Ashby, WIPO Case No. D2000-0241; Exxon Mobil Corporation v. Joseph Fisher, WIPO Case No. D2000-1412; and Microsoft Corporation v. Hakan Karabidek, WIPO Case No. DMD2010-0003.
Therefore, the Panel finds that the Complainant fulfilled the criteria in the Policy, paragraph 4(a)(iii), and the disputed domain name was registered and used in bad faith.
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 <یاهو.com> (xn--mgb8dd93c.com) be transferred to the Complainant.
Dated: October 12, 2012