WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yahoo Holdings, Inc. v. Harry G

Case No. D2017-2232

1. The Parties

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 Harry G of Gurgaon, India.

2. The Domain Names and Registrar

The disputed domain names <contactyahoocustomerservice.com> and <yahoo-customer-service.org> are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2017. On November 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. 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 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 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 “www.yahoo.com” and it also owns the YAHOO! Help webpage located at “www.help.yahoo.com”. 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 names were registered on January 29, 2017 and June 2, 2017. The website at the disputed domain name <contactyahoocustomerservice.com> lists “steps to reach yahoo customer service through yahoo help website”, and the website at the disputed domain name <yahoo-customer-service.org> states “Yahoo Customer Service Needed? Try Our Yahoo technology support and through Yahoo Customer Service phone number to avail [sic] round the clock Yahoo Customer support”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to its YAHOO! trademark. The disputed domain names incorporate the YAHOO! trademark in its entirety and differ from “YAHOO!” only in the omission of the exclamation mark and the addition of various combinations of the descriptive terms “customer”, “contact” and “service”. The incorporation of a trademark in its entirety may be sufficient when assessing the question of confusing similarity. The generic Top-Level Domains “.com” and “.org” do not serve to distinguish the disputed domain names from the trademark. See, for example, Tumblr, Inc. v. above.com 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 names 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 names. The Respondent is not commonly known by either of the disputed domain names and the Respondent has not been permitted to use the YAHOO! trademark by the Complainant. The websites to which the disputed domain names resolve do not make legitimate non-commercial use or fair use of the YAHOO! trademark, but instead, they are part of a phishing scheme that offers “Yahoo customer services” both over the phone and via email. The Complainant’s YAHOO! trademark is utilised on the Respondent’s websites and so the disputed domain names must, therefore, be being used for financial gain, by diverting customers to the Respondent’s websites which promote its own customer services. The Respondent does not accurately and prominently disclose its relationship with the Complainant. The Respondent’s websites are “replete with deceptive and misleading uses” of the Complainant’s YAHOO! trademark. The inconspicuous and misleading disclaimers found at the bottom of the Respondent’s websites are wholly inadequate and infer an indirect relationship with the Complainant. It is clear that the Respondent registered the disputed domain names 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 names 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 names to capitalise on the Complainant’s famous trademark intentionally to attract customers to its websites 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 names are 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 names; and

(iii) that the disputed domain names have 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 names are 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 names or a name corresponding to the disputed domain names 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 names 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 names, 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 YAHOO! trademark demonstrates a clear attempt to benefit from the reputation of the YAHOO! trademark, and to direct visitors to the Respondent’s own websites in order to benefit from the goodwill of the YAHOO! trademark. Additionally, the Respondent is not commonly known by either of the disputed domain names, 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 interest in the disputed domain names, 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 websites at the disputed domain names. 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, and has not taken adequate steps to ensure that it accurately and prominently discloses its relationship with the Complainant. The Panel therefore concludes that the disputed domain names were registered and are 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 names, <contactyahoocustomerservice.com> and

<yahoo-customer-service.org>, be transferred to the Complainant.

David Stone
Sole Panelist
Date: January 3, 2018