WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. v. Lin Shen
Case No. DAE2012-0002
1. The Parties
The Complainant is Yahoo! Inc. of Sunnyvale, California, United States of America (“United States”), represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States.
The Respondent is Lin Shen of Huzhou, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <flickr.ae> is registered with .ae Domain Administration.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2012. On April 18, 2012, the Center transmitted by email to .ae Domain Administration a request for registrar verification in connection with the disputed domain name. On April 22, 2012, .ae Domain Administration 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 UAE Domain Name Dispute Resolution Policy for – UAE DRP (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (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 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2012.
The Center appointed Sebastian M.W. Hughes as panelist in this matter on May 21, 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 is a company incorporated in the United States and the owner of numerous registrations worldwide for the trade mark FLICKR (the “Trade Mark”), the earliest dating from 2005.
The Respondent is apparently an individual based in China.
C. The Disputed Domain Name
The disputed domain name was registered on December 27, 2011.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
The Complainant operates one of the world’s leading photo-sharing websites under the Trade Mark (the “FLICKR Website”). Launched in February 2004, the FLICKR Website has 60,000,000 registered users and has been ranked by the ranking website, Alexa, as the number 47 website in the world.
The disputed domain name has been resolved to a website offering sponsored links (the “Website”). The Respondent has generated income by hosting these sponsored links on the Website.
Identical or Confusingly Similar
The disputed domain name comprises and is confusingly similar to the Trade Mark.
No Rights or Legitimate Interests
The Respondent is not commonly known by the disputed domain name and does not have any rights or legitimate interests in respect of the disputed domain name.
The Respondent has not been licensed or authorised by the Complainant to use the Trade Mark or to register the disputed domain name.
The Respondent is not making a bona fide offering of goods or services under the disputed domain name.
Registered Or Used in Bad Faith
The Respondent has used the disputed domain name primarily for the purpose of intentionally attracting, for commercial gain, Internet users to the Website, in order to profit from the notoriety of the Trade Mark.
The Respondent has also offered to sell the disputed domain name on the Website, on the “www.sedo.com” website to which the Website is linked, on the WhoIs search results for the disputed domain name, and also in email communications with the Complainant.
Such conduct amounts to registration and use of the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 6(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by several years.
The disputed domain name is identical to the Trade Mark in which the Complainant has rights.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 6(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 6(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by several years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden has thus shifted to the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).1
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate, noncommercial or fair use of the disputed domain name. To the contrary, the evidence shows that the Respondent has been using the Website in order to generate revenue through sponsored links to third party websites, capitalising on consumer confusion between the disputed domain name, the Website and the Complainant.
The Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the Complaint fulfils the second condition of paragraph 6(a) of the Policy.
C. Registered Or Used in Bad Faith
Pursuant to paragraph 6(b)(iv) of the Policy, the following conduct amounts to registration or use in bad faith on the part of the Respondent:
By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The evidence shows the Respondent has registered the disputed domain name and set up the Website in order to capitalise on the repute of the Trade Mark and gain pay-per-click revenue through attracting consumers to the Website.
At some stage following filing of the Complaint, the Respondent ceased using the Website. The disputed domain name is currently resolved to a domain name parking website. The Panel finds, in all the circumstances of this case, and in particular given the Respondent’s failure to file a Response, such conduct is a further indication of bad faith.
Pursuant to paragraph 6(b)(i) of the Policy, the following conduct amounts to registration or use in bad faith on the part of the Respondent:
Circumstances indicating that the Respondent has registered or the Respondent has 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 the Respondent’s documented out-of-pocket costs directly related to the domain name.
The evidence shows the Respondent has offered to sell the disputed domain name (1) on the Website; (2) on the Sedo website which is linked to the Website; (3) on the WhoIs search for the disputed domain name; and (4) in direct email correspondence with the Complainant. Whilst there is no direct evidence as to the amount for which the disputed domain name has been offered for sale by the Respondent, in all the circumstances of this case, the Panel concludes there is enough evidence to draw the inference that the Respondent intended offering the disputed domain name for sale for valuable consideration in excess of the Respondent’s likely out-of-pocket expenses incurred in registering the disputed domain name.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraphs 6(b)(iv) and 6(b)(i) of the Policy, and also under the Panel’s general discretion under 6(b) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 6(a) of the Policy has been fulfilled.
For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <flickr.ae> be transferred to the Complainant.
Sebastian M. W. Hughes
Dated: June 1, 2012
1 The Policy is inspired by the Uniform Domain Name Dispute Resolution Policy (UDRP).