WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Prakhar Rastogi / Rajveer Singh Chawla / Divya Taneja
Case No. D2016-1423
1. The Parties
The Complainant is Yahoo! Inc. of Sunnyvale, California, United States of America (“United States”), represented by Matkowsky Law, United States.
The Respondents are Registration Private, Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States; Prakhar Rastogi of Noida, Uttar Pradesh, India; Rajveer Singh Chawla of Ghaziabad, Uttar Pradesh, India and Divya Taneja of New Delhi, Delhi, India.
2. The Domain Names and Registrar
The disputed domain names <contactnumberforyahoo.com>, <phonenumberforyahoo.com>, <phonenumberyahoo.com>, <yahoo-contact.com>, <yahoocustomercarephonenumber.com>, <yahoomailcontactnumber.com> and <yahoomailphonenumber.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2016. On July 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 14, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants 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 July 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2016.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 23, 2016. 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 owns the name and mark YAHOO!, which it has been using since 1994. Amongst several dozens of other registrations, the Complainant is the owner of the United States of America trademark Registration No. 2,040,222, first used on January 6, 1994, filed on January 24, 1996 and registered on February 25, 1997 for YAHOO!, in international classes 09, 16, 35 and 42.
The disputed domain names were registered between September 22, 2015 and September 24, 2015 and currently are used to redirect Internet users to webpages offering “Yahoo Phone Number for Technical Support” (“http://www.emailsupportcontact.com/yahoo-phone-number.html”) or informing “Yahoo Toll Free” numbers (“http://www.email-tech-support.org/” and “http://www.emailcustomercare.co/yahoo-phone-number.html”).
5. Parties’ Contentions
The Complainant contends that the disputed domain names are under common control as they were registered within a three-day timeframe, between September 22, 2015 and September 24, 2015, with the same Registrar and under the name of the same privacy protection service. The disputed domain names, according to the Complainant, were used in connection with password recovery and technical support scam operations.
Furthermore, according to the Complainant, four of the disputed domain names were placed on the same exact IP address (220.127.116.11) and the same exact name servers, whereas the other three disputed domain names either displayed a website stating that the Respondent is reachable through a fraudulent Yahoo Contact Phone Number (1-800-704-4296) or did so in the past.
These facts, together with the use of similar descriptive terms and as the disputed domain names were all registered within the same three-day time period, characterize under the Complainant’s view that the disputed domain names are likely under common management or control and therefore the Complainant requests the consolidation against multiple Registrants as Respondents in a single administrative proceeding.
The Complainant asserts that the disputed domain names all incorporate its famous YAHOO! trademark, largely used in connection with online computer services, with the addition of generic words (i.e. “contact” “phone number”, or “customer care”) which highly relate to its support services.
Regarding the absence of the Respondents’ rights or legitimate interests, the Complainant argues that:
i. the Respondents have used the disputed domain names in connection with support scam operations to confuse innocent people into calling Respondents for illegitimate password and account recovery services that compromise their online safety;
ii. the Respondents are using the disputed domain names intentionally exploiting the fame of the YAHOO! trademark to attract Internet traffic to their websites;
iii. the Respondents are neither commonly known as YAHOO!, nor by the disputed domain names, nor have they been authorized to use the Complainant’s name and trademark in the disputed domain names;
iv. the websites to which Internet users are redirected create a false impression of affiliation with the Complainant given that support services are being offered there and Internet users are likely to wrongly believe that such are official websites; and
v. the Respondents used a privacy protection service to hide their true identity.
Furthermore, the Complainant asserts that the bad faith in the registration, through a privacy shield, of the disputed domain names is evident given the fact that YAHOO! is a well-known trademark throughout the world and that the Respondent could not claim to be unaware of it.
As to the use of the disputed domain names in bad faith, considering that the Respondents are posing as legitimate or related Yahoo Customer Service agents, such use cannot be considered a bona fide offering of goods or services given that Respondents are deceiving Internet users into providing Respondents with their Yahoo username or email address.
Lastly, Respondents have a history of continuing to exploit the Complainant’s trademark as part of the same technical support scam operations given that some of the names in the Whois records such as “Rajveer Singh Chawla”, “Prakhar Rastogi” and “Divya Taneja” are identical or substantially the same aliases used to register other domain names which have already been subject to previous UDRP cases.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Consolidation of multiple Registrants as Respondents in a single administrative proceeding
The Complainant requests under paragraph 3(c) and 10(e) of the Rules that this Panel accepts multiple Respondents in a single proceeding in view of the facts enumerated at paragraph 5.A. above.
This Panel is satisfied, in view of the evidences submitted and on balance that the disputed domain names are indeed subject to a common control.
Indeed, the timeframe in which the registrations occurred before the same registrar, the use of the same privacy protection service provider, the choice of the terms in the disputed domain names and the respective use made thereof, the lack of a reply by all of the Respondents (and the use of similar aliases in prior UDRP proceedings), all corroborate with the consolidation in a single administrative proceeding, being it procedurally efficient, fair and equitable to all parties.
B. Identical or Confusingly Similar
The Complainant has established its rights in the well-known trademark YAHOO!.
The Complainant’s mark is reproduced in the disputed domain names (less the character “!”) and the addition of the generic terms “contact number”, “phone number”, “contact”, “customer care phone number”, “mail contact number” and “mail phone number” in this Panel’s point of view, only makes the disputed domain names more confusing with the Complainant’s services.
For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s famous trademark.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondents’ rights or legitimate interests in the disputed domain names. These circumstances are:
i. before any notice of the dispute, the Respondents’ use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
ii. the Respondents (as individuals, businesses, or other organizations) have been commonly known by the disputed domain names, in spite of not having acquired trademark or service mark rights; or
iii. the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondents, in not responding to the Complaint, have failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondents under the second UDRP element.
In that sense, the Complainant indeed asserts that no authorization or license has been given by the Complainant to the Respondents to register the disputed domain names. There is also no evidence that the Respondents have been commonly known by the disputed domain names.
According to the evidence submitted by the Complainant the websites that resolved or still resolves from the disputed domain names offer support services in a manner that, in this Panel’s view, could suggest (incorrectly) that such were operated by an affiliate of the Complainant.
Furthermore, the possible use of the disputed domain names in connection with scams aimed at obtaining Internet users’ passwords and user names leads this Panel to the conclusion that the Respondents were seeking to create a false impression of association with the Complainant, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondents do not have rights or legitimate interests with respect to the disputed domain names.
D. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain names in bad faith can be found pursuant to Policy paragraph 4(b)(iv) in view of the reproduction of the YAHOO! trademark, as well as the offer of confusingly similar support services, on the websites that resolved and still resolves from the disputed domain names.
Other factors corroborate a finding of bad faith:
a. the use of a privacy protection service;
b. the use of a false address in the Whois data, after the privacy shield was removed: and
c. the absence of any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate good faith in the registration or use of the disputed domain names.
For the reasons above, the Respondents’ conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) of the Policy.
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, <contactnumberforyahoo.com>, <phonenumberforyahoo.com>, <phonenumberyahoo.com>, <yahoo-contact.com>, <yahoocustomercarephonenumber.com>, <yahoomailcontactnumber.com> and <yahoomailphonenumber.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: September 6, 2016