WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. v. Ifeanyi Alusigwe, Tritonell Constructions Nig. Lt
Case No. D2017-0722
1. The Parties
The Complainant is Yahoo! Inc. of Sunnyvale, California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is Ifeanyi Alusigwe, Tritonell Constructions Nig. Lt of Enugu, Nigeria.
2. The Domain Names and Registrar
The disputed domain names <yahoormail.com> and <yahoornail.com> (the "Domain Names") are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 11, 2017. On April 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 12, 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 April 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 18, 2017.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on May 26, 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 is the owner of the service mark and trademark YAHOO!, the trade name YAHOO as well as the domain name <yahoo.com>. In continuous use since 1994, the Complainant's trademark has become one of the most recognized brands in the world (in 2013 and 2014, Yahoo was ranked as one of the top 100 global brands in "BRANDZ Top 100 Most Powerful Brands" report issued by Millward Brown; in 2013, Yahoo ranked number 2 on the list of "100 Most Loved Companies" in an extensive study conducted by APCO; in 2015, The Boston Consulting Group ranked Yahoo as number 16 in its "Most Innovative Brands" list).
The Complainant owns numerous trademark registrations for YAHOO! around the world such as:
a. Registration No. 2,403,227, first used June 1994, filed August 13, 1998, issued November 14, 2000, covering telecommunications services, online computer services for a wide range of general interest information, online advertising and retail services, transportation services, and computer software in International Classes 38, 42, 35, 39, and 9.
b. Registration No. 2,040,222, first used June 1, 1994, filed January 24, 1996, issued February 25, 1997, covering online computer services including creating indexes of information and providing online reference materials, software, books, and advertising services in International Classes 42, 9, 16, and 35.
c. Registration No. 2,187,292, first used September 22, 1997, filed February 28, 1997, issued September 8, 1998, covering online computer services in International Class 35.
d. Registration No. 2,040,691, first used January 2, 1996, filed April 24,1996, issued February 25, 1997, covering online computer services including creating indexes of information and providing online reference materials in International Class 42.
Yahoo's services include web directory and search services, email, chat, sports, stock quotes, real estate and mortgage information and rate quotes, movie reviews, news, weather, yellow pages directory services, online shopping, classified advertising, audio and video streaming, web-store hosting and management, and more.
Yahoo sites have long enjoyed continuous widespread popularity and ranked among the most visited sites on the Internet.
In numerous UDRP decisions involving Yahoo's marks, the panels have expressly found the YAHOO! trademark to be famous.
The Respondent registered the <yahoornail.com> domain name on July 28, 2016, and the <yahoormail.com> domain name on September 29, 2016.
5. Parties' Contentions
The Complainant contends the following:
a) the Domain Names are confusingly similar to the prior trademark of the Complainant because:
- they reproduce the Complainant's trademark in its entirety;
- the adding of a generic term such as "rmail" or "rnail" and the generic Top-Level Domain ("gTLD") ".com" are insufficient to distinguish them from the mark. Moreover, the missing of the exclamation point of the Complainant's YAHOO! trademark from the Domain Names is also irrelevant to the confusingly similar analysis. Initially, exclamation points were not permitted in domain names. Complainant's main website is available at the domain name <www.yahoo.com>, which does not contain an exclamation point.
b) The Respondent has no rights or legitimate interests in respect of the Domain Names because:
- the Respondent has not been commonly known as YAHOO! and he does not appear to own any trademark or rights in those terms;
- the Complainant has never given to the Respondent any license or authorization to register or use the contested Domain Names;
- the Respondent is not making a legitimate noncommercial or fair use of the Domain Names but rather is using the Infringing Domain Names to perpetrate a phishing scheme in order to trick the users of Complainant's email services into revealing their login names and passwords.
c) The Domain Names were registered and are being used in bad faith because:
- the Respondents could not ignore the strong notoriety and world renown of the Complainant's trademark when he registered the Domain Names; it is unlikely that the Respondent was not aware of the Complainant's rights in the YAHOO! trademark at the time of the registration of the Domain Names;
- the Respondent is not using the Domain Name in a bona fide manner; the Respondent has intentionally chosen the Domain Names based on the registered trademark with the specific intent to divert consumers in order to phish personal information from users of the Complainant's email services.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has trademark registrations for YAHOO! all over the world. Therefore, it has been proven that the Complainant has rights in the YAHOO! trademark.
The Domain Names <yahoormail.com> and <yahoornail.com> incorporate in its entirety the expression YAHOO!, which constitutes the Complainant's trademark and Company's name.
The Panel finds that the combination of the Complainant's trademark with the generic worlds "rmail" or "rnail" do not render the Domain Names dissimilar to the trademark of the Complainant.
There are several UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant's mark even if it is added to another trademark. In particular, there are UDRP decisions stating that the incorporation of the trademark and a generic word in a domain name is misleading and confusingly similar to the trademark owned by the Complainant (LEGO Juris A/S v. Devin Steenberg, WIPO Case No. D2015-0394; QVC Inc. and ER Marks Inc. v. WhoisGuard, D2007-1872).
Additionally, the panel does not typically consider, when analyzing the identity or similarity, the gTLD suffix (see, i.e., Crédit Industriel et Commercial S.A. v. Name Privacy, WIPO Case No. D2005-0457). At the same conclusion, arrives about the missing of the exclamation mark. Even if now the punctuation mark can be part of the domain name, previously it was not possible to insert in the domain name any type of punctuation marks and therefore it is quite common and predictable that the Internet users do not look for it or write it as part of the domain name.
Therefore, the Panel finds that the Domain Names are confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this case. There is prima facie indication in the evidence provided to the Panel that there are no rights or legitimate interests on the part of the Respondent in the Domain Names.
The Respondent has no relationship whatsoever to the Complainant nor did he ever has any relationship with the Complainant.
Moreover, the Respondent has not received any license or authorization from the Complainant to register and use the Domain Names or use the Complainant's trademarks. Moreover, from the documents filed by the Complainant and from the information presents in the respective WhoIs, it is evident that the Respondent is not known under the word YAHOO!
In addition, the Respondent is not making legitimate noncommercial or fair use of the Domain Names, but rather is using the same to perpetrate a phishing scheme in order to trick users of the Complainant's products and services into revealing their login names and passwords.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
The Respondent must have been aware of the existence of the YAHOO! marks when he registered the Domain Names. It is quite predictable that only someone who was familiar with the Complainant's marks would have registered domain names including such mark.
The Respondent is not making legitimate noncommercial or fair use of the contested Domain Names, but rather is using the same to perpetrate a phishing scheme in order to trick users of the Complainant's products and services into revealing their login names and passwords. The Respondent used the <yahoornail.com> domain name to resolve to a website that was visually identical to the website at the Complainant's legitimate domain name <yahoomail.com>.
The Panel is of the opinion that the Respondent has registered the Domain Names with the intent to profit from the reputation of the famous trademark of the Complainant by choosing domain names that are confusingly similar to the Complainant's mark.
Taken together with the fact that the Respondent has not filed any Response in this proceeding in support of any good faith registration or use, the Panel believes that the Complainant has demonstrated that the Domain Names have been registered and are being 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 Domain Names, <yahoormail.com> and <yahoornail.com>, be transferred to the Complainant.
Date: June 5, 2017