WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. v. Andy Perlaza
Case No. D2017-0869
1. The Parties
The Complainant is Yahoo! Inc. of Sunnyvale, California, United States of America ("United States" or "US"), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Andy Perlaza of Elmont, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <yahoosupportnumber.net> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 29, 2017. On May 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 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 May 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 1, 2017.
The Center appointed Angela Fox as the sole panelist in this matter on June 20, 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 well-known US-based company Yahoo! Inc., which has been providing ISP and related services around the world under the trademark YAHOO! for over 20 years. The Complainant's services include web directory and search services, email, chat, sports, stock quotes, movie reviews, news, weather, yellow pages directory services, online shopping classified advertising. It also provides support services to users via its YAHOO! Help website at "www.help.yahoo.com".
The Complainant is the proprietor of numerous trademark registrations for YAHOO! around the world, including but not limited to federal trademark registrations in the United States, including the following, details of which were annexed to the Complaint:
- US Federal 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 Classes 38, 42, 35, 39, and 9.
- US Federal 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 Classes 42, 9, 16, and 35.
- US Federal Registration No. 2,187,292, first used September 22, 1997, filed February 28, 1997, issued September 8, 1998, covering online computer services in Class 35.
- US Federal 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 Class 42.
The Complainant's main website is located at "www.yahoo.com". The Complainant also operates other websites under the YAHOO! mark. The Complainant filed evidence that in October 2016, its websites ranked number three in the comScore Media Metrix Rankings of the Top 50 Properties in the United States, garnering more than 200 million monthly unique visitors in the United States alone. According to the Complainant, it had 1 billion monthly users as of February 2016. The Complainant also filed a list of previous decisions in which UDRP panels recognized the Complainant's YAHOO! trademark as famous.
The disputed domain name was registered on November 3, 2015. It is in use for a website that purports to offer support services to YAHOO! users for a fee.
5. Parties' Contentions
The Complainant submits that the disputed domain name is confusingly similar to the trademark YAHOO!, in which it has rights. The Complainant argues that the absence of the exclamation mark does not detract from the confusing similarity, since it is not capable of being replicated in a domain name and does not in any event appear in the Complainant's own domain names. The Complainant adds that the remaining matter in the disputed domain name, namely the words "supportnumber" and the generic TLD suffix ".net", is non‑distinctive and not capable of distinguishing the domain name from its trademark, not least because the Complainant itself also offers support services under the YAHOO! mark.
The Complainant also submits that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant argues that the Respondent has not used the domain name in connection with a bona fide offering of goods or services; has not been commonly known by the domain name; and is not making a legitimate noncommercial or fair use of the domain name. The Complainant alleges in particular that the Respondent's website is in use in connection with a phishing scheme for the Respondent's financial gain, with the intention of diverting Internet traffic intended for the Complainant, which is neither a legitimate nor a fair use.
Finally, the Complainant contends that the disputed domain name was registered and has been used in bad faith with the intention to cause confusion and divert Internet users to the Respondent's website in order to perpetrate a phishing scheme for the Respondent's financial benefit.
The Respondent did not reply to the Complainant's contentions and is in default. No circumstances explaining the default have been put forward.
Therefore, in accordance with paragraphs 14(a) and 14(b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent's default.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) a respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has proved that it is the proprietor of registered trademark rights in YAHOO!
The disputed domain name is <yahoosupportnumber.net>. It incorporates the whole of the Complainant's trademark as its first element. The additional elements, namely the words "support" and "number" and the generic Top-Level Domain suffix ".net" are either descriptive of services that the Complainant itself offers through its "www.help.yahoo.com" website or are non-distinctive dictionary terms; they do not therefore suffice to distinguish the disputed domain name from the Complainant's trademark. Moreover, it is common knowledge that ISP support services are often offered by telephone, and therefore through a number, which further reinforces the confusing similarity of the disputed domain name with the Complainant's trademark.
The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has not consented to the Respondent's registration or use of the disputed domain name, and the Respondent has asserted no basis for any claim to a right or legitimate interest in it. Under paragraph 4(c)(i) of the Policy, the Panel may nonetheless infer that a respondent has rights or legitimate interests in a domain name if:
(i) before any notice to the Respondent of the dispute, the Respondent used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
In this case, the screenshots annexed to the Complaint show that the Respondent appears to have been offering support services for a fee to Internet users of the Complainant's services. The website uses the YAHOO! trademark and logo and overall the impression created is that the website is that of, or in some way connected to, the Complainant. Three-quarters of the way down the scrolling page, which features lengthy text, the Respondent's website states, "Yahoo support number is an independent customer service number that helps the user get connected with official customer service team of Yahoo through an alternate phone number." However, given the amount of text on the page it is entirely possible that many visitors to the site will not notice that statement, and are likely to gain the overall impression that the website is connected with the Complainant.
The Complainant contends that the Respondent's website is a phishing site being perpetrated for the Respondent's gain. The Respondent has done nothing to rebut this allegation. It is however clear that the website contains many features common to phishing sites, such as grammatical and spelling mistakes, and requests for payment of fees for services of uncertain scope, which require a user to authorize a third party to remotely access their computer.
As noted above, the Respondent has made no effort to rebut the express assertions against it, and the contents of its website are consistent with those commonly featured in phishing sites. The Panel is entitled to make such inferences as it deems appropriate from the Respondent's silence, and in this case the Panel concludes that it is more likely than not that the Respondent's site is a phishing scam, and is therefore not a bona fide offering of services within the meaning paragraph 4(c)(i) of the Policy. Even if it had not been a phishing site, however, the use of a confusingly similar domain name in connection with a website that appears to have been deliberately crafted to misrepresent itself as a website of, or related to, the Complainant would not in the Panel's view amount to a good faith offering of services within the meaning of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, the following circumstance, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(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."
In this case, the Respondent has been using the disputed domain name to link to a website purportedly offering support services to users of the Complainant's services, but which the Panel agrees appears likely to be a phishing site being used by the Respondent for financial gain. The Respondent's website uses the Complainant's trademark and logo and it is only with difficulty that it is possible to discern that the website is operated by an independent entity. Overall, the Panel agrees that the disputed domain name appears to have been intentionally used to attract, for commercial gain, Internet users who are likely to believe that the Respondent's website is that of or in some way associated with the Complainant's services, not least because the Complainant itself offers support services under its YAHOO! mark.
Such conduct is disruptive to the Complainant's business because it threatens to divert and mislead consumers that would otherwise have been directed to the Complainant's own help website. That the Respondent's website appears likely to be a phishing scam threatens even greater reputational damage because Internet users who contact the Respondent in the mistaken belief that they are in contact with the Complainant may become the victims of fraud.
The Panel finds that the disputed domain name has been 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 <yahoosupportnumber.net> be transferred to the Complainant.
Date: July 26, 2017