WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. v. ADS Infoworld
Case No. D2017-0870
1. The Parties
The Complainant is Yahoo! Inc. of Sunnyvale, California, United States of America, represented by David K. Caplan, United States of America.
The Respondent is ADS Infoworld of Noida, India.
2. The Domain Name and Registrar
The disputed domain name <yahoosupport-number.com> 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 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2017. The Respondent sent email communications to the Center on May 4, 13 and 27, 2017. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on May 26, 2017.
The Center appointed Knud Wallberg as the sole panelist in this matter on June 2, 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 was established in 1994 and trades under the name "Yahoo!", the main website being "www.yahoo.com". The Complainant provides services on the Internet including web directory and search services, email, chat, sports, games, stock quotes, real estate and mortgage information and rate quotes, movie reviews, news, weather, yellow pages directory services, maps, online shopping, travel reservations, classified advertising, audio and video streaming, and web-store hosting and management.
The Complainant holds registrations of the trademark YAHOO! in a variety of classes in the United States since at least February 25, 1997, and the Complainant also has numerous registrations for the YAHOO! trademark around the world.
The disputed domain name was registered November 3, 2015 and resolves to an active website that appears to be used as part of a phishing scam operation.
5. Parties' Contentions
The Complainant claims that the disputed domain name is confusingly similar to the Complainant's mark because it comprises the Complainant's mark and the generic or descriptive terms "support" and "number". UDRP panels have consistently held that the addition of a generic or descriptive term is not sufficient to distinguish the domain name from the complainant's mark. Moreover, Panels have held that additions relating to a complainant's business increasethe likelihood of confusion and association between the domain name holder and the trademark owner, just as the Respondent's addition of the ".com" gTLD is irrelevant in this context.
The Complainant further states, that the Respondent is not commonly known by the disputed domain name. Nothing in the Respondent's WhoIs information or the record demonstrates that the Respondent is commonly known by the disputed domain name, and the Complainant has not authorized the Respondent to use its YAHOO! mark. In addition, the Respondent is not making legitimate noncommercial or fair use of the disputed domain name, but rather is using the disputed domain name to perpetrate a common phishing scam. The disputed domain name thus resolves to a website called "Yahoo Support Number" that purports to offer customer support services in connection with Yahoo.
Finally, the Complainant claims that the Respondent registered the disputed domain name with the Complainant's mark in mind and with an intent to cause confusion. The Complainant made first use of the mark in 1994, and the Respondent did not register the disputed domain name until over twenty years later in 2015, that is well after the Complainant's mark had been recognized and relied upon by online consumers throughout the world to identify and distinguish the Complainant's website and services from the goods and services of others. Additionally, the words comprising the disputed domain name and the website content show that the Respondent had actual knowledge of the Complainant's rights in and to its YAHOO! mark before registering the disputed domain name and therefore undeniably registered the disputed domain name in bad faith. Further, the Respondent's use of the disputed domain name constitutes bad faith because the Respondent has used the disputed domain name to intentionally attract Internet users to the Respondent's website to perpetrate a phishing scheme.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <yahoosupport-number.com> is confusingly similar (in the sense of the Policy) to the Complainant's registered trademark YAHOO!. The disputed domain name incorporates this mark in its entirety with the addition of the term "support number". The generic Top-Level Domain ".com" does not dispel a finding of confusing similarity in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Given the circumstances of this case, and in particular the way that the Respondent has been and is using the disputed domain name (discussed below) the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not produced, and indeed there is no other evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or 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; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case including the evidence on record of the longstanding of use of the Complainant's trademark, and the distinctive nature of the mark YAHOO!, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant's mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
As to the use of the disputed domain name the Respondent is using the disputed domain name for what appears to be a phishing scam designed to deceive customers of the Complainant by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's activities. This constitutes bad faith use under the Policy, see, inter alia, National Westminster Bank plc v. Abdelilah Jadron, WIPO Case No. D2013-2232; NES Rentals Holdings, Inc. v. Domains By Proxy LLC and Allison Mills, WIPO Case No. D2013-1812; and Valero Energy Corporation, Valero Marketing and Supply Company v. Maurine flavour seafoods, WIPO Case No. D2013-1849.
Noting that the disputed domain name incorporates a registered and widely-known trademark, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <yahoosupport-number.com> be transferred to the Complainant.
Date: June 23, 2017