WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo Holdings, Inc. v. Harish Gopalani, Hacxad
Case No. D2017-1337
1. The Parties
The Complainant is Yahoo Holdings, Inc. of Sunnyvale, California, United States of America (“USA”), represented by Kilpatrick Townsend & Stockton LLP, USA.
The Respondent is Harish Gopalani, Hacxad of New Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <yahoosupportcenter.com> (the “Domain Name”) 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 July 12, 2017. The Center transmitted its request for registrar verification to the Registrar on July 13, 2017. The Registrar replied on July 13, 2017, confirming that it had received a copy of the Complaint and that the Domain Name was registered with it. The Registrar provided the contact details held on its WhoIs database, which gave the registrant name as Harish Gopalani and the registrant organization as Hacxad. The Registrar also confirmed that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies to the Domain Name, that the Domain Name will expire on December 22, 2018, that it will remain locked during this proceeding, that the language of the registration agreement is English, and that the Domain Name has been registered to this registrant since at least December 22, 2016.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 2, 2017. In accordance with paragraph 5 of the Rules, the due date for Response was August 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2017.
The Center appointed Jonathan Turner as the sole panelist in this matter on August 25, 2017. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is the successor to Yahoo! Inc. in respect of most of its trademarks and operating assets. The Complainant’s business has used the mark YAHOO! since 1994 for various Internet services including web directory and search services, email, chat, content of various kinds, advertising and streaming. The Complainant owns registrations of the mark YAHOO! in the USA and other countries around the world; these registrations date back as early as February 25, 1997, and some of these registrations indicate the mark was first used in 1994. The Complainant and its predecessors have operated one of the Internet’s most frequented websites at “www.yahoo.com”.
The Domain Name was registered on December 22, 2016. As at the date of the Complaint, the Domain Name located a website which displayed a banner containing the words, “Get Instant Yahoo Support By Certified Technicians” and a logo containing “Y!” in a circle. The banner also referred to “24x7 Live Chat Support”, “Instant Support on Toll-Free Number” and “Online Support Via Email or Forum” followed by a bar containing the words “Certified Technicians at +1-800-814-4705 (Toll-Free)”. A side column on the left was headed with a box containing the words “Yahoo Support Center” followed by links to other pages.
Below the banner, in the central section of the page, there was a heading “How you can call yahoo customer service or Yahoo support?” followed by a paragraph of text describing problems that may occur with email accounts and concluding with the sentence: “Once, they shed the hope of recouping their endangered email account, the only alternative left is to provide a telephone call at the 3rd party Yahoo Mail Customer Service Phone number 1-800-405-2150 to have a word with accredited technological support specialist: that have sufficient understanding on the best ways to solve the important problems that of the abrupt experience in their mail account”.
Below this, a further heading, “Several of Critical Issues in Yahoo Mail Account”, was followed by text which started: “If you are among those customers encountering any kind of type of basic or essential concerns in e-mail account on relentless basis, after that simply call our 3rd party Yahoo Customer Service Number 1−800-405-2150 anytime 24x7-365 days”. Further content then extols the service provided.
Near the bottom of the page a box contained a heading “About Us” followed by the statement: “We are the honest and reliable technicians that offer a great solution to all the users of Yahoo at very affordable cost. Our professionals are extremely talented who have the right knowledge in all kinds of technical flaws of Yahoo. You can easily approach them through our number and acquire our services 24/7. Yahoo Support Service is provided by our certified representatives 24x7 by 365”. Further promotion of the service was followed by a box containing the words “YAHOO!” and “Easy & Quick SOLUTIONS”.
Finally, below this, there was a heading “Disclaimer” followed by the words: “We are third party individuals offering best technical support by experts for Yahoo Errors. We are not associated with Yahoo or any other third party companies for this support service. We are individual, trustworthy and independent service provider understanding the value of trademarks, logos, brand names, products and services of other parties as well; these are all used on this website for reference purpose only. We offer individual services through remote access, telephonic conversation, or live chat.”
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its mark YAHOO!. It points out that the mark is very well known and that the Domain Name differs from it only in the addition of the generic or descriptive terms “support” and “center” and the generic Top-Level Domain (“gTLD”) suffix, “.com”. The Complainant also draws attention to other UDRP decisions in which domain names consisting of “yahoo” and descriptive words have been held to be confusingly similar to its mark.
The Complainant submits that the Respondent does not have any rights or legitimate interests in respect of the Domain Name. It states that the Respondent is not commonly known by the Domain Name. It alleges that the Respondent is using the Domain Name to perpetrate a phishing scheme to gain access to Internet users’ personal information, and observes that this does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. The Complainant adds that the Respondent is using the Domain Name for his own financial gain by diverting consumers to its website promoting its purported support services.
The Complainant further alleges that the Domain Name was registered and is being used in bad faith. The Complainant points out that the Respondent must have known of its rights in the mark YAHOO! because this mark is so well known and because the Respondent itself refers to the Complainant’s email service in its website. The Complainant contends that the Respondent’s registration and use of the Domain Name to attract Internet users to its website and perpetrate a phishing scheme have been in bad faith.
The Complainant seeks a decision that the Domain Name be transferred to the Complainant.
As stated above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark or marks in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name was registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default in failing to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered and unregistered rights in the mark YAHOO!
The Panel further finds that the Domain Name is confusingly similar to this mark. Apart from the removal of the punctuation mark “!”, the Domain Name differs from the Complainant’s mark only in the addition of the descriptive words “support center” and the gTLD suffix, “.com” which should normally be discounted when considering the first requirement of the UDRP.
The Panel has no doubt that many Internet users would expect the Domain Name to locate a website through which the Complainant provides technical support to users of its services.
The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
Although the Respondent has not disputed the Complainant’s allegations, this Panel has some qualms about accepting the Complainant’s entirely unsubstantiated claim that the Respondent was engaged in a phishing scheme.
The Panel is prepared to assume in the Respondent’s favour that it was providing a genuine technical support service. On this basis, it is appropriate to assess whether the Respondent has a right or legitimate interest in respect of the Domain Name by reference to the criteria identified in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.D2001-0903.
According to these criteria, a business may have a right or legitimate interest in using a domain name that incorporates a mark together with a descriptive term or terms to promote the sale of goods or services ancillary to those provided under the mark, if all of the following conditions are satisfied: that the registrant of the domain name is actually offering products or services ancillary to those supplied under the mark; that the website at the domain name is used to promote only those products or services; that the website accurately and prominently discloses the true relationship between the registrant and the supplier, and that the registrant does not attempt to register all domain names that reflect the supplier’s mark.
In this case, the Respondent’s website located by the Domain Name did not prominently disclose the Respondent’s true relationship with the Complainant. On the contrary, the disclaimer of any association with the Complainant was only provided below extensive content, including displays of the Complainant’s YAHOO! mark and a logo resembling a logo used by the Complainant. In these circumstances, the Respondent cannot be regarded as making a bona fide offering within the meaning of paragraph 4(c)(i) of the UDRP so as to give it a right or legitimate interest in the Domain Name.
Furthermore, it is evident that the Respondent is not commonly known by the Domain Name and that it is not making a legitimate noncommercial or fair use of the Domain Name.
In the circumstances there is no other basis on which the Respondent could claim a right or legitimate interest in the Domain Name. The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that by using the Domain Name, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his website and the services promoted on it.
The Panel considers that the Respondent’s disclaimer was inadequate to dispel the confusion caused by the Domain Name and reinforced by the Complainant’s marks displayed on the Respondent’s website, which would have conveyed to many Internet users that the Respondent’s website was operated or authorized by the Complainant to provide technical support to users of its email services.
In accordance with paragraph 4(b)(iv) of the UDRP, this constitutes evidence of registration and use of the Domain Name in bad faith. There is no contrary evidence displacing this presumption.
Accordingly, the Panel finds that the Domain Name was registered and is being used in bad faith. All three substantive requirements of the UDRP are satisfied and is appropriate to direct that the Domain Name be transferred to the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <yahoosupportcenter.com> be transferred to the Complainant.
Date: September 9, 2017