WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo Holdings, Inc. v. Registration Private, Domains By Proxy, LLC / Ashish Gupta
Case No. D2017-2548
1. The Parties
The Complainant is Yahoo Holdings, Inc. of Sunnyvale, California, United States of America ("United States"), represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is Registration Private, Domains By Proxy, LLC Scottsdale, Arizona, United States / Ashish Gupta of Noida, India.
2. The Domain Name and Registrar
The disputed domain name <yahoosupportnumbers.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 December 21, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 22, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 28, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 5, 2018.
The Center verified that the Complaint together with the amended 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 January 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 29, 2018.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on February 8, 2018. 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 following facts are undisputed.
The Complainant is a worldwide well-known company, whose services include web directory and search services, email, chat, sports, stock quotes, movie reviews, news, weather, yellow pages directory services, online shopping classified advertising, audio and video streaming and web-store hosting and management.
The Complainant is the owner of a number of registrations for the trademark YAHOO! in various jurisdictions, including but not limited to various United Stated trademarks for services related to inter alia telecommunications service, online computer services for a wide range of general interest information, online advertising and retail services, transportation services, and computer software, e.g., United States trademark no. 2403227 registered on November 14, 2000 (the "Trademark").
The Domain Name was registered by the Respondent on August 28, 2017. The Domain Name resolves to a website called "Y SUPPORT NUMBER" that purports to offer "Yahoo Customer Support Services" (the "Website").
5. Parties' Contentions
Insofar as relevant, the Complainant contends the following.
The Complainant offers and has offered for many years a wide variety of services using the Trademark. For example, the Complainant offers support services for its users on the YAHOO! Help webpage located at the domain <help.yahoo.com>.
The Domain Name reproduces the Trademark in its entirety and adds the generic or descriptive term "support numbers". The addition, related to the Complainant's business, increases the likelihood of confusion and association between the Domain Name and the Trademark.
Therefore, the Domain Name is confusingly similar to the Trademark.
The Respondent is not making a legitimate noncommercial or fair use of the Domain Name, but rather is using the Domain Name to perpetrate a common phishing scheme used to deceptively gain access to users' personal information. The Domain Name resolves to the Website, called "Y SUPPORT NUMBER'', on which "Yahoo Support Services" are offered in order to mislead Internet users and divert traffic from the Complainant's official customer service. The Website uses the Trademark, as well as a logo, which is nearly identical to the Trademark.
Even if the Respondent were offering genuine support services in connection with Complainant's products and/or services, the Respondent's use of the Domain Name is not bona fide within the meaning of paragraph 4(c)(i) because the Respondent does not accurately and prominently disclose its relationship with the Complainant. Although the Respondent includes a disclaimer at the bottom of the Website, the disclaimer is relatively inconspicuous and neither expressly nor clearly disclaims a relationship with the Complainant.
The Respondent registered the Domain Name with the Trademark in mind and with intent to cause confusion. The Respondent's registration and use of the Domain Name constitutes bad faith because the Respondent has used the Domain Name to capitalize on consumers' familiarity with the Complainant and its Trademark in order to intentionally attract Internet users to the Respondent's website to perpetrate a phishing scheme.
Therefore, the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the domain name must be shown to be identical or confusingly similar to that mark.
The Complainant has shown that it has rights in the Trademark.
The Domain Name incorporates the Trademark in its entirety and adds the words "support numbers".
The Panel finds that the dominant part of the Domain Name is "yahoo" and that the element "support numbers" may even add to the confusing similarity, since it is likely that Internet users are looking for support related to services offered by the Complainant.
The addition of the generic Top-Level Domain ("gTLD") ".com" is in this matter irrelevant in the determination of the confusing similarity between the Trademark and the Domain Name, see cases Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. See also, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903: "[T]he fact that a domain name wholly incorporates a Complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks."
Thus, the Panel finds that the Domain Name is confusingly similar to the Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant's contentions. For that reason, the Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might have concluded that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that "Yahoo Support Numbers" is the Respondent's name or that the Respondent is commonly known as "Yahoo Support Numbers" or "Yahoo Support Numbers". There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Complainant's Trademark, or to apply for or use any domain name incorporating the Trademark.
Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods and services. From the screenshot that was provided by the Complainant, it appears that the Website provides the false impression to offer legitimate support services related the Complainant, such as "Change Yahoo Password", "Fix Yahoo Mail Error Codes and Messages" and "Recover Hacked Yahoo Account".
Therefore, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
In light of the evidence filed by the Complainant, the Panel finds that the Complainant's Trademark and activities are well known throughout the world.
In the Panel's view there is no other plausible explanation why the Respondent registered the Domain Name, other than the Respondent being aware of the Complainant and the Trademark and intending to trade off the goodwill and reputation associated with the Complainant in order to perpetrate a phishing scheme.
Furthermore, the Panel finds that the Respondent has intentionally attempted to attract users to its Website by creating a likelihood of confusion with the Trademark. The Website creates the false impression to be an official support service website of the Complainant.
The inclusion of a small disclaimer in the page footer of the Website stating: "Yahoo Mail Support Number is an independent provider of remote tech support for third party products. Any use of third party trademarks, brand names, product and services is only referential. […]", cannot contribute to the possible finding that the Respondent is in good faith. In accordance with WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), the mere existence of a disclaimer cannot cure the finding of bad faith, when the overall circumstances of the case point in this direction. In this case, the Respondent's use of a disclaimer can be considered as an admission by the Respondent that users may be confused as a result of the disputed domain name and the content of the Website.
This behavior of the Respondent fits the example of paragraph 4(b)(iv) of the Policy, i.e., that 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.
Although the lack of a reply from the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use by the Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is 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 disputed domain name, <yahoosupportnumbers.com> be transferred to the Complainant.
Willem J.H. Leppink
Date: February 21, 2018