WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. v. Ravi Singh, Dayzed Pty Ltd
Case No. DAU2016-0013
1. The Parties
The Complainant is Yahoo! Inc. of Sunnyvale, California, United States of America ("United States"), represented by Matkowsky Law P.C., United States.
The Respondent is Ravi Singh, Dayzed Pty Ltd of North Wollongong, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <yahoosupport.com.au> is registered with TPP Wholesale Pty Ltd (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 7, 2016. On March 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 14, 2016, 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 .au Dispute Resolution Policy (the "Policy" or ".auDRP"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 15, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2016. The Center received a communication from a third party on March 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 5, 2016.
The Center appointed Andrew F. Christie as the sole panelist in this matter on April 7, 2016. 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, together with its consolidated subsidiaries, is a global technology company that provides a guide focused on informing, connecting and entertaining its users. It owns the name and trademark YAHOO!, which has been in continuous use since 1994. In 2015 the Complainant had over one billion monthly active users.
The Complainant is the owner of numerous trademark registrations around the world, including in Australia, for the trademark YAHOO!. The earliest of the Complainant's Australian trademark registrations dates from June 3, 1996, and is in respect of, among other things, computer services and online computer services.
In addition to the variety of services offered at the Complainant's main website "www.yahoo.com", the Complainant, either directly or indirectly, operates many websites under the YAHOO! trademark, and using YAHOO-formative trademarks and domain names, including YAHOO!7 in Australia. The Complainant offers support services free of charge for its products, and has an online portal at "www.yahoo.com" to provide support to its users. This online portal also directs users in how to contact Yahoo Customer Service in connection with its product offerings, such as how to access "Help" for a user's Yahoo Account or Yahoo! Mail.
The disputed domain name was registered on November 11, 2015. The Complainant has provided screenshots of the website to which the disputed domain name resolved on February 16, 2016. These screenshots show a website with pages that contain, among other things, the text "Yahoo Helpline Number Australia" (with an Australian telephone number provided), "Yahoo Technical Support Australia", and information purporting to relate to "Mail Recovery", "Password Recovery" and "Account Recovery". The pages contain a stylized "Y" in the top left-hand corner, similar to a logo used by the Complainant. At the bottom of the pages is the following text, under the heading "Disclaimer": "We are independent tech service providers and have no association with the Yahoo brand. Our mission is to resolve the tech problems faced by Yahoo mail users. We operate by following strict International customer care compliance and guidelines."
As at the date of this decision, the disputed domain name resolves to a website at "www.macpatchers.com.au", containing text stating "Contact Yahoo Support Australia" (with an Australian telephone number provided), followed by the text "Yahoo Support Australia: The Trusted Online Destination for Email Solution". The stylized "Y" has been replaced by an "e" in a circle in the top left-hand corner of the website's pages. At the bottom of each page is the following text, under the heading "Disclaimer": "We are not official website and at any point don't claim to be associated with Yahoo, Gmail, Hotmail, Bigpond, McAfee or Norton in any way. We provide free help for email issues and only charge for issues related to operating system, viruses & other problems occurring due to hacking or phishing. We have not registered this domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. We have not used Yahoo trade mark anywhere in this site to mislead or to make visitors believe we are not official. We have not registered the domain name to disrupt the business any of its brands. By using this domain name, we are not intentionally attempting to attract Internet users to our web site or other on-line location for commercial gain. We tell upfront this support through us is free however for other support customer seek they need to pay."
5. Parties' Contentions
The Complainant contends that the disputed domain name is confusingly similar to a name and trademark in which it has rights because: (i) the addition of a generic word to a recognized mark creates confusing similarity; (ii) the term "support" in the disputed domain name is an entirely apt description for services associated with the Complainant, such that consumers could well expect the domain to indicate a relationship to the Complainant as it is highly related to Yahoo customer services rendered in relation to the goods and services covered by Yahoo! Help; and (iii) the omission of the exclamation point "!" and addition of a Top-Level Domain ("TLD") suffix does nothing to negate confusing similarity under the Policy as both are technical requirements of registration.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) while the copyright notice legend on the website resolving from the disputed domain name is in the purported name of "Yahoo Helpline Australia", the Respondent has no authority to use this name from any agency in any jurisdiction, and it is not, in fact, its name, but rather a false and deceptive advertising practice to deceive people into thinking the Respondent is the Complainant, or associated with the Complainant; (ii) the Respondent operates as part of technical support scam operations, including social engineering and spear-phishing attacks, to confuse innocent people into calling the Respondent for password and account recovery services that compromise their online safety and/or personal information, and often tricks them into paying for services that they do not really need or is of possibly lesser quality than the legitimate Yahoo Help support; (iii) the Respondent uses "Yahoo" branded social media to drive traffic to these technical support scam sites exploiting the Complainant's trademark; (iv) the Respondent was not authorized by the Complainant to register the disputed domain name, is not licensed or approved to use it, and is not otherwise associated with the Complainant in any manner; and (v) even if the website resolving from the disputed domain name was actually offering Yahoo! Help-related services, the Respondent's use of the YAHOO! trademark would still amount to prima facie trademark infringement of the Complainant's registered trademark in Australia (registered for services that include computer and email services), which is not a bona fide use.
The Complainant contends that the disputed domain name was registered or is subsequently being used in bad faith because: (i) as evidenced by the use being made of the disputed domain name, the Respondent was clearly aware of the Complainant's well-known trademark at the time of its registration, which alone is sufficient to make a finding of bad faith; (ii) the Respondent aggravates the risk of confusion by also incorporating the "Y!" trademark appearing in close proximity to "Yahoo Helpline Number Australia", and replicating the Complainant's favicon to increase the chances of confusion; (iii) both the registration and use of the disputed domain name, whether as part of technical support scam operations or actually to compete with the Complainant's "Yahoo! Help", is clearly in bad faith; (iv) if an Internet user scrolls to the bottom of the website resolving from the disputed domain name there is an inconspicuous disclaimer that does not alleviate initial interest confusion, and is not likely to be encountered by users at all given the design of the website, which encourages users to contact the Respondent under the mistaken belief they are contacting the "Yahoo Helpline Number" before they would get to the bottom of the page or read all the fine print; and (v) the Respondent had prior knowledge of the Complainant's rights evidenced by the manner in which the Respondent promotes the disputed domain name on its Facebook Page.
The Center received an email on March 21, 2016, from a person claiming to be the registered agent for the Respondent Dayzed Pty Ltd, in which it was stated: "I am writing to inform you that Dayzed Pty Ltd has not had any association with Mr Ravi Singh for over 6 months. PC Patchers is an Indian company that my clients refuse to deal with owing to advice from ANZ Business Banking Services, where the concerns of the bank regarding questionable business practices. All but the "PO Box 392, Morriset" address are for Dayzed and its directors who DO NOT have any association with Ravi Singh or his businesses. Further we submit to you that they do not own, nor have a claim on any PC Patchers website domains."
The Respondent Ravi Singh did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
When the country code TLD identifier ".au" and the second-level identifier ".com" are ignored (as is appropriate in this case), the disputed domain name <yahoosupport.com.au> contains almost the entirety of the Complainant's registered trademark YAHOO!. The absence from the domain name of the character "!" and the inclusion in the disputed domain name of the descriptive word "support" does not lessen the inevitable confusion of the disputed domain name with the Complainant's trademark, particularly as the Complainant provides online support to its customers. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its YAHOO! trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website which purported to provide Australian contact details for "Yahoo Helpline". The effect of this statement is to represent that the contact details are those of the Complainant's support helpline. That representation is false. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate non-commercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered or Subsequently Used in Bad Faith
The disputed domain name was registered many years after the Complainant first registered its YAHOO! trademark in Australia. The evidence on the record provided by the Complainant with respect to the use of its trademark on the website to which the disputed domain name resolves, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent knew of the Complainant's trademark and knew that it had no rights or legitimate interests in the disputed domain name.
It is clear from the evidence in the case record that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of that website. The presence on the website of the "disclaimer" text does not negate that likelihood of confusion, for two reasons. First, the disclaimer text is placed relatively inconspicuously at the bottom of the website pages, and in such a manner that the typical visitor to the website would not read it. Secondly, as paragraph 3.5 of the auDA Overview of Panel Views on Selected auDRP Questions, First Edition ("auDRP Overview 1.0") explains, by the time an Internet user reaches and reads any disclaimer on a webpage to which such a domain name resolves, any respondent objective of attracting visitors for financial advantage to its website through use of the trademark in the domain name will generally have been achieved.
For all of the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.
D. Complainant's Eligibility
The Complainant has requested transfer of the disputed domain name to it. Given the Complainant's name and the Australian trademark registrations that it owns, the Complainant appears to satisfy the eligibility requirements for registration of the disputed domain name by virtue of the domain name being closely and substantially connected to the Complainant.
For all 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.com.au> be transferred to the Complainant.
Andrew F. Christie
Date: April 22, 2016