WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Moataz Mohsen, YAHO
Case No. DME2014-0003
1. The Parties
The Complainant is Yahoo! Inc. of Sunnyvale, California, United States of America (“USA”), represented by Kelly IP, LLP, USA.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, USA / Moataz Mohsen, YAHO of Princeton, New Jersey, USA.
2. The Domain Name and Registrar
The disputed domain name <yaho.me> (the “Domain Name”) is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2014. On February 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 14, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 14, 2014 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 February 17, 2014.
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”) as adopted by doMEn, d.o.o. (doMEn), the registry operator of the .ME ccTLD, on April 30, 2008, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) approved by doMEn on October 1, 2012, and the WIPO Supplemental Rules for Uniform 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 amended Complaint, and the proceedings commenced on February 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2014.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on March 19, 2014. 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 a business corporation organized under the laws of the State of Delaware, USA, and headquartered in the State of California, USA. Its shares are publicly traded on the Nasdaq stock exchange.
The Complainant and its affiliates offer a range of technology services including Internet search and directory services, news and entertainment content, and communications tools such as email and instant messaging, along with integrated calendars and address books. These products are used on personal computers, mobile devices, and televisions. The Complainant’s products and services are available in 45 languages and in more than 60 countries or territories, largely through the Complainant’s websites and mobile apps. Most of the Complainant’s products and services are offered free of charge to users, as they are supported by paid advertising, including search advertising. The Complainant also derives income from developer tools licensed to third parties that develop their own applications interacting with the Complainant’s platforms.
One of the Complainant’s services of particular relevance in this proceeding is “URL shortening”, whereby users are able to convert long URL addresses into shorter URLs under the Complainant’s domain name <y.ahoo.it>. This facilitates sharing links, especially in text messages, Tweets, and posts on social media sites or mobile apps.
The Complainant has used the trademark and service mark YAHOO! since 1994. Since 1999, Interbrand has listed this mark as one of the world’s top 100 brands. Annual revenues associated with this mark amount to nearly USD 5 billion. The Complainant claims approximately 800 million users worldwide, and its website at “www.yahoo.com” is one of the most frequently visited sites on the Internet. The news “carousel” at the top of the website’s home page, for example, attracts more than one billion clicks monthly. The Complaint attaches ample evidence of the renown of the YAHOO! mark, online and in advertising and media articles.
The Complainant holds numerous trademark registrations for YAHOO! in the USA and in other jurisdictions. These include United States Patent and Trademark Office trademark registration numbers 2040222 (registered February 25, 1997), 2187292 (registered September 8, 1998), and 2403227 (registered November 14, 2000).
The Domain Name was created on March 13, 2011. It was registered in the name of a domain privacy service, but the Registrar apparently disabled the protection service when notified of the Complaint in this proceeding, identifying the individual Moataz Mohsen as the registrant and “YAHO” as the registrant organization. There is no evidence in the record that “YAHO” is a legal entity, and it does not appear to be registered as a domestic or foreign company in New Jersey, USA. The domain privacy service “Whois Agent, Whois Privacy Protection Service, Inc.” has expressed no interest in this proceeding, and the Panel therefore refers to Mohsen, YAHO as the Respondent hereafter.
The Domain Name resolves to an English-language website headed “YAHO.ME SHRINK LONG LINKS”. It offers a URL shortening service similar to the Complainant’s, creating short URLs under the Domain Name and displaying paid advertising when those links are used. Rates for publishers and advertisers are displayed on the Respondent’s website associated with the Domain Name. The service for publishers is described in the FAQs on the Respondent’s website as follows:
“First, you shorten your links with our site, and then you post them or send them to people as you usually would with any shortened link. We handle the rest by showing an ad before the shortened link loads. Each ad that is shown earns you money!”
The service for advertisers is also explained as follows:
“The process is simple: someone clicks on one of our user's shortened links and your ad (which is actually your entire site or landing page) is loaded first, then the visitor can stay on your site, bookmark it, or choose to skip the ad and go to the shortened link.”
The Respondent has also advertised the Domain Name for sale for USD 2,000 through the Sedo domain marketplace website and through the Registrar’s WhoIs record.
Counsel for the Complainant sent a cease-and-desist letter in November 2013 to the contact address listed for the Domain Name, reportedly with no response. In addition, the Complainant discovered that the Respondent was operating a Facebook page at “www.facebook.com/yahodotme”, publishing news content similar to the Complainant’s services. Facebook removed this page at the Complainant’s request. It does not appear that the Respondent has replied to any communications from the Complainant or from the Center in connection with the current proceeding.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its well-established YAHOO! mark and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant argues that the Respondent acted in bad faith by using the Domain Name, based on the Complainant’s famous mark, for a competing commercial service and advertising the Domain Name for sale at an excessive price.
The Respondent did not reply to the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Complainant unquestionably holds registered YAHOO! trademarks. The Domain Name differs from the mark by the omission of the second letter “o” and the exclamation mark, which cannot be used in URLs in the Domain Name System. “Yaho” spelled with one “o” is not a dictionary word in English (unlike “yahoo”), and it is similar to the mark in appearance and, presumably, pronunciation.
The Domain Name string also includes the Top-Level Domain “.me”. In determining whether a domain name is identical or confusingly similar to a complainant’s mark, WIPO panels have typically disregarded the generic Top-Level Domain (“gTLD”) or country code Top-Level Domain (“ccTLD”) portion of the URL address. This is a sensible approache.g., in cases involving Top-Level Domains, such as “.com” or “.org”, because Internet users may not focus on the Top-Level Domain of the domain name. That assumption may not always be valid where the Top-Level Domain is highly specific or restrictive.
The Domain Name in this proceeding includes the ccTLD assigned to Montenegro. This portion of the domain name does not however create a materially distinctive impression. (The “.me” ccTLD is marketed globally, especially in English-speaking countries where the string suggests the English word “me” and can be added meaningfully to a domain name as a kind of “domain hack”, such as <about.me>, <contact.me>, and <insure.me>. See the “.me” registry operator’s website at “www.domain.me” and the Wikipedia article on “.me”.) Consequently, the Panel concludes that the “.me” portion of the Domain Name does not materially affect the determination that the Domain Name is identical or confusingly similar to the Complainant’s mark.
UDRP panels customarily treat the first element of a Policy complaint as a standing requirement, which simply requires “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”; some panels refer as well to the “overall impression” created by the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. The Panel finds that these tests are met in this case and concludes that the Domain Name is identical or confusingly similar to the Complainant’s YAHOO! mark for purposes of the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
In this proceeding, it is undisputed that the Complainant did not grant permission to use its well-known YAHOO! mark in the Domain Name. The Domain Name is used for a website that offers URL-shortening services that compete directly with those offered by the Complainant. This use is misleading and likely infringing; as such, it cannot be considered a use in connection with a bona fide offering of goods or services within the meaning of the Policy, paragraph 4(c). The Complainant has presented a prima facie case of illegitimacy, and the Respondent has not come forward with evidence of rights or legitimate interests in the Domain Name. Accordingly, the Panel finds that the second element of the Complaint has been established.
C. Registered and Used in Bad Faith
The Policy’s non-exhaustive list of circumstances that shall be considered evidence of bad faith registration and use (paragraph 4(b)) includes the following:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or […].
(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.”
It is not clear on this record that the Respondent registered the Domain Name “primarily” for the purpose of selling it to the Complainant or a competitor, although the Domain Name was listed on an auction website.
However, Policy paragraph 4(b)(iv) squarely fits the circumstances of this proceeding. The Domain Name, which is not itself a dictionary word, is confusingly similar to the Complainant’s world-famous mark, and the Respondent uses it to sell a competing service. It is most likely that the Domain Name was selected precisely for its potential to mislead Internet users familiar with the Complainant’s mark, and the Respondent has not offered any other explanation for the choice of this Domain Name.
The Panel concludes on the available record that the Domain Name was registered and is being used in bad faith within the meaning of the Policy.
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 <yaho.me> be transferred to the Complainant.
W. Scott Blackmer
Date: April 4, 2014