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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yola, Inc. v. Aaron John Peter Johnson / Aaron Johnson

Case No. DAU2010-0017

1. The Parties

The Complainant is Yola, Inc. of San Francisco, California, United States of America, represented by Rodenbaugh Law, United States of America.

The Respondent is Aaron John Peter Johnson / Aaron Johnson of Gosford, New South Wales, Australia.

2. The Domain Name and Registrar

The disputed domain name <yola.com.au> is registered with Aust Domains International Pty Ltd dba Aust Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2010. On August 25, 2010, the Center transmitted by email to Aust Domains International Pty Ltd dba Aust Domains, Inc. a request for registrar verification in connection with the disputed domain name. On August 26, 2010, Aust Domains International Pty Ltd dba Aust Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 27, 2010, the Complainant submitted an “amended Complaint” which identified that the Complainant was the applicant for an Australian registered trademark. 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 August 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2010.

The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on September 20, 2010. On October 5, 2010, the Center notified the parties that, due to an inadvertent omission, the written notice of the filing of the Complaint was not sent to one of the Respondent’s addresses. The Rules require that a copy of the written notice is sent to all available addresses of the Respondent. To put beyond doubt that the Respondent was notified of these proceedings, the Center resent such notice of the Complaint to the additional address for the Respondent, and provided that the Respondent could submit a Response by October 16, 2010. No response was received from the Respondent in response to that communication.

The Center appointed James A. Barker as the sole panelist in this matter on October 20, 2010. 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 Respondent has not contested the facts as set out in the Complaint. Those facts are that the Complainant provides a website builder and web hosting service that helps companies market their products and services on the Internet. The Complainant was founded in March 2007, and previously operated under the name SynthaSite. On March 26, 2009, the company re-launched itself under the name “Yola”.

The Respondent registered the disputed domain name on April 27, 2009, one month after the launch of Yola. Since its inception, the Complainant has earned a reputation in its industry for providing innovative and user-friendly web development tools. The Complainant has been featured on CNET, ABC News, and TechCrunch, as well as in Entrepreneur, BusinessWeek, and The Wall Street Journal. The Complainant has approximately 3 million users across the globe, and the Complainant’s user base is continuing to grow rapidly.

The Complainant maintains an extensive Internet presence, having registered at least 38 domain names around the world incorporating the term Yola, in addition to <yola.com> and <yola.net>. The Internet is one of the primary marketing channels used by the Complainant.

The Complainant owns United States trademark registration number 3,735,155 for YOLA, registered on January 5, 2010 in international classes 42 and 45. The Complainant’s application for that mark was first filed on February 2, 2009. The Complainant is also the applicant for an Australian Trademark, application no. 1373142 for YOLA, filed on August 2, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has established rights in the YOLA mark pursuant to Policy 4(a)(i) through its registration of the mark with the United States Patent and Trademark Office (“USPTO”). The Complainant claims that the disputed domain name is confusingly similar to Complainant’s mark, as the disputed domain name is identical to its trademark.

The Complainant provides evidence that the disputed domain name resolves to the Respondent’s website that displays sponsored links to third-party web pages offering website design and development services in competition with the Complainant. The Complainant says that the Respondent’s use of the domain name that is confusingly similar to the Complainant’s mark to offer competing services and products is not sufficient to establish rights or legitimate interests in the disputed domain name. The use of the confusingly similar domain name to display links to Complainant’s competitors is not a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy nor a legitimate noncommercial or fair use pursuant to Policy.

The Complainant says that it can be reasonably inferred that the Respondent registered the disputed domain name to interfere with and disrupt the Complainant’s business. Furthermore, the Respondent is using the disputed domain name to intentionally exploit consumer confusion for the Respondent’s commercial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, nor make any other communication in connection with this case.

6. Discussion and Findings

For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a name, 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 was registered in bad faith or was subsequently used in bad faith.

These issues are discussed below. The Panel notes that the Policy is substantially similar to the Uniform Domain Name Dispute Resolution Policy (UDRP) and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy, as has the Complainant.

A. Identical or Confusingly Similar

The first thing which the Complainant must show, to establish its case under paragraph 4(a)(i) of the Policy, is that it “has rights” in a name, trademark or service mark. It is clear that the Complainant has established such rights by providing evidence of its YOLA trademark, registered on the principal register of the USPTO.

It is notable that the Complainant’s registration of its mark on January 5, 2010, post-dates the registration of the disputed domain name on April 27, 2009. However, this does not affect the Complainant’s establishment of its rights in a mark. As stated in paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the consensus view of WIPO UDRP panels is that: “Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However, it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trade mark in mind”. See also e.g. MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544. As with the UDRP, the auDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights.

Accordingly, the Panel has considered the timing of the Complainant’s registration for the purpose of whether bad faith is established (under the heading for “bad faith” below). Following the consensus approach, the Panel has not considered the timing of the Complainant’s registration for the purpose of whether the Complainant relevantly “has rights” under paragraph 4(a)(i) of the Policy.

Having established that it has rights in a mark, it is a short step to establishing that the disputed domain name is identical or confusingly similar to that mark. It is well established that the domain name extension (“.com.au”) is to be disregarded for the purpose of comparison. Disregarding that extension, it is self-evident that the disputed domain name is identical to the Complainant’s YOLA mark.

The Complainant has therefore established its case under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests. Once a Complainant establishes a prima facie case against the Respondent under this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with the Complainant. See e.g., Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

The Complainant has established a strong prima facie case against the Respondent in this case. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may, in response, demonstrate rights or legitimate interests in the disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.”

Having filed no Response, the Respondent has demonstrated none of these circumstances to rebut the prima facie case against it. There is otherwise no evidence in the case file that would support a finding that these circumstances are present. Further, and for the reasons outlined below in connection with registration and use in bad faith, the Panel does not find that the Respondent had rights in the domain name acquired before the Complainant acquired rights in its YOLA trademark.

C. Registered or Subsequently Used in Bad Faith

Paragraph 4(a)(iii) of the Policy is put in the alternative – the Complainant may establish this ground by showing that the Respondent either registered the disputed domain name in bad faith or subsequently used it in bad faith. The evidence in this case would, in the Panel’s view, establish either of these circumstances.

The disputed domain name was registered around one month after the Complainant made a press release announcing that it had changed its name to “Yola”, and around 3 months after the Complainant filed its application to register its mark. The Complainant’s mark appears to be relatively distinctive in a trademark sense. There is no evidence that this term is, for example, descriptive or might have some other common association that might dilute its value as a mark. There is no evidence that the Respondent has any connection with the term “Yola”. Further, while a finding that a respondent does not have a legitimate interest in a domain name that is identical to the mark of another does not automatically lead to a conclusion of bad faith, the facts are relevant to the bad faith inquiry (see e.g., MC Enterprises v. Mark Segal (Namegiant.com), WIPO Case No. D2005-1270). As evidenced in the Complaint, for some period the disputed domain name reverted only to a simple “landing” website which displayed a list of links entirely relating to the field of business of the Complainant.

From these facts, the Panel considers that it is improbable that the Respondent would not have been aware of the Complainant and its name or mark when it obtained registration of the disputed domain name in April 2009. It is difficult to avoid the impression that the Respondent registered the disputed domain name for the purposes described in paragraph 4(b)(iv) of the Policy which are: that the Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s web site, by creating a likelihood of confusion with the Complainant’s name or mark. Under the Policy, this constitutes evidence of bad faith registration and use. See e.g., Gerd Petrik v. Johnny Carpela, WIPO Case No. D2004-1043; Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101.

But even if the Respondent had not registered the disputed domain name in bad faith, the evidence is strongly suggestive that the Respondent has used the disputed domain name in bad faith. The timing of the domain name registration, coming so soon after the Complainant’s notification of its name change, suggests classic opportunistic conduct against which the Policy provides a remedy. The Respondent has also used the disputed domain name to direct traffic to a “click through” or “landing” website, containing links to websites selling products competing with the Complainant. It is now well-established that the use of a parking page in this manner is strong evidence of bad faith. See e.g., Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474.

For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <yola.com.au>, be transferred to the Complainant.

James A. Barker
Sole Panelist
Dated: November 3, 2010

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