The Complainant is Yahoo! Inc. of Sunnyvale, California, United States of America, represented Saba & Co. Intellectual Property s.a.l. (Offshore), Lebanon.
The Respondent is Madhi Khakshoor Razavieh of Khorasan, Islamic Republic of Iran.
The disputed domain names <mychatyahoo.ir>, <yahoo-chat.ir>, <yahoochat.ir>, <yahoogap.ir>, <yahoo-group.ir>, <yahooochat.ir> and <yah00chat.ir> are registered with IRNIC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2015. On October 26, 2015, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On October 27, 2015, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on November 11, 2015.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the ”Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 12, 2015. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2015.
The Center appointed Brigitte Joppich as the sole panelist in this matter on December 9, 2015. 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 paragraph 7 of the Rules.
The Complainant is a global technology company that offers a wide range of services online, with offices located throughout the Americas, Europe, and the Asia Pacific, East and Middle East regions. It brings together personalized content and information consumed by hundreds of millions of users, and provides communication tools such as Yahoo! Mail, Yahoo! Messenger, Yahoo! Groups, Yahoo! Answers, and Flickr. The Complainant began doing business in 1994 as a web directory and search engine company. In 2014, Yahoo’s global user base across search, communications, and digital content grew to more than 1,000,000,000 monthly active users located around the world. The Complainant’s website “www.yahoo.com” is the second most visited website in the Islamic Republic of Iran, where the Respondent is located.
The Complainant is the registered owner of numerous trademarks for YAHOO!, including Community trademark registration no. 001076181, registered on June 7, 2000, and United States of America trademark registration no. 2,403,227, registered on November 14, 2000 (hereinafter referred to as the YAHOO Marks). The YAHOO Marks have been determined to be famous worldwide by panels in previous UDRP proceedings (cf. Yahoo! Inc. v. Domain Vault, Domain Vault LLC, WIPO Case No. D2014-1830; Yahoo! Inc. v. Feiji Gao, WIPO Case No. D2013-0521; Yahoo! Inc. v. Mr. Omid Pournazar, WIPO Case No. D2012-1612). The Complainant maintains websites inter alia at “www.yahoo.com”.
The disputed domain names were registered between August 31, 2014 and September 8, 2015 and all resolve to chatting webpages competing with the Complainant’s services.
The Complainant sent cease and desist letters to the Respondent by email on September 19, 2014 and November 19, 2014 to which the Respondent did not reply.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is present in the instant case.
(1) The disputed domain names are confusingly similar to the Complainant’s famous YAHOO Marks as they fully incorporate such trademarks and as the mere additions of descriptive terms “chat”, “group”, and “gap” (Persian for “chat”) distinguishes the disputed domain names from the Complainant’s trademarks just as little as the replacement of the letter “o” by the number “0”.
(2) The Respondent has no rights or legitimate interests in the disputed domain names as there is no evidence that the Respondent has used, or made demonstrable preparations to use, the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services, or that the Respondent has been commonly known by the disputed domain names or made legitimate noncommercial or fair use of the disputed domain names without intent to mislead consumers or harm the reputation of the YAHOO Marks. The Complainant further states that the Complainant has not authorized the Respondent to use the famous YAHOO Marks.
(3) The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. With regard to bad faith registration, the Complainant contends that the Respondent was aware of the YAHOO Marks when registering the disputed domain names as the Complainant’s trademark is famous worldwide and as the Complainant’s website “www.yahoo.com” is the second most visited website in the Islamic Republic of Iran. With regard to bad faith use, the Complainant argues that by using the disputed domain names, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other 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. In addition, the Complainant argues that the Respondent failed to respond to cease and desist letters and that the Respondent therefore should be considered to have registered and to be using the disputed domain names in bad faith. With regard to the disputed domain name <yah00chat.ir>, the Complainant additionally argues that this is a typical case of typo-squatting which also indicates bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered or are being used in bad faith.
The disputed domain names fully incorporate the Complainant’s highly distinctive and famous YAHOO Marks or, in the case of <yah00chat.ir>, a typo of that mark, save for the exclamation point, which cannot be represented in a domain name, and are confusingly similar to such marks.
It is well established that a domain name that wholly incorporates a trade mark may be confusingly similar to such trade mark for purposes of the Policy despite the addition of additional generic terms, such as “chat”, “group” or “gap”. Likewise, the fact that the Respondent replaced the letter “o” by the number “0” in the disputed domain name <yah00chat.ir> does not prevent a finding of confusing similarity, as this disputed domain name visually clearly refers to the YAHOO Marks (cf. Singapore Press Holdings Limited v. Leong Meng Yew, WIPO Case No. D2009-1080; Nintendo of America Inc. v. Max Maximus, WIPO Case No. D2000-0588; ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627).1
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among Policy panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the domain name will then shift to the respondent.
The Complainant has sufficiently substantiated that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not provide any evidence with regard to rights or legitimate interests in the disputed domain names.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the disputed domain names all forward Internet users to websites competing with the Complainant’s chat services, which is not bona fide use under the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain names under paragraphs 4(a)(ii) and 4(c) of the Policy.
The Panel is satisfied that, based on the fame of the Complainant’s trademarks, the Respondent registered the disputed domain names with full knowledge of the Complainant’s YAHOO Marks. Such finding is supported by the fact that the Respondent is using the disputed domain names to deliberately forward Internet users to websites competing with the Complainant’s services.
As to bad faith use, by fully incorporating the YAHOO Marks (or typos thereof), except for the exclamation mark, into the disputed domain names and by using such domain names to forward Internet users to websites competing with the Complainant’s services, the Respondent is, in all likelihood, trying to divert Internet traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy.
The Panel is therefore satisfied that the Respondent also used the disputed domain names in bad faith. Consequently, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 disputed domain names <mychatyahoo.ir>, <yahoo-chat.ir>, <yahoochat.ir>, <yahoogap.ir>, <yahoo-group.ir>, <yahooochat.ir> and <yah00chat.ir> be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Date: December 21, 2015
1 While the Complaint is brought under the Policy, and not the Uniform Domain Name Dispute Resolution Policy (“UDRP), given the textual similarities between the two, the Panel considers precedent relevant to the current proceedings, and will refer to it throughout.