The Complainant is Yahoo! Inc. of Sunnyvale, California, United States of America (“U.S.”), represented by Kilpatrick Stockton, LLP, U.S.
The Respondent is Hildegard Gruener of Vienna, Austria.
The disputed domain names <mail-yahoo-com.com> and <my-yahoo-mail.com> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2016. On December 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 12, 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 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 proceeding commenced on December 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2017.
The Center appointed Christian Schalk as the sole panelist in this matter on January 12, 2017. 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. The Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) and (b) of the Rules. The language of the proceeding is English.
The Complainant is a well-known provider of web related services, such as search services, e-mail, chat, stock quotes, real estate and mortgage information and rate quotes, movie reviews, news, weather, yellow pages directory services, web store hosting and management as well as online shopping advertising. The Complainant uses the YAHOO! trademark continuously since 1994. For a long time, the Complainant’s websites have enjoyed continuous widespread popularity and were ranked among the most visited websites on the Internet. In 2013 and 2014, YAHOO! was ranked as one of the top 100 global brands in BRANDZ’s Top 100 Most Powerful Brands report. In 2015, the Boston Consulting Group ranked the Complainant’s YAHOO! brand as number 16 in its “Most Innovative Brand” list. The Complainant’s YAHOO! trademark has been subject to numerous proceedings under the UDRP, where the panels found the YAHOO! mark to be famous (see for instance, Yahoo! Inc. v. Aman Anand, Ravi Singh, Sunil Singh, Whois Privacy Corp., Domains By Proxy, LLC, WIPO Case No. D2016-0461; Yahoo! Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Domain Vault, Domain Vault LLC, WIPO Case No. D2015-0500; Yahoo! Inc. v. Madhi Khakshoor Razavieh, WIPO Case No. DIR2015-0013; Yahoo! Inc. v. Jesper Hansen, WIPO Case No. D2011-2227; Yahoo! Inc. v. Blue Q Ltd., Romain Barissat, WIPO Case No. D2011-0702; and Yahoo! Inc. v. Filipe Oliveira, WIPO Case No. DES2011-0007).
The Complainant owns trademark rights in YAHOO! in numerous countries, among others:
- U.S. Trademark Registration No. 2040691 for YAHOO!, registration date February 25, 1997, covering goods and services in Int. Class 42;
- U.S. Trademark Registration No. 2187292 for YAHOO!, registration date September 8, 1998, covering goods and services in Int. Class 35;
- U.S. Trademark Registration No. 2403227 for YAHOO!, registration date November 14, 2000, covering goods and services in Int. Class 9, 35, 38, 39 42;
- European Union Trademark No. 000693127 for YAHOO!, registration date January 22, 2001, covering goods and services in Int. Classes 3, 20, 24, 29, 30, 35, 36, 38, 39 and 42.
The Complainant owns also a number of domain names such as <yahoo.com> to which resolves the Complainant’s main website. In October 2016, the Complainant’s websites ranked number three in the comScore Media Metrix Ranking of the Top 50 properties in the U.S.
The Respondent registered the disputed domain name <mail-yahoo-com.com> on July 12, 2016 and the disputed domain name <my-yahoo-mail.com> on July 27, 2016. According to printouts of the website of November 23, 2106, which are part of the case file presented before the Panel, both disputed domain names resolve to nearly identical websites. On the upper left part, it is written twice in a prominent way in bold letters, like a headline “Mail Yahoo”. On the left bottom, the Complainant’s company logo is displayed. Next to it is among others stated that “Yahoo Mail is a web-based email service offered by the American company Yahoo!”. The Panel has also typed in both disputed domain names in the Internet browser of its computer. There, both disputed domain names are linked with websites, which contain a list of nearly identical links. Many of them are featuring the Complainant’s company name “Yahoo”. At the bottom of each website it is written in German language that “The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintains any relationship with the advertisers. In case of trademark issues, please contact the owner directly (contact information can be found in the whois)”.
The Complainant alleges that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant argues that the disputed domain names incorporate the entirety of the Complainant’s trademark and that this would be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered trademarks. The Complainant cites among others Yahoo! Inc. v. Blue Q Ltd., et al., WIPO Case No. D2011-0702 to support this argument. The Complainant explains further that the term YAHOO! is an arbitrary, distinctive, strong and famous trademark and therefore, it would be unlikely that the Respondent cold think that the disputed domain names would not be confusingly similar with the Complainant’s YAHOO! trademark. The Complainant believes also that adding generic and/or descriptive terms such as “my” or “mail” do not have any influence on the confusing similarity of the disputed domain names with the Complainant’s YAHOO! trademark. It argues in this context that panels in UDRP procedures have held already that additions to the Complainant’s business increase the likelihood of confusion and association between the domain name holder and the trademark owner. The Complainant cites in this context Yahoo! Inc. v. Feiji Gao, WIPO Case No. D2013-0521; Yahoo! Inc. v. Yang Zhi, WIPO Case No. D2013-0522; and Yahoo! Inc. v. Jesper Hansen, WIPO Case D2011-2227. The Complainant adds in this context that the Respondent’s addition of the words “my”, “mail” and “com” does not abate the likelihood of confusion created by the Respondent’s use of the YAHOO trademark in the disputed domain names, but enhances it because the word “my”, “mail” and “com” have an obvious relationship to the Complainant’s provision of email services through the domain names <yahoomail.com>, <mail.yahoo.com> and <my.yahoo.com>. As to the exclamation mark symbol which forms part of the Complainant’s YAHOO! trademark, the Complainant explains that his main website is available at the domain name <yahoo.com>, that the dominant portion of the Complainant’s mark is the term YAHOO and that symbols such as exclamation mark have been routinely discounted by panels in UDRP cases involving the Complainant when conducting their analysis of confusing similarity and cites among others Yahoo! Inc. v. Scott McVey, WIPO Case No. D2011-1486; Yahoo! Inc. v. Jesper Hansen, WIPO Case No. D2011-2227; and Yahoo! Inc. v. Blue Q Ltd.y et al., WIPO Case No. D2011-0702 in order to support his conclusions.
The Complainant alleges also that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant asserts that the Respondent is not commonly known by the disputed domain names and that the Respondent cannot be known by them given the notoriety of the Complainant’s YAHOO! mark. The Complainant believes also that the Respondent is not making legitimate noncommercial or fair use of the disputed domain names. The Complainant explains in this context that the disputed domain names are being used to divert Internet users seeking a legitimate Yahoo website to the Respondent’s website to generate pay-per-click advertising revenue for the Respondent’s commercial gain. The Complainant contends further that the Respondent has created websites that purport to offer blog posts regarding Yahoo mail and that each purported blog post has the same generic and unoriginal content, with only the title being different. The Complainant concludes therefore, that to the extent that a blogging website could constitute a legitimate noncommercial use of a domain name, the purported blog posts in this case are a pretext whose only purpose is to divert web traffic for the purpose of generating advertising revenue for the Respondent’s commercial gain. The Complainant cites in this context Managed By Q Inc. v. XL Liu, WIPO Case No. D2016-1857 and Starwood Hotels & Resorts Worldwide, Inc. et al. v. Marketing Total S.A., WIPO Case No. D2008-0019 and concludes that the Respondent registered the disputed domain names with the Complainant’s trademark in mind and with the intention of diverting Internet traffic intended for the Complainant.
The Complainant alleges furthermore that the disputed domain names were registered and are being used in bad faith. The Complainant argues that the Respondent’s registration and use of the disputed domain names constitutes bad faith because the Respondent has used them to capitalize on consumers’ familiarity with the Complainant and his famous YAHOO! trademark in order to intentionally attract Internet users to the Respondent’s website for the Respondent’s commercial gain. The Complainant explains further that to do so, the Respondent intentionally created a likelihood of confusion with the Complainant and its YAHOO! trademark as to the source, sponsorship, affiliation and / or endorsement of the Respondent and / or the Respondent’s website and services. The Complainant states also that the Respondent’s use of the disputed domain names for fake blogging websites for the purpose of generating advertising revenue shows that the Respondent registered the disputed domain names in bad faith in order to trade off the Complainant’s name and trademark. The Complainant argues in this context that the website, to which the disputed domain names resolve are on the surface pretending to be legitimate blogging sites. However, each purported blog post has the same generic content, demonstrating that the Respondent has deliberately selected the disputed domain names to trade off the Complainant’s name in generating advertising revenue. The Complainant cites in this context FitFlop Limited v. Arvin Edwards, WIPO Case No. D2011-0507, where the panel found for bad faith because the blog was merely used as a façade to generate Internet traffic to the respondent’s website. Furthermore, the Complainant alleges that the Respondent has engaged in a pattern of bad faith use and registration since the Respondent has registered numerous domain names comprising the famous trademarks of others. The Complainant cites Aldermore Bank Plc v. Hildegard Gruener, WIPO Case No. D2016-1617 in order to support this argument.
The Respondent did not reply to the Complainant’s contentions.
The Panel finds that the Complainant has established trademark rights in the trademark YAHOO!. The disputed domain names are not identical to the Complainant’s trademark. However, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark.
As it has been decided by previous UDRP panels, incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see for instance, Yahoo! Inc. v. Blue Q Ltd., et al., WIPO Case No. D2011-0702; Casa Editorial El Tiempo, S.A. v. Montanya Ltd, WIPO Case No. D2009-0103; Todito.com v. Francisco Gómez Ceballos, WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; and Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047).
Furthermore, in accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark is generally not a distinguishing feature (see Yahoo! Inc. v. Feiji Gao, WIPO Case No. D2013-0521; Yahoo! Inc. v. Yang Zhi, WIPO Case No. D2013-0522; Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan, WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0624; and Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002).
In this case, the words “mail” and “my” are common terms in the English language. It is the same with the term “com” which is an abbreviation of the quite common term “commercial”. All these words are composed with the term “yahoo” within the respective disputed domain names. Since the Complainant offers e-mail services under the YAHOO! trademark, Internet users will, as far as the disputed domain name <mail-yahoo-com.com> is concerned, understand these terms as a more general reference to the Complainant’s mail services and as a somehow more personalized version of this service with reference to the disputed domain name <my-yahoo-mail.com>. Therefore, the addition of the terms “mail” and “com” in the one disputed domain name and the addition of the terms “my” and “mail” in the other disputed domain name cannot avoid similarity nor do they add anything to avoid confusion with the Complainant’s trademark. Therefore, the only distinctive element in both disputed domain names consists of the term “yahoo”, which is nearly identical to the Complainant’s trademark.
Also the exclamation mark symbol which forms part of the YAHOO! trademark does not alter these findings. As it has been decided by panels in previous UDRP cases, the absence of the exclamation mark in the disputed domain names is not of relevance here (see, for instance, Yahoo! Inc. v. Scott McVey, WIPO Case No. D2011-1486; Yahoo! Inc. v. Jesper Hansen, WIPO Case No. D2011-2227; and Yahoo! Inc. v. Blue Q Ltd.y et al., WIPO Case No. D2011-0702). The dominant portion of the Complainant’s mark is the term YAHOO. The exclamation mark as such has no impact at all on the degree of distinctiveness of the trademark YAHOO!.
Furthermore, the “.com” Top-Level Domain suffix in the disputed domain names do not affect the determination that the disputed domain names are confusingly similar with the YAHOO! trademark in which the Complainant has rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg, WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936; and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and cases cited therein).
For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy.
Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names.
It is the consensus view of UDRP panels that once the complainant has made out a prima facie showing on this element, the burden of proof shifts to the respondent (see also paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”); Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; and Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark. The Respondent has also not rebutted the Complainant’s allegations and has not provided the Panel with any explanations as to the Respondent’s rights or legitimate interests.
According to the printout of the websites forming part of the case file presented before the Panel, the Complainant’s company name and corporate logo were displayed. On the websites to which the Panel arrived when typing in the disputed domain names by himself in the Internet browser of his computer, the Complainant’s company name formed part of several links shown therein. Therefore, the Panel is convinced that the Respondent was aware of the Complainant when registering the disputed domain name and when it began using it. In the latter case, there is a strong likelihood that such links do not only lead Internet users searching for the Complainant’s services away from the Complainant’s website but probably also to websites where services are offered which are in competition with those of the Complainant. Furthermore, it cannot be excluded that the Respondent gains some income by each click on these links by Internet users. UDRP panels have generally recognized that use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services”. An example of such permissible use is, where domain names consisting of dictionary or common words or phrases support posted pay-per-click links genuinely related to the generic meaning of the domain name at issue (see, for instance, Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; and Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964).
However, as it has been decided already by previous UDRP panels, that pay-per-click parking pages which are built around a trademark cannot constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii), see Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Mobile Communication Service Inc v. WebReg, RN, WIPO Case No. D2005-1304; Gerber Products Co. v. LaPorte Holdings, WIPO Case No. D2005-1277; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Champangne Lanson v. Development Services/MailPlanet.com, WIPO Case No. D2006-0006; and The Knot, Inc. v. In Knot we Trust Ltd., WIPO Case No. D2006-0340. This is the case here, where the disputed domain names incorporate the Complainant’s trademark. It is the same with reference to the websites to which the disputed domain names resolved on November 23, 2016 according to the case file presented before the Panel. These websites apparently contain blog posts with nearly identical content and which feature also the Complainant’s company name and corporate logo.
Therefore, the only reason for the Respondent to register the disputed domain names was, on balance, to capitalize on the Complainant’s goodwill by redirecting Internet traffic intended for the Complainant away from it to third parties’ websites. Such behaviour cannot constitute a bona fide or legitimate use of the disputed domain names.
For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met.
The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of domain names:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed 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 its website or location or of a product or service on its website or location.
According to the materials brought before the Panel, the Panel finds that the disputed domain names have been registered and are used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that to its knowledge, the registration of the disputed domain names will not infringe the rights of any third party.
The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its products when it registered the disputed domain names. The Complainant’s Internet services such as a search engine are well known to nearly all Internet users. Internet browsers like Firefox or Safari list the Complainant as one of several possible search engines in a prominent way. Furthermore, the Complainant’s representatives are subject to a broad coverage in the media. In addition, the disputed domain names resolved in November 2016 to websites where the Complainant’s name and corporate logo were prominently displayed and the Complainant’s company name formed part of several links displayed on the websites to which the disputed domain names resolved when the Panel typed them the Internet browser of his computer. Therefore, the Panel is convinced that the Respondent was aware of the Complainant when registering the disputed domain names.
The Panel finds further, that the Respondent is also using the disputed domain names in bad faith.
The use, to which the disputed domain names are put, namely parking pages featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely pay-per-click or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links. Even if visitors arriving at the websites to which the disputed domain name resolve become aware that these websites are not such of the Complainant, the operators of these websites will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links (see also Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320). The Respondent remains responsible for such use even if such advertising links served up to visitors on the websites associated with the disputed domain names are automated (see also Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396). It does also not matter in this context, whether the Respondent itself or a third party reaps the profits from such products or services (see Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912) because the reason for such profits would be always the registration of the disputed domain names by the Respondent.
Therefore, the Panel is convinced that the Respondent’s main purpose was to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
This was also the case when the websites to which the disputed domain names resolved on November 23, 2016 showed blog post with nearly identical content and featured also the Complainant’s name and corporate logo in a prominent manner.
In accordance with paragraph 3.5 of the WIPO Overview 2.0, the existence of the disclaimer on the websites to which the disputed domain names resolve cannot by itself cure bad faith when bad faith has been established by other factors. The disclaimer is also further evidence of the Respondent’s prior knowledge of the Complainant’s trademarks.
Another indication of the Respondent’s bad faith use and registration of the disputed domain names is that the Respondent has apparently a pattern of bad faith registration and use of domain names comprising trademarks of others. The Respondent has been the party as respondent in several UDRP cases where panels found bad faith registration and use of the disputed domain names by the Respondent (see, for example, 1-800-Flowers.com, Inc. v. Hildegard Gruener, WIPO Case No. D2016-1883; Aldermore Bank Plc v. Hildegard Gruener, WIPO Case No. D2016-1617; and Government Employees Insurance Company (“GEICO”) v. Hildegard Gruener, WIPO Case No. D2015-1410).
Furthermore, the Respondent has apparently also provided inaccurate contact details when it registered the disputed domain names or failed at least to correct such false contact details. The Center has used the contact details given in the WhoIs record for the disputed domain names and those provided by the Registrar when it tried to contact the Respondent. However, the courier service provider could not reach the Respondent in order to deliver the Written Notice of the Complaint. Therefore, the Panel notes that the Respondent may have given incorrect contact details to frustrate or at least to delay this proceeding (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Therefore, the disputed domain names were not only registered in bad faith for which the Respondent is responsible for but are also used in bad faith as set out in paragraph 4(b)(iv) 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 <mail-yahoo-com.com> and <my-yahoo-mail.com> be transferred to the Complainant.
Christian Schalk
Sole Panelist
Date: January 29, 2017