YPO, Inc. v Carh Sirva

WIPO Case No. D2024-4213

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

YPO, Inc. v. Carh Sirva

Case No. D2024-4213

1. The Parties

Complainant is YPO, Inc., United States of America (“United States”), represented by 101domain.com,

United States.

Respondent is Carh Sirva, United States.

2. The Domain Names and Registrar

The disputed domain names <ypomemberservice.com>, <ypomemberservice.org>,
<ypomemberservices.org>, and <ypomemberships.net> are registered with NameCheap, Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2024. On October 14, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 14, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent (Information not available on WhoIs) and contact information in the Complaint. The Center sent an email communication to Complainant on October 15, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 18, 2024.

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”), 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 Respondent of the Complaint, and the proceedings commenced on October 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2024. Respondent did not submit any response. Accordingly, the

Center notified Respondent’s default on November 8, 2024.

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The Center appointed Georges Nahitchevansky as the sole panelist in this matter on November 13, 2024.
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

Complainant, YPO, Inc., also known as the “Young Presidents' Organization”, is a membership organization of chief executives within the entrepreneurial, business, and executive communities. Complainant owns and uses the mark YPO in connection with its association and membership services and owns trademark

registrations for the YPO mark in the United States (Registration No. 2172537), which issued to registration on July 14, 1998, and in the European Union (Registration No. 000490839), which issued to registration on February 3, 1999. Complainant also owns and uses the domain name <ypo.org> concerning Complainant and its activities and for a membership portal.

Respondent, who appears to be based in the United States, registered all of the disputed domain names on June 22, 2024. At some point thereafter, the <ypomemberservice.com> and <ypomemberships.net> disputed domain names appear to have been set up for email purposes. Complainant, through its representative, sent abuse complaints to the Registrar and host concerning these two disputed domain names. These disputed domain names were suspended and the remaining disputed domain names were likewise subsequently suspended by the Registrar. Currently, all of the disputed domain names remain suspended and resolve to inactive webpages.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, Complainant contends that it has been using the YPO mark in connection with its global membership network since 1984 and currently provides its YPO membership services to current and prospective candidates around the world.

Complainant asserts that the disputed domain names are confusingly similar to its YPO mark, which has been registered in the United States and the European Union, as they contain the entirety of the YPO trademark. Complainant further asserts that Respondent does not have any legitimate interests in the disputed domain names as Respondent (i) is not licensed or authorized to use Complainant's YPO mark, (ii) is not commonly known by the disputed domain names or the YPO mark, and (iii) likely registered the disputed domain names to illicitly impersonate Complainant given that two of the disputed domain names were set up for email purposes.

Lastly, Complainant argues that Respondent has registered and used the disputed domain names in bad faith as “Respondent fraudulently used the four disputed domains to confuse prospective customers by creating a false association with Complainant's 'YPO' brand and corporate name for wrongful purposes.” Complainant maintains that such bad faith is evidenced by the fact that Respondent set up two of the disputed domain names for email purposes.

B. Respondent

Respondent did not reply to Complainant’s contentions.

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6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii)       Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii)      the disputed domain names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) at section 1.7. Complainant has provided

evidence that it owns trademark registrations for the YPO mark (and that such issued to registration well

before Respondent registered the disputed domain names).

It is well accepted that the first element functions primarily as a standing requirement. The standing (or
threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between

Complainant’s trademark and the disputed domain names. Id.

Here, the disputed domain names fully incorporate the YPO mark at the head of each of the disputed domain
names. Although the addition of the descriptive terms “member service(s)” or “memberships” at the tail of
the disputed domain names may bear on the assessment of the second and third elements, the Panel finds
the addition of such terms does not prevent a finding of confusing similarity between the disputed domain

names and the YPO mark for purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel thus finds that the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which a Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.

Here, the disputed domain names are clearly based on Complainant’s exact YPO mark. The addition of the terms “member service(s)” or “memberships”, which directly relate to Complainant's services, at the tail of

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the disputed domain names make it more likely than not that the disputed domain names will mistakenly be
seen by consumers as related to Complainant and its membership services and network. In all, the disputed
domain names effectively impersonate Complainant and thus, on their face, carry a high risk of implied
affiliation. As such, it is hard to see how Respondent could have any rights or legitimate interests in the

disputed domain names. WIPO Overview 3.0 at section 2.5.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In view of Respondent’s actions, and failure to appear in this proceeding, it is easy to infer that Respondent’s registration and use of the disputed domain names, which prominently include Complainant’s exact YPO mark has been done opportunistically and in bad faith for the benefit or profit of Respondent. The disputed domain names essentially impersonate Complainant and were registered well after Complainant had established rights in its YPO mark.

Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the reputation of the Complainant’s trademark and the composition of the disputed domain

names and finds that in the circumstances of this case the passive holding of the disputed domain names

does not prevent a finding of bad faith under the Policy.

That Respondent has acted in bad faith is also supported by the fact that Respondent appears to have set
up two of the disputed domain names for email purposes. It is not altogether clear what purpose
Respondent had in doing so but given the high degree of implied affiliation between the disputed domain
names and Complainant's YPO mark for its association and membership services, it seems more likely than
not that Respondent was fully aware of Complainant and its name and specifically chose to target
Complainant in bad faith and for perhaps a nefarious purpose.

The Panel finds that Complainant has established the third element of the Policy.

7. Decision

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 <ypomemberservice.com>, <ypomemberservice.org>,

<ypomemberservices.org> and <ypomemberships.net> be transferred to Complainant.

/Georges Nahitchevansky/
Georges Nahitchevansky
Sole Panelist
Date: November 27, 2024