Yahoo! Inc. v. Kelvin Pham
Claim Number: FA0204000109699
PARTIES
Complainant
is Yahoo! Inc., Sunnyvale, CA
(“Complainant”) represented by David M.
Kelly, of Finnegan, Henderson,
Farabow, Garrett & Dunner, L.L.P.
Respondent is Kelvin Pham, Gardena,
CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <yahoonail.com>,
registered with Verisign - Network
Solutions, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 12, 2002; the Forum received a hard copy of the
Complaint on April 15, 2002.
On
April 17, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the
Forum that the domain name <yahoonail.com>
is registered with Verisign - Network Solutions, Inc. and that Respondent is
the current registrant of the name. Verisign
- Network Solutions, Inc. has verified that Respondent is bound by the Verisign
- Network Solutions, Inc. registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
April 18, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 8, 2002
by which Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@yahoonail.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
May 17, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. Respondent’s domain name <yahoonail.com>
is confusingly similar to Complainant’s YAHOO! mark and <yahoo.com>
domain name.
2. Diverting Internet users for commercial
purposes by using a confusingly similar domain name demonstrates that
Respondent has no rights or legitimate interests in <yahoonail.com>.
3. Respondent has intentionally attracted
Internet users for personal gain by using a common misspelling of Complainant’s
YAHOO! e-mail service hosted at <yahoomail.com>. Additionally,
Respondent’s contested domain name reflects Complainant’s mark in its entirety,
and deviates only through the addition of a generic term. This represents a
blatant attempt to divert Internet traffic intended for Complainant to
Respondent’s website. Complainant also contends that Respondent’s domain name
was registered because of the value the Complainant places on its YAHOO! mark,
where the Respondent had an intent to sell and/or lease the domain name. Thus,
Respondent has registered and used the disputed domain name in bad faith.
B.
Respondent did not submit a Response in this proceeding.
FINDINGS
Complainant is a global Internet
communications, media and commerce company that delivers a branded network of
comprehensive searching, directory, information, communication, shopping
services and other online activities and features to millions of Internet users
daily. Complainant is the owner of the service mark and trademark YAHOO! as
well as the trade name YAHOO! and the domain name <yahoo.com>.
Complainant holds U.S. Trademark Nos. 2,040,222; 2,040,691; and 2,076,457;
among others.
The YAHOO! website is one of the
leading Internet websites worldwide in terms of traffic, advertising, and
household and business user reach. Complainant’s global audience grew to 237
million users during March 2002. Complainant’s Initial Public Offering of stock
was in April 1996. In July 2001, Interbrand, one of the world’s leading brand
marketing and consulting firms, published its annual report with rankings of
the world’s most valuable brands. A 2001 Interbrand survey ranked the
Complainant’s YAHOO! mark number fifty-nine, with a value of nearly $4.4
billion USD. By virtue of the vast array of web-based services, the millions of
visitors to Complainant’s YAHOO! network, the millions of links to the YAHOO!
site from third-party websites, and Complainant’s extensive use, promotion, and
registration of its YAHOO! mark, the YAHOO! mark and <yahoo.com> domain
name have become well established.
Respondent registered the disputed domain
name <yahoonail.com> on November 23, 2000 and has used it to
advertise for the sale/lease of the contested domain name while also imitating
one of Complainant’s most well-known services, as in, “got nail?,” and “please
enail us.” The website is presently unavailable to users.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to
“decide a complaint on the basis of the statements and documents submitted in
accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1) the domain name registered by the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered and is being used in bad faith.
Complainant
has established its rights in the YAHOO! mark through registration with the
U.S. Patent and Trademark Office and continuous subsequent use. Respondent’s <yahoonail.com>
domain name is confusingly similar to Complainant’s mark on two grounds: (1)
Respondent simply added a generic word to the Complainant’s YAHOO! mark in
attempting to manufacture a fictional affiliation, and (2) Respondent’s
contested domain name represents a slight typographical error of a well-known
service the Complainant offers, namely, e-mail service.
Respondent’s <yahoonail.com> domain
name contains the identical mark of the Complainant, with the addition of the
generic word “nail.” The addition of “nail” to the mark is inconsequential to
the confusingly similar inquiry, as the addition of a generic term does not
detract from the dominant portion of the mark. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that “[n]either the addition of an ordinary descriptive word…nor the
suffix ‘.com’ detract from the overall impression of the dominant part of the
name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is
satisfied); see also AXA China
Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that
common geographic qualifiers or generic nouns can rarely be relied upon to
differentiate the mark if the other elements of the domain name comprise a mark
or marks in which another party has rights).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Respondent
has failed to come forward with a Response and therefore it is presumed that
Respondent has no rights or legitimate interests in the disputed domain name. See
Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by the Complainant that the Respondent
has no right or legitimate interest is sufficient to shift the burden of proof
to the Respondent to demonstrate that such a right or legitimate interest does
exist).
Furthermore,
when Respondent fails to submit a Response the Panel is permitted to make all
inferences in favor of Complainant. See Strum v. Nordic Net Exch. AB,
FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that Respondent's failure to
respond to the Panel's additional requests warranted a finding for
Complainant).
By
infringing upon Complainant’s registered mark in order to solicit purchase bids
while no actual use has been made of the contested domain name, Respondent is
not making a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i). See BMW AG v. Loophole,
D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain name where
Respondent claimed to be using the domain name for a non-commercial purpose but
had made no actual use of the domain name).
Respondent’s
sole purpose in registering the subject domain name was to confuse Internet
users while attempting to frustrate the Complainant into making a purchase
offer in violation of Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D.Mass. 2002) (finding
that, because the Respondent's sole purpose in selecting the domain names was
to cause confusion with the Complainant's website and marks, it's use of the
names was not in connection with the offering of goods or services or any other
fair use); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000)
(finding that use of the domain name to direct users to other, unconnected
websites does not constitute a legitimate interest in the domain name).
Additionally,
no evidence here suggests that Respondent is commonly known as “yahoonail” or <yahoonail.com>
pursuant to Policy ¶ 4(c)(ii); Respondent is known to this Panel only as
Kelvin Pham. See Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interest where Respondent was not commonly known by the
mark and never applied for a license or permission from Complainant to use the
trademarked name); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO
June 27, 2000) (finding no rights or legitimate interests where (1) Respondent
is not a licensee of Complainant; (2) Complainant’s prior rights in the domain
name precede Respondent’s registration; (3) Respondent is not commonly known by
the domain name in question).
Accordingly,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Because of the famous and distinctive
nature of Complainant’s YAHOO! mark, Respondent is thought to have been on
notice of the existence of Complainant’s mark at the time Respondent registered
the infringing <yahoonail.com> domain name. See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov.
9, 2000) (finding that Respondent’s registration and use of an identical and/or
confusingly similar domain name were in bad faith where Complainant’s BEANIE
BABIES mark was famous and Respondent should have been aware of it); see
also Exxon Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and
constructive knowledge of Complainant’s EXXON mark given the world-wide
prominence of the mark and thus Respondent registered the domain name in bad
faith).
Respondent registered the disputed domain
name, which created a likelihood of
confusion with Complainant’s YAHOO! mark, in order to route Internet users to a
website that advertised the sale/lease of the site. The <yahoonail.com>
domain name is confusingly similar to Complainant’s mark and Internet users
will likely believe there is an affiliation between Respondent’s domain name
and Complainant’s mark. Respondent’s registration of the <yahoonail.com>
domain name for the purpose that it would benefit from the Complainant’s
mark is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v.
Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith
where Respondent registered the domain name <bigtex.net> to infringe on
Complainant’s goodwill and attract Internet users to Respondent’s website); see
also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
the Respondent directed Internet users seeking the Complainant’s site to its
own website for commercial gain).
Furthermore, Respondent registered the
disputed domain name primarily to sell, rent, or otherwise transfer it for
valuable consideration in excess of Respondent’s documented expenses.
Respondent posted offers to sell/lease the domain name on the website and also
demanded payment from Complainant in excess of Respondent’s out-of-pocket expenses,
demonstrating bad faith under Policy ¶ 4(b)(i). See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding
that a failure to use the domain name in any context other than to offer it for
sale to Complainant amounts to a use of the domain name in bad faith); see
also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”).
Accordingly, the Panel finds that Policy
¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the required relief
should be hereby GRANTED.
Accordingly, it is Ordered that the <yahoonail.com>
domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 21, 2002
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