Yahoo! Inc. v. [--]
Claim Number: FA0801001139567
Complainant is Yahoo! Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan Henderson Farabow Garrett &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoogreen.com>, registered with Tucows, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On January 31, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 20, 2008 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <yahoogreen.com> domain name is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <yahoogreen.com> domain name.
3. Respondent registered and used the <yahoogreen.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc., is a global Internet communications, media, and commerce company that offers a myriad of online services to millions of Internet users every day. Complainant has been using the YAHOO! mark continuously in connection with this business since 1994, and the mark has since become one of the most recognized brands in the world. Among its many services, Complainant offers information to environmental awareness and “green” issues from a website located at the <green.yahoo.com> domain name. Complainant owns several trademark registrations for the YAHOO! mark, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,040,222 issued February 25, 1997).
Respondent registered the <yahoogreen.com> domain name on
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 asserts rights in the YAHOO! mark
through its longstanding use of the mark and its registration of the mark with
the USPTO. The Panel finds that this
registration sufficiently establishes Complainant’s rights in the YAHOO! mark under Policy ¶ 4(a)(i).
See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
Next, Complainant claims that
Respondent’s <yahoogreen.com> domain
name is confusingly similar to its YAHOO! mark, as
Respondent simply omits the exclamation point from the mark and adds the
generic term “green.” Previous panels
have found, and this Panel so finds, that such slight alterations to a mark do
not render a disputed domain name distinct from the mark. In addition, as a top-level domain is
required in all domain names, Respondent’s inclusion of the generic top-level
domain “.com” is irrelevant. Thus, the
Panel concludes that the <yahoogreen.com>
domain name is confusingly similar to Complainant’s YAHOO! mark, as contemplated by Policy ¶ 4(a)(i). See Mrs. World Pageants, Inc. v.
Crown Promotions, FA 94321 (Nat. Arb.
Forum Apr. 24, 2000) (finding that punctuation is not significant in
determining the similarity of a domain name and mark); see also Arthur Guinness Son
& Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
The Panel notes that Complainant must first make a prima facie showing that Respondent lacks rights and legitimate interests in the <yahoogreen.com> domain name, and then the burden shifts to Respondent to refute that showing. In the present case, the Panel finds that Complainant has established a prima facie case as required by the Policy. 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); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent’s failure to answer the Complaint raises the presumption that Respondent does not have rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, the Panel will still examine the record to determine any possible rights or legitimate interests Respondent may have pursuant to Policy ¶ 4(c).
The WHOIS information for the <yahoogreen.com> domain name does not indicate, and there is
nothing further in the record to suggest, that Respondent is commonly known by
the disputed domain name. Along with
this, Complainant has never given Respondent permission to use its YAHOO! mark for any purpose.
Therefore, the Panel concludes that Respondent is not commonly known by
the <yahoogreen.com> domain
name, and accordingly lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum
Respondent’s <yahoogreen.com> domain name does not resolve to any active website. The Panel finds that such non-use does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), and further indicates Respondent’s lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Finally, the Panel finds that Respondent’s failure to use the <yahoogreen.com> domain name in any way also indicates that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that inactive use of a domain name permits an inference of registration and use in bad faith); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoogreen.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 12, 2008
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