Yahoo! Inc. v. OwnDomain.com
Claim Number: FA0803001159938
Complainant is Yahoo! Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P., of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ymessenger.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin and Karl V. Fink as Panelists, Richard Hill as Presiding Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On March 31, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 21, 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.
A timely Response was received and determined to be complete on
A timely Additional Submission was received from Complainant and
determined to be complete on
A timely Additional Submission was received from Respondent and
determined to be complete on
On April 25, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Sandra J. Franklin and Karl V. Fink as Panelists and Richard Hill as Presiding Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant, Yahoo!, 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.
The Complainant’s services include both local and international Internet search services covering a wide variety of subjects and media, including web, image and video search, and network software and services including, but not limited to, astrology, auctions, chat, corporate network software and services, e-mail, finance, games, greetings, groups, health, high-speed Internet and DSL, instant messaging, job search, maps, message boards, mobile services, movie information and reviews, music, news, people search, personals, photos, real estate and mortgage information, shopping, sports, television listings, travel-related services, weather, yellow pages, and entertainment.
The Complainant is the owner of the
service mark and trademark YAHOO!, the trade name YAHOO! as
well as the domain name YAHOO.COM. In continuous use since 1994, the YAHOO! mark
has become one of the most recognized brands in the world having a value of over
US $6 billion according to 2006 BusinessWeek/Interbrand Annual Brand
Report. The Complainant owns
International Trademark Registration No. 893000 for its Y! mark
filed through the Madrid Protocol with WIPO with protection designated for
The Complainant has used the mark Y! as a shorthand for the YAHOO! mark since at least as early as 1997. It uses and has used for many years the Y! mark for a wide range of online services and products including instant messaging, electronic mail, telecommunications services, Internet search services, website design and hosting services, chat services, Internet access services, online travel reservation services, computer software, and computer hardware and accessories.
According to the Complainant, as a result of its extensive use of its Y! mark, Internet users have long regarded the Y! mark as being synonymous and interchangeable with the YAHOO! mark. Further, the Y! mark has become famous by virtue of the Complainant’s extensive use, promotion, and registrations of that mark.
The Complainant also offers and has offered for years a wide variety of services using its Y! mark together with a descriptive name of the services including, for example, Y! Messenger, Y! Music, and Y! Video Blog.
The Complainant states that, following its long-established convention of using the Y! and YAHOO! marks together with a descriptive name of the services, it has used Y! Messenger and YAHOO! Messenger since at least as early as 1999 to identify its instant messaging services.
According to the Complainant, its Y! Messenger and YAHOO! Messenger service has nearly 89,000,000 unique users worldwide, and is the most popular instant messaging application in time spent with an average of 50 minutes per user, per day, according to comScore’s World Metrix March 2007 report.
The Complainant alleges that the
Respondent registered the disputed domain name on
Further, says the Complainant, the Respondent has used the disputed domain name for a commercial website offering directly competing Internet search services via a search box featured prominently on the home page of the site. The Respondent’s website also featured numerous search categories including categories that (1) directly identified Yahoo! and its YAHOO! Messenger services (“Yahoo Instant Messenger,” “Yahoo Mobile Messenger,” “Yahoomessenger,” and “Yahoo Mobile”), (2) directly identified Yahoo!’s competitor Microsoft and its competing messenger services (“Msn Messenger,” “Msn Chat”), or (3) related to Yahoo! and its services generally (e.g., “Chat Rooms,” “Messenger”). The Respondent’s search categories connected to web pages displaying sponsored links to directly competing websites and other commercial websites.
The Complainant alleges that the Respondent’s commercial pay-per-click website was provided by the online advertising company Information.com. The Respondent undoubtedly received commissions when Internet users clicked on the sponsored links displayed on the Respondent’s website.
Subsequently, says the Complainant, the disputed domain name was used to point to a frame page, whose contents redirect to a Chinese-language site located at <bbs.sougou.com>. That website offers information and produces related to dogs (the domestic animals that are kept as pets). However, the website at the disputed domain name contains the following notice at the top: “ymessenger.com / To buy this domain, please Email: email@example.com.” This implies that the Respondent is offering to sell the disputed domain name.
The Complainant alleges that the disputed domain name is confusingly similar to the Complainant’s Y! mark because it is comprised of the portion of the Complainant’s Y! mark that can be registered under the DNS system (“Y”), and a generic term (“messenger”). Omitting the exclamation point of the Complainant’s Y! mark, as required under the DNS system that does not allow exclamation points in domain names, and combining the Complainant’s mark with a generic term is not sufficient to distinguish the disputed domain name from the Complainant’s Y! mark. The Complainant cites numerous UDRP cases to support this point.
The Complainant alleges that the Respondent’s use of the disputed domain name for a commercial website providing directly competing Internet search services and displaying pay-per-click advertisements for competing websites does not constitute a bona fide offering of goods or services or noncommercial fair use under the UDRP. Thus, says the Complainant, the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant cites numerous UDRP cases to support this point.
And the Complainant alleges that the Respondent’s registration and use of the disputed domain name meet the bad-faith element set forth in Section 4(b)(iv) of the UDRP because the Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant and its Y! mark as to the source, sponsorship, affiliation, and/or endorsement of the Respondent and/or the Respondent’s pay-per-click website that offers and advertises directly competing services. The Complainant cites numerous UDRP cases to support this point.
Further, the Complainant alleges that the Respondent’s use of the disputed domain name for a commercial website offering the domain name for sale is further evidence of Respondent’s bad faith under Section 4(b)(iv) of the UDRP, and constitutes an independent ground for bad faith pursuant to Section 4(b)(i) of the UDRP. And that the Respondent’s registration and use of the disputed domain name to offer competing Internet search services and to display links to competing websites meets the bad-faith element set forth in Section 4(b)(iii) of the UDRP. The Complainant cites UDRP cases to support these points.
The Respondent states that “Y” is a letter in the English language (and other languages). There are numerous words starting with Y. “Yahoo” is only one of them. Moreover, the trademarks registered by the Complainant as shown in the Complaint includes the exclamation point, “!”. No company can claim they have the sole right on a single letter, including “Y.” The Complaint cannot claim that they have rights over domain names composed of the letter “Y” followed by any generic word only on the basis that they are a big company and “!” cannot be used in a domain name.
The Respondent states that it has the right to use disputed domain name because it is a combination of two generic words, to which the Complainant does not have rights. It cites a UDRP decision to support this point.
Further, says the Respondent, the string YMESSENGER has a lot of combinations/meanings. That is why it was registered it in 2004. It can be Yes Messenger, Young Messenger, Youth Messenger, Your Messenger etc. Moreover, “Messenger” does not refer only to the instant messaging service.
The Respondent states that it will not and has never used the disputed domain name as Y! Messenger or Yahoo Messenger or any other related instant messaging systems.
The Respondent goes on to state that the Complainant does not have
The Respondent disputes the relevance of the numerous UDRP cases cited by the Complainant.
The Respondent states that it never tried to market the disputed domain name to the Complainant or its competitors or any other parties, by email, phone, letter or any other means.
The Respondent disputes the accuracy of the evidence provided by the Complainant with respect to past use of the disputed domain name The Respondent does not know and does not understand from where and how the Complainant has the screenshot in question. It does not know <information.com> and has never being a client/customer of that website. Such screenshot is not theirs. If these pages/circumstances/conditions are witnessed and notarized, it requests that the Complainant show such evidence. Otherwise, it may be a DNS problem or due to the firewall/network/whatever of the Complainant or any other reason which is not associated with the Respondent, and it shall never be taken into consideration for this proceeding.
The Respondent does not contest the Complainant’s evidence regarding current use of the disputed domain name. The current website is operated by pet enthusiasts, it is not a commercial website. Everyone who can make normal judgments will never associate such a pet site with the Complainant.
Further, says the Respondent, upon the receipt of the Complaint, it added an extra notice to its website, stating “It is an individual and independent website, and we have no connections with any trademark or companies.”
The Respondent states that it never ran any pay-per-click program, or made any money from the disputed domain name. The daily visits to this site are almost zero. No one will think such a site is operated by such a big and commercial company as the Complainant.
B. Additional Submissions
In its additional submission, the Complainant notes that the Respondent does not dispute that the Complainant has a trademark for “Y!”. The Complainant disputes the relevance of the Respondent’s arguments to the effect that the disputed domain name is composed of a single letter followed by a generic word. Further, the Complainant states that it does NOT claim exclusive rights to the string YMESSENGER, but that the UDRP does not require it to show exclusive rights: a trademark suffices.
The Complainant states that confusing similarity arises because its trademark Y! is part of the disputed domain name. The UDRP does not require that the Complainant have a trademark for the string YMESSENGER.
The Complainant reiterates that it has provided evidence showing that the Respondent used the disputed domain name for a commercial website offering directly competing Internet search services via a search box featured prominently on the home page of the site, in particular for a website featuring search categories that directly identified “Yahoo Instant Messenger”, “Yahoomessenger”, etc. It challenges the Respondent’s denial of that evidence.
Further, the Complainant alleges that the Respondent’s claims that it has never been a customer or client of <information.com> are not correct: the Respondent owns numerous domain names that are currently being used for <information.com> websites. The Complainant provides evidence to that effect. And the Respondent is also a customer of the online advertising company Sedo, which provides pay-per-click activities.
Finally, says the Complainant, the Respondent’s claim that it never tried to market the disputed domain name is not credible in light of the evidence provided by the Complainant.
In its Additional Submission, the
Respondent reiterates the arguments made in the Response. In particular, it stress that the Complainant
does not have a trademark in
Further, it alleges that the Complainant is confusing OwnDomains.com (with an “S” at the end) with the Respondent, whose name is OwnDomain.com, without the “S” at the end.
The Respondent reiterates that, to the best of its knowledge and control, it never parked the disputed domain name with Information.com or any other parking company. It admits to parking some of its other domain names with Sedo or SilverClicks.
The Respondent provides evidence showing that when terms such as ‘Yahoo Instant Messenger” and “Yahoomessenger” are input in the website at the disputed domain name, various links are returned. Those returned links are created by the source (the advertiser), which in some cases appears to be the Complainant itself.
The Respondent reiterates that it did not park the disputed domain name with any parking companies and requests that the Complainant provide authentication of the evidence provided by the Complainant, assert that it was not the Complainant itself who was the source of the said advertising links, and assert that it did not falsify or fabricate the evidence.
The Respondent requests that the Panel find Reverse Domain-Name Hijacking. It states that domain name parking is a common practice. If the domain parking source/advertiser is in bad faith, as in the present case, they could hijack any parked name using the methods shown here.
The Complainant is a very large and well known provider of various Internet services, including search services and messaging services.
The Complainant owns trademarks in the strings YAHOO! and Y!. These marks are famous. The Complainant also has well-established common law rights in Y!MESSENGER.
The Respondent used the disputed domain name to point to a commercial website offering Internet search services that directly competed with the Complainant’s services, and derived pay-per-click revenue from the associated links.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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;
(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.
The Complainant has provided evidence showing that it owns various trademarks for the string “Y!”. And that it is a well-known company involved with Internet search and messaging services and markets.
The Respondent makes much of the fact that the disputed domain name contains only part of the Complainant’s mark. But the UDRP does not require that the disputed domain name contain all of the Complainant’s mark. It suffices that the disputed domain name be confusingly similar to the Complainant’s mark.
In the present case, the Complainant markets a variety of well known services using marks such as Y! MESSENGER. The mere omission of the exclamation mark “!” (which in any case cannot be included in a domain name) is not sufficient to dispel the risk of confusion with the Complainant’s famous marks.
The fact that the
Complainant may or may not have certain trademarks in
As stated above, omission
of the exclamation point from Complainant’s Y! mark is
irrelevant as punctuation is not permitted in domain names. See U.S. News & World
Report, Inc. v. Zhongqi, FA 917070 (Nat.
Arb. Forum Apr. 9, 2007) (“Elimination of
punctuation and the space between the words of Complainant’s mark, as well as
the addition of a gTLD does not sufficiently distinguish the disputed domain
name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Mrs. World
Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum
Thus, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s marks.
The Respondent correctly argues that the string YMESSENGER has many possible combinations and meanings and could be used to point to perfectly legitimate web sites. For example, it could be used as an abbreviation for “Your Messenger”, “Youth Messenger”, “Young Messenger”, etc.
The Complainant correctly concedes a point raised by the Respondent, namely that it does not have exclusive rights to the string YMESSENGER.
Thus it is not disputed that it would be possible for the Respondent to have rights or legitimate interests in the disputed domain name, if it used that domain name for a legitimate purpose.
In other words, the essential question that this Panel has to address is whether or not the Respondent registered the disputed domain name in good faith.
If the registration was in good faith, then the Respondent does have a legitimate interest in the disputed domain name. But, if the registration was not in good faith, then the Respondent does not have rights or legitimate interests in the disputed domain name.
For the reasons given below, the Panel finds that the Complainant has provided sufficient evidence to show that the Respondent registered and is using the disputed domain name in bad faith.
Thus the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Respondent does not dispute the Complainant’s allegation that it is a well-known company. The Complainant has provided evidence showing that the disputed domain name was used to point to a web site containing sponsored links, which created a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the web site. Further, despite the Respondent’s denial, the Panel holds that the Respondent profited from the resulting click-through revenue. This constitutes bad faith registration and use under Paragraph 4(b)(iv) of the Policy. See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum December 22, 2003) (“Registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Respondent disputes the accuracy of the evidence provided by the Complainant. But the Respondent itself provides essentially the very same evidence.
It is not contested that, at present, the disputed domain name points to a Chinese-language website offering information and products related to dogs (domestic pets). The Respondent does not offer any explanation regarding why it chose to use the disputed domain name for this site. There is no obvious reason to do so. There is no obvious relation between “Y”, “MESSENGER”, and dogs. And the site is entirely in Chinese, so it would appear more logical to use a name in the ccTLD .cn, and a domain name in Chinese script.
Both the Complainant and the Respondent have provided screen shots showing that, in the past, the disputed domain name pointed to a web page offering a search service and links to various services offered by both the Complainant and its competitors (for example, links to Yahoo Instant Messenger and to MSN Messenger).
The Respondent goes further, showing how, when search strings such as “yahoo messenger” are entered, the page that is returned contains links to services competing with the services offered by the Complainant.
In light of that evidence provided by the Respondent, it is hard to accept the Respondent’s argument to the effect that it did not use the disputed domain name to point to a commercial search site offering sponsored advertising links, which links resulted in pay-per-click revenue for the Respondent.
Further, the Complainant has provided evidence that the organization OwnDomains.com is in the business of registering domain names that point to commercial search sites. The Respondent has stated that this is not relevant, because its name is OwnDomain.com (without the “S” at the end) and it is not related to OwnDomains.com (with the “S” at the end).
But the Complainant has provided evidence showing that the physical address and E-Mail address of both OwnDomains.com and OwnDomain.com are the same. The Panel finds this evidence credible. Thus, despite the Respondent’s denial, the Panel finds that it is the entity behind the organization OwnDomains.com.
The Panel finds that the Respondent has attempted to mislead the Panel
in at least two ways: by claiming that it never used the disputed domain name
to point to a search site containing sponsored advertising links (some of which
directly compete with services offered by the Complainant), and by claiming
that it is not related to the organization OwnDomains.com, which is in the
business of registering domain names precisely to use them to point to such
search sites. Attempts to mislead the
Panel may, in and of themselves, be indications of bad faith registration and use, see Morgan
Stanley v. Meow, FA 671304 (Nat. Arb. Forum,
Thus the Panel finds that the Complainant has satisfied its burden of proving that the Respondent registered and is using the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. The Respondent’s request for a finding of Reverse Domain Name Hijacking is denied.
Accordingly, it is Ordered that the <ymessenger.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Presiding Panelist
Sandra J. Franklin Karl
Dated: May 7, 2008
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