Yahoo! Inc. v. Yahhoo
Claim Number: FA0804001175543
Complainant is Yahoo! Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahhoo.com>, registered with Network Solutions, 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 as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
15, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 5, 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 email@example.com 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 <yahhoo.com> domain name is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <yahhoo.com> domain name.
3. Respondent registered and used the <yahhoo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc., is in the business of providing
Internet related services including delivering a branded network of
comprehensive searching, directory, information, communication, shopping
services, and other online activities which feature millions of Internet users
daily. Complainant registered its YAHOO!
Mark with the
Respondent, Yahhoo, registered the <yahhoo.com> domain name on July 21, 2004 which resolves to a parked page that displays hyperlinks and search functions, some of which are in direct competition with Complainant.
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.
The Panel finds that Complainant has established sufficient rights in its YAHOO! mark through Complainant’s registration with the USPTO under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
domain name incorporates Complainant’s entire mark with an additional letter
“h,” which is a common misspelling of Complainant’s mark. The omitted exclamation point and added
generic top-level “.com” domain are irrelevant when deciding if a disputed
domain name is confusingly similar to Complainant’s mark because punctuation is
not reproducible in domain names, and top-level domains are required. Therefore, the Panel finds that Respondent’s
disputed domain name is confusingly similar to Complainant’s YAHOO! mark
pursuant to Policy ¶ 4(a)(i). See Gurney’s
Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum
Feb. 19, 2003) (“Punctuation and spaces between words are not significant in
determining the similarity of a domain name and a mark because punctuation and
spaces are not reproducible in a domain name.”); see also
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant shifts the burden of proof to Respondent by initially establishing a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Respondent’s failure to respond furthers the presumption that Respondent lacks rights and legitimate interests in <yahhoo.com> domain name. The Panel finds that Complainant has established a prima facie case, but nevertheless chooses to analyze the evidence under Policy ¶ 4(c). See 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”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
The Panel finds that Respondent is receiving click-through fees from the search functions and other hyperlinks displayed on the resolving website which are in direct competition with Complainant’s offered services. According to Policy ¶¶ 4(c)(i), (iii), such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Additionally, based on the undisputed evidence, Respondent lacks common law rights in the <yahhoo.com> domain name even if its WHOIS contact information is “YAHHOO.COM” because there is no affirmative evidence that Respondent was commonly known by the disputed domain name before its registration. Moreover, Complainant asserts that it has not authorized nor licensed Respondent to use the YAHOO! mark furthering the inference that Respondent is not commonly known by the <yahhoo.com> domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Respondent is using the <yahhoo.com> domain name for the purpose of collecting click-through fees for each misdirected Internet user connected to the disputed domain name. Internet users searching for Complainant’s website will likely be confused into thinking that the <yahhoo.com> domain name is affiliated with or sponsored by Complainant. The Panel finds that Respondent’s registration and use of the disputed domain name in order to cause confusion and collect referral fees for each misdirected Internet user is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 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.”).
In addition, Respondent’s use of the <yahhoo.com> domain name to directly compete with Complainant is further evidence of bad faith. The Panel finds that a disputed domain name used for the primary purpose of disrupting a complainant’s business by directly competiting with the complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
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 <yahhoo.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 26, 2008
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