Yahoo! Inc. v. Sergey Korshunov
Claim Number: FA0804001176666
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly, of Finnegan,
Henderson, Farabow, Garrett & Dunner, L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <яху.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.
Hon. Sir Ian Barker, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On April 11, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 1, 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
Complainant submitted a timely Additional Submission on
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a global Internet communications media and commerce company which 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 who is the owner of service marks and trademarks for YAHOO!
claims that the YAHOO! mark has become the owner of one of the most recognised
brands in the world, having a value of US $6 billion, according to 2007
Business Week/Annual Brand Report. Its
website located at the domain name yahoo.com has been one of the leading Internet
websites for many years throughout the world.
For example, during the month of December 2007, the Yahoo website
received an average of approximately 5.5 billion page views per day. Complainant operates many additional sites
under the YAHOO! mark in numerous countries, including
The YAHOO! trademark is protected by registration in many countries,
Respondent registered the disputed domain name on March 23, 2006, long
after Complainant’s YAHOO! mark became famous worldwide and long after the
registration of the mark in
Respondent uses the disputed domain name for a commercial “pay-per-click” website which offers directly competing Internet search services and web directory services. Specifically, Respondent’s website displays Internet search categories that connect to pages displaying pay-per-click advertisements for directly competing websites and other commercial websites.
The disputed domain name is confusingly similar to Complainant’s mark. The disputed domain name should be considered equivalent because of the Puny translation shown by the recognised conversion tool. The disputed domain name is confusingly similar to Complainant’s YAHOO! mark because it is comprised of a transliteration of Complainant’s mark in Cyrillic and is phonetically similar to Complainant’s mark YAHOO! It is also confusingly similar to Complainant’s Russian registered mark which is YAHOO! plus three Cyrillic letters because it is comprised of the Cyrillic transliteration of Complainant’s mark.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant gave him none. The Respondent is not commonly known by the disputed domain name. Respondent’s use of the disputed domain name for a commercial pay-per-click website providing competing Internet search and directory services does not constitute a bona fide offering of goods or services or non-commercial fair use under the Policy.
Respondent’s registration was in bad faith because the disputed domain name was used potentially to attract for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its YAHOO! mark as to the source, sponsorship, affiliation and/or endorsement of Respondent at its pay-per-click website.
The continuing use of the disputed domain name to offer competing search and web directory services constitutes bad faith.
Respondent undoubtedly registered the disputed domain name in bad faith
and knowledge of Complainant’s trademark, given the international fame of
Complainant’s YAHOO! mark, Complainant’s registration of its marks in
Complainant cites various cases decided under the UDRP which determine that the fame of Complainant’s mark is very well known throughout the world.
The disputed domain name was registered for the purpose of creating a
website about an educational facility in the city of
Respondent is a web developer who has completed several products using various domain names. These domains were parked on a pay-per-click service before the websites were fully developed. The pronunciation and spelling the word YAHOO in the Russian language is not obvious. Respondent cites several ways in which the word could be pronounced. The letters do not, in any way, resemble the federally registered YAHOO! trademark and the Puny code domain name does not represent the YAHOO! trademark.
The registered trademark in the Russian Patent & Trademark Office
does not give Complainant monopoly on the three Cyrillic letters in the
disputed domain name. Yahoo is not the
leading information site in
In the cases listed in the Complaint, every respondent had a registered domain name that actually included the word Yahoo or one similar in the English language. The ability to register Cyrillic domain names was introduced before Complainant had received a registered Russian trademark.
The disputed domain name was parked and any incidental revenue from click-throughs is trivial. It generated only US $1.89 in the last two years. The disputed domain name has a targeting technology whereby the system can determine the visitor’s physical location and it displays the specific content for that reason. Visitors are redirected to the page for US visitors who are unable to type in a Cyrillic letter domain name.
C. Additional Submissions
Respondent does not deny that he registered the disputed domain name
long after Complainant began using its trademark in
Complainant’s trademark does not have to be identical to the disputed domain name. The disputed domain name is confusingly similar to the Complainant’s trademarks. Panels have consistently found that domain names comprised of phonetically similar terms can be confusingly similar to the mark in issue.
There is no justification for distinguishing prior Yahoo decisions involving disputed domain names with English letters. There are a number of ways to translate or transliterate marks from language for another and there is no requirements that a trademark owner must use one translation only.
Respondent has no legitimate interest in the disputed domain name. Its website offers directly competing services in Russian. He can have no legitimate interest in the disputed domain name because a third party provides the hosting services.
The claim that Respondent registered the disputed domain name for a website regarding a school in a Russian city has no credibility. There is no evidence, nor even any indication that the site is under construction.
Respondent’s registration and use of the disputed domain name is part of a pattern of registering names for various cybersquatting purposes. He has shown a pattern of registering and using additional names that correspond to phonetic spellings or Cyrillic transliterations of famous trademarks owned by third parties.
Complainant then gave a list of trademarks, well-known throughout the world, with a Cyrillic script internationalized domain name and a Latin script name. Included in the Latin names were the names of various makes of motor vehicle and of the Internet search provider Google.
As to bad faith, the YAHOO! mark for Internet search services is used
by 100s of millions of Internet users in countries around the world, including
Complainant produced a declaration by a native Russian speaker, is an
D. Additional Submissions
Respondent contests Complainant’s submissions about the transliteration and says that there should be evidence from a qualified linguist.
According to Respondent, Complainant failed to provide proof of its assertions.
As to the pattern of conduct of registering well-known marks, Complainant offered no facts to back up this claim that the domain names provided are, in fact, registered trademarks. There were no disputes concerning these domain names
(a) The disputed domain name is confusingly similar to trademarks in which Complainant has rights.
(b) Respondent has no rights or legitimate interests in respect of the disputed domain name.
(c) The disputed domain name was registered and is being used in bad faith.
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.
Preliminary Issue: Internationalized Domain Name
The domain name in dispute, <яху.com>, is an internationalized domain name (“IDN”) with the PUNYCODE translation of [<xn--s1ad3a.com>]. An IDN is a domain name that contains non-traditional characters, such as letters with diacritics or non-Latin characters. In order to display characters or symbols in a domain name, the terms of the domain name are encoded into a scheme such as PUNYCODE. For Complainant to display the ЯХУ characters properly in the <яху.com> domain name, it first had to encode it into the [<xn--s1ad3a.com>] domain name.
In the past, panels have found IDNs and their Punycode translations to be equivalent. See Damien Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding an internationalized domain name, <têtu.com>, and its Punycode translation, <xn--ttu-fma.com>, to be one and the same under the Policy); see also Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the <xn--zqsv0e014e.com> domain name to be an exact reproduction of Complainant’s Chinese trademark in a domain name). This Panel finds that the <яху.com> domain name is one and the same with its Punycode translation [<xn--s1ad3a.com>] for purposes of this proceeding.
In the Panel’s view, there is no doubt that
the disputed domain name is confusingly similar to Complainant’s registered trademark
Complainant has, therefore, satisfied
Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy Paragraph 4(a)(ii). It gave him none.
The burden shifts to Respondent to show that he does have rights and legitimate interests and Respondent has to satisfy one or other of the three limbs of Paragraph 4(c) of the Policy.
In the Panel’s view, Respondent has failed to do this. He is not commonly known by the disputed domain name. By using a commercial pay-through directory that advertises Internet search and web directory services competing with Complainant, it is impossible to say that he is operating a bona fide offering of goods and services or a legitimate non-commercial or fair use under the Policy.
It is no answer for a domain name registrant to say that the contents of the website have been determined by the operator of the click-through site. Respondent must be responsible for the contents of his website.
Nor has it been shown to the Panel’s satisfaction that Respondent has made demonstrable preparations to use the disputed domain name to post information regarding an educational facility in a city where he once studied. There is insufficient evidence. The claim is vague and unsupported.
In the Panel’s
view, this registration in 2006 was in bad faith. Although Complainant may not have as big a
The transliteration of the letters is too much of a coincidence to say that Respondent did not know of Complainant and the fame of its mark at the time when he registered the disputed domain name, less than 2 years ago. In fact, Respondent does not allege that he had not heard of Complainant at the time of registration.
Moreover, Respondent has attempted to attract for commercial gain, Internet users to his website by creating a likelihood of confusion regarding the source, sponsorship, affiliation or endorsement of the competing Internet search and web directory services.
Although Respondent may have earned little from the click-through fees, the mere fact of the parking on a website which directs inter alia to competitors of Complainant, indicates ongoing bad faith. Collaborating with the domain parking service providers is exploiting Complainant’s goodwill.
There is sufficient
evidence of Respondent’s bad faith registration and use pursuant to the
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <яху.com> [<xn--s1ad3a.com>] domain name be TRANSFERRED from Respondent to Complainant.
Hon. Sir Ian Barker, QC Panelist
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