Yahoo! Inc. v. Sergey
Korshunov
Claim Number: FA0804001176666
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
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 postmaster@xn--s1ad3a.com by e-mail.
A timely Response was received and determined to be complete on
Complainant submitted a timely Additional Submission on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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,
including
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.
B. Respondent
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
Complainant
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
attorney in
D.
Additional Submissions
Respondent
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
FINDINGS
(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.
DISCUSSION
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
in
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.
Complainant has
satisfied
In the Panel’s
view, this registration in 2006 was in bad faith. Although Complainant may not have as big a
presence in
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
DECISION
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
Dated:
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