Yahoo! Inc. v. Yuan Zhe Quan
Claim Number: FA0208000117877
Complainant is Yahoo! Inc., Sunnyvale, CA, USA (“Complainant”) represented by David M. Kelly, of Finnegan Henderson Farabow Garrett & Dunner L.L.P. Respondent is Yuan Zhe Quan, Beijing, CHINA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bryahoo.com>, <cnyahoo.com> and <espanolyahoo.com>, registered with Tucows, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 6, 2002; the Forum received a hard copy of the Complaint on August 7, 2002.
On August 8, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain names <bryahoo.com>, <cnyahoo.com> and <espanolyahoo.com> are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 3, 2002, 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, email@example.com and firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On September 26, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following allegations in this proceeding:
The <bryahoo.com>, <cnyahoo.com> and <espanolyahoo.com> domain names are confusingly similar to Complainant’s YAHOO! Mark.
Respondent has no rights or legitimate interests in the <bryahoo.com>, <cnyahoo.com> and <espanolyahoo.com> domain names.
Respondent registered and used the <bryahoo.com>, <cnyahoo.com> and <espanolyahoo.com> domain names in bad faith.
B. Respondent failed to come forward and submit a Response.
Complainant holds numerous registrations for the YAHOO! trademark and service mark with the United States Patent and Trademark Office, including, inter alia, Registration Numbers 2,273,128; 2,243,909; 2,040,222; and 2,076,457. Complainant has also actively protected its YAHOO! mark by registering the mark with approximately 80 countries around the world, including Respondent’s home country, China (e.g., Reg. No. 1,115,500 and 1,209,289).
Complainant uses the YAHOO! mark in connection with, inter alia, domestic and international web directory and search services, online games, people searches, astrology and horoscopes, clubs, greetings, corporate network software and services, travel-related services, Internet access and email. Complainant offers a wide variety of services under the YAHOO! mark and continues to expand its YAHOO! related business ventures. In an effort to promote the YAHOO! mark and the assorted services that Complainant offers under the mark, Complainant uses and/or licenses the mark on a number of products, including clothing, books, magazines and computer accessories.
Complainant’s services are accessed and used by a wide variety of individuals, as the <yahoo.com> website is one of the leading Internet websites worldwide, in terms of traffic. Complainant’s global audience was cataloged at 237 million users in March 2002, and during the same month a record 98 million active registered members logged on to their personalized YAHOO! accounts. Complainant has recorded up to “1.62 billion page views” per day.
Complainant uses its YAHOO mark to specifically target particular regions, countries, topics or population groups. Specifically, Complainant uses the YAHOO! mark for websites that are directed toward Brazilian, Chinese and Spanish audiences, <br.yahoo.com>, <cn.yahoo.com> and <espanol.yahoo.com>, respectively.
By virtue of Complainant’s expanding business ventures connected to the YAHOO! mark, extensive promotion and advertising efforts, and massive worldwide use of YAHOO! related services, Complainant’s mark has become famous.
Well after Complainant established trademark rights in the YAHOO! mark, Respondent registered the <bryahoo.com>, <cnyahoo.com> and <espanolyahoo.com> domain names. Respondent registered the <bryahoo.com> domain name on October 13, 1999, and the domain names <cnyahoo.com> and <espanolyahoo.com> on February 3, 2000. Respondent uses the domain names to redirect Internet users to internal web pages of Chick Publications’ website, which is a commercial website that sells religious texts. The web pages that the domain names resolve to are comic strips.
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 will draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
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 established in this proceeding that it has rights to the YAHOO! mark through proof of registration with the USPTO and by continuous extensive use of the mark.
The <bryahoo.com> and <cnyahoo.com> domain names contain Complainant’s YAHOO! mark without the exclamation point along with the addition of generic letter prefixes. The omission of the exclamation point is of no consequence because letters, numbers and hyphens are only permitted in domain names. The prefixes “br” and “cn” appear to be random letters, however, they most likely are used to abbreviate Brazil and China, respectively. This is likely the case because Complainant owns registration rights in the <br.yahoo.com> and <cn.yahoo.com> domain names. While Complainant does not hold trademark rights in those domain names, Respondent’s domain names incorporate the substantive portion of Complainant’s famous YAHOO! mark. It has been consistently held that a prefix, whether it is random letters or a geographic identifier, does not create a distinct and separate mark capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis. Therefore, Respondent’s <bryahoo.com> and <cnyahoo.com> domain names are confusingly similar to Complainant’s mark. See Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to Complainant’s mark, ICQ); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to Complainant’s CMGI mark).
Likewise, the domain name registered by Respondent, <espanolyahoo.com>, is confusingly similar to Complainant’s YAHOO! mark. The use of a generic term, such as “espanol,” in connection with Complainant’s YAHOO! mark does not add any source identifying significance. The focus of the domain name, <espanolyahoo.com>, registered by Respondent, remains on Complainant’s famous YAHOO! mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent has no rights or legitimate interests in the <bryahoo.com>, <cnyahoo.com> and <espanolyahoo.com> domain names and Respondent has allowed those assertions to go uncontested. Complainant met its burden of establishing a prima facie case, which shifts the burden to Respondent to articulate rights and legitimate interests in the domain name. Since Respondent failed to proffer either evidence or an argument in support of such rights or interests, the Panel is permitted to assume that Respondent has no such rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondent’s failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, Respondent’s failure to submit a Response in this proceeding allows all reasonable inferences of fact to be drawn in Complainant’s favor. See 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”).
Respondent uses the <bryahoo.com>, <cnyahoo.com> and <espanolyahoo.com> domain names to divert Internet traffic to a website developed and operated by Chick Publications, which is a commercial website designed to sell religious texts. The domain names link Internet users to internal pages of the website, all of which are religious comic strips. Respondent attracts more Internet users to its commercial website by capitalizing on Complainant’s famous YAHOO! mark. Thus, Respondent’s diversionary use of the domain names does not represent a connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it does not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
Respondent has no business connection with Complainant and, therefore, is not an authorized user of the YAHOO! mark. Considering the notoriety and fame of the YAHOO! mark, it is highly unlikely that anyone other than Complainant would be commonly known by the mark or a confusingly similar version thereof. The Panel knows Respondent only as Yuan Zhe Quan, as there is no evidence that Respondent is commonly referred to by the <bryahoo.com>, <cnyahoo.com> and <espanolyahoo.com> domain names. Therefore, Respondent has no rights or legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <bryahoo.com>, <cnyahoo.com> and <espanolyahoo.com> domain names; thus, Policy ¶ 4(a)(ii) has been satisfied.
Circumstances surrounding the case make it clear that Respondent knew that the YAHOO! mark was of value to its rightful owner. First, the YAHOO! mark has developed into one of the most famous marks associated with the Internet by way of the mark’s use on the highly popular <yahoo.com> website. Because of the established identity of the YAHOO! mark, Respondent had at the very least constructive knowledge of Complainant’s rights in the mark. Second, Respondent’s <bryahoo.com>, <cnyahoo.com> and <espanolyahoo.com> domain names are merely slight variations of three of Complainant’s domain names, <br.yahoo.com>, <cn.yahoo.com> and <espanolyahoo.com>. It is evident that Respondent not only wanted to profit from Complainant’s YAHOO! mark but that Respondent specifically sought a targeted segment of Complainant’s Internet audience. Respondent attempts to capture Internet users that omit the first period when typing <br.yahoo.com>, <cn.yahoo.com> or <espanol.yahoo.com>. Therefore, circumstances indicate that Respondent was fully aware of Complainant’s valuable interests in the YAHOO! mark prior to registering the subject domain names. Hence, Respondent registered the domain names in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
Furthermore, Respondent’s diversionary use of the <bryahoo.com>, <cnyahoo.com> and <espanolyahoo.com> domain names was done with a profit motive. Respondent uses the domain names to ensnare Internet users searching for Complainant’s services. Internet users that mistype the domain name are linked to Respondent’s website, which promotes religious texts, and users are likely to be confused as to Complainant’s affiliation or level of sponsorship. Respondent’s use fits squarely under the bad faith circumstance listed in Policy ¶ 4(b)(iv). Therefore, Respondent uses the <bryahoo.com>, <cnyahoo.com> and <espanolyahoo.com> domain names in bad faith. See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding bad faith where Respondent linked the domain names, which contained the YAHOO! mark, to several of YAHOO!’s own websites).
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 the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain names <bryahoo.com>, <cnyahoo.com> and <espanolyahoo.com> be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 10, 2002.
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