Yahoo! Inc. v. Xiaodong Xu and Admin a/k/a Soft2China
Claim Number: FA0805001195169
Complainant is Yahoo!
Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <yahooinstantmessanger.com> and <yahoolagian.com>,
registered with Enom, Inc. and
Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com,
respectively.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 27, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 28, 2008.
On May 28, 2008 and May 29, 2008, Enom, Inc. and Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <yahooinstantmessanger.com> and <yahoolagian.com> domain names are registered with Enom, Inc. and Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com, respectively, and that Respondent is the current registrant of the names. Enom, Inc. and Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Enom, Inc. and Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration agreements 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 June 5, 2008, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of June 25, 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@yahooinstantmessanger.com and postmaster@yahoolagian.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 27, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <yahooinstantmessanger.com> and <yahoolagian.com> domain names are confusingly similar to Complainant’s YAHOO! And YAHOOLIGANS! marks.
2. Respondent does not have any rights or legitimate interests in the <yahooinstantmessanger.com> and <yahoolagian.com> domain names.
3. Respondent registered and used the <yahooinstantmessanger.com> and <yahoolagian.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, YAHOO! Inc., is an
international Internet communications and commerce company that provides
directory, searching, and shopping services for Internet users. Complainant has operated its main operations
under the YAHOO! mark (Reg. No. 2,040,691, issued February
25, 1997), which was registered with the United States Patent and Trademark
Office (“USPTO”). Complainant owns and
operates the <yahoo.com> domain name in connection with these Internet
commercial ventures. Similarly,
Complainant runs an Internet locale specifically designed for children through
the <yahooligans.com> domain name.
This locale operates under the YAHOOLIGAN’s mark (Reg. No. TMA518947,
issued October 29, 1999), which was registered with the Canadian Intellectual
Property Office (“CIPO”). Excluding
Respondent registered the <yahooinstantmessanger.com> and <yahoolagian.com> domain names on August 15, 2006 and May 6, 2004, respectively. Respondent currently uses the <yahooinstantmessanger.com> domain name to resolve to a website located at the <cingeler.com> domain name, which features an Internet search engine directly competitive with Complainant, as well as third-party advertisements and links. The <yahoolagian.com> domain name currently diverts Internet users to a website corresponding to the <meyspace.com> domain name, which features the same search engine and advertisement components.
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’s registration of the
YAHOO! and YAHOOLIGANS! marks
with the USPTO and CIPO, respectively, confer sufficient rights in the marks
upon Complainant under Policy ¶ 4(a)(i).
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under
Respondent’s <yahooinstantmessanger.com> domain name combines Complainant’s YAHOO! mark, while omitting the exclamation point, and adding the
generic but misspelled phrase “instant messenger.” There is no way to include an exclamation
point in a domain name, thus explaining Complainant’s <yahoo.com> domain
name and the immateriality of the omission in the disputed domain name. Moreover, Complainant runs an instant
messaging service, thus Respondent’s inclusion of the generic phrase denoting
Complainant’s service fails to distinguish the disputed domain name. Thus, the Panel finds that the <yahooinstantmessanger.com>
domain name is confusingly similar to Complainant’s YAHOO! mark
under Policy ¶ 4(a)(i). See Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb.
Forum Mar. 13, 2000) (finding that the respondent’s domain name
<marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT
mark); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153
(WIPO Oct. 17, 2000) (finding that the domain name
<bramblesequipment.com> is confusingly similar because the combination of
the two words "brambles" and "equipment" in the domain name
implies that there is an association with the complainant’s business).
Respondent’s <yahoolagian.com>
domain name includes only Complainant’s YAHOOLIGANS! mark
with the generic top-level domain (“gTLD”) “.com.” As discussed above, the omission of the
exclamation point is irrelevant. Equally
trivial is the inclusion of the gTLD, due to the nature of domain names. Respondent’s sole other element is the
misspelled mark, in that the “ligans” aspect of the mark is spelled as
“lagian.” The transposition of the “i”
and “a”, with the addition of another “a” and the omission of the “s” simply
fails to distinguish the disputed domain name.
The “yahoo” portion remains intact, and the difference is not all that
significant phonetically. Therefore, the
Panel finds that the <yahoolagian.com> domain name is confusingly
similar to Complainant’s YAHOOLIGANS! mark under
Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb.
Forum Dec. 6, 2003) (“It has been established that the addition of a generic
top-level domain is irrelevant when considering whether a domain name is
identical or confusingly similar under the Policy.”); see also Dow Jones & Co.,
Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding
that the deliberate introduction of errors or changes, such as the addition of
a fourth “w” or the omission of periods or other such “generic” typos do not
change respondent’s infringement on a core trademark held by the complainant).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Because Complainant has successfully asserted a prima facie case supporting its allegations, Respondent receives the burden of demonstrating its rights or legitimate interests. See 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).”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
There is no evidence within the record to suggest that
Respondent is commonly known by both or either of the disputed domain
names. The registrant of record for both
disputed domain names is listed as “Xiaodong Xu and Admin a/k/a Soft2China” in
the WHOIS domain name registration information.
Therefore, the Panel finds that Respondent lacks rights and legitimate
interests in the disputed domain names under Policy ¶ 4(c)(ii). See Wells Fargo
& Co. v. Onlyne Corp. Services11, Inc.,
FA 198969 (Nat. Arb. Forum Nov. 17,
2003) (“Given the WHOIS contact information for the disputed domain [name], one
can infer that Respondent, Onlyne Corporate Services11, is not commonly known
by the name ‘welsfargo’ in any derivation.”); 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).
Respondent is using both disputed domain names to resolve to
independent websites that host commercial third-party advertisements and
hyperlinks. Respondent is presumed to
receive monetary benefit through the receipt of referral fees due to the
placement of such advertisements.
Because the disputed domain names are confusingly similar to
Complainant’s marks, there is no real independent business venture in which
Complainant has entered into. Therefore,
the Panel finds that Respondent lacks rights and legitimate interests in the
disputed domain names because it has not created 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). See Trans Global
Respondent’s <yahoolagian.com>
domain name is a mere typosquatted version of Complainant’s mark, in that it
misspells the mark in the hopes of taking advantage of Internet users’ common
typographical errors. The Panel finds
that such is evidence of the lack of Respondent’s rights and legitimate
interests pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank
F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept. 19, 2003)
(finding that the respondent lacked rights and legitimate interests in the
disputed domain names because it “engaged in the practice of
typosquatting by taking advantage of Internet users who attempt to access
Complainant's <indymac.com> website but mistakenly misspell Complainant's
mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD
Commodities LLC v. Party Night, Inc., FA
165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s corresponding websites to the disputed domain
names both contain search engines, which compete with Complainant
directly. Thus, Internet users that may
seek Complainant’s Internet searching services could happen upon the disputed
domain names, which would cause a detriment to Complainant’s customer
numbers. Thus, the Panel finds that
Respondent has engaged in bad faith registration and use under 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).”).
Respondent has registered two confusingly similar domain
names, obtaining profit through the use of third-party advertisements placed on
the corresponding websites. The Internet
users rerouted to Respondent would be faced with substantial confusion, all to
the monetary advantage of Respondent.
Respondent’s use of the marks within the disputed domain names has
therefore created a likelihood of confusion as to Complainant’s affiliation and
endorsement of the disputed domain names and corresponding websites. Such use is evidence of Respondent’s bad
faith registration and use under Policy ¶ 4(b)(iv). See 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.”); see
also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used
the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website).
Respondent’s <yahoolagian.com> domain name
constitutes a typosquatted version of Complainant’s YAHOOLIGANS! mark. Respondent has
thus attempted to capitalize off of common typographical errors committed by
Internet users, such as misspellings, in order to divert said Internet users to
Respondent’s website for Respondent’s benefit.
The Panel finds this to be evidence of Respondent’s bad faith
registration and use under Policy ¶ 4(a)(iii). See Zone Labs,
Inc. v. Zuccarini, FA 190613 (Nat.
Arb. Forum Oct. 15, 2003) (“Respondent’s
registration and use of [the <zonelarm.com> domain name] that capitalizes
on the typographical error of an Internet user is considered typosquatting.
Typosquatting, itself is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii).”); see also Dermalogica,
Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com>
domain name was a “simple misspelling” of the complainant's DERMALOGICA
mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶
(a)(iii)).
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 <yahooinstantmessanger.com> and <yahoolagian.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 11, 2008
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