Yahoo! Inc. v. John Morgan
Claim Number: FA0805001195421
Complainant is Yahoo!
Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan Henderson Farabow Garrett &
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yahoocupid.com> and <yahoocupid.net>, registered with Directi Internet Solutions Pvt. Ltd.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 29, 2008.
On June 2, 2008, Directi Internet Solutions Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <yahoocupid.com> and <yahoocupid.net> domain names are registered with Directi Internet Solutions Pvt. Ltd. and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. 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 June 3, 2008, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of June 23, 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 and 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.
On June 27, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <yahoocupid.com> and <yahoocupid.net> domain names are confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <yahoocupid.com> and <yahoocupid.net> domain names.
3. Respondent registered and used the <yahoocupid.com> and <yahoocupid.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc., is a global Internet communications, media, and commerce company that offers Internet directory, information, shopping, and other online services. Since 1994, Complainant has operated under the YAHOO! mark (Reg. No. 2,403,227, issued November 14, 2000), which was registered with the United States Patent and Trademark Office (“USPTO”). Complainant has also registered its mark overseas, including with the Vietnamese trademark authority (Reg. No. 25,152, issued September 19, 1997). Complainant owns the <yahoo.com> domain name in connection with its operations, and also owns the <vn.yahoo.com> domain name for its Vietnamese website. Complainant has expended significant resources in aggregating its goodwill surrounding the YAHOO! mark, and its primary website received 5.5 billion page views per day in December 2007.
Respondent, based in
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 YAHOO! trademark registrations with the USPTO and Vietnamese trademark authority individually and collectively confer upon Complainant sufficient rights in the mark under Policy ¶ 4(a)(i). See 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent owns the <yahoocupid.com> and <yahoocupid.net> domain names. Both of the disputed domain names incorporate Complainant’s YAHOO! mark with the sole omission of the exclamation point. Due to the nature of domain names, it is impossible to include an exclamation point in a domain name, and as such the omission of it is entirely irrelevant under Policy ¶ 4(a)(i). Respondent completes the disputed domain names with the attachment of the generic word “cupid” and the generic top-level domains (“gTLDs”) “.com” and “.net.” The addition of a gTLD to a disputed domain name is inconsequential under the Policy, as every domain name requires such an element. The sole remnant in the disputed domain names that necessitates scrutiny is the generic word “cupid.” Typically, the addition of a generic word in a disputed domain name will fail to render it distinct under Policy ¶ 4(a)(i) for several reasons, not least of which because the mark often remains the dominant feature. When the generic word actually describes Complainant, then the word becomes even less distinctive, and the mark correspondingly becomes all the more focal. The Panel notes that in this case, Complainant operates an Internet “personals” operation through its website. The generic word “cupid” is notably associated with love—a concept whose connection to dating is evident. As such, the word describes Complainant, and the Panel therefore finds that both of the <yahoocupid.com> and <yahoocupid.net> domain names are confusingly similar to Complainant’s YAHOO! mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the <yahoocupid.com> and <yahoocupid.net> domain names under Policy ¶ 4(a)(ii). Complainant is required to set forth a sufficient prima facie case supporting its allegations before the burden shifts to Respondent. The Panel finds that Complainant has successfully satisfied this burden, and Respondent therefore receives the task of demonstrating its rights or legitimate interests in the disputed domain names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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).
Respondent cannot direct the Panel’s attention to any evidence in the record that suggests that Respondent is commonly known by either or both of the <yahoocupid.com> and <yahoocupid.net> domain names. The WHOIS domain name registration information for each of the disputed domain names lists the registrant as “John Morgan,” which bears a strong dissimilarity to the disputed domain names. More to the point, there is no inference of any express or implied authority or license on behalf of Respondent to use Complainant’s YAHOO! mark in any fashion. The Panel therefore finds that Respondent is not commonly known by the disputed domain names, and as such lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests 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’s <yahoocupid.com> domain name resolves to a commercial Internet website that features online dating services, as well as third-party advertisements. Because Respondent receives commercial revenue from Internet users who pay to join the dating service, as well as presumed referral fees from the third-party advertisements, the Panel finds that Respondent can claim no legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). While Respondent does appear to have a somewhat independent operation through this website, its use of the confusingly similar domain name incorporating Complainant’s mark precludes a finding that it has made a bona fide offering of goods or services under Policy ¶ 4(c)(i). This finding is made foundationally stronger by the fact that this service competes with Complainant’s Internet dating services of its own. The Panel finds that Respondent lacks rights and legitimate interests in the <yahoocupid.com> domain name under Policy ¶¶ 4(c)(i) and (iii). 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 Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
Respondent’s other disputed domain name, <yahoocupid.net>, does not resolve to any operating
website. Respondent has not submitted
any evidence indicating that it has demonstrable preparations to use the
disputed domain name in any regard and at any point in time. These points are striking when placed in the
context of this disputed domain name’s immediate brethren within this UDRP
dispute. In the same amount of time that
has elapsed since registration, Respondent has developed the <yahoocupid.com>
domain name, but not the <yahoocupid.net> domain name. The Panel finds that Respondent has
inactively held the <yahoocupid.net> domain name since the time of
its initial registration, and that the further lack of demonstrable
preparations to use this disputed domain name evidences its lack of rights and
legitimate interests under Policy ¶ 4(a)(ii). See Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or
service or develop the site demonstrates that the respondent had not
established any rights or legitimate interests in the domain name); see also State Fair of
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has asserted that Respondent’s operation of the <yahoocupid.com> domain name and corresponding website have disrupted Complainant’s business. In this context, both parties are operating within the field of Internet dating. However, Respondent has entered the market by utilizing Complainant’s YAHOO! mark within the disputed domain name in confusingly similar fashion, and its corresponding website offers the same services as Complainant. Therefore, for all of the Internet users that reach Respondent via the confusingly similar domain name and the goodwill surrounding the YAHOO! mark, there is a corresponding drop in the potential customers for Complainant’s dating service. Respondent has therefore acted as a sort of free-rider, attracting the same customer base through diversion using Complainant’s trademark. The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii), in that it primarily intended for the disputed domain name to disrupt Complainant’s business for the opportunistic advantage of Respondent. See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s registration of the confusingly similar <yahoocupid.com> domain name has created a likelihood of confusion for Internet users as to Complainant’s affiliation and endorsement of the disputed domain name and corresponding website. Internet users seeking Complainant’s services could likely come across the disputed domain name. Expecting Complainant, they are sidetracked to Respondent’s competitive website. Respondent benefits two-fold from this diversion: it receives referral fees for the click-through advertisements that confront the Internet user, and it receives membership fees for Internet users that do decide to take up Respondent’s apparent offer of dating services. The Panel therefore finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Thus far the Panel has only addressed the bad faith element
of Policy ¶ 4(a)(iii) as it pertains to the <yahoocupid.com>
domain name. However, the Panel has
saved its scrutiny of the <yahoocupid.net> domain name for
last. Unlike the <yahoocupid.com>
domain name, the <yahoocupid.net> domain name has no perceivable
development. There is no operating
website that corresponds to it, and Respondent has not offered any evidence of
demonstrable preparations for any such development. What Respondent has done with this disputed
domain name is inactively hold for one year.
What energy Respondent has expended in pursuit of Internet presence
between these two disputed domain names seems entirely focused on the <yahoocupid.com>
domain name, which of course, has already been found to be in bad faith under
the Policy. The Panel finds that
Respondent’s inactive holding of the <yahoocupid.net> domain name
is evidence of its bad faith registration and use under Policy ¶ 4(a)(iii). See
Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001) (holding that, despite the respondent’s decision
to inactively hold the disputed domain name, “Respondent has made its intention
clear and the continuing threat hanging over the Complainant’s head constitutes
bad faith use”); see also DCI
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 <yahoocupid.com> and <yahoocupid.net> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 9, 2008
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