Yahoo! Inc. v. xie shuxian
Claim Number: FA0806001198791
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 <shineyahoo.com>, registered with Ename, 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.
James A Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 3, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 4, 2008.
On June 5, 2008, Ename, Inc confirmed by e-mail to the National Arbitration Forum that the <shineyahoo.com> domain name is registered with Ename, Inc and that Respondent is the current registrant of the name. Ename, Inc has verified that Respondent is bound by the Ename, 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 June 12, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 2, 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@shineyahoo.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 8, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <shineyahoo.com> domain name is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <shineyahoo.com> domain name.
3. Respondent registered and used the <shineyahoo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc., has numerous registration of the
YAHOO! mark worldwide including in the
The <shineyahoo.com> domain name was registered on March 11, 2008; four days after BusinessWeek announced that Complainant was to soon launch the new service “Shine.” The disputed domain name currently resolves to a commercial search engine and various sponsored links, many of which contain the same services or goods offered under Complainant’s YAHOO! Mark.
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 has sufficiently
established rights in the YAHOO! mark through
registration with the USPTO. See
Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2,
2006) (finding that the complainant’s registration of the DISNEY trademark with
the USPTO prior to the respondent’s registration of the disputed domain name is
sufficient to prove that the complainant has rights in the mark pursuant to
Policy ¶ 4(a)(i)); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the
USPTO has made a determination that a mark is registrable, by so issuing a
registration, as indeed was the case here, an ICANN panel is not empowered to
nor should it disturb that determination.”).
The <shineyahoo.com> domain name contains
Complainant’s YAHOO! mark omitting the exclamation
mark followed by the generic top-level domain (“gTLD”) “.com.” It is preceded by the generic term “shine,”
which directly corresponds to a line of services offered under the YAHOO! mark. It is
well-established that the omission of punctuation and inclusion of a gTLD are
irrelevant for a Policy ¶ 4(a)(i) analysis. Furthermore, the addition of a generic and/or
descriptive term does not distinguish a disputed domain name. As a result, the Panel finds that the
disputed domain name is confusingly similar to Complainant’s mark pursuant to
Policy ¶ 4(a)(i).
See Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the
domain name such as “.net” or “.com” does not affect the domain name for the
purpose of determining whether it is identical or confusingly similar); see also Mrs. World Pageants, Inc. v. Crown
Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that
punctuation is not significant in determining the similarity of a domain name
and mark); see also Space Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr.
30, 2007) (“The additions of generic words with an obvious relationship to
Complainant’s business and a gTLD renders the disputed domain name confusingly
similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Respondent has no rights or legitimate interests in the
disputed domain name. See
TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb.
Forum Sept. 16, 2002) (“In order to bring a claim under the Policy, Complainant
must first establish a prima facie case.”). The Panel finds that
Complainant has satisfied this threshold, and that the burden is accordingly
shifted to Respondent to demonstrate that it does have rights or legitimate
interests in the disputed domain name. 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”).
No response has been received from Respondent. Therefore, the Panel presumes that Respondent
has no rights or legitimate interests in the disputed domain name but will
nonetheless examine the record in light of the elements listed under Policy ¶
4(c). See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding
that the respondent’s failure to produce requested documentation supports a
finding for the complainant); see also
Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum
Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as
an implicit admission that [Respondent] lacks rights and legitimate interests
in the disputed domain name. It
also allows the Panel to accept all reasonable allegations set forth…as
true.”).
Nothing in Respondent’s WHOIS information or anything else
in the record indicates that Respondent is or ever was commonly known by the
disputed domain name. Moreover,
Complainant has never granted permission or license to Respondent to use the
YAHOO! mark in any way. Consequently, the Panel finds that Respondent
is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA
699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not
commonly known by the disputed domain names where the WHOIS information, as
well as all other information in the record, gave no indication that the
respondent was commonly known by the disputed domain names, and the complainant
had not authorized the respondent to register a domain name containing its
registered mark).
The <shineyahoo.com> domain name resolves to a
web page containing a search engine and various links to third-parties, many of
which offer goods and services in direct competition with those offered under
Complainant’s YAHOO! mark. The Panel finds this to be neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v.
Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that the respondent’s diversionary use of the complainant’s marks to
send Internet users to a website which displayed a series of links, some of which
linked to the complainant’s competitors, was not a bona fide offering of
goods or services); see also Metro.
Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar
domain name to divert Internet users to competing websites does not represent a
bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The <shineyahoo.com>
domain name resolves to a links page and search engine that
redirect Internet users to various third-parties, many of whom are
competitors of Complainant.
Consequently, the Panel finds this disruptive use to establish that
Respondent registered and is using the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock
Indus., Ltd., FA 724554 (Nat. Arb. Forum
Aug. 1, 2006) (finding that the respondent registered and used the
<classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶
4(b)(iii) by redirecting Internet users to the respondent’s competing website);
see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb.
Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users
through to the respondent’s competing business); 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)).
Moreover, since
respondent’s <shineyahoo.com> domain name contains links to
competitors and various other unrelated third-parties, the Panel presumes that
Respondent is commercially benefiting from such use. For this reason, the Panel finds additional
evidence demonstrating Respondent’s bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
See Dell Inc. v. Innervision Web Solutions,
FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad
faith under Policy ¶ 4(b)(iv) where the respondent was using the
<dellcomputerssuck.com> domain name to divert Internet users to
respondent’s website offering competing computer products and services); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb.
Forum Mar. 21, 2006) (“Respondent is
using the disputed domain name to operate a website which features links to
competing and non-competing commercial websites from which Respondent
presumably receives referral fees. Such
use for Respondent’s own commercial gain is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shineyahoo.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: July 22, 2008
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