Yahoo! Inc. v. Cool Media c/o James Kim
Claim Number: FA0806001199252
Complainant is Yahoo!
Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <yahooyellowpages.com>, registered with eNom.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 5, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 6, 2008.
On June 5, 2008, eNom confirmed by e-mail to the National Arbitration Forum that the <yahooyellowpages.com> domain name is registered with eNom and that Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the eNom 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 11, 2008, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of July 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@yahooyellowpages.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 the Honorable Charles K. McCotter, Jr. (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <yahooyellowpages.com> domain name is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <yahooyellowpages.com> domain name.
3. Respondent registered and used the <yahooyellowpages.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc. is an Internet media and commerce company that provides directory and other information services to Internet users. Complainant has operated its business through the <yahoo.com> domain name since 1994 under the YAHOO! mark (Reg. No. 2,040,222, issued February 25, 1997), which was registered with the United States Patent and Trademark Office (“USPTO”). In December 2007, more than 253 million of Complainant’s members logged onto their accounts with Complainant. Moreover, Complainant has 3.7 billion visits to its main website in March 2008. Complainant has also operated a directory service known as “Yahoo! Yellow Pages” since 1996.
Respondent registered the <yahooyellowpages.com> domain name on
August 19, 2007. The disputed domain
name does not resolve to an operating website.
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.
Complainant has submitted evidence that it has registered
the YAHOO! mark with the USPTO. The Panel finds this to be sufficient
evidence as to confer upon Complainant sufficient rights in the mark under
Policy ¶ 4(a)(i).
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under
In this case, Respondent’s <yahooyellowpages.com> domain name incorporates Complainant’s YAHOO! mark, while omitting the exclamation point and adding the generic phrase “yellow pages” and the generic top-level domain (“gTLD”) “.com.” Of the first and last alterations, both are entirely irrelevant to the Panel’s Policy ¶ 4(a)(i) analysis: the former because an exclamation point cannot be added in a domain name, and the latter because every domain name requires a top-level domain. As for the generic phrase “yellow pages,” this phrase actually heightens the confusing similarity between the mark and the disputed domain name. While some generic words may be capable of distinguishing a domain name, words that describe Complainant are not. Complainant runs its directory services under the name “Yahoo! Yellow Pages.” Not only does this phrase describe Complainant’s activities, but it is a name that Complainant has chosen for its own operations. That the entire name is not alleged as a mark is immaterial—Respondent has incorporated Complainant’s mark and the name for one of Complainant’s business activities. The Panel therefore does not hesitate in finding that the <yahooyellowpages.com> domain name is confusingly similar to Complainant’s YAHOO! mark under Policy ¶ 4(a)(i). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching for a company’s Web site often assume, as a rule of thumb, that the domain name of a particular company will be the company name or trademark followed by ‘.com.’”); see also Yahoo! Inc. v. Zheng, FA 1142567 (Nat. Arb. Forum Mar. 25, 2008) (“The deletion of the exclamation point is irrelevant because exclamation points are not valid characters for domain names.”); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the <yahooyellowpages.com> domain name under Policy ¶ 4(a)(ii). The Panel finds that Complainant has successfully alleged a sufficient prima facie case supporting its assertions. Thus Respondent receives the burden of proving its 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”); 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 has offered no evidence that suggests that it is commonly known by the <yahooyellowpages.com> domain name. Even the WHOIS domain name registration information lists the registrant of record as “Cool Media c/o James Kim.” The Panel therefore finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also 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.”).
Respondent’s <yahooyellowpages.com> domain name
does not correspond to an operating website.
There is no evidence of any website development in the time that
Respondent has owned the disputed domain name, and Respondent’s failure to
respond to the Complaint belies any fair inference of demonstrable preparations
to use the disputed domain name in connection with any bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶
4(c)(iii). Therefore, the Panel finds
that Respondent’s inactive holding of the disputed domain name does not carry
any rights or legitimate interests under Policy ¶ 4(a)(ii). See Vestel
Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000)
(“Merely registering the domain name is not sufficient to establish rights or
legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”); see also L.F.P., Inc. v. B and J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (“A Respondent cannot simply do nothing and
effectively ‘sit on his rights’ for an extended period of time when that
Respondent might be capable of doing otherwise.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <yahooyellowpages.com> domain name does not resolve to an operating website. As explained in the previous section, mere registration of a domain name does not lead to rights or legitimate interests on behalf of Respondent. Similarly, registration alone does not guarantee a finding of good faith registration and use. Here, Respondent has made no use, in good faith or bad. What Respondent has achieved is registration of a disputed domain name that quite blatantly targets Complainant’s well-known and widespread YAHOO! mark. This is enough for the Panel to find that Respondent engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that given the long use and fame of the complainant’s mark, the respondent’s conduct is evidence of bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
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 <yahooyellowpages.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 11, 2008
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