Yahoo! Inc. v. NukeCode
Claim Number: FA0807001214034
Complainant is Yahoo! Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan, Henderson, Farabow, Garrett &
REGISTRAR AND DISPUTED DOMAIN NAMES
This dispute concerns the domain names <darkyahoo.com>, <darkyahoo.net>, <darkyahoo.org>, <darkyahoo.biz>, <dark-yahoo.biz>, <darkyahoo.info>, <dark-yahoo.info>, and <darkyah.com>, registered with Wild West Domains, Inc. These domain names are hereinafter referred to as the “Domain Names.”
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.
Christopher Gibson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 7, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 8, 2008.
On July 8, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <darkyahoo.net>, <darkyahoo.com>, <darkyahoo.org>, <darkyahoo.biz>, <dark-yahoo.biz>, <darkyahoo.info>, <dark-yahoo.info>, and <darkyah.com> domain names are registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 July 11, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 31, 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 email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on July 21, 2008.
On July 25, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Christopher Gibson as Panelist.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
PANEL’S DECISION ON PRELIMINARY ISSUE
Complainant, Yahoo! Inc., is a global Internet communications, media, and commerce company delivering a branded network of comprehensive searching, directory, information, communication, shopping services and other online activities and features to millions of Internet users daily. Complainant is the owner of the trademark and service mark YAHOO!, the trade name YAHOO!, as well as the domain name <yahoo.com>. In continuous use since 1994, the YAHOO! mark has become one of the most recognized brands in the world:
In this case, Respondent does not contest Complainant’s rights in its name and mark, nor does Respondent seek to contest Complainant’s Complaint and to retain the Domain Names. Instead, Respondent consents to the transfer of the Domain Names <darkyahoo.net>, <darkyahoo.com>, <darkyahoo.org>, <darkyahoo.biz>, <dark-yahoo.biz>, <darkyahoo.info>, <dark-yahoo.info>, and <darkyah.com> to Complainant.
Respondent has stated in relevant part as follows:
As I have stated there was never any deliberate or intentional attempt to hurt Yahoo or infringe on anyone’s trademark, just a bunch of friends who wanted to build a web site, nothing more….
. . . .
To sum things up I will oblige and surrender DARKYAHOO.NET, DARKYAHOO.ORG, DARKYAHOO.BIZ, DARK-YAHOO.BIZ, DARKYAHOO.INFO, DARK-YAHOO.INFO, and DARKYAH.COM domain names on or after 8/18/2008 and DARKYAHOO.COM ninety days after that but will only use DARKYAHOO.COM as a redirect to INSANEREALM.COM
Under the circumstances, the Panel does not need to determine whether or not Respondent has deliberately or intentionally attempted to infringe the YAHOO! mark. It is sufficient to observe that at the times when each of the Domain Names were registered – in 2003 (<darkyahoo.com>), 2004 (most of them), and 2007 (<darkyah.com>) – the YAHOO! mark was already well-known. In fact, Respondent has not denied that he was well-aware of the YAHOO! mark and used the identical logo/font for the word Yahoo! on his website.
In this case, the Panel determines that where Respondent has not contested the transfer of the Domain Names but instead agrees to transfer them to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the Domain Names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
The Panel is aware that Respondent has indicated preferred dates for the transfer of the Domain Names, with the earliest date being August 18, 2008 for the transfer of all but one of the disputed Domain Names. The Panel, however, has no authority except to order the immediate transfer of the Domain Names. The date of this decision is August 11, 2008; therefore, the actual transfer of the Domain Names will take place very close to the preferred date stated by Respondent. With regard to the Domain Name <darkyahoo.com>, with respect to which the Respondent requested an additional 90 days of retention while he re-directs users to his new website, the Panel orders the immediate transfer of this Domain Name to Complainant as well. Should Complainant choose to delay the initiation of procedures for transfer of this Domain Name for some short period, that is a choice for Complainant to consider.
Accordingly, it is Ordered that the Domain Names <darkyahoo.com>, <darkyahoo.net>, <darkyahoo.org>, <darkyahoo.biz>, <dark-yahoo.biz>, <darkyahoo.info>, <dark-yahoo.info>, and <darkyah.com> be TRANSFERRED from Respondent to Complainant.
Christopher Gibson, Panelist
Dated: August 11, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum