Yahoo! Inc. v. NukeCode
Claim Number: FA0807001214034
PARTIES
Complainant is Yahoo! Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P.,
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.”
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@darkyahoo.net, postmaster@darkyahoo.com, postmaster@darkyahoo.org,
postmaster@darkyahoo.biz, postmaster@dark-yahoo.biz, postmaster@darkyahoo.info, postmaster@dark-yahoo.info,
and postmaster@darkyah.com 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.
RELIEF SOUGHT
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.
DECISION
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
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