Yahoo! Inc. v. junlong zheng c/o OnlineNIC
Claim Number: FA0808001218583
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 <yahoomessengerfortheweb.com>, registered with OnlineNIC.
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 July 31, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 1, 2008.
On August 17, 2008, OnlineNIC confirmed by e-mail to the National Arbitration Forum that the <yahoomessengerfortheweb.com> domain name is registered with OnlineNIC and that Respondent is the current registrant of the name. OnlineNIC has verified that Respondent is bound by the OnlineNIC 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 August
18, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 8, 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@yahoomessengerfortheweb.com
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 14, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <yahoomessengerfortheweb.com> domain name is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <yahoomessengerfortheweb.com> domain name.
3. Respondent registered and used the <yahoomessengerfortheweb.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an Internet communications, media, and
commerce company that markets its products and services under the YAHOO! mark,
which Complainant registered with the United States Patent and Trademark Office
(“USPTO”) on November 14, 2000 (Reg. No. 2,403,227). Complainant’s services include both local and
international search services, instant
messaging, message boards, and mobile services; it has used YAHOO! Messenger to
identify its instant messaging services since at least as early as 1999. Complainant was ranked the number one website
in the
Respondent registered the <yahoomessengerfortheweb.com> domain name on July 1, 2008. The disputed domain name resolves to a website that offers Internet search services directly competing with Complainant, displays search services that refer to Complainant and its services, and links to websites containing advertisements for websites directly competing with Complainant.
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 established rights in
the YAHOO! mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also Koninklijke
KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the
Policy does not require that the mark be registered in the country in which the
respondent operates; therefore it is sufficient that the complainant can
demonstrate a mark in some jurisdiction).
Complainant contends that
Respondent’s <yahoomessengerfortheweb.com> domain name is confusingly similar to its YAHOO!
mark. The <yahoomessengerfortheweb.com> domain name differs from Complainant’s mark in three ways:
(1) the exclamation mark has been removed; (2) the descriptive phrase
“messenger for the web” has been added to the end of the mark; and (3) the
generic top-level domain (“gTLD”) “.com” has been added. The omission of a punctuation mark does not
sufficiently distinguish a domain name from an incorporated mark for the
purposes of Policy ¶ 4(a)(i). Likewise,
the addition of a phrase which merely relates to Complainant’s business, as “messenger
for the web” relates to Complainant’s instant messaging services on the Internet,
also does not distinguish a domain name from an incorporated mark. The addition of a gTLD does not reduce the
likelihood of confusion between the domain name and the mark, because every
domain name must contain a top-level domain.
Therefore, because the likelihood of confusion between Complainant’s
mark and the disputed domain name is neither minimized nor eliminated, the
Panel finds that Respondent’s disputed domain name is not sufficiently
distinguished from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
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 Caterpillar Inc.
v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain
names <caterpillarparts.com> and <caterpillarspares.com> were
confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER
DESIGN because “the idea suggested by the disputed domain names and the
registered trademarks is that the goods or services offered in association with
[the] domain name are manufactured by or sold by the Complainant or one of the
Complainants [sic] approved distributors. The disputed trademarks contain one
distinct component, the word Caterpillar”); see also Gardline Surveys Ltd.
v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <yahoomessengerfortheweb.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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.”).
Complainant contends that Respondent is not commonly known
by the <yahoomessengerfortheweb.com> domain
name nor has it ever been the owner or licensee of the YAHOO!
mark. The WHOIS record for the disputed
domain name lists Respondent as “junlong zheng
c/o OnlineNIC.” Respondent has
failed to show any evidence contrary to Complainant’s contentions, and so, in
light of the evidence presented, the Panel finds that Respondent is not commonly
known by the <yahoomessengerfortheweb.com>
domain name
pursuant to 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 Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Respondent maintains a website at the <yahoomessengerfortheweb.com> domain name that offers Internet search services directly competing with Complainant, displays search services that refer to Complainant and its services, and links to websites containing advertisements for websites directly competing with Complainant. Incorporating a mark into a domain name with the purpose of diverting Internet users to competing commercial sites 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). See 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) Therefore, the Panel finds that Respondent’s uses of the <yahoomessengerfortheweb.com> domain name are 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). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is diverting Internet
customers from Complainant’s website to Respondent’s website that resolves from
the disputed domain name, through the confusion caused by the similarity
between the YAHOO! mark and the <yahoomessengerfortheweb.com>
domain name. Complainant also contends
that Respondent intended to disrupt Complainant’s business by diverting
confused customers to Complainant’s competitors. Because Respondent’s use of the disputed
domain name disrupts Complainant’s business, the Panel finds that this is
evidence of Respondent’s registration and use of the disputed domain name in
bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also contends that Respondent financially benefits because of the diversion of Internet users to Complainant’s competitors, through at least two ways: 1) the click-through fees that third-party websites pay to Respondent whenever Internet users click on the links contained on Respondent’s website that resolves from the disputed domain name; and 2) the search services Respondent is offering which compete with Complainant’s own search services. The Panel finds this resulting likelihood of confusion for Respondent’s own commercial gain to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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.’”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
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 <yahoomessengerfortheweb.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 29, 2008
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