Yahoo! Inc. v. BridgePortEnterprisesLimited c/o
Claim Number: FA0808001222408
Complainant is Yahoo! Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <askyahoo.com>, registered with Enom, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 28, 2008.
On August 28, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <askyahoo.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 September 8, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 29, 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 by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 6, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 <askyahoo.com> domain name is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <askyahoo.com> domain name.
3. Respondent registered and used the <askyahoo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a communications company that delivers searching, directory, information, communication, and shopping services under the YAHOO! Mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on February 25, 1997 (Reg. No. 2,040,222). According to reports published in the Financial Times and Business Week, over the last fourteen years Complainant’s YAHOO! mark has become one of the most recognized brands in the world. Complainant currently has over 253 million active registered members around the world.
Respondent registered the <askyahoo.com> domain name on December 12, 2002. The disputed domain name resolves to a website that has offered Internet search services that directly compete with Complainant’s services, and has featured search categories that refer to Complainant’s services. The website currently displays the message “This domain has been blocked.”
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 Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant contends that Respondent’s <askyahoo.com> domain name is confusingly similar to its YAHOO! mark. The <askyahoo.com> domain name differs from Complainant’s mark in three ways: (1) the descriptive term “ask” has been added to the beginning of the mark; (2) the exclamation point has been removed from the mark; and (3) the generic top-level domain (“gTLD”) “.com” has been added. Neither the addition of a descriptive term nor the removal of a punctuation mark sufficiently distinguish a domain name from an incorporated mark for the purposes of Policy ¶ 4(a)(i). See Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). The addition of a gTLD also does not reduce the likelihood of confusion between the domain name and the mark because every domain name must contain a top-level domain. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Despite these changes, Internet visitors are nevertheless still likely to confuse the disputed domain name with Complainant’s mark, and so the Panel finds that Respondent’s disputed domain name is not sufficiently distinguished from Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <askyahoo.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, 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 Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); 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 <askyahoo.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 “BridgePortEnterprisesLimited c/o
Respondent maintains a website at the <askyahoo.com> domain name that has offered Internet search services that directly compete with Complainant’s services, and has featured search categories that refer to Complainant’s services by bearing Complainant’s YAHOO! mark. Complainant also contends that Respondent’s search services linked Internet visitors to third-party websites that compete with Complainant. The Panel finds that Respondent’s offering of Internet search services that compete with Complainant’s services, Respondent’s use of search categories bearing Complainant’s YAHOO! mark, and Respondent’s linking Internet visitors with competitors of Complainant are neither bona fide offerings of goods or services under Policy ¶ 4(c)(i) nor legitimate noncommercial or fair uses 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that, because of Respondent’s
intentional use of Complainant’s YAHOO! mark in the
disputed domain name, Internet customers are confused by the similarity between
the YAHOO! mark and the <askyahoo.com> domain
name, and are being intentionally diverted by Respondent to Respondent’s
website that resolves from the disputed domain name. Complainant also contends that Respondent is
intentionally disrupting Complainant’s business by offering services that
compete with Complainant’s services, and by providing links to competing
third-party websites. In both cases,
these actions by Respondent divert confused customers to Complainant’s
competitors, and therefore, the Panel finds that Respondent’s use of the
disputed domain name disrupts Complainant’s business, and is evidence of
registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See
Complainant also contends that Respondent is gaining commercially through this diversion, both through the services Respondent offers in competition with Complainant’s services, and through click-through fees that Respondent receives from third-party websites. Because Respondent has intentionally used the disputed domain name for commercial gain through a likelihood of confusion with Complainant’s mark, the Panel finds that, pursuant to Policy ¶ 4(b)(iv), Respondent’s use of the disputed domain name is also evidence of registration and use in bad faith. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
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 <askyahoo.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: October 16, 2008
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