Yahoo! Inc. v. Syed Hussaini
Claim Number: FA0808001222425
Complainant is Yahoo! Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan Henderson Farabow Garrett &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoomexico.com>, registered with Moniker Online Services, 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.
Paul M. DeCicco as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 29, 2008.
On September 4, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <yahoomexico.com> domain name is registered with Moniker Online Services, Inc. and that the Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 7, 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.
A timely Response was received and determined to be complete on October 7, 2008.
Complainant submitted a timely Reply on October 14, 2008.
On October 16, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
Yahoo! is a global Internet communications, media, and commerce company that delivers a branded network of comprehensive searching, directory, information, communication, shopping services and other online activities and features to millions of Internet users daily. Yahoo! is the owner of the service mark and trademark YAHOO!, the trade name YAHOO! as well as the domain name <yahoo.com>.
Yahoo! offers and has offered for years a wide variety of services using its YAHOO! mark together with a descriptive name of the services. These include, for example, YAHOO! Mail, YAHOO! Finance, YAHOO! Games, YAHOO! Messenger, YAHOO! Movies, YAHOO! Music, YAHOO! News, YAHOO! Sports, YAHOO! Weather, and YAHOO! Yellow Pages.
long-established convention of using the YAHOO! mark
together with a descriptive or geographic term related to the services, Yahoo!
has used YAHOO!
Seventy-eight (78) UDRP decisions involving the YAHOO! mark have been issued in Yahoo!’s favor, and the Panelists in at least thirty-seven (37) of these cases expressly found the YAHOO! mark to be famous.
Yahoo! owns the following UAE registrations: Registration 24095, filed April 4, 1999, issued March 12, 2000, covering services in International Class 42; Registration No. 39371, filed July 7, 2002, issued May 7, 2003, covering communications services, telecommunications services, broadcasting services, and online services in International Class 38.
Yahoo! owns numerous trademark registrations for the YAHOO! mark in the U.S. Yahoo!’s trademark rights in its YAHOO! mark and variations thereof predate Respondent’s registration of the Domain Name.
Respondent had actual knowledge of Complainant’s rights in the YAHOO! mark because Respondent is a customer of Complainant. Respondent uses a Yahoo™ e-mail address.
Respondent uses the Domain Name to redirect and divert Internet users to a commercial pay-per-click website located at the domain offering directly competing Internet search services and sponsored link advertisements to directly competing websites and other commercial websites.
Respondent owns a number of additional domain names incorporating well-known trademarks owned by third parties.
The Domain Name is confusingly
similar to Complainant’s famous YAHOO! mark because it
is comprised of Complainant’s mark and a geographic term (“
The addition of the geographic term “
Respondent has no rights or legitimate interest in the Domain Name. Respondent’s use of the Domain Name for a commercial pay-per-click website offering directly competing Internet search services and featuring advertisements for directly competing websites and other commercial websites does not constitute a bona fide offering of goods or services or noncommercial fair use under the UDRP. Also, Respondent is not and has not been commonly known by the Domain Name. Indeed, given the international fame of Complainant’s YAHOO! mark, Respondent could not be known by the Domain Name.
Respondent’s registration and use of the Domain Name squarely meets the acknowledged grounds of bad faith. First, Respondent’s registration and use of the Domain Name meet the bad-faith element set forth in Section 4(b)(iv) of the UDRP because Respondent uses the Domain Name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its YAHOO! mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent and/or his website that offers directly competing Internet search services and features pay-per-click advertisements for directly competing websites and other commercial websites. Second, Respondent’s registration and use of the Domain Name to offer competing Internet search services, and to display pay-per-click advertisements for directly competing websites and other commercial websites, meet the bad-faith element set forth in Section 4(b)(iii) of the UDRP because Respondent’s activities disrupt Complainant’s business.
Further, Respondent impliedly had
knowledge of Complainant’s rights in its YAHOO! mark
when he registered the Domain Name given (1) the international fame of
Complainant’s YAHOO! mark, (2) Complainant’s
registrations of its YAHOO! mark in the UAE, the
Respondent contends as follows:
The site for <yahoomexico.com>
is under development, and has nothing to do with
Yahoo’s website or Yahoo’s logo or any service that Yahoo currently provides. The logo and design for YahooMexico.com project is ready but there are bugs in programming that are being fixed. The site will be launched soon. The website does not have anything to do with search engine service or any other service that Yahoo! provides.
YahooMexico.com will be a community forum, and cater to Mexicans that would like to reduce the hot ethnic stereotypes. Yahoo means "rude" and that’s one of the stereotype about Mexicans. Although the site would not be all about this one particular stereotype, it is very interesting and relevant name for the project.
Respondent understands that he is not allowed to use the registered trademark YAHOO! or create a likelihood of confusion with Yahoo's YAHOO! mark and will not do so or have any intention to commit such an illegal and unethical act.
The domain is not intended to confuse visitors with currently the registered YAHOO! Trademark.
Respondent purchased the domain in September 2007. Respondent did not initially register it. Respondent’s initial investment for the purchase of the domain was $2,700 for the domain name and $775 on design, logo and programming. There is no sense to invest this much money if the domain was going to be used in bad faith.
Yahoo is a dictionary word with generic definition/meaning and it is that meaning that is implied for the completed and upcoming community website
The domain was not offered for sale to Yahoo! or any other parties
The domain is not being used in bad faith and Respondent has a bona fide use for the domain name.
C. Additional Submissions
Complainant additionally contends as follows:
Respondent’s own admissions (either express admissions or failure to deny certain allegations in Yahoo!’s Complaint) are alone sufficient for Yahoo! to prevail.
Respondent does not deny that he
registered the domain name <yahoomexico.com> in
2007 with actual knowledge of Yahoo!’s rights in its YAHOO! mark,
without Yahoo!’s authorization, and long after Yahoo!’s trademark registrations
for its YAHOO! mark issued in the
Respondent does not deny that the Domain Name is confusingly similar to Yahoo!’s YAHOO! mark.
Respondent does not deny that he uses the Domain Name for a commercial pay-per-click website that offers directly competing Internet search services and sponsored link advertisements to directly competing websites and other commercial websites.
Respondent does not deny that he has registered additional domain names that incorporate third-party trademarks.
The mere presence of the term “yahoo” in a dictionary in no way diminishes Yahoo!’s rights in the YAHOO! mark. Many famous trademarks are dictionary terms (e.g., APPLE computers, GATEWAY computers, TIME magazine, PEOPLE magazine, SPRITE soda). The important point is that YAHOO! is an arbitrary mark as applied to Yahoo!’s Internet-related services, and is therefore an inherently distinctive and protectable trademark.
Respondent uses the Domain Name for a commercial pay-per-click website that offers directly competing Internet search services and features sponsored link advertisements to directly competing websites and other commercial websites and Respondent does not deny that fact.
In his Response, Respondent claims without any support that he will use the Domain Name for a forum website “catering to Mexicans [who] would like to reduce” stereotypes, based on Respondent’s claim that “Yahoo means ‘rude’ and [that’s] one of the stereotype about Mexicans.” Respondent’s claim has no merit.
Initially, Respondent’s allegation that he registered the Domain Name because “yahoo” is a term in the English dictionary does not justify Respondent’s selection and registration of the Domain Name because the English word “yahoo” does not at all relate to Respondent’s use of the Domain Name.
Moreover, the domain name <yahoomexico.com> on its face communicates Yahoo!’s famous
and federally registered YAHOO! mark and its services
offered under the YAHOO! mark since 1994 and its
services offered under the YAHOO!
Respondent has not denied that Respondent had knowledge of Yahoo!’s rights in its YAHOO! mark prior to Respondent’s registration of the Domain Name. Respondent has not denied, that Respondent has a pattern of registering trademark-related domain names. Respondent’s activities therefore constitute textbook bad faith pursuant to Sections 4(b)(iv), 4(b)(iii), and 4(b)(ii) of the UDRP.
Complainant has trademark rights in the mark YAHOO!.
The at-issue domain name is confusingly similar to Complainant’s YAHOO! mark.
Complainant’s rights pre-date Respondent’s registration of the at-issue domain name.
Respondent is neither known by the at-issue domain name nor licensed to use Complainant’s trademark.
Respondent makes false claims in his Response and fabricates evidence regarding his intention to use the at-issue domain name.
Respondent has no rights or legitimate interests in the at-issue domain name.
The at-issue domain name was registered and is being used in bad faith.
The Response is frivolous.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
has rights in the YAHOO! mark through registration
with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
2,403,227 issued November 14, 2000). See Miller Brewing
The at-issue domain name <yahoomexico.com> is confusingly similar to Complainant’s YAHOO! mark. Complainant’s YAHOO! mark, cannot be registered under the current DNS system in its entirety since the exclamation point character is not valid in domain names. The absent of the exclamation point (!) regarding the at-issue domain name is thus of no consequence. See Yahoo! Inc. v. Brotherton, FA 778969 (Nat. Arb. Forum Sept. 22, 2006) (finding the domain names <yahooboy.com> and <yahooboys.com> confusingly similar to Complainant’s YAHOO! mark and holding “the only special character allowed in a domain name is ‘-’ and thus the string ‘YAHOO!’ cannot be registered as a domain name. Therefore, in order to obtain a domain name that includes and reflects its trademark, the Complainant has no choice except to register domain names containing the string ‘yahoo.’”). Notably, even if the exclamation point were permitted it’s absence would not sufficiently differentiate the Complainant’s mark and the at-issue domain name to cause the Panel to reach an alternative conclusion.
The concatenated geographic term “
It is also well settled that the generic top-level domain (“gTLD”) “.com” is disregarded for the purposes of Policy analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Finally, Respondent does not dispute that Complainant has rights in the YAHOO! mark or counter Complainant’s arguments showing confusing similarity. For these reasons and those discussed above, the Panel finds that the at-issue domain name is confusingly similar to Complainant’s registered trademark, a mark in which Complainant has rights.
Under paragraph 4(a)(ii) of the Policy, Complainant must first make out a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). The threshold for such showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once a prima facie case is established, the burden then shifts to Respondent who must then demonstrate that Respondent nevertheless has rights or legitimate interests in an at-issue domain name.
Complainant did not
authorize Respondent to use the at-issue domain name and Respondent is neither
affiliated with, nor commonly known as YAHOO (or YAHOO
Respondent fails to carry his burden to show that he has rights or interest in the at-issue domain name. He presents no credible evidence that he is either known by the domain name or that he is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the YAHOO! mark. See Policy ¶ 4(c)(iii).
Policy ¶ 4(c)(i) does not save Respondent notwithstanding his efforts to show the contrary. Respondent had no intention of operating a bona fide service in conjunction with the domain name. As further discussed below, Respondent’s fairy tale about creating a site for Mexicans to fight a stereotype of being rude is so patently contrived and offensive that it overflows with bad faith.
For the reasons stated above, Respondent lacks rights or legitimate interests in the <yahoomexico.com> domain name.
As mentioned above, the Panel finds that Respondent prevaricated in his Response. There is little doubt that Respondent falsified his true intentions regarding the use of the at-issue domain name and that he fabricated evidence which if true might be material to his defense. Without offering a shred of corroborating evidence of the kind that would readily be available and trivial to produce if Respondent’s intentions were as benign as he suggests, the Respondent concocts an incredible and ridiculous yarn out of whole cloth in a rather transparently lame attempt to save his at-issue domain name. Respondent cannot invent a use for his domain name once it is in jeopardy and expect that his imagination will shield him in a UDRP proceeding.
Although it is not one of the Policy’s several enumerated indicia of bad faith, Respondent’s foul conduct in the instant proceeding demands a finding regarding Policy ¶ 4(a)(iii) that is adverse to Respondent. Indeed, Respondent’s silly story makes it apparent that Respondent’s true motivation for acquiring the at-issue domain name was precisely to trade on the YAHOO! mark and benefit from click-through revenue.
After finding sufficient bad faith on the ground that Respondent fabricated a material part of his Response, it is not necessary to discuss the several well-documented, well-researched and well-taken arguments of Complainant that are in harmony with the Panel’s conclusion that the at-issue domain name has been registered and is being used in bad faith and that the Response is frivolous.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoomexico.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 30, 2008
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