national
arbitration forum
DECISION
Yahoo! Inc. v. Igor N.
Claim Number: FA0901001240854
PARTIES
Complainant is Yahoo!
Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <yahooes.com>, registered with Enom, Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 6, 2009.
On January 5, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <yahooes.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 January 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 27, 2009 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@yahooes.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 3, 2009, 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <yahooes.com> domain name is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <yahooes.com> domain name.
3. Respondent registered and used the <yahooes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Yahoo! Inc., was issued a trademark
registration (Reg. No. 2,040,222) for the YAHOO! mark
by the United States Patent and Trademark Office (“USPTO”) on February 25, 1997
in connection with its online services business. Complainant operates many websites including
the site resolving from <es.yahoo.com>, its site for the country of
Respondent registered the <yahooes.com> domain name on December 19, 2000. The disputed domain name is being used to redirect Internet users to the website resolving from the <latinohouse.com> domain name, which displays links to third-party websites including adult-orientated sites and sites that directly compete with Complainant. The resolving website also includes a search engine in competition with Complainant.
DISCUSSION
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.
Identical and/or Confusingly Similar
Pursuant to Policy ¶ 4(a)(i),
Complainant must first establish rights in the YAHOO! mark. The Panel finds that Complainant’s
registration of the YAHOO! mark with the USPTO is
sufficient to establish Complainant’s rights in the mark. See
Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct.
25, 2004) (finding that the complainant, who registered the ENTERPRISE
RENT-A-CAR mark with the USPTO, successfully established 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).
The <yahooes.com> domain name includes the Complainant’s YAHOO! mark, omitting the exclamation point and adding the letters “es” and the generic top-level domain (gTLD) “.com.” The inclusion of a gTLD in a domain name is required for all domain names and is therefore irrelevant to a Policy ¶ 4(a)(i) 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). The omission of punctuation does not affect confusing similarity under Policy ¶ 4(a)(i). See Memoirs, Inc. v. Patel, FA 98244 (Nat. Arb. Forum Aug. 28, 2001) (finding the domain name to be confusingly similar where a period was omitted from the I.MEMOIRS mark and the gTLD “.com” was added). The Panel finds that adding “es,” which is used by Complainant in its own <es.yahoo.com> domain name, to Complainant’s mark results in the <yahooes.com> domain name being confusingly similar to Complainant’s YAHOO! mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com> domain name is confusingly similar to the complainant’s AOL mark because “…the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks.”); see also Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. If the Panel finds that Complainant has established such a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name pursuant to the guidelines in Policy ¶ 4(c). Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); 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.”). The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the <yahooes.com> domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c).
Pursuant to Policy ¶ 4(c)(ii),
Respondent may establish rights or legitimate interests in a disputed domain
name if it can establish that it is commonly known by the disputed domain
name. The Panel finds no evidence in the
record suggesting that Respondent is commonly known by the disputed domain
name. Complainant asserts that Respondent
has no license or agreement with Complainant authorizing Respondent to use the
YAHOO! mark, and the WHOIS information identifies
Respondent as “Igor N..” Thus,
Respondent has not established rights or legitimate interests in the disputed
domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding
that the respondent was not commonly known by the <cigaraficionada.com>
domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other
evidence in the record); see also Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089
(Nat. Arb. Forum July 17, 2006)
(concluding that the respondent was not commonly known by the
<coppertown.com> domain name where there was no evidence in the record,
including the WHOIS information, suggesting that the respondent was commonly
known by the disputed domain name).
Respondent is using the <yahooes.com> domain name to redirect Internet users to its <latinohouse.com> domain name. The website resolving from this site displays links to third-party websites and a search feature. The Panel infers that Respondent receives click-through fees for diverting Internet users in search of Complainant’s site to other sites. The Panel finds this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent displays links to adult-oriented websites which is further evidence it lacks rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) and (iii). Therefore, Respondent has not established rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent is using the <yahooes.com>
domain name to resolve to a website that contains links for third-party
websites. Some of these links directly
compete with Complainant. The Panel
finds Respondent is using the <yahooes.com>
domain name to divert Internet users to Complainant’s competitors. This is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iii). See
Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding
that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii));
see also EBAY, Inc. v. MEOdesigns,
D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and
used the domain name <eebay.com> in bad faith where the respondent has
used the domain name to promote competing auction sites).
The website that resolves from the <yahooes.com> domain name displays
advertisements and links to sites that are both related and unrelated to
Complainant’s YAHOO! mark. The Panel infers that Respondent receives
pay-per-click fees for these links and advertisements. Since the disputed domain name is confusingly
similar to Complainant’s mark, Internet users are likely to become confused as
to Complainant’s affiliation or sponsorship of the disputed domain name and
resolving website. The Panel finds this
is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v.
Cook, FA 208629 (Nat. Arb. Forum Dec. 22,
2003) (“Registration and use of a domain name that incorporates another's mark
with the intent to deceive Internet users in regard to the source or
affiliation of the domain name is evidence of bad faith.”); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003)
(finding that the respondent’s registration of an infringing domain name to
redirect Internet users to banner advertisements constituted bad faith use of
the domain name).
The links displayed on the website resolving from the disputed domain name include links to adult-oriented sites. These links to adult-oriented websites is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where the respondent attracted users to his website for commercial gain and linked his website to pornographic websites).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahooes.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: February 12, 2009
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