Yahoo! Inc. v. SL Pace a/k/a Chris Carter
Claim Number: FA0901001240860
Complainant is Yahoo!
Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <yahoocalender.com>, <yahooenspanol.com>, <yahooflights.com>, <yahoofoods.com>, <yahoomymail.com>, <yahoowebcam.com>, <vietnamyahoo.com>, and <voiceyahoo.com>, registered with Dotster.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 6, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <yahoocalender.com>, <yahooenspanol.com>, <yahooflights.com>, <yahoofoods.com>, <yahoomymail.com>, <yahoowebcam.com>, <vietnamyahoo.com>, and <voiceyahoo.com> domain names are confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <yahoocalender.com>, <yahooenspanol.com>, <yahooflights.com>, <yahoofoods.com>, <yahoomymail.com>, <yahoowebcam.com>, <vietnamyahoo.com>, and <voiceyahoo.com> domain names.
3. Respondent registered and used the <yahoocalender.com>, <yahooenspanol.com>, <yahooflights.com>, <yahoofoods.com>, <yahoomymail.com>, <yahoowebcam.com>, <vietnamyahoo.com>, and <voiceyahoo.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc., owns trademark registrations with
the United States Patent and Trademark Office (“USPTO”) for its YAHOO! mark (i.e.
Reg. No. 2,040,222 issued
Respondent registered the <yahoocalender.com> domain name on
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
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 must first consider whether these proceedings have
been properly instituted. UDRP ¶ 3(c)
provides that a “complaint may relate to more than one domain name, provided
that the domain names are registered by the same domain name holder.” Complainant contends that Respondent is
operating under various asserted alleged aliases. Additionally, the National Arbitration
Forum’s Supplemental Rule 4(f)(ii) requires a Panel to dismiss the Complaint in
relation to the domain names it deems to be insufficiently linked to
Respondent. Out of the eight disputed
domain names in this case, one, <vietnamyahoo.com>, is registered under a different name and
street address. The e-mail address
provided in the WHOIS contact information is identical to the e-mail address
listed in the other seven domain name WHOIS information. This is evidence that Chris Carter and SL
Pace are actually the same person or entity.
The Panel finds that the listed aliases are the same person or
entity, or entities controlled by the same person or entity, so that the filing
of this Complaint is justified and proper pursuant to Supplemental Rule
4(f)(ii). See Yahoo!, Inc. v. Soksripanich & Others., D2000-1461 (WIPO
The Panel finds that Complainant’s registration of its
YAHOO! mark with the USPTO is sufficient to establish Complainant’s rights in
the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
The disputed domain names all include Complainant’s YAHOO!
mark, omitting the exclamation point, combined with a descriptive word and
followed by the generic top-level domain (gTLD) “.com.” The inclusion of a gTLD in a disputed domain
name or the omission of punctuation are insignificant when conducting an
analysis under Policy ¶ 4(a)(i). See Isleworth
Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
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 names. If the Panel finds that Complainant’s
allegations establish such a prima facie case, the burden shifts to
Respondent to show that it does indeed have rights or legitimate interests in
the disputed domain names pursuant to the guidelines in Policy ¶ 4(c). The Panel finds that Complainant’s
allegations are sufficient to establish a prima
facie case that Respondent has no rights or legitimate interests in the disputed domain names pursuant to
Policy ¶ 4(a)(ii). Since no response was submitted in this case,
the Panel may presume that Respondent has no rights or legitimate interests in
the disputed domain names. However, the
Panel will still examine the record in consideration of the factors listed in
Policy ¶ 4(c). See Domtar, Inc. v.
Theriault., FA 1089426 (Nat. Arb. Forum
Respondent has failed to make any active use of the disputed
domain names. As of
Under Policy ¶ 4(c)(ii), if Respondent demonstrates it is
commonly known by the disputed domain name, then it will have demonstrated
rights or legitimate interests in said name.
The Panel finds no evidence in the record suggesting that Respondent is
commonly known by the disputed domain
names. 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 “SL
Pace a/k/a Chris Carter.” Thus,
Respondent has not established rights or legitimate interests in the disputed
domain name under Policy ¶ 4(c)(ii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that it may consider the totality of the
circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that it is not
limited to the enumerated factors in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
In order to find bad faith registration and use pursuant to
Policy ¶ 4(a)(iii) it is not necessary that Respondent have put the disputed
domain names to any use. Failure to make
an active use of the disputed domain names can, in itself, be evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). In this instance, the Panel considers Respondent’s
inactive use to be evidence that Respondent has registered and used the
disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See DCI
S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding
that the respondent’s [failure to make an active use] of the domain name
satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com,
D2000-1228 (WIPO
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoocalender.com>, <yahooenspanol.com>, <yahooflights.com>, <yahoofoods.com>, <yahoomymail.com>, <yahoowebcam.com>, <vietnamyahoo.com>, and <voiceyahoo.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 9, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum