Claim Number: FA0209000124852
Complainant is Yahoo! Inc., Sunnyvale, CA (“Complainant”) represented by David M. Kelly, of Finnegan Henderson Farabow Garrett & Dunner L.L.P. Respondent is Thomas Klein, Schaumburg, IL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <weyahoo.com>, registered with Network Solutions.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 9, 2002; the Forum received a hard copy of the Complaint on September 10, 2002.
On September 11, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <weyahoo.com> is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 1, 2002 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on October 1, 2002.
An Additional Submission by Complainant was received on October 7, 2002, and was timely filed.
On October 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant contends that the domain name at issue is confusingly similar to its famous mark; that the Respondent has no rights or legitimate interests in the domain name at issue; and that the domain name at issue was registered in bad faith by the Respondent.
The Respondent contends that the domain name at issue is not confusingly similar to Complainant’s famous mark because it is a generic term for a search engine; that the domain name at issue was a product of creative thinking on Respondent’s part giving him rights and a legitimate interest in the domain name; and that he never offered the domain name for sale and therefore did not register the domain name in bad faith.
C. Additional Submissions
The Complainant contends in its reply that the rights in its famous mark are in full force and effect, and that the mark has not been diluted in any way; reinforces its position that the Respondent has no rights or legitimate interests in the domain name at issue, pointing out that no evidence has been presented to support Respondent’s contention; and also reinforcing its position that the Respondent registered the domain name at issue in bad faith.
The Complainant is engaged in the business of global Internet communications, media and commerce. They offer a network of services, including, but not limited to, searching, directory, information, communication, and on-line shopping services for a variety of goods, including trading cards.
The Complainant first used its YAHOO! mark in commerce in 1994, and also owns the trademark and service mark DO YOU YAHOO!?, which it has used to promote its goods and services since 1996. The Complainant owns trademark rights for both of these marks for a variety of uses, the first one being approved in 1995.
In addition to its website at <yahoo.com>, the Complainant operates numerous country or region specific websites, all incorporate the Complainant’s famous mark in the domain name.
The Respondent does not reveal by admission or evidence what type of business he is engaged in. He does state he holds several trademarked names in the State of Illinois. Complainant’s Exhibit 11 establishes that the domain name at issue initially resolved to an active website for Barrington Square Cards, which appears to be a company engaged in the business of selling trading cards.
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.
Identical and/or Confusingly Similar
The domain name at issue contains the Complainant's YAHOO! mark with the addition of the word "we" which does not affect the finding that the domain names are confusingly similar. E.g., ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that the “domain name MYSPORTSCENTER.COM registered by Respondent is confusingly similar to Complainant’s SportsCenter mark…”).
Additionally, the domain name at issue is so confusingly similar that reasonable Internet users may assume that the domain name is somehow affiliated with Complainant. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).
Rights or Legitimate Interests
The Respondent has not provided any evidence that it is known by the name YAHOO! or WEYAHOO, or that they own any trademarks or service marks for YAHOO! or WEYAHOO. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Also, the Respondent has directed the domain name at issue to a page that resolves to what appears to be the Respondent’s secondary website, which promotes Respondent’s trading card business. This usage does not constitute a bona fide offering of goods and services and therefore does not establish that Respondent has rights or legitimate interests in the domain name at issue. See, e.g., The Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods); see also North Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).
Registration and Use in Bad Faith
The Respondent states that he came up with the domain name at issue by playing on the Complainant’s "Do You Yahoo!?" trademark. This clearly indicates that the Respondent had prior knowledge of the Complainant’s mark prior to the registration of the domain name. See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) (holding that the Respondent should have known of the Complainant’s marks at the time of registration given the widespread use and fame of the Complainant’s “Deutsche Bank” mark).
Further, as the domain name at issue resolves to a website selling trading cards, it would appear that the Respondent registered the domain names at issue with the intent of creating confusion as the source and/or sponsorship of the Complainant’s website. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000)( finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that website).
As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain name WEYAHOO.COM be transferred from the Respondent to the Complainant.
Honorable Paul A. Dorf (Ret.) Panelist
Dated: October 30, 2002
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