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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@weyahoo.com 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.
RELIEF SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. 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.
FINDINGS
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.
DISCUSSION
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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