Yahoo! Inc. v. Elephant Orchestra, a.s. c/o Jan, Barta
Claim Number: FA0905001262235
Complainant is Yahoo!
Inc. (“Complainant”), represented by David
M Kelly, of Finnegan,
REGISTRAR
The domain name at issue is <yahoomailcom.com>, registered with Moniker Online Services.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On May 20, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 9, 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@yahoomailcom.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <yahoomailcom.com> domain name is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <yahoomailcom.com> domain name.
3. Respondent registered and used the <yahoomailcom.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc., is the owner of the YAHOO! mark, registered with the United States Patent and Trademark
Office ("USPTO") (i.e. Reg. No. 2,403,227 issued
Respondent registered the <yahoomailcom.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 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.
The Panel concludes that Complainant has satisfied Policy ¶
4(a)(i) based on the registration of its YAHOO! mark with the USPTO and other governmental trademark
authorities throughout the world. See Google, Inc. v.
DktBot.org, FA 286993 (Nat. Arb. Forum
Complainant contends that Respondent’s <yahoomailcom.com> domain name is confusingly similar to Complainant’s YAHOO! mark. The <yahoomailcom.com> domain name incorporates the distinctive portion of Complainant’s YAHOO! mark with the deletion of the exclamation point, the addition of the generic terms “mail” and “com” and the affixation of a generic top-level domain. The Panel finds that the omission of an exclamation point is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis since punctuation marks are not acceptable characters in domain names. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Additionally, the generic terms “mail” and “com” fail to alleviate the confusing similarities between Respondent’s <yahoomailcom.com> domain name and Complainant’s YAHOO! mark, especially because the term “mail” describes Complainant’s business. The Panel also notes that the appended generic top-level domain “.com” is insignificant for the purposes of a Policy ¶ 4(a)(i) analysis. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Dell Inc. v. Steve Kerry d/b/a North West Enterprise Inc., FA 705267 (Nat. Arb. Forum June 21, 2006) (“[T]he Panel finds that the addition of generic top level domain names “.com” and “.net” in various places of the domain name does not negate the confusingly similar aspects of the disputed domain names under Policy ¶ 4(a)(i).”). The Panel concludes that Respondent’s <yahoomailcom.com> domain name is confusingly similar to Complainant’s YAHOO! mark under Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has asserted that Respondent lacks rights and legitimate interests in the <yahoomailcom.com> domain name under Policy ¶ 4(a)(ii). The Panel finds that Complainant has successfully alleged a sufficient prima facie case supporting its assertions. Thus, Respondent has the burden of proving its rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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.”). In these proceedings, Respondent has failed to respond to the allegations against it. Based on this failure the Panel may presume that Complainant’s contentions in the Complaint are true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). However, the Panel chooses to examine the record to determine whether Respondent has any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The disputed domain name resolves to a website featuring click-through search category links which further resolve to various third-party websites. Complainant contends that such use is in direct competition with Complainant’s business. The Panel presumes that Respondent is likely profiting from such use. Therefore, the Panel concludes that such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or (iii), respectively. See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services).
Moreover, Complainant contends that Respondent is not
commonly known by the <yahoomailcom.com> domain name. The WHOIS information lists registrant as
“Elephant Orchestra, a.s. c/o Jan, Barta.” This information suggests that Respondent is
not commonly known by the disputed domain name.
This, together with the lack of evidence in the record to the contrary,
establishes the Panel’s conclusion that Respondent is not commonly known by the
<yahoomailcom.com> domain name pursuant to 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).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent is using a domain name which is confusingly similar to Complainant’s YAHOO! mark to attract Internet users to a website containing click-through search engine links, which operate in direct competition with Complainant’s search engine services. The Panel concludes that appropriating Complainant’s YAHOO! mark to divert Internet users is likely to disrupt Complainant’s business and that such use constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Complainant further contends that Respondent’s registration
and use of the <yahoomailcom.com> domain name constitutes bad
faith under Policy ¶ 4(b)(iv) because Respondent
intentionally attempts to attract Internet users, for financial gain, to its
domain name by creating a likelihood of confusion with Complainant and its
YAHOO! mark.
Additionally, the domain name and resolving website contain click-through
search links which further resolve to various third-party websites. The Panel presumes that Respondent is
profiting from such use. See Dell Inc. v. Innervision Web Solutions, FA 445601
(Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under
Policy ¶ 4(b)(iv) where the respondent was using the
<dellcomputerssuck.com> domain name to divert Internet users to
respondent’s website offering competing computer products and services); see also University of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb.
Forum Mar. 21, 2006) (“Respondent is
using the disputed domain name to operate a website which features links to
competing and non-competing commercial websites from which Respondent
presumably receives referral fees. Such
use for Respondent’s own commercial gain is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv).”). Therefore, the Panel concludes that
Respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
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 <yahoomailcom.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: June 24, 2009
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