Yahoo! Inc. v. Web Master a/k/a MedGo
Claim Number: FA0210000127717
Complainant is Yahoo! Inc., Sunnyvale, CA (“Complainant”) represented by David Kelly, of Finnegan Henderson Farabow Garrett & Dunner L.L.P.. Respondent is Web Master a/k/a MedGo, Encino, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahgo.com>, registered with Go Daddy Software.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 9, 2002; the Forum received a hard copy of the Complaint on October 10, 2002.
On October 10, 2002, Go Daddy Software confirmed by e-mail to the Forum that the domain name <yahgo.com> is registered with Go Daddy Software and that the Respondent is the current registrant of the name. Go Daddy Software has verified that Respondent is bound by the Go Daddy Software 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 October 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 30, 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 29, 2002.
Complainant’s additional submissions were received on November 4, 2002. Respondent’s additional submissions were received on November 11, 2002.
On November 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a Delaware corporation with its principal place of business at Sunnyvale, California.
Complainant is a global Internet communications, media, and commerce company that delivers a branded network of comprehensive searching, directory, information, communication, shopping services and other online activities and features to millions of Internet users daily.
Complainant is the owner of the service mark and trademark YAHOO!, as well as the trade name YAHOO! and the domain name <yahoo.com> (the “YAHOO! Marks”). The YAHOO! mark has been in use since at least as early as June 1994, and is one of the most recognized brands in the world. In 2002, Interbrand ranked the YAHOO! Mark within the top 100 brands worldwide, with a value of nearly US $3.8 billion. Complainant’s revenues in 2001 were $717,422,000.00.
By virtue of the arbitrary nature and hence the inherent strength of the YAHOO! mark as applied to Complainant’s vast array of web-based services; the millions of visitors to the YAHOO! network of websites every day; the millions of links to the YAHOO! site from third-party websites; and Complainant’s extensive use, promotion, and registration of its YAHOO! mark, the YAHOO! mark and <yahoo.com> domain name have become famous.
Complainant’s trademark rights in the mark YAHOO! and variations thereof, based on its trademark filings and on its common law rights acquired through the use of the mark, long predate Respondent’s September 24, 2001, registration of the Domain Name <yahgo.com>.
Respondent misappropriated Complainant’s goodwill when it registered the domain name <yahgo.com>, which is confusingly similar to Complainant’s famous YAHOO! Marks.
The Domain Name is a typographical misspelling of the YAHOO! mark, as it differs from the term YAHOO by only one letter. This is typosquatting.
Given the fame of the YAHOO! Marks and the fact that Respondent is using the Domain Name for a competing search engine website, there is no question that Respondent knew of Complainant’s rights in the YAHOO! Marks when it registered the Domain Name.
Respondent’s registration and use of the Domain Name are likely to confuse Internet users into mistakenly believing that Respondent and its search engine services are offered, authorized, or sponsored by Complainant. Respondent intended to profit, and may have in fact made a profit, from its use of the Domain Name for a commercial website.
On September 17, 2002, Complainant’s counsel sent an e-mail to Respondent regarding its registration and use of the infringing Domain Name. A series of e-mail correspondence then occurred between the parties concluding with an offer by Complainant to pay $500.00 to Respondent for transfer of the Domain Name registration, which was rejected by Respondent.
Because Respondent’s registration and use of the Domain Name trade on Complainant’s goodwill and infringe on Complainant’s rights in its famous YAHOO! Marks, Respondent’s use of the Domain Name to direct Internet traffic to a directly competing, commercial website cannot constitute a bona fide use of the Domain Name pursuant to Policy ¶ 4(c)(i).
Respondent is not and has not been commonly known by the Domain Name.
Respondent is not making legitimate noncommercial or fair use of the Domain Name, without intending to mislead and divert consumers or to tarnish Complainant’s YAHOO! marks for commercial gains.
Respondent’s registration and use of the Domain Name meet the bad faith element set forth in Policy ¶ 4(b)(iv). Specifically, Respondent used the Domain Name to intentionally divert, for commercial gain, Internet users to its directly competing search engine website by creating a likelihood of confusion with Complainant and its YAHOO! Marks as to the source, sponsorship, affiliation, and endorsement of Respondent’s <yahgo.com> website.
Respondent’s registration and use of the Domain Name meets the bad faith element set forth in Policy ¶ 4(b)(iii), because Respondent is unfairly competing with Complainant and disrupting Complainant’s business.
Respondent’s use and registration of the Domain Name meet the bad faith element of
Policy ¶ 4(b)(i), because Respondent registered the Domain Name primarily
to sell, rent, or otherwise transfer its rights for valuable consideration in excess of Respondent’s documented out-of-pocket expenses.
Respondent’s activities clearly constitute “typosquatting” in bad faith.
No justification, excuse, or plausible explanation exists for Respondent’s unauthorized registration of the Domain Name because it has no value apart from Complainant’s famous YAHOO! Marks other than to trade on Complainant’s goodwill.
Yahgo was formed in September of 2001, and operates as a pay-per-click engine and Real Estate Photography service.
On September 22, 2001 Respondent noticed the pay-per-click search engine <seekle.com> for sale at <eBay.com>. Respondent contacted seller that day that later agreed to program a similar site for Respondent, when the bid amount had become more than Respondent wanted to pay for <seekle.com>.
On September 24, 2001, Respondent, following the model of <seekle.com> used DirectNic’s name finding program to find an available name that had six or fewer letters and containing one of the major search-related action words, those being “go”, “find” and “seek” in the farthest-left or farthest-right position of the domain name. The program returned results that indicated “yahGo.com” was available. Respondent proceeded to register the domain name on September 24, 2001, two day after contacting the owner of <seekle.com> expressing an interest in obtaining a search engine.
Yahgo has been in continuous operation from its inception, has 13,000 members virtually all of which became members prior to September 1, 2002, well before any notion that YAHOO! was going to file a domain name dispute against Respondent.
Regarding paragraph 4(c), section “i” of the Policy, evidence is presented that the Yahgo site has been used in conjunction with a bona-fide real estate photography service well prior to the filing of the Complaint by Complainant.
The pronunciation of “Yahgo” has been extremely clear from the first day of Yahgo going online. Even our logo incorporates the pronunciation. It seems impractical that any person would confuse the pronunciation of “Yahgo” with “Yahoo.”
Yahgo has never been offered for sale to any person, corporation, or entity. Complainant made first intention to offer money for the sale of Yahgo. There is no evidence that Respondent registered <yahgo.com> domain name for the purpose of selling its rights to Complainant.
There has never been an attempt to “pass off” the Yahgo site as being in any way associated with YAHOO!. There is not now, nor has there ever been, anything remotely similar to the brandings, coloring, graphics, logos, etc. between the two sites.
In regard to the charge of Respondent engaging in “typo-piracy”, there is a statistically insignificant chance of accidentally typing “yahgo” instead of “yahoo”, and would not qualify as a common error or spelling mistake in their Internet search. A double error would have to occur.
On October 10, 2002 YAHOO! announced its new “Web Match” method of search. It combines searching capabilities of both YAHOO! and Google. These two companies may want <yagho.com> as a domain name to display these merged results.
Google has imposed penalties against the Yahgo site as Respondent noticed a significant loss in Page Rank to a “four” out of “ten” for the front page, and a Page Rank of “0” to nearly all of the interior pages. It is not inconceivable to believe that the value of the Yagho site was intentionally devalued, in the hopes of a cheap acquisition. Respondent renewed <yahgo.com> on September 15, 2002. Respondent promptly received the initial letter from Complainant on September 17, 2002. It is the opinion of Respondent that Complainant was waiting to see if the name would not be renewed, after being devalued as described, so that they might scoop it up; when they realized that the domain name was indeed renewed, they immediately initiated contact with Respondent, attempting tactics that would eventually lead to an eventual hoped-for victory in a domain name dispute proceeding. This constitutes reverse domain name hijacking.
C. Additional Submissions
Complainant’s Additional Submission
Respondent claims that he selected the domain name <yahgo.com> by entering the words “go”, “find”, and “seek” into DirectNic’s name finding program. Respondent’s Response leads the Panel to believe that DirectNic suggested the <yahgo.com> domain name to Respondent. Not only does Respondent fail to directly state that DirectNic came up with the <yahgo.com> name, Respondent’s contention is not supported by any documentary evidence. Complainant conducted searches on DirectNic on October 30, 2002, using the same search words as Respondent contends that it used, but “yahgo” was not returned even though <yahgo.net>, <yahgo.org>, <yahgo.us> were available. Respondent assertions are not believable.
Complainant refutes Respondent’s contentions that the domain name and trademark are not confusingly similar.
Respondent’s claim that he has a legitimate interest in the domain name because the website has been operational for approximately one year, that he has invested in the website, and has added a disclaimer to his website, does not establish a legitimate interest since Respondent’s infringing use for a period of time does not excuse or justify Respondent’s infringement.
Respondent’s Additional Submission.
Respondent contends that it and Complainant are not competitors because their methods of operation are not identical.
Respondent contends that its real estate photography services do not compete with Complainant’s offerings of real estate for sale.
Respondent refutes Complainant’s contentions regarding its search on DirectNic. Respondent contends that the search did turn up <yahgo.com> and if Complainant’s search did not, then Complainant did not use the right tool or used it incorrectly.
Respondent contends that placing a disclaimer to its website prior to receiving notice that there was a case filed against Respondent, is evidence of good faith.
Respondent has not, and does not admit that the domain name in question is confusingly similar, or directly competes with YAHOO!, or that Respondent acted improperly with knowledge of Complainant’s rights.
1. Complainant is a global Internet communications company, located in California, offering numerous services to Internet users through its main site located at <yahoo.com>. The website is one of the leading Internet websites worldwide utilized by millions of users every day.
2. Complainant is the owner of the service mark and trademark YAHOO!, as well of the trade name YAHOO!. The numerous registrations for YAHOO!, were granted by the United States Patent and Trademark Office in the years 1997, 1998, 1999 and 2000.
3. By virtue of the arbitrary nature the strength of the YAHOO! mark, Complainant’s promotion and utilization of the mark, the United States Patent and Trademark Office registrations, and the extensive use of <yahoo.com> on the Internet, YAHOO has become a famous mark.
4. Respondent is Web Master a/k/a MedGo located in Encino, California. This appears to be a name used in business by M. Van Owen, who refers to himself as the Respondent in the Response.
5. Respondent registered the domain name <yahgo.com> on September 24, 2001.
6. Respondent renewed the domain name registration on September 15, 2002.
7. At some date after September 24, 2001, Respondent began operating a “pay-per-click” search engine covering a number of subjects including “business”, “careers”, “computers”, “electronics”, “entertainment”, “family”, “finance”, “health”, “home”, “music”, “shopping”, “sports”, “toys” and “travel” as well as “Yahgo real estate services”.
8. On September 17, 2002, Complainant’s counsel sent an e-mail to Respondent stating that Respondent’s domain name infringed upon Complainant’s marks.
9. A series of e-mails followed between Complainant’s counsel and M. Van Owen for Respondent wherein the parties discussed the merits of their positions that resulted in an offer of $500.00 on part of Complainant as consideration for the transfer of the domain name registration to Complainant; the offer was refused by Respondent. Complainant initiated the offer. No inference of bad faith is to be made against Respondent on account of his inquiry in an e-mail as to how much Complainant would offer for the domain name transfer.
10. The domain name <yahgo.com> is confusingly similar to Complainant’s trademark, YAHOO!.
11. Complainant has rights in the word, YAHOO!.
12. Respondent does not have rights or legitimate interests in the domain name <yahgo.com>.
13. Respondent registered and used the domain name in bad faith.
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
Complainant has rights in the trademark and service mark, YAHOO!, due to the registrations with the United States Patent and Trademark Office. As a general rule, Panels have found that when a complainant shows a registered trademark under United States law, this alone constitutes sufficient rights to satisfy the requirements of Policy ¶ 4(a)(i). See Aetna Inc. v. Jacoby Partners 1999-2, L.L.C., FA 125816 (Nat. Arb. Forum Nov. 22, 2002).
Complainant contends that registration of the domain name <yahgo.com> constitutes “typosquatting” as defined in Yahoo! Inc. and GeoCities v. Data Art Corp. et al., D2000-0587 (WIPO Aug. 10, 2000) which found that when a domain name consists of typographical error variations and misspellings of the claimant’s trademark, this amounts to “typosquatting”, a practice that has been condemned and been found to be confusingly similar to the marks which they mimic.
“The misspelling of words in another’s mark does not create a distinct mark.” See Google, Inc. v. Abercrombie 1, FA 101579 (Nat. Arb. Forum Dec. 10, 2001). That case determined that <googld.com> was confusingly similar to complainant’s GOOGLE mark “because it has merely replaced the “e” in Google with a “d”. The case cited Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the complainant’s marks. The same is true of deleting one letter or adding a letter to a trademark. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept 5, 2000); Reuters Ltd. v. Global Net, D2000-0441 (WIPO July 13, 2000).
This case involves the domain name <yahgo.com> to be compared with the trademark, YAHOO! and YAHOO. The only difference between the two is the substitution of the letter “g” in the domain name for the letter “o” in the trademark. The Panel finds little difference in this factual situation and the one decided in Google, Inc. v. Abercrombie.
The Panel notes that prior Panels have found “yahpoo.com”, “yahop.com”, “yahjoo.com”, and “yaghoo” to be confusingly similar to YAHOO. See Yahoo! Inc. v. Eitan Zviely, D2000-0273 (WIPO June 14, 2000); and “yaoho.com”, “iahoo.com” “yafoo.com” and “yanoo.com” to be confusingly similar to YAHOO. See Yahoo! Inc. v. Data Art Corp., D2000-0587 (WIPO Aug. 10, 2000). Respondent contends that these authorities ought not be considered in this proceeding because in each of them there were multiple domain name listings and clear evidence of abuse not present in this case. There is some justification in Respondent’s position. Respondent only registered one domain name, he contends, and should be treated differently than Respondents such as Zviely and Zuccarini. But in the case of Yahoo! Inc. v. David Murray, D2000-1013 (WIPO Nov. 17, 2000) the respondent registered only one domain name. It was <yawho.com>. The Panel found that <yawho.com> was confusingly similar to YAHOO. The only difference is the one letter substitution. Respondent contends that <yahgo.com> is not pronounced the same as YAHOO, and thus the domain name and trademark are not confusingly similar. The Panel is not persuaded this contention justifies Respondent’s position that the domain name is not confusingly similar to the trademark.
The Panel finds that based upon the facts of this proceeding and the authorities examined, that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant shows that it has never authorized or licensed Respondent to use Complainant’s registered marks. Neither Complainant nor Respondent contends that Respondent has any registered trademarks or service marks of any kind. Complainant contends that it has exclusive rights to use its registered marks. See Am. Online v. Tencent Communications Corp. FA93668 (Nat. Arb. Forum Mar. 21, 2000). As a result of Complainant’s showing, and Respondent’s apparent lack of rights and legitimate interests in the domain name, the burden must shift to Respondent to demonstrate Respondent’s rights and legitimate interests in the domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Respondent may demonstrate its rights and legitimate interests in the domain name by any of the methods set out in Policy paragraph 4(c).
Respondent cannot prevail under Policy ¶ 4(c)(iii) because Respondent operates the site at <yahgo.com> for commercial purposes.
Respondent cannot prevail under Policy ¶ 4(c)(ii) since Respondent says that it discovered the existence and availability of <yahgo.com> on September 24, 2001 as a result of a DirectNic search and registered the domain name the same day. Respondent could not have been commonly known by the domain name prior to registration.
Respondent’s sole contention is that before any notice to it of the dispute, Respondent’s use, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services occurred. If proved, Respondent will prevail. See Policy ¶ 4(c)(i).
On this point, Respondent states in the Response as follows: “Addresses Section 4(a) ii; Section 4(c) i & Section 4(c) ii”…“Yahgo has been in continuous operation from its inception, and is not and has not been set up to direct to pornographic sites, etc. It has over 1300 members virtually all of which became members prior to September 1, 2002, well before any notion that YAHOO! was going to file a WIPO claim against the Respondent…Furthermore, regarding paragraph 4(c), section “i” of the Policy, evidence is presented that the Yahgo site has been used in conjunction with a bona-fide real estate photography service, well prior to the filing of a complaint by Complainant. The evidence clearly establishes that Respondent does use the Yahgo.com domain name in connection with the bona fide offering of services.”
Complainant responds to this contention by arguing that no bona fide offering of goods or services can be found when the use is an infringement of another’s trademark. Complainant cites to Madonna Ciccone p/k/a Madonna v. Dan Parisi and “Madonna.com”, D2000-0847 (WIPO May 28, 2001) which held that “use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods and services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”
There is no dispute that Respondent operated the site at <yahgo.com> for about a year before being contacted by Complainant with a notice of infringement. Complainant states that it was not aware of the website until shortly prior to its e-mail to Respondent. This delay makes no difference, Complainant contends, because at all times during the one year period of operation of the website, it was an infringing use which makes it improper from its inception. This could only be true if the use of the domain name is an “intentional infringement”.
Respondent contends that it had no intent to infringe upon Complainant’s marks. The domain name was chosen, according to Respondent by use of the DirectNic name finding program. Respondent says it was seeking a name with six or fewer letters and containing one of the major search-related action words, those being “go”, “find”, and “seek” in the farthest left or farthest-right position of the domain name. This search returned “yahGo.com” as available, according to Respondent. This random choice had nothing to do with YAHOO!, Respondent contends. Complainant doubts that Respondent’s explanation is credible. Complainant conducted a similar search using the DirectNic name searching program using the same words as Respondent says it used. Complainant’s search produced a lengthy computer-generated list of available domain names, but did not include the character string “yah”, let alone the name “yahgo”, in any of the suggested domain names even though “yagho.net”, “yahgo.us” and other yagho names were, in fact, available. Respondent goes on to state that even if Respondent received <yahgo.com> as a result, it would not excuse Respondent’s infringement.
Respondent did not submit copies of its search under the DirectNic program, or copies of a new search which produced <yahgo.com> by use of the same search terms. For Respondent to prove its contentions as to rights and legitimate interests, it must produce “concrete evidence” not “mere personal assertions”. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) wherein its was stated as follows: “Where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion. This information is uniquely within the knowledge and control of the respondent. Failure of a respondent to come forward with such evidence is tantamount to admitting the truth of complainant’s assertions in this regard.” Even if Respondent’s assertion that it received the domain name in response to a name search is true, this does not resolve the issue of whether Respondent knew that the domain name was an “intentional infringement” of the YAHOO mark during the use of the site.
Respondent did submit “concrete evidence” in the nature of a DirectNic name search in Supplemental Exhibit 6 of the Additional Submission using the search word “go”. All of the results began with “go” and nothing was returned which related in any way with the domain name <yahgo.com>. Respondent’s purpose in submitting the document is not explained, but it fails to support Respondent’s position in any manner helpful to Respondent’s case.
Respondent, being a Webmaster, certainly knew of YAHOO!. It must have recognized that <yahgo.com> would likely be confused with YAHOO and possibly constitute an infringement of Complainant’s mark. Respondent’s mere personal assertion that he thought it did not infringe upon YAHOO is not the kind of evidence that will prove a lack of “intentional infringement” as appears to be present in this dispute. The Panel finds, based upon the facts presented in this dispute proceeding, along with the proper inferences to be drawn from the facts, that Respondent’s use of <yahgo.com> from the date of inception to present constitutes an intentional infringement of Complainant’s mark, YAHOO, and as such does not represent a “bona fide” offering of goods and services under Policy ¶ 4(c)(i) under URDP precedent. See Yahoo! Inc. v. Microbiz, Inc. D2000-1050 (WIPO Nov. 7, 2000); Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001).
Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant bears the burden of proof on this issue. Complainant may present evidence of bad faith under any of the methods set out in Policy paragraph 4(b).
First, Complainant contends that Respondent registered the domain name primarily for the purpose of selling, renting or otherwise transferring the registration for a valuable consideration in excess of Respondent’s documented out-of-pocket costs. The facts are as follows. A series of e-mails were exchanged between the parties. Complainant initiated an offer to pay Respondent a sum of money to transfer the domain name. Respondent responded to this offer by asking how much Complainant was prepared to pay. Complainant stated that it would pay $500.00. Respondent refused this offer. Respondent argues that it was cleverly trapped into talking about costs for transfer. The Panel is sympathetic to Respondent’s position. The Panel does not view this factual situation as one upon which a finding under Policy ¶ 4(b)(i) can fairly be made in behalf of Complainant. See Open sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec.11, 2000).
Complainant next contends that Respondent used the domain name to intentionally divert, for commercial gain, Internet users to its directly competing search engine website by creating a likelihood of confusion with Complainant and its YAHOO marks as to source, sponsorship, affiliation, and endorsement of Respondent’s <yahgo.com> website and the search services offered at its website.
Both Complainant and Respondent operate search engines on the Internet. Complainant’s search engine is much larger and more developed than that of Respondent, but each search category listed on the <yahgo.com> website is also listed on the <yahoo.com> website. Though Respondent contends that the search engine sites are not alike because one is a “pay-per-click” search engine and the other is not. That in no way changes the fact that both are search engines catering to Internet users for commercial purposes. It would be difficult to conclude that the search engines are not directly competing for Internet users. By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv). See Yahoo! Inc. v. David Murray, D2000-1013 (WIPO Nov. 17, 2000) where it was stated, “The Respondent has registered a domain name that is contrived, yet visually and phonetically similar to the Complainant’s trademark. Absent some explanation by the Respondent, the Panel can think of no reason why the Respondent would choose a domain name so similar to the Complainant’s mark to a site which offers services similar to the Complainant, except to attract customers to Respondent’s site though potential confusion.”
On the issue of whether Respondent initially registered the domain name in bad faith, Complainant contends that Respondent had actual knowledge of Complainant’s YAHOO! marks when Respondent registered <yahgo.com>. Complainant cites Yahoo! Inc. v. Kelvin Pham, FA 109699 (Nat. Arb. Forum May 21, 2002) which found “Because of the famous and distinctive nature of Complainant’s YAHOO mark, [the respondent] is thought to have been on notice of the existence of Complainant’s mark at the time Respondent registered the infringing [domain name].” As stated earlier, Respondent, because of its status as webmaster and one who commenced an effort to start a search engine operation on the Internet, is found to have actual knowledge of YAHOO. Under such circumstances the famous and common notoriety of Complainant’s marks permits the inference of bad faith registration. See Victoria’s Secret v. Hardin, FA 96694 (Nat. Arb. Forum Mar. 31, 2001); Samsonite Corp. v. Colony Holdings, FA 94313 (Nat. Arb. Forum Apr. 17, 2000); Exxon Mobil Corp. v. Stephen Nurwono, FA 112532 (Nat. Arb. Forum June 20, 2002).
The Panel concludes that Complainant has proved the elements necessary to prevail under Policy ¶ 4(a)(iii).
It is the decision of the Panel that the domain name, <yahgo.com>, now registered to Respondent, Web Master a/k/a Medgo, be TRANSFERRED to Complainant, YAHOO! Inc.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 27, 2002
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