Yahoo! Inc. v. David Blanco
Claim Number: FA0908001280452
Complainant is Yahoo! Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan Henderson Farabow Garrett &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoo.tel>, registered with ARSYS INTERNET SL d/b/a NICLINE.COM.
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.
FERNANDO TRIANA, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 20, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 21, 2009.
On August 27, 2009, ARSYS INTERNET SL d/b/a NICLINE.COM confirmed by e-mail to the National Arbitration Forum that the <yahoo.tel> domain name is registered with ARSYS INTERNET SL d/b/a NICLINE.COM and that Respondent is the current registrant of the name. ARSYS INTERNET SL d/b/a NICLINE.COM has verified that Respondent is bound by the ARSYS INTERNET SL d/b/a NICLINE.COM 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 August 28, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 17, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 23, 2009, the National Arbitration Forum received an e-mail from a party purporting to represent Respondent, which will be referred to Other Correspondence, in which Respondent argues that it has not agreed to arbitration.
On September 28, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed FERNANDO TRIANA, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <yahoo.tel> domain name is identical to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <yahoo.tel> domain name.
3. Respondent registered and used the <yahoo.tel> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Through correspondence dated September 23, 2009, the
Attorney of Respondent submitted a written communication to the National
Arbitration Forum, by means of which said party emphatically insisted that this
Panel lacks of competence to rule the present case, pursuant to internal
provisions of the procedural Law of the
Regardless of the foregoing assertion, Respondent is hereby reminded that it expressly consented to be bound to the jurisdiction of the UDRP when it executed the Registration Agreement with the Registrar implying this that Respondent is legally linked by the ARSYS INTERNET SL d/b/a NICLINE.COM registration agreement. Thus, Respondent is compelled to revise it and be properly informed of its content and implications, before making pointless contentions.
For better reference of the parties, clause Nº 8th of the agreement executed by Respondent and ARSYS INTERNET SL d/b/a NICLINE.COM., provide as follows in Spanish language:
8.1 El cliente y/o titular se compromete a aceptar cualquier posible requerimiento de arbitraje por el registro de un nombre de dominio y a someterse a la Normativa reguladora de resolución de conflictos de nombres de dominio aprobada por la ICANN, incluso en la resolución de conflictos que pudiera surgir durante los periodos denominados Sunrise Period y Land Period, denominada en estos últimos casos “Sunrise Dispute Resolution Polity”.
Esta normativa reguladora de la resolución de conflictos de nombres de dominio (DOMAIN NAME DISPUTE RESOLUTION POLICY) vincula a este contrato general de nombres de dominio y expone los términos y las condiciones con respecto a un conflicto entre el titular y otra parte, distinta de arsys.es sobre el registro y uso de un nombre de dominio de Internet registrado por el cliente y/o titular.
Las acciones se llevarán a cabo de acuerdo con la Política uniforme de solución de controversias en materia de nombres de dominio aprobada el 26 de agosto de 1999 por la ICANN disponible en www.arsys.es/avisos-legales/politica.htm, y las normas adicionales del proveedor del servicio de investigación de resolución de conflictos administrativo seleccionado.
8.2 Ni arsys.es, ni el Registrador, ni el Registry correspondiente se responsabilizará de los perjuicios que se puedan ocasionar si un nombre de dominio se encontrara inmerso en un proceso de resolución de conflictos, tanto a nivel de funcionamiento técnico como administrativo, ni del resultado del mismo.
8.3 arsys.es no actuará como arbitro para resoluciones de disputas entre el solicitante y terceras personas por el uso del nombre de dominio.
8.4 El cliente y/o titular para la resolución de conflictos de nombres de dominio, conforme a lo dispuesto en su normativa reguladora, se someterá, sin perjuicio de cualquier otra jurisdicción que le pueda ser aplicable, a la jurisdicción de los juzgados del domicilio del titular (según los datos del whois) o a la del domicilio de la oficina principal del registrador” 
Furthermore, the Panel reminds Respondent that the present dispute is not being litigated before a Court of the Kingdom of Spain and therefore, internal provisions of the legislature of said country, the Province of Asturias or the city of Oviedo, can not be enforced within this case, despite the nationality of Respondent or its reluctance to recognize the jurisdiction of this Panel.
b) REQUIRED LANGUAGE
Upon notification of the dispute, the Registrar refused to verify the Respondent’s identity. Upon subsequent request, the Registry did verify Respondent’s identity, and the National Arbitration Forum commenced the case. Then, after the commencement of the case by the National Arbitration Forum, correspondence was received from the Registrar that stated that the language of the Registration Agreement was in Spanish.
In view of this fact, because the pertaining information was received from the Registrar only after the case was commenced, the Panel decides to continue the case with the English-language submission of the Complaint, pursuant to Rule 11 of the Policy.
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 first element of the paragraph 4 (a) of the Policy requires existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in many jurisdictions of the world.
Complainant established in this
proceeding that it has rights to the YAHOO! marks through proof of registration
with the USPTO and other Trademark Offices around the world, including the one
The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force give the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a trademark, it is surrounded by a presumption of existence of sufficient distinctive force, and the owner is granted with an exclusive right over the trademark, which entitled him to prevent any third party from using the registered sign or any other sign confusingly similar to it.
In fact, Complainant has provided evidence of
several registrations for the YAHOO! marks in several jurisdictions (primarily for
purposes of this case, in the
The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Complainant trademark´s registrations appear to be incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated services.
Respondent has the burden of refuting this assumption and in this case, it has failed to contest Complainant's assertions regarding its trademark rights. Therefore, the Sole Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights of the cited trademarks.
Before establishing whether or not the disputed domain name is confusingly similar to the Complainant’s registered trademarks, the sole panelist wants to point out that the entirety of the mark YAHOO! is included in the Respondent Domain Name <yahoo.tel>. At this point, it is vital to set forth that the domain name in dispute is essentially identical and confusingly similar with Complainant´s trademarks, duly proven within this administrative procceeding under Exhibits “7” and “8”.
In connection to the above, the
Panel finds that the domain name <yahoo.tel> comprises
in a whole Complainant’s YAHOO! mark, and adds only the gTLD .TEL. Several UDRP
Panels have consistently held that domain names consisting of a
Furthermore, the Panel wants to point out that the omission of the exclamation point “!” of Complainant’s YAHOO! mark in the Domain Name is irrelevant, not only because exclamation points are not permitted in domain names, but also, and foremost, because the dominant portion of Complainant’s mark is YAHOO!, so the Domain Name would be confusingly similar even if exclamation points were permissible. Notably, even if exclamation points were permitted, it’s absence would not sufficiently differentiate the Complainant’s mark and the at-issue domain name to cause the Panel to reach an alternative conclusion. Therefore, the absence of this punctuation, does not change the analysis under Policy ¶ 4(a)(i).
Therefore, the Domain Name <yahoo.tel> is undoubtedly identical and confusingly similar to the marks of Complainant pursuant to the Policy paragraph 4(a)(i).
In view of the foregoing, the sole Panelist concludes that this evidence establishes Complainant’s rights in the YAHOO! trademarks for purposes of Policy ¶ 4(a)(i). This because ICANN panels have recognized that reproducing a trademark in its whole is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark; indeed, the addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the Complainant's registered trademark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Paragraph 4 (c) of the Policy, determines that the following circumstances in particular but without limitation, if found by the sole panelist to be present, shall demonstrate the Respondent’ s rights or legitimate interest to the domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Before shifting the burden to Respondent, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant asserts that Respondent has no rights or legitimate interests in the <yahoo.tel> domain name and Respondent has allowed those assertions to go uncontested. Complainant met its burden of establishing a prima facie case, which shifts the burden to Respondent to articulate rights and legitimate interests in the domain name. Since Respondent failed to proffer either evidence or an argument in support of such rights or interests, the Panel is permitted to assume that Respondent has no such rights or legitimate interests., 
Furthermore, Respondent’s failure to submit a Response in this proceeding allows all reasonable inferences of fact to be drawn in Complainant’s favor, due to the fact that in the absence of a response, it is appropriate to accept as true all allegations of the Complaint as far as they are duly supported in evidence.
After making an investigation made ex officio on October 13, 2009, the sole panelist has found the following:
· Complainant is using its trademark in the main domain name that it owns, <yahoo.com>:
· Respondent uses the <yahoo.tel> domain name to divert Internet traffic to a personal website developed and operated by him, seeming to be a commercial website designed to offer Project Management services.
The domain name in dispute links consultants to the domain <davidblancoramos.es>, attracting more Internet users to its commercial website by capitalizing on Complainant’s famous YAHOO! mark. Thus, Respondent’s diversionary use of the domain name does not represent a connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it does not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Taking into consideration the aforementioned and bearing in mind that Respondent failed to provide a response to the Complaint, the Panel holds that the Respondent is not affiliated with, licensed by, in privity with, has not been given any permission to use the YAHOO! marks by Complainant and is not otherwise in any way connected with Complainant or its affiliates. Consequently, the Panel concludes that Respondent has no business connection with Complainant and, therefore, is not an authorized user of the YAHOO! mark. Moreover, considering the notoriety and fame of the YAHOO! marks, it is highly unlikely that anyone other than Complainant would be commonly known by the mark or a confusingly similar version thereof. The Panel logically knows Respondent only as DAVID BLANCO from Spain, as there is no evidence that Respondent is commonly referred to by the <yahoo.tel> domain name. Therefore, Respondent has no rights or legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii).
On this particular issue, the Panel deems appropriate to mention that Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii), bearing in mind that Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name, making incumbent for Respondent to come forward with concrete evidence rebutting this assertion because this information is uniquely within the knowledge and control of the Respondent
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <yahoo.tel> domain name and thus, Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent has acted in bad faith. The sole Panelist has considered the fact that Respondent has failed to evidence its legitimate rights or interest in the disputed domain name. Notwithstanding the aforementioned, the sole Panelist will evaluate Complainant assertions and evidence regarding Respondent bad faith in the registration of <yahoo.tel> domain name.
According to paragraph 4 (b) of the Policy the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Circumstances surrounding the case make it clear that Respondent knew that the YAHOO! mark was of value to its rightful owner. First, the YAHOO! mark has developed into one of the most famous marks associated with the Internet by way of the mark’s use on the highly popular <yahoo.com> website as seen in the Exhibits provided by Complainant. Because of the established identity of the YAHOO! mark, Respondent had at the very least constructive knowledge of Complainant’s rights in the mark. Second, Respondent’s <yahoo.tel> domain name is a slight variation of Complainant’s domain name, making evident that Respondent not only wanted to profit from Complainant’s YAHOO! mark but that Respondent specifically sought a targeted segment of Complainant’s Internet audience. Respondent attempts to capture Internet users that include the suffix .TEL instead of the generic top level .COM. Therefore, circumstances indicate that Respondent was fully aware of Complainant’s valuable interests in the YAHOO! mark prior to registering the subject domain name. Hence, Respondent registered the domain names in bad faith under Policy ¶ 4(a)(iii).
Furthermore, Respondent’s diversionary use of the <yahoo.tel> domain name was done with a profit motive. Respondent uses the domain name to ensnare Internet users searching for Complainant’s services. Internet users that mistype the termination of Complainant’s domain name are linked to Respondent’s website, which promotes corporate services, and users are likely to be confused as to Complainant’s affiliation or level of sponsorship. Respondent’s use fits squarely under the bad faith circumstance listed in Policy ¶ 4(b)(iv). Therefore, Respondent uses the <yahoo.tel> domain name in bad faith.
Finally for the sole panelist it is clear that Respondent’s registration of the Domain Name constitutes bad faith under Section 4(b)(i) because Respondent registered the Domain Name primarily to sell, rent, or otherwise transfer it for valuable consideration in excess of his documented out-of-pocket expenses. As shown and proved, Respondent contacted Yahoo! Inc. immediately after registering the Domain Name, subsequently refused to transfer the Domain Name to Yahoo! for reimbursement of the registration fee, and indicated that he expected to be paid much more for the Domain Name than the registration fee.
Therefore, due to the study made by this Panel, it is considered that Complainant has met the requirements of Paragraph 4 (a)(iii) of the Policy, in demonstrating Respondent’s bad faith in the registration of the <yahoo.tel>, domain name, and hence, Policy ¶ 4(a)(iii) has been satisfied.
The Panel has found that the Complainant has several trademark registrations identical or confusingly similar to the domain names in dispute. That the Respondent lacks of legitimate interest. That the domain name was used in bad faith. Therefore, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ordered that the <yahoo.tel>, domain name be TRANSFERRED from Respondent to Complainant.
FERNANDO TRIANA, Esq.
Dated: October 14, 2009
National Arbitration Forum
 See also Janus Int’ l Holding Co. v. Rademacher, D2002-0201(WIPO March 5,2002).
 See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., D2000-0047 (WIPO March 29, 2000).
 See American Registry of Diagnostic Medical Sonographers Inc. v. Ardms.net, FA 114279 (Nat. Arb. Forum June 24, 2002) (finding the domain name <ardms.net> identical to the mark ARDMS because the “domain name reflects [c]omplainant’s mark in its entirety and is phonetically identical. The addition of a generic top-level domain, such as “.net,” is inconsequential when conducting a ¶ 4(a)(i) analysis.”);
 See, e.g., Yahoo! v. Hussaini, FA 1222425 (Nat. Arb. Forum Oct. 30, 2008)
 See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name);
 See also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondent’s failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
 . See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
 See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001), finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name; see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000, finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks.
 For notoriety purposes of the YAHOO! mark, see the following administrative decisions, among others:
· Yahoo! v. Pham, FA 109699 (Nat. Arb. Forum May 21, 2002)
· Yahoo! v. Silicon City et al., D2000-1711 (WIPO Feb. 19, 2001)
· Yahoo! v. M. & A. Enterprises, D2000-0748 (WIPO Nov. 3, 2000)
· Yahoo! v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004)
 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
 Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
 See, e.g., Yahoo! v. Cho, FA 146934 (Nat. Arb. Forum Apr. 16, 2003) (“Respondent acted in bad faith when he offered to sell the domain name <yahooplus.com> to Yahoo! for more than his documented out-of-pocket expenses. Policy ¶ 4(b)(i).”); Yahoo! v. Ratnayake, FA 1142577 (Nat. Arb. Forum March 24, 2008) (holding respondent’s offer to sell the domain names <yahoomail.ws> and <yahooadvertiser.com> to Complainant constitutes bad faith); Yahoo! v. Sooksripanich D2000-1461 (WIPO January 30, 2001) (finding “clear evidence of bad faith use” respondent’s offer to sell the domain names <yahooforecast.com> and <yahoopublishing.com>, among others, to Complainant at a profit).