Yahoo! Inc. v. Domain Web
Claim Number: FA0210000128671
Complainant is Yahoo! Inc., Sunnyvale, CA, USA (“Complainant”), represented by David Kelly of Finnegan Henderson Farabow Garrett & Dunner L.L.P. Respondent is Domain Web, Guangdong Guangdong 515000, CHINA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kryahoo.net>, <koryahoo.com>, <wwwkryahoo.com> and <yahoomeil.com>, registered with iholdings.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 18, 2002; the Forum received a hard copy of the Complaint on October 21, 2002.
On November 20, 2002, iholdings.com confirmed by e-mail to the Forum that the domain names <kryahoo.net>, <koryahoo.com>, <wwwkryahoo.com> and <yahoomeil.com> are registered with iholdings.com and that Respondent is the current registrant of the names. iholdings.com has verified that Respondent is bound by the iholdings.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 November 21, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 11, 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 email@example.com, firstname.lastname@example.org, email@example.com and firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On December 27, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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 names be transferred from Respondent to Complainant.
1. Respondent’s <kryahoo.net>, <koryahoo.com>, <wwwkryahoo.com> and <yahoomeil.com> domain names are confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have rights to or legitimate interests in the <kryahoo.net>, <koryahoo.com>, <wwwkryahoo.com> and <yahoomeil.com> domain names.
3. Respondent registered and used the <kryahoo.net>, <koryahoo.com>, <wwwkryahoo.com> and <yahoomeil.com> domain names in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc., is a global Internet communications, media, and commerce company that delivers a branded network of comprehensive searching, directory, information, communication, shopping and other online activities and features to millions of Internet users daily. Complainant utilizes its mark in conjunction with various services it offers, for example: YAHOO! Mail, YAHOO! Chat, YAHOO! Classifieds, and YAHOO! Careers. Since as early as 1994, the YAHOO! mark has been established as one of the most recognized marks in the world. In August 2002, Nielson/Netratrings ranked Complainant’s global network as the world’s most trafficked Internet destination for the 27th consecutive month. Complainant maintains 1.62 billion page views per day internationally.
Complainant is the owner of numerous marks incorporating YAHOO!. YAHOO is registered with the United States Patent and Trademark Office (“USTPO”) on the Principle Register (Reg. No. 2,040,222). Moreover, the YAHOO! and other YAHOO! formative marks are registered in several other countries, including China, where Respondent is listed as residing (Chinese Reg. Nos. 1,109,289 and 1,087,317). Since Complainant’s inception in 1994, Complainant has continuously used and applied the YAHOO! marks and has not given authorization either expressly or implied to Respondent to use the mark.
Respondent registered the domain name <koryahoo.com> on June 23, 2001, <kryahoo.net> on August 8, 2001, <wwwkryahoo.com> on November 1, 2001 and <yahoomeil.com> on December 1, 2001. Respondent uses the domain names <koryahoo.com>, <kryahoo.net> and <wwwkryahoo.com> to redirect users to a pornographic website located at <000sex.com> while generating three additional browser windows that open to other pornographic websites. Internet users who attempt to leave these websites are then subjected to four more additional browser windows opening to pornographic websites. Respondent’s activities constitute “mousetrapping”, i.e. not allowing Internet users to freely exit the website and instead subjecting them to multiple browser windows. Respondent’s <yahoomeil.com> domain name has been inactive since registration on December 1, 2001.
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 the 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.
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 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.
Identical and/or Confusingly Similar
Complainant has established rights in the YAHOO! marks through registration with the USTPO and subsequent continuous use of the marks.
Each of Respondent’s domain names is confusingly similar to Complainant’s registered mark. Each name incorporates the YAHOO! mark in its entirety plus the additions of abbreviations for Korea (“kr”, “kor” and “wwwkr”), which fails to distinguish the domain names from the distinctive YAHOO! mark. A country code, merely added to the beginning or end of a famous mark, is not sufficient to create a unique and distinct identity. See Yahoo! Inc. v. Yuan Zhe Quan FA 117877 (Nat. Arb. Forum Oct. 10, 2002).
Respondent’s <yahoomeil.com> domain name is also confusingly similar to Complainant’s mark. Intentionally misspelling one letter in “mail” does not create a significant change, especially since Complainant’s entire mark is still in the domain name and Complainant registered the domain name <yahoomail.com>. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has thus been satisfied.
Rights or Legitimate Interests
Respondent did not respond to the complaint, thereby allowing the Panel to accept all reasonable inferences alleged by Complainant. Moreover, Respondent failed to reply, and thereby failed to fulfill its burden of demonstrating rights or legitimate interests in the disputed domain name. 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 assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence). There is no evidence that contradicts the allegations of Complainant. Complainant has presented evidence that substantiates its claim that Respondent has no legitimate rights or interests in the contested domain name.
Respondent’s <kryahoo.net>, <koryahoo.com> and <wwwkryahoo.com> domain names are linked to pornographic websites. Respondent is intentionally using the fame of Complainant’s mark to attract Internet traffic, and then diverting it to other websites. There is not a bona fide offering of goods and services when one uses an infringing domain name to redirect Internet traffic to sexually explicit websites under Policy ¶ 4(c)(i). See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”); see alsoMatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish Complainant’s mark).
The disputed domain name <yahoomeil.com> has remained inactive and undeveloped since it was registered. Respondent’s <yahoomeil.com> domain name was registered on December 1, 2001. There has been no activity in trying to create and utilize this domain name for a bona fide offering of goods and services. There are no rights or legitimate interests in a domain name when no attempt to develop a website into a genuine use in connection with a offering of goods and services was made under Policy ¶ 4(c)(i). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when Respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name).
There has been no evidence submitted to indicate that Respondent has a substantial affiliation with, or is known by the <kryahoo.net>, <koryahoo.com>, <wwwkryahoo.com> and <yahoomeil.com> names. Complainant has established itself as the sole holder of all rights and legitimate interests in the YAHOO! marks. Since Respondent has not come forward with a viable alternative supporting its use of Complainant’s mark, and does not have authorization or consent to use the mark, the Panel may accept the proposition proposed by Complainant that Respondent has no rights to the domain name under Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).
Respondent’s <kryahoo.net>, <koryahoo.com> and <wwwkryahoo.com> domain names divert Internet users to pornographic websites. When one misleadingly diverts consumers to another site, then it is said that they are not making fair use of the domain name under Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).
Since the domain name <yahoomeil.com> is not being used for any purpose, it is therefore not being used in a legitimate noncommercial or fair fashion. There are no rights or legitimate interests in a domain name when there has been no showing of activity in trying to establish a noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii). See BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain name where Respondent claimed to be using the domain name for a non-commercial purpose but had made no actual use of the domain name).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has thus been satisfied.
Registration and Use in Bad Faith
Respondent registered and is using the disputed domain names in bad faith. Complainant’s registered YAHOO! mark is registered in China, Respondent’s place of domicile. Respondent was placed on constructive notice by virtue of registration of Complainant’s mark with the Chinese trademark authorities. Respondent’s registration of the disputed domain names thereafter, containing Complainant’s mark, is an indication of bad faith registration. See 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 worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).
There is a definite pattern that has arisen in the bad faith registration of the disputed domain names. Respondent registered <koryahoo.com> on June 23, 2001, <kryahoo.net> on August 8, 2001, <wwwkryahoo.com> on November 1, 2001 and <yahoomeil.com> on December 1, 2001. Respondent engaged in a pattern of trying to exploit Complainant’s mark by registering multiple infringing domain names. It is evidence of bad faith registration and use when a party engages in a pattern of registering infringing domain names, with intent to prevent another party from being able to reflect its own mark under Policy ¶ 4(b)(ii). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 8, 2000) (finding bad faith where (1) Respondent knew or should have known of Complainant’s SONY marks and (2) Respondent registered multiple domain names which infringed upon Complainant’s mark); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii).
Respondent, by means of linking <kryahoo.net>, <koryahoo.com> and <wwwkryahoo.com> to pornographic websites, is acting in bad faith. Respondent is intentionally trying to attract internet consumers to its websites for commercial gain, by intentionally trying to cause confusion between Respondent’s domain names and Complainant’s marks. These actions cause Respondent to be in violation of Policy ¶ 4(b)(iv). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material); see also Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent utilized a domain name confusingly similar to Complainant’s mark and used a confusingly similar pornographic depiction of Complainant’s registered trademark on its website to cause confusion as to the source or affiliation of the site).
Respondent made no use of the <yahoomeil.com> domain name since it was registered over one year ago. The name in itself is clearly infringing upon Complainant’s mark, and holding the domain name constitutes bad faith use since there has been no showing of an intent to eventually use the domain name for a genuine purpose. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has thus been satisfied.
Having established all three elements required under the ICANN Policy, the Panel hereby concludes that the requested relief shall be GRANTED.
Accordingly, it is ordered that the domain names <kryahoo.net>, <koryahoo.com>, <wwwkryahoo.com> and <yahoomeil.com> be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 31, 2002
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