Yahoo! Inc. v. Jamie Drummond
Claim Number: FA0911001295572
Complainant is Yahoo! Inc. (“Complainant”), represented by Mike
Rodenbaugh, of Rodenbaugh Law,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoo7.tv>, registered with eNom.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Mr. Maninder Singh as Panelist.
Complainant has submitted a Complaint to the National Arbitration Forum electronically on November 19, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 3, 2009.
On November 20, 2009, eNom confirmed by e-mail to the National Arbitration Forum that the <yahoo7.tv> domain name is registered with eNom and that the Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the eNom 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 December 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 4, 2010 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 Response was received on January 4, 2010. However, a hard copy of the Response was not received by the response deadline, and so the Response was determined to be deficient by the National Arbitration Forum because it is not in compliance with ICANN Rule 5.
On 09.01.2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh as the Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant made the following contentions with regard to its marks YAHOO!, Seven, and YAHOO!7 :
· The complainant has contended that their marks Yahoo!, Seven and Yahoo!7 are top global Internet brands. It is a communications, commerce, and media company that attracts hundreds of millions of users every month through its innovative technology and engaging content and services, making it one of the most trafficked Internet destinations and a world class online company. Yahoo! connects people to their passions, their communities, and the world’s knowledge by offering a comprehensive branded network of searching, directory, information, communication, shopping, electronic commerce, and other online services. Yahoo!'s vision is to be the center of people's online lives by delivering personally relevant, meaningful Internet experiences.
· It is also contended that the mark YAHOO! is widely recognized. The Company owns the service and trade mark and the trade name YAHOO! and the domain names YAHOO.COM and YAHOO.TV, among many others. Through continuous and exclusive use since 1994, the YAHOO! mark has become one of the most known brands in the world. In this regard it relied upon the 2008 BusinessWeek / Interbrand Report “Best Global Brands 2008” and the Millward Brown/Financial Times report “BRANDZ Top 100 Most Valuable Global Brands” to contend that both these reports have ranked Yahoo! as one of the top 100 global brands.
It has also been contended in the complaint that
Seven Network Limited is one of
· It has further been contended that it offers products and services in the broad categories of: Web Portals; Search; Communications and Communities; Media; and Connected Life which includes web directory and search services, email, small business consultancy services, advertising services, sports, stock quotes, real estate and mortgage information and rate quotes, movie reviews, news, weather, sports, yellow pages directory services, maps, online shopping, travel reservations, classified advertising, audio and video streaming, web-store hosting and management, and more. These offerings integrate search, community, personalization, and content to create a powerful and useful user experience.
· The complainant thereafter has contended that Yahoo!’s website at www.yahoo.com has become one of the most visited Internet destinations in the world. As of August 2009, according to comScore’s Media Metrix, Yahoo! has the 3rd largest online global audience, with 595 million unique visitors, reaching over 51% of the global population and responsible for 6.5% of all global duration spent online.
· The complainant has contended that for many years Yahoo! has been offering a wide variety of services using the YAHOO! mark with a descriptive name of its services including, for example, YAHOO! TV, YAHOO! Video, YAHOO! Entertainment, YAHOO! Advertising, YAHOO! Personals, YAHOO! Mail, YAHOO! Messenger, YAHOO! Small Business, YAHOO! Toolbar, YAHOO! Games, YAHOO! Finance, YAHOO! Movies, YAHOO! Music, YAHOO! News, YAHOO! Sports, YAHOO! Weather, and YAHOO! Messenger. It further claims that Yahoo!7 offers a wide variety of services including Mail, Weather, News, Dating, Finance, Health, Entertainment and more. Yahoo!7’s television service provides Internet users a unique TV platform that includes a range of websites to support some of Australia’s favorite TV programs including: Home and Away; Grey’s Anatomy; All Saints; Sunday Night; Desperate Housewives; Packed To The Rafters; Brothers & Sisters; LOST and The Morning Show. It also offers advertising formats that allows brands to extend their reach from TV to the web. Yahoo!7 has also participated in highly publicized sporting events and features blogs by famous sporting celebrities.
With regard to its mark ‘Seven’, the Complainant
has contended that it (Seven) offers products and services in the categories
of: television programming and broadcast; magazine publication; and online
communications. It is a recognized leader in television, news and public
affairs, and Australian-produced drama and sports programming. It produces more
Australian drama series for television than any other network. Seven is also a
leader in sports television and partners with the Australian Football League
and the fastest-growing sport in
It has further contended that Seven’s media
offerings have an extensive reach. Seven has grown to be the most viewed
television channel in
With regard to the mark Yahoo!7,
the Complainant has stated that Yahoo!7 has a significant presence in online
and new communications technologies and is considered to be
It is also the case of Complainant that in
addition to its main website, Yahoo! operates (either
directly or through its licensees and related companies) many sites using the
YAHOO! mark and YAHOO-formative trademarks and domain names, including sites
specific to particular countries, regions and/or languages such as Argentina,
Asia, Australia, Austria, Brazil, Canada, China, Denmark, Finland, France,
Germany, Greece, Hong Kong, India. Indonesia, Italy, Japan, Korea, Malaysia,
Mexico, Netherlands, New Zealand, Norway, Philippines, Québec, Russia,
Singapore, Spain, Sweden, Switzerland, Taiwan, Thailand, Turkey, the United
Kingdom and Ireland, and Vietnam. Yahoo! has offered its services for more than
a decade to Internet users in the
It has further been contended that while Seven’s
ventures have focused on having a dominant presence in
· With a view to reiterate Yahoo!’s holdings, the complainant in its complaint has, inter-alia, relied upon the following registrations in the European Community Trademark (“CTM”) registrations for the YAHOO! Mark :
(i) Registration No. 002003150, filed April 1, 1996 with a priority claim of January 24, 1996, issued March 5, 2002, covering entertainment including television programs in International Class 41, and goods and services in International Classes 9 (software), 14 (jewelry), 16 (paper goods), 18 (leather goods), 21 (housewares), 28 (toys), 25 (advertising services and computer services including indexing and retrieving information), 41 (education and entertainment), and 42 (online services).
(ii) Registration No. 000693127, filed on November 28, 1997 with a priority claim of May 28, 1997, issued January 22, 2001, covering goods and services in International Class 3 (cosmetics), 20 (home goods), 24 (textile), 29 (processed foods), 30 (staple foods), 35 (business management consultancy services), 36 (financial services), 38 (telecommunications services), 39 (delivery services), and 42 (online services).
(iii) Registration No. 001076181, filed on February 12, 1999 with a priority claim of 13.8.1998, issued on June 7, 2000, covering computer services and online services in International Class 42, and goods and services in International Classes 9 (software), 16 (paper goods), 35 (business management), 39 (travel services), and 41 (online contests).
· It further claimed to have numerous trademark registrations for the YAHOO! mark in the United States Patent & Trademark Office’s including the following:
(i) Registration 2,403,227, first used June 1994, filed August 13, 1998, issued November 14, 2000, covering telecommunications and online services and broadcasting services including television and video broadcasting in International Class 38, and goods and services in International Classes 9 (software), 35 (online retail and mail order services), 39 (travel reservations services), and 42 (computer services).
(ii) Registration 3,039,073, first used August 1995, filed January 21, 2004, issued January 10, 2006, covering entertainment services including providing a web site featuring multimedia materials in International Class 41.
(iii) Registration 2,040,222, first used June 1, 1994, filed January 24, 1996, issued February 25, 1997, covering goods and services in International Classes 9 (software), 16 (paper goods), 35 (advertising services), and 42 (computer services including providing online links to news, weather, sports, current events, and reference materials).
(iv) Registration 2,187,292, first used September 22, 1997, filed February 28, 1997, issued September 8, 1998, covering online computer services in International Class 35.
(v) Registration 2,040,691, first used January 2, 1996, filed April 24, 1996, issued February 25, 1997, covering online computer services including providing online links to news, weather, sports, current events, and reference materials and creating indexes of information and providing online reference materials in International Class 42.
· While relying upon the list of certain UDRP decisions, Complainant claimed that at least ninety-one (91) UDRP decisions involving Yahoo!’s marks have been issued in Yahoo!’s favor, and the Panels in at least thirty-eight (38) of these cases expressly found the YAHOO! mark to be famous and have held these domain names to be transferred to Complainant via the UDRP, e.g. yahootv.com, radioyahoo.com, yahoomovie.com, yahoomovies.com, yahoo1.com, yahoo0.com, yahoobroadcast.com, yahoo-1.com, yahoo9.com, yahoowebcam.com, yahoomusic.com, musicayahoo.com, sbcyah00.com, sbcyahoobrowser.com, youtube-yahoo.com.
· Complainant has claimed that its trademark rights in the mark YAHOO! and variations thereof predate and prior to Respondent’s registration of the Domain Name.
In response to the complaint, the respondent has submitted the following : -
been contended by the Respondent that Yahoo declined to inform him where such
information was obtained from. He had complained that under UK Data Protection
Act laws his privacy has been breached by the
· Yahoo Inc had at that time not followed proper legal or procedure as ICANN stipulate and as such Yahoo tried to reverse such by doing so through correct and legal channels before Yahoo applied to the ADR, the personal information, Yahoo had already obtained by such sources as it so refuses to name, while also disallowing the Respondent to renew his domain even with the current registrar by blocking such, indicating Respondent’s intention to transfer yahoo7.tv. Respondent states that Yahoo has given unjustifiable and complete defamatory lies, whilst providing absolutely no proof of such "intended" activities.
· Respondent states that considering the pending legal action that may well be taken against him by Yahoo/Seven Media Group, respondent has the right to have the breach of his security via UK Data Protection Act 1984 including amendments 1998 & European Directive 95/46/EC, to be investigated fully by UK Information Commissioner $B!G (Bs Office and then following the outcome have the entitlement in a UK court against either/or/all the three parties named above for full costs of any legal action taken by Y/SMG against respondent in defence of his good name to be financially covered.
· Respondent has further stated that previously when hosted by channelme.tv servers until 1 July 2009 he had himself manually linked through to youtube.com a embedded promotional video of Channel 9 Australia's worldwide acclaimed & famous "Underbelly" programme on the main page of yahoo7.tv of which Yahoo Inc USA or Seven Media Group AU held no interest what so ever, nor any other materiel on yahoo7.tv Seven Media Group etc could claim copyright.
· Respondent has averred that simply DNS settings pointed his existing tv name to his new Magnify channel as per the link above to the FAQ of the changes, auto selection was chosen and Magnify automatically added video to respondent’s Magnify site. In this regard, he has drawn the attention to the right hand side of the website www.channelme.tv.
· He has further averred that he had due to personal health reasons and massively reduced usage of what the channelme.tv template had offered him, had very little interest in maintaining yahoo7.tv when Magnify were asking for a vast amount of payment for services respondent had already paid for to channelme.tv, in no uncertain terms via telephone to Magnify was he to be upgraded for the remaining 6 months of my channel.tv subscription to FULL Magnify status as only 12 month subscriptions were available and he could not qualify for such without FULL payment - he declined to accept such an "offer".
· Respondent stated that Magnify chose automatically which video to be embed to yahoo7.tv Respondent further states that he assumed based on its technology, and perhaps based on the same or similar technologies many search engines use, yahoo7.tv no doubt would have chosen to be embedded youtube, google video etc, etc. footage based on AU television - terrestrial, pay tv or otherwise, automatically.
· Respondent further alleged that Yahoo has misrepresented to ADR by informing them that he used its trademark name or logo are completely unfounded, channelme.tv the service respondent signed for per the T&C of channelme.tv did not have advertising on yahoo7.tv, such changes and further outcome of these changes were and still are outside respondent’s control or remit and have been since 1/7/2009.
· Respondent further stated that given the fact that he had refused to pay Magnify 12 months subscription he had the legal rights to 6 months FULL Magnify service as per the contract and the T&C agreed between the respondent and channelme.tv prior to the merger of both services Magnify had proceeded to use yahoo7.tv for advertising, Magnify, Enom and/or Verisign and may have gained profit from such actions or its advertising &/or marketing companies/partners, direct, third party or otherwise. In no uncertain terms did he (respondent) received payment/s.
· Respondent categorically stated that he had never received any payment of any currency, discount or gifts of any kind from advertising revenue on or from yahoo7.tv, domainrush, Enom or Verisign or any of those aforementioned subsidiary companies or partners.
· Respondent contends that he received completely 6 months service for a 12 month term for yahoo7.tv which was in itself a loss to myself financially & also having lost the channelme.tv template & facilities to PAY facilities he refused to use or access given a breach of T&C surrounding the Magnify/Channelme.tv merger.
· Respondent further contended that considering the fact that Complainant Yahoo was able to obtain respondent’s personal details in Feb/March of 2009 he has no doubt that Yahoo was certainly able to validate that respondent was in no way profiting from yahoo7.tv from the referred companies and by insinuating respondent was "trading on his goodwill, name and trademarks" as so near described by Yahoo to ADR, all the while withholding such information to ADR and thus DEFAMING his good character.
· Yahoo's interest seems to be applied of late to the fact given the Yahoo/SMG joint venture in 2006, neither party showed interest in yahoo7.tv from mid 2006 until 2009. When Yahoo/SMG AU had planned to launch a second free to air tv channel in AU - 7two, thus Yahoo again have not mentioned this to ADR.
· Respondent has stated that assuming Y/SMG’s use of yahoo7.tv would be a online branch portal for both its channel 7 & 7 two operations with SMG AU officially releasing such 7 two information into the public domain in late October 2009 with a launch date of early November 2009, it is highly unrealistic to assume that the respondent had registered yahoo7.tv through any profiteering agenda in January 2009 some two and a half years later where Yahoo or SMG showed no interest in yahoo7.tv in the said period.
· Respondent stated that it is his belief that the "yahoo" trademark/s as Yahoo Inc and its subsidiary companies have belief they own is not so. Respondent alleges that disclosure in his defence of such information would harm any legal action against him, he has been advised by his legal counsel to not to disclose such legal details to ADR and put him at the disadvantage of Yahoo Inc in any legal actions SMG may take against the respondent now or in future, should either Australian Seven Media Group/Yahoo!7 Pty Limited so wish to do so.
· Respondent contended that considering that he is a disabled individual whom in nature & finance has no business agenda and no malice towards the yahoo7 "brand" and look for no gain other than to discuss yahoo7 through the internet on yahoo7.tv with other consumers no disrepute on his part whatsoever towards Yahoo or channel 7 AU, such actions as Yahoo Inc knowingly such seek to lie and deceive the ADR on the representation Yahoo Inc have forwarded to the complainant, including not following correct procedures internal to the ADR and external in seeking as Yahoo falsely describes as "remedy" based on misleading lies, while defaming the respondent.
· Given the legal complexities' of this case and the ICANN changes to embrace international input rather than solely US law and policy as set in stone, the respondent asks ADR for fairness and impartiality with regards to ADR & Yahoo Inc both residing organisations in the United States of America and has contended dismissal of the complaint of YAHOO on all such grounds and further that ADR should direct Seven Media Group AU take appropriate action as it deems necessary within law for the impartiality that law represents - the Commonwealth Law of Australia for resolution within the guidelines of Australian law where Seven Media Group as a company is registered. He has submitted that there should be complete impartiality and he does not wish to undermine the ICANN or ADR process in the slightest.
· Respondent contends that it has only used the disputed domain name to communicate with other consumers about Complainant’s online broadcasting services.
· Respondent contends that it has never gained commercially in any way from its use of the disputed domain name, and that it merely used the disputed domain name to discuss Complainant’s services with other consumers.
· The Panel finds that the use of the domain name “yahoo7.tv” by the Respondent is in bad faith and the Respondent has no rights or legitimate interests in relation to the domain name.
· The Panel also finds that the domain name yahoo7.tv deserve to be transferred to the Complainant and the Respondent is not entitled to use this domain name. The Complaint deserves to be allowed forthwith and the Panel decides accordingly. However, in terms of the ICANN Policy and the requirements thereunder, the formal observations / findings of the Panel are as under.
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.
· The Panel finds that Complainant has rights in the YAHOO! mark pursuant to Policy 4(a)(i) through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,403,227 issued November 14, 2000) and the European Union Office for Harmonization of the Internal Market (“OHIM”) (Reg. No. 2,003,150 issued March 5, 2002). The Panel reiterates the findings of this Forum in - (i) Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy 4(a)(i)); and (ii) Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy 4(a)(i).”).
· In its Complaint, Complainant contends that Respondent’s <yahoo7.tv> domain name is confusingly similar to its YAHOO! mark. The <yahoo7.tv> domain name differs from Complainant’s mark in three ways: (1) the exclamation point has been removed from the mark; (2) the numeral “7” has been added to the end of the mark; and (3) the country-code top-level domain (“ccTLD”) “.tv” has been added to the end of the mark. The Panel may find that even if an exclamation mark is removed from a mark, the resulting domain name is still confusingly similar to the mark, because no domain name can contain this punctuation mark. In this regard, decision of this Forum in 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) is relevant. The Panel may also find that adding a numeral does not distinguish a domain name from that mark. This Forum in Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) has given a finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark. In addition, the Panel may find that adding a ccTLD to a mark also fails to sufficiently distinguish a domain name from that mark, because every domain name must include a top-level domain. The Panel relies upon the decision of WIPO in World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from the complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent.”). Therefore, the Panel finds that these changes to the YAHOO! mark do not minimize or eliminate the resulting likelihood of confusion, and hence the Panel finds that Respondent’s <yahoo7.tv> domain name is confusingly similar to Complainant’s mark pursuant to Policy 4(a)(i).
· The Panel is reminded that 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. The Panel finds that Complainant has made a prima facie case. The Panel relies upon the decisions of this Forum in – (i) Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy 4(c)); (ii) AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
· Complainant contends that Respondent is not commonly known by the <yahoo7.tv> domain name nor has it ever been the owner or licensee of the YAHOO! mark. Respondent has been identified as “Jamie Drummond,” and nothing in the WHOIS record for the disputed domain name lists Respondent as any variant on the YAHOO! mark. The Panel finds that Respondent is not commonly known by the <yahoo7.tv> domain name pursuant to Policy 4(c)(ii). The Panel finds strength in the decisions of this Forum in – (i) Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); and (ii) St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
· Complainant also contends that Respondent is using the <yahoo7.tv> domain name to bring Internet users to its website that offers online broadcasting services, which compete with Complainant’s own services. The website that resolves from the disputed domain name also contains links to other competitors of Complainant. Because Respondent is attracting Internet users to online broadcasting services which compete with Complainant for customers, the Panel finds that Respondent’s use of the <yahoo7.tv> domain name is neither a bona fide offering of goods or services under Policy 4(c)(i) nor a legitimate noncommercial or fair use under Policy 4(c)(iii). To arrive at the above decision, the Panel has relied upon the decisions of this Forum in - (i) Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy 4(c)(iii).”); and (ii) St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use under Policy 4(c)(iii)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in favour of the Complainant.
Accordingly, it is Ordered that the <yahoo7.tv> domain name be TRANSFERRED from Respondent to Complainant.
Maninder Singh, Panelist
Dated: January 25, 2010
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