Yahoo! Inc. v. Moldes Matrices y Diseno
Claim Number: FA0211000133764
PARTIES
Complainant
is Yahoo! Inc., Sunnyvale, CA, USA
(“Complainant”) represented by David
Kelly, of Finnegan Henderson
Farabow Garrett & Dunner LLP.
Respondent is Moldes Matrices y
Diseno, Valencia, SPAIN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <yahoox.com>,
registered with Network Solutions.
PANEL
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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 21, 2002; the Forum received a hard copy of the
Complaint on November 22, 2002.
On
November 25, 2002, Network Solutions confirmed by e-mail to the Forum that the
domain name <yahoox.com> is
registered with Network Solutions and that Respondent is the current registrant
of the name. Network Solutions has
verified that Respondent is bound by the Network Solutions 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 26, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 16, 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 postmaster@yahoox.com 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
January 2, 2003, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
Complainant
argues that Respondent’s <yahoox.com> domain name is
confusingly similar to Complainant’s YAHOO!
mark.
2.
Complainant
argues that Respondent does not have rights to or legitimate interests in the <yahoox.com> domain name.
3.
Complainant
argues that Respondent registered and used the <yahoox.com> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response in this proceeding.
FINDINGS
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/NetRatings ranked Complainant’s global network
as the world’s most trafficked Internet destinations 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 the European Community, which covers Spain, where
Respondent is listed as residing (European Community Reg. Nos. 001076181 and
000693127). Since Complainant’s inception in 1994, Complainant has continuously
used and applied the YAHOO! marks.
Respondent registered <yahoox.com> on January 20, 2000. Respondent primarily
has used the domain name to host a pornographic website as well as provide
links to other pornographic websites. Respondent has also used the disputed
domain name for web indexing services, something that Complainant also engages
in. Complainant has never granted permission to Respondent to use Complainant’s
mark in any fashion. The website currently is inactive, however, Respondent has
threatened to restart it, again using it to re-direct Internet users to
pornographic websites.
Complainant, in
a separate action, has instigated criminal charges under Spain’s anti-obscenity
laws regarding the portrayal of pornography on <yahoox.com>. Complainant
has sought for deactivation of the disputed domain name and that Respondent be
fined. All actions in that matter are currently pending.
DISCUSSION
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.
Complainant
has acknowledged that it has initiated a court proceeding in Spain, under Spain’s
anti-obscenity laws. Paragraph 18(a) of the Policy specifically states that in
a case where there is a concurrent pending legal action, the Panel “shall have
the discretion to decide whether to suspend or terminate the administrative
proceeding, or to proceed to a decision.” The Panel concludes that since the
legal proceeding initiated in Spain does not request transfer of the disputed
domain name, as is requested in this proceeding, and in lieu of a Response or
objection from Respondent, the Panel shall utilize its discretion to proceed
with the administrative action.
Complainant
has established rights in the YAHOO! marks through registration with the USTPO,
the European Community, and subsequent continuous use of the marks.
Respondent’s <yahoox.com>
domain name is confusingly similar to Complainant’s famous YAHOO! mark.
The mere addition of the letter “x” does not significantly alter the
second-level domain so as to distinguish it from Complainant’s famous mark. Therefore, the addition of the letter does
not create a distinct mark capable of overcoming a Policy ¶ 4(a)(i) confusingly similar
analysis. See Am.
Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding that <oicq.net> and <oicq.com> are confusingly
similar to Complainant’s mark, ICQ); see also Crédit Lyonnais v. Ass’n Etre Ensemble, D2000-1426 (WIPO Dec. 7,
2000) (finding that the addition of the letter “e” and a hyphen does not affect
the power of the mark in determining confusing similarity).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has thus been satisfied.
Respondent did not respond to the
Complaint, thereby allowing the Panel to accept all reasonable inferences
alleged by Complainant. Moreover, by Respondent failing to reply, it 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 <yahoox.com>
domain name has used the domain as a link to pornographic websites as
well as a web indexing service. Respondent’s use of the domain name shows that
it is intentionally using the fame of Complainant’s mark to attract Internet
traffic to other websites, which are not associated with Complainant.
Respondent’s behavior with relation to the domain name has not exhibited a use
in connection with a bona fide offering of goods or services pursuant to 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”); 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).
There has been no evidence submitted to
indicate that Respondent has a substantial affiliation with, or is known by the
<yahoox.com> domain name. 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 or legitimate interests
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
used <yahoox.com> to
divert Internet users to pornographic websites. When one misleadingly
diverts consumers to a pornographic website, it is deemed to be not a fair or
legitimate 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); see also MatchNet 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).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has thus been satisfied.
Respondent
registered and is using the disputed domain name in bad faith. Complainant’s
YAHOO! mark is registered with the European Community, which includes Spain.
Respondent was placed on constructive notice by virtue of registration of
Complainant’s mark with the European Community’s trademark authorities.
Moreover, given the worldwide identification of the YAHOO! mark, it can also be
inferred that Respondent was aware of the mark, and therefore had actual notice
of Complainant’s rights. Respondent’s registration of the disputed domain name
thereafter, containing Complainant’s mark despite actual knowledge of
Complainant’s rights, is evidence 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).
Respondent, by
means of linking <yahoox.com> to pornographic websites, used the domain name in
bad faith. Respondent is intentionally trying to attract Internet consumers to
its websites for commercial gain by deliberately trying to cause confusion
between Respondent’s domain name and Complainant’s mark. This behavior is
evidence that Respondent is 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).
Accordingly, the Panel finds that Policy
¶ 4(a)(iii) has thus been satisfied.
DECISION
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 name <yahoox.com> be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: January 15, 2003
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