Yahoo! Inc. v. Hangzhou Hi2000 InfoTech
Co. Ltd. a/k/a Hangzhou Shixin Info Tech Co. Ltd.
Claim Number: FA0301000141825
PARTIES
Complainant
is Yahoo! Inc., Sunnyvale, CA, USA
(“Complainant”) represented by David M.
Kelly, of Finnegan Henderson
Farabow Garrett & Dunner L.L.P.
Respondent is Hangzhou Hi2000
InfoTech Co. Ltd. a/k/a Hangzhou Shixin Info Tech Co. Ltd.,
Hangzhou Zhejiang, China (“Respondent”) represented by Kaiqi Chen, of
Hangzhou Hi2000 InfoTech Co. Ltd.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <chemyahoo.com>,
<chemicalyahoo.com>, <packyahoo.com>,
<pharmyahoo.com>, <texyahoo.com>,
<textileyahoo.com> and <yahoochem.com>, registered with OnlineNIC, Inc.
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.
Dennis
A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on January 13, 2003; the Forum received a hard copy of the
Complaint on January 14, 2003.
On
January 15, 2003, OnlineNIC, Inc. confirmed by e-mail to the Forum that the
domain names <chemyahoo.com>, <chemicalyahoo.com>,
<packyahoo.com>, <pharmyahoo.com>,
<texyahoo.com>, <textileyahoo.com> and
<yahoochem.com>, are
registered with OnlineNIC, Inc. and that the Respondent is the current
registrant of the names. OnlineNIC,
Inc. has verified that Respondent is bound by the OnlineNIC, Inc. 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
January 16, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 5, 2003 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@chemyahoo.com,
postmaster@chemicalyahoo.com, postmaster@packyahoo.com,
postmaster@pharmyahoo.com, postmaster@texyahoo.com, postmaster@textileyahoo.com
and postmaster@yahoochem.com by e-mail.
A
timely Response was received and determined to be complete on January 29, 2003.
Complainant’s
additional submission was timely received on February 5, 2003. Respondent’s
additional submission was timely received on February 10, 2003.
However,
having read the Complaint and the Response, the Panel has decided in accordance
with Policy Rule 12 that no further submission from either the Complainant or
the Respondent is needed to decide this Case.
Therefore, in reaching this Decision,
the Panel did not take into consideration the additional submissions of
either side.
On February 13, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Dennis A. Foster
as Panelist.
RELIEF SOUGHT
Complainant
requests that the seven (7) disputed domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant (Summarized Contentions)
--Respondent
registered the disputed domain names years after the Complainant began
worldwide use of the Yahoo mark in 1994.
The Complainant’s Chinese website was launched on May 4, 1998.
--Respondent
uses the domain name <chemyahoo.com> to redirect Internet users to
its ChemNet website and to offer web
directory services, news, product information and advertising for companies in
the chemical industry. (Complaint
Exhibit 12).
--Respondent
uses the domain name <texyahoo.com> to frame its website called
ChinaTexnet. Respondent’s ChinaTexnet website offers web directory, auction,
and advertising services for companies in the textile industry. (Complaint
Exhibit 13).
--Respondent’s
use of the domain names <chemyahoo.com> and <texyahoo.com>
to direct Internet users to Respondent’s <chemnet.com> and
<chinatexnet.com> websites is likely to confuse Internet users into
mistakenly believing that Respondent and its websites are offered or sponsored
by Complainant. The fact that Respondent’s websites mimic the look and feel of
Complainant’s websites exacerbates the likelihood of confusion. (Complaint Exhibits 12 and 13 (Respondent’s
websites) and Exhibit 9 (Complainant’s websites)).
--Respondent
does not appear to be currently using the domain names <chemicalyahoo.com>,
<packyahoo.com>, <pharmyahoo.com>, <textileyahoo.com>, and
<yahoochem.com> for websites.
(Complainant attaches as Exhibit 15 screen shots of the error messages
received when attempts were made to access those websites).
--Each
of the Domain Names is confusingly similar to Complainant’s famous YAHOO! mark
because each incorporates the mark in its entirety and adds only a generic
word.
--Respondent
is not using and has not demonstrated an intent to use the disputed domain
names in connection with a bona fide offering of goods or services. The Respondent’s use deliberately trades on
the Complainant’s mark.
--The
Respondent has not been commonly known by the disputed domain names and the
mere filing of a trademark application is not enough to establish rights in a
mark.
--Respondent’s
unauthorized use of the domain names <chemyahoo.com> and <texyahoo.com>
for commercial gain suggests opportunistic bad faith given the widespread use
and fame of Complainant’s YAHOO! marks.
--Respondent’s
registration and nonuse of the domain names <chemicalyahoo.com>, <packyahoo.com>,
<pharmyahoo.com>, <textileyahoo.com>, and <yahoochem.com>
is in bad faith because those domain names incorporate the famous YAHOO! mark
in its entirety.
--Respondent’s
registration of the seven disputed domain names in and of itself constitutes a
pattern.
B.
Respondent (Summarized)
--To
supplement the offerings on “China Chemical Network” and to reach the global
business customer base in the chemical industry without disrupting the existing
services, the Respondent used <chemyahoo.com> to host additional
and expanded services at the end of 1998.
--In
February, 2002, the Respondent merged the chemyahoo service into
<chemnet.com>. Between the
inception of the site and February, 2002, <chemyahoo.com> was in
continuous operation independent of any other website.
--The
Respondent filed applications of trademark registration for CHEMYAHOO under
international class 38 in China. The
Complainant filed opposition to the registration.
--The
word Yahoo is a generic dictionary word.
--It
might be said that, to some extent, there is similarity between the disputed
domain names and the Yahoo mark because of the incorporation of the same
dictionary word. However, the
Respondent submits that the similarity among them has not reached this level of
confusion.
--The
terms, chem., chemical, tex, textile, pharm and pack are neither random nor
generic.
--Prior
to the merging of service on <chemyahoo.com> into
<chemnet.com> in February, 2001, where <chemyahoo.com> was
turned into a redirection to <chemnet.com>, <chemyahoo.com>
was an independent site in its own right.
--By
the time of filing for the Chemyahoo trademark, the website had already been in
continuous operation for over 3 years.
The remaining domain names are inactive because the Respondent is being
prudent about the Complainant’s objections.
--As
demonstrated by the case of chemyahoo, the Respondent builds readership to its
site through active and vigorous promotion of the site in the target industry,
as well as providing compelling content on the site.
--There
is ample evidence, including the use of the <chemyahoo.com> domain
name, that the Respondent plans to use the remaining domain names in the
future.
FINDINGS
The Complainant is an internet company that uses the Yahoo! trademark to offer
on-line directory, shopping and other Internet services and products. The Complainant began doing business in
1994.
The Respondent is also a company offering
Internet on-line directory services in specific product areas such as
chemicals. The Respondent began doing
business around early 1998. The Respondent registered the disputed
domain names as follows: <chemyahoo.com> on October 13, 1998; <chemicalyahoo.com>,
<packyahoo.com>, <textileyahoo.com>, <texyahoo.com> and <yahoochem.com>
on November 19, 1999; and <pharmyahoo.com> on November 28,
2000.
DISCUSSION
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 Complainant has shown that it owns
theYahoo! mark for Internet services and that this mark enjoys world-wide
notoriety. The Complainant’s mark has
multiple registrations in China, the location of the Respondent’s business,
and the United States of America
(Complaint Exhibits 9 and 10). In the
face of this evidence, the Respondent’s assertions that the Complainant’s
famous mark is a generic word are untenable.
The seven (7) disputed domain names, <chemyahoo.com>,
<chemicalyahoo.com>, <packyahoo.com>, <pharmyahoo.com>,
<texyahoo.com>, <textileyahoo.com> and <yahoochem.com>
are all composed of the Complainant’s famous mark plus either a generic word
used in its generic sense or the first several letters of a generic word that
readily allow a reader or a search engine to intuit the suggested generic word being used on the Respondent’s website
in its generic sense. The Panel believes
it is settled beyond doubt under the Policy that the top level domain
indicators such as “.com” should not be considered in an analysis to determine
identity or confusing similarity.
Similarly, it is also well-established
under the Policy that a domain name composed of a trademark coupled with a
generic term still is confusingly similar to the trademark. In this Case, for example, the Panel finds
that most people would readily assume that both <chemicalyahoo.com> and
<yahoochem.com> are related to the Yahoo! web search service related
to chemical products and so on for textiles and the other disputed domain
names. See Yahoo! Inc. v. Yuan Zhe Quan, FA 117877 (Nat. Arb. Forum Oct.
10, 2002).
The Panel thus finds the Complainant has
shown that the disputed domain names are confusingly similar to the Yahoo! mark
in which Complainant has rights. The
Complainant has satisfied its burden of proof under Paragraph 4(a)(i) of the
Policy.
The Complainant contends that the
Respondent has no legitimate rights or interests in the disputed domain
names. According to the Complainant,
the Respondent can not claim legitimate rights and interests under the Policy
at paragraph 4(c)(i) because the Respondent is not making a bona fide offering
of goods and services: the Respondent is well aware it is violating the
Complainant’s rights in its famous trademark.
The Respondent for its part argues that
it is using one of the disputed domain names, <chemyahoo.com>, to
offer a searchable data base on chemical products. The Respondent states it did not try to use the remaining six (6)
domain names because it was afraid of the Complainant’s legal efforts to stop
it.
The Panel is not at all convinced the
Respondent is in good faith using the <chemyahoo.com> domain name
for a searchable data base on chemical products. Rather, the Panel is convinced the Respondent is in bad faith
because the Respondent clearly is counting on the fame of the Complainant’s
Yahoo! mark to bring it web traffic and customers.
The Respondent and the Complainant agree
that the Respondent has filed a trademark application for the disputed domain
name <chemyahoo.com> in China, but the Complainant has filed an objection
to this application and, in any case,
it is widely recognized under the Policy that trademark applications
confer no trademark rights. See
Yahoo! Inc. v. David Ashby, D2000-0241 (WIPO June 14, 2000) (finding that a
California State trademark application conferred no mark rights).
The Panel finds the Complainant has shown
the Respondent has no legitimate rights or interests in the disputed domain
name (the Policy Paragraph
4(a)(ii)).
The Complainant contends the Respondent
has violated the bad faith provisions of the Policy at Paragraph 4(b)(iv) in
that the Respondent has used for commercial gain the disputed domain names <chemyahoo.com>
and <texyahoo.com> and the resulting confusion with
Complainant’s mark. The Panel entirely
agrees.
The Panel also agrees that the
Respondent’s holding the remaining five (5) disputed domain names without using
them for from two (2) to three (3) years also is widely accepted as grounds for
bad faith registration and use under the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows,
D2000-0003 (WIPO Feb.18, 2000).
The Complainant moreover contends the
Respondent’s multiple registrations of domain names all using the Complainant’s
famous mark is bad faith registration and use under the Policy at Paragraph
4(b)(ii) because these multiple registrations constitute a pattern. The Panel believes this is self-evident, but
Paragraph 4(b)(ii) also requires that the Respondent have intended to prevent
the Complainant from registering the same domain names. That is not apparent here.
DECISION
The Panel has found the Respondent has
registered seven (7) domain names that are all confusingly similar to the
Complainant’s famous Yahoo! mark. The
Panel has also found that the Respondent’s use of the Complainant’s famous mark
in domain names along with generic words like “chem.” or “chemical” to offer a searchable data base on chemical
products is not a bona fide offering of goods or services. And the Panel also has found the Respondent
registered and is using the disputed domain names in bad faith in violation of
the Policy by, among other things, registering domain names containing the
Complainant’s mark in order to profit from the confusion.
Therefore, per Paragraph 4(i) of the
Policy and Rule (15), the Panel orders that the seven (7) disputed domain
names, <chemyahoo.com>, <chemicalyahoo.com>,
<packyahoo.com>, <pharmyahoo.com>, <texyahoo.com>,
<textileyahoo.com> and <yahoochem.com> be transferred
from the Respondent, Hangzhou Hi2000 InfoTech Co., Ltd. a/k/a Hangzhou Shixin
Info Tech Co. Ltd., to the Complainant, Yahoo! Inc.
Dennis A. Foster, Panelist
Dated: February 26, 2003
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