Claim Number: FA0301000142072
PARTIES
Complainant is Yahoo! Inc., Sunnyvale, CA, USA (“Complainant”) represented by David Kelly, of Finnegan Henderson Farabow Garrett & Dunner L.L.P.. Respondent is Yoonbumjoong, Daegu, KOREA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yahoolotto.com>, registered with Gabia, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 14, 2003; the Forum received a hard copy of the Complaint on January 15, 2003. The Complaint was submitted in both Korean and English.
On January 15, 2003, Gabia, Inc. confirmed by e-mail to the Forum that the domain name <yahoolotto.com> is registered with Gabia, Inc. and that Respondent is the current registrant of the name. Gabia, Inc. has verified that Respondent is bound by the Gabia, 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 21, 2003, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 10, 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@yahoolotto.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 February 17, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.
Pursuant
to Rule 11(a) the Panel determines that the language requirement has been
satisfied through the Korean language Complaint and Commencement Notification
and, absent a Response, determines that the remainder of the proceedings may be
conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent, <yahoolotto.com>, is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent has no rights or legitimate interests in the <yahoolotto.com> domain name.
3. Respondent registered and used the <yahoolotto.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a global Internet communications, media and commerce company that operates under the YAHOO! mark. Complainant uses the YAHOO! mark in connection with, inter alia, online searching, directory information, communication, and shopping services. Complainant offers services under its YAHOO! mark relating to Internet games and lottery information.
Complainant registered its YAHOO! mark with the United States Patent and Trademark Office (Reg. No. 2,040,222). In addition, Complainant has also registered its YAHOO! mark in Korea, where Respondent is located (Reg. No. 42273).
Complainant established a considerable presence on the Internet at <yahoo.com>. In September 2002, the <yahoo.com> website had 201 million unique users and 93 million active registered members. Moreover, Complainant has an international presence on the Internet, including in Korea with its <yahoo.com.kr> website. Complainant’s widespread use of its YAHOO! services produced a significant amount of goodwill and notoriety for the YAHOO! mark.
Respondent registered the <yahoolotto.com> domain name on June 14, 2002. Respondent uses the <yahoolotto.com> domain name to link to a Korean website that offers games and lottery services.
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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.
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.
Complainant has established its rights in the YAHOO! mark
through proof of trademark registration in the United States and in Korea,
along with evidence of substantial use of said mark.
The domain name registered by Respondent, <yahoolotto.com>, wholly incorporates Complainant’s YAHOO! mark. The <yahoolotto.com> domain name does not include the exclamation point but that is insignificant as punctuation is not permitted in second level domains. See 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). Furthermore, the only variation of the second level domain is the addition of the abbreviation for the word lottery, “lotto.” The word “lotto” is common and it also refers to Complainant’s lottery information services offered under its YAHOO! mark. Therefore, the <yahoolotto.com> domain name is confusingly similar to Complainant’s YAHOO! mark because the mark remains the dominant feature. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has not contested Complainant’s allegations, including the allegation that Respondent has no rights or legitimate interests in the <yahoolotto.com> domain name. Respondent’s failure to challenge the Complaint allows the Panel to accept all allegations as true, absent any evidence to the contrary, and to draw all reasonable inferences in Complainant’s favor. See 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”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent uses the <yahoolotto.com> domain name to connect Internet traffic to its website that offers games and lottery services. This website competes with Complainant’s online YAHOO! services that provide access to computer games and lottery information. The use of a confusingly similar domain name in direct competition with Complainant does not establish rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii). 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 N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).
Furthermore, Respondent is not commonly known by the <yahoolotto.com> domain name. Respondent is identified as Yoonbumjoong in the WHOIS information for the <yahoolotto.com> domain name. In addition, because of the level of notoriety and fame associated with the YAHOO! Mark, it is unlikely that anyone other than Complainant could show YAHOO! as its established business identity. Therefore, Respondent has failed to demonstrate rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). 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 Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <yahoolotto.com> domain name and Policy ¶ 4(a)(ii) has been satisfied.
Because the YAHOO! mark is famous and Respondent uses the <yahoolotto.com>
domain name in competition with some of Complainant’s YAHOO! services, it is
reasonable to infer that Respondent was aware of Complainant’s interests in the
YAHOO! mark prior to registering the domain name. Registering a domain name that incorporates a mark with knowledge
that another entity has established goodwill in that mark constitutes bad faith
registration. See 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 also 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).
Respondent’s use of the <yahoolotto.com> domain
name in competition with Complainant supports a finding of bad faith use. Complainant offers YAHOO! game and lottery
services to a Korean audience and Respondent uses the domain name to do the
same. Since Complainant’s YAHOO! mark
is well-known, Respondent’s use of the mark in direct competition with
Complainant is likely to confuse Internet users as to the source of the
resulting website. Moreover, nothing in
the evidence suggests that Respondent’s website is anything but
commercial. Hence, Respondent uses the <yahoolotto.com>
domain name to profit from Complainant’s YAHOO! mark. Therefore, the Panel determines that Respondent uses the <yahoolotto.com>
domain name in bad faith under Policy ¶ 4(b)(iv). See TM Acquisition
Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad
faith where Respondent used the domain name, for commercial gain, to
intentionally attract users to a direct competitor of Complainant); see also
Busy Body, Inc. v. Fitness Outlet, Inc.,
D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to
attract customers to its website <efitnesswholesale.com> and created
confusion by offering similar products for sale as Complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <yahoolotto.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 26, 2003.
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