Yahoo! Inc. v. SDN Group
Claim Number: FA1201001425454
Complainant is Yahoo! Inc (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington D.C., USA. Respondent is SDN Group (“Respondent”), Bulgaria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <videoyahoocom.com>, registered with Tucows.com Co.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 19, 2012; the National Arbitration Forum received payment on January 19, 2012.
On January 19, 2012, Tucows.com Co. confirmed by e-mail to the National Arbitration Forum that the <videoyahoocom.com> domain name is registered with Tucows.com Co. and that Respondent is the current registrant of the name. Tucows.com Co. has verified that Respondent is bound by the Tucows.com Co. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@videoyahoocom.com. Also on January 23, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 22, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
a. Background Facts
i. Yahoo! and its Services
(1) Yahoo! is the premier digital media company in the world, with content covering news, shopping, photo sharing, and finance, among other things, and is the second most popular electronic mail service provider in the world. Yahoo! connects people to their passions, their communities, and the world’s knowledge by offering a comprehensively-branded network of searching, directory, information, communication, shopping, electronic commerce, and other online services to millions of Internet users daily. As one of the most trafficked Internet destinations worldwide, Yahoo! empowers its communities of users, advertisers, publishers, and developers by creating indispensable experiences built on trust.
(2) Yahoo! is the owner of the service mark and trademark YAHOO! and the trade name YAHOO! (Collectively, the “YAHOO! Mark”) as well as the domain name YAHOO.COM. In continuous use since 1994, the YAHOO! Mark has become one of the most recognized brands in the world, and has been ranked as one of the top 100 global brands in the 2008 and 2009 “BRANDZ Top 100 Most Powerful Brands” report issued by Millward Brown in cooperation with the Financial Times and in the 2009 BusinessWeek/Interbrand Annual Brand Report.
(3) YAHOO!-branded websites have long been among the most visited and well-recognized websites on the Internet. For example, during the month of October 2011, YAHOO!-branded websites attracted over 700 million visitors worldwide, reaching almost 50% of the global online population. More specifically, 200 million unique visitors from Europe, the Middle East, and Africa visited Yahoo! branded websites, while 174 million unique visitors traveled onto YAHOO!-branded websites in the United States alone, reaching 87.4 of the total U.S. Internet audience in June 2011. The Yahoo! homepage, located at www.yahoo.com, was the third most visited website in the world in April 2011 with over 135 million unique visitors. Indeed, Yahoo! websites are the most visited websites in ten categories globally, including news, finance, shopping, and sports. Accordingly, comScore Media Metrix ranked Yahoo! as the number two most valued Web property in the United States in June 2011.
(4) In addition to the variety of services offered at Yahoo!’s home website, it operates many additional sites under the YAHOO! Mark. For example, Yahoo! offers and has offered for many years a wide variety of services using the YAHOO! Mark together with a descriptive name of its services including: YAHOO! Finance; YAHOO! Shopping, YAHOO! Answers, YAHOO! Mail, YAHOO! Messenger, YAHOO! Entertainment, YAHOO! Toolbar, YAHOO! Games, YAHOO! Finance, YAHOO! Movies, YAHOO! Music, YAHOO! News, YAHOO! Sports, and YAHOO! Weather.
(5) Yahoo! provides a wide variety of business information under the YAHOO! Mark at the URL http://biz.yahoo.com/, and has done so since 1998.
(6) Many of Yahoo!’s current online products and services are offered to the public free of charge, with Yahoo!’s income being primarily derived from the sale of advertising and co-branding or sponsorship agreements with other companies. Much of the advertising consists of advertisements that appear on web pages throughout YAHOO!-branded websites. Yahoo! also sells sponsorships, promotions, and a wide array of other marketing services to its clients. Yahoo! displays advertisements for thousands of companies each year, which include a majority of the “Fortune 100” companies. Yahoo! also receives revenues from an array of electronic commerce transactions originating from YAHOO!-branded websites, including YAHOO! Shopping and YAHOO! Travel, as well as certain premium services offered to Internet users, such as website hosting and more.
(7) Because of the extreme success and popularity of its websites, products, and services, the YAHOO! Mark is the subject of much third party press and media attention throughout the world. Indeed, Yahoo! is regularly covered in major media outlets, including The New York Times, The Wall Street Journal, The Washington Post, Time Magazine, Newsweek, Business Week, Associated Press, Reuters, MSNBC, CNN, and Bloomberg.
(8) Over ninety (90) UDRP decisions involving the YAHOO! Mark have been issued in Yahoo!’s favor and the Panel in at least thirty-eight (38) of these cases expressly found the YAHOO! Mark to be famous.
ii. Respondent’s Infringing Activities and Bad-Faith Acts
(1) On May 8, 2008, long after Complainant began using its YAHOO! Mark, long after Complainant’s YAHOO! Mark became famous worldwide, and long after Complainant registered its YAHOO! Mark in the United States and countries around the globe, Respondent registered the domain name VIDEOYAHOOCOM.COM (“Disputed Domain Name”).
(2) Following the registration of the Disputed Domain Name, Respondent activated the Disputed Domain Name and directed it to a website offering the Disputed Domain Name for sale at a price of $200,000.
(3) On November 23, 2011, Yahoo! emailed a cease and desist letter to Respondent demanding, among other things, the transfer of the Disputed Domain Name.
(4) On November 25, 2011, Respondent sent a non-responsive, profane email in response to Yahoo!’s cease and desist letter.
(5) Sometime after December 19, 2011, Respondent deactivated its prior website, and re-directed the Disputed Domain Name to a new website at www.3aka4ka.com which contained monetized links and advertisements. The copyright notice on the website lists Respondent.
(6) As currently used, the Disputed Domain Name resolves to a website that again offers to sell the domain name to Complainant for $200,000.
b. The Disputed Domain Name is Confusingly Similar to Complainant’s Marks
The Disputed Domain Name is confusingly similar to Complainant’s YAHOO! Mark for the reasons set forth below.
i. The YAHOO! Mark is an Arbitrary, Distinctive, Strong, and Famous Trademark
The distinctive and arbitrary nature of the YAHOO! Mark supports the argument that it is highly unlikely that Respondent could think that the Disputed Domain Name would not be confusingly similar to the YAHOO! Mark. See Yahoo! Inc. v. Finance Ya Hoo a/k/a Victor Lashenko et al., D2002-0694 (WIPO Sept. 20, 2002) (finding that the arbitrary nature of the YAHOO! mark contributed to a likelihood of confusion with domain names incorporating the “yahoo” name and another generic term, including <financeyahoo.com>, <gamesyahoo.com>, and others).
ii. The Disputed Domain Name Merely Adds Generic or Descriptive Terms to an Internationally Famous Trademark
In addition, the Disputed Domain Name is confusingly similar to Complainant’s YAHOO! Mark because it is comprised of the YAHOO! Mark and the generic terms “video” and “com”. Combining the YAHOO! Mark with the generic or descriptive terms “video” and “com” is a minor difference that renders the Disputed Domain Name confusingly similar to the YAHOO! Mark. Indeed, several panels have found that the addition of the generic or descriptive term “video” did not obviate the confusing similarity between a domain name containing a mark and that mark. E.g., America Online, Inc. v. Am Tech Video, Inc., FA 0203000105931 (Nat. Arb. Forum April 22, 2002) (stating that the addition of the generic term video to the domain <aolvideos.com> “does not distinguish the domain [name] from Complainant’s AOL mark; thus, the disputed domain [name is] confusingly similar to the mark”); see also C-SPAN v. Domain Name Proxy, LLC, FA 1009001347404 (Nat. Arb. Forum October 28, 2010) (finding that the addition of the generic term “video” to the domain <cspanvideo.org> did not create a domain name distinct from the C-SPAN mark).
Several panels have also found that the addition of the generic term “com” does not defeat a confusing similarity claim. E.g., Borders Properties, Inc. v. Ian Hewitt, FA 0206000114618 (Nat. Arb. Forum July 23, 2002) (finding that the addition of “com” to the domain <borderscom.com> “does not defeat a confusing similarity claim because it takes advantage of a common typographical error. It is a basic mistake to type ‘com’ twice without typing the period after the targeted search item… Therefore, Respondent’s domain name is confusingly similar to Complainant’s mark.”).
Moreover, numerous panels have found that the addition of generic or descriptive terms to the famous YAHOO! Mark rendered the domain name confusing similar to the YAHOO! Mark. See, e.g., Yahoo! Inc. v. Sebastian Müller / Privacy Guard, FA1108001403853 (Sept. 29, 2011) (finding <removeyahoo.com> confusingly similar to YAHOO!); Yahoo! Inc. v. [--], FA 1139567 (Nat. Arb. Forum Mar. 12, 2008) (“Thus, the Panel concludes that the <yahoogreen.com> domain name is confusingly similar to Complainant’s YAHOO! mark, as contemplated by Policy ¶4(a)(i).”); Yahoo! Inc. et al. v. Alex Vorot et al., FA 159547 (Nat. Arb. Forum July 16, 2003) (finding the domain names <yahoocalendar.com>, <yahoocoupons.com>, <yahoogroup.com>, <yahoohealth.com>, <yahoomovie.com>, <yahoobusiness.com>, and <yahoocars.com>, among others, confusingly similar to the YAHOO! Mark); Yahoo! Inc. et al. v. Chan, FA 162050 (Nat. Arb. Forum July 16, 2003) (finding the domain names <yahoogallery.com>, <yahooimages.com>, <yahooresume.com>, and <yahootunnel.com> among others confusingly similar to Complainant’s YAHOO! mark, while remarking “respondent’s additions to Complainants’ marks, with either generic words, strings or letters or numbers, geographic names or other misspelled words do not alter the fact that Complainants’ famous marks [including YAHOO!] are the principal feature of each of these confusingly similar domain names.”).
iii. The Omission or Addition of Punctuation and a gTLD to the Disputed Domain Name is Irrelevant
The omission of the exclamation point from the YAHOO! Mark in the Disputed Domain Name and the addition of a gTLD are irrelevant. First, exclamation points are not permitted in domain names. Indeed, Yahoo!’s main website is available at the domain name YAHOO.COM, which does not contain an exclamation point. Moreover, the dominant portion of Complainant’s mark is YAHOO, so the Disputed Domain Name would be confusingly similar even if exclamation points were permissible. Finally, the addition or omission of punctuation, such as exclamation points, and gTLDs, such as .com, has been routinely ignored by Panels when conducting an analysis of confusing similarity. See, e.g., Yahoo! Inc. v. Domain Manager / Terramonte Corp., FA 1108001403852 (Sept. 26, 2011) (“The Panel finds that the omission of punctuation is not relevant in a confusingly similar determination, especially because the exclamation mark cannot be reproduced in a domain name.”); Dell, Inc. v. Dell Inc. / Dell Domain Administrative Contact, FA 1108001404052 (Nat. Arb. Forum Sept. 22, 2011) (“Hyphens and gTLDs have also repeatedly been found insignificant and irrelevant to a Policy ¶4(a)(i) confusingly similar analysis”) (citing cases); Yahoo! Inc. v. Syed Hussaini, FA 1222425 (Nat. Arb. Forum Oct. 30, 2008) (“The at-issue domain name <yahoomexico.com> is confusingly similar to Complainant’s YAHOO! mark. Complainant’s YAHOO! mark cannot be registered under the current DNS system in its entirety since the exclamation point character is not valid in domain names. The absence of the exclamation point (!) regarding the at-issue domain name is thus of no consequence. [citation omitted] Notably, even if the exclamation point were permitted its absence would not sufficiently differentiate the Complainant’s mark and the at-issue domain name to cause the Panel to reach an alternative conclusion.”); Yahoo! Inc. v. Ratnayake, FA 1142577 (Nat. Arb. Forum Mar. 24, 2008) (“The Panel finds that [r]espondent’s <yahoomail.ws> and <yahooadvertiser.com> domain names are confusingly similar to Complainant’s YAHOO! mark under the parameters of a Policy ¶4(a)(i) analysis. Because exclamation points are not a permitted character in domain names, the disputed domain names do not include the exclamation point found in Complainant’s mark. The absence of this punctuation, however, does not change the analysis under Policy ¶4(a)(i).”).
c. Respondent Has No Legitimate Interest in the Disputed Domain Name
Respondent clearly has no rights or legitimate interest in the Disputed Domain Name for the following reasons.
i. Respondent Is Not Commonly Known by the Disputed Domain Name
Respondent is not and has never been commonly known by the Disputed Domain Name. The name of Respondent, SDN Group, and its administrative contact, Stefan Dimov, bears no similarity to the YAHOO! Mark or VIDEOYAHOOCOM.COM. Indeed, nothing in Respondent’s WHOIS information, on Respondent’s website, or in the record demonstrates that Respondent is commonly known by the Disputed Domain Name, and Complainant has not authorized the Respondent to use its YAHOO! Mark. See, e.g., Yahoo! Inc. v. Junlong Zheng c/o OnlineNIC, FA 1142567 (Nat. Arb. Forum Mar. 25, 2008) (holding respondent has no rights or legitimate interests pursuant to Section 4(c)(ii) because there is no evidence in the record or WHOIS information indicating respondent is commonly known by the disputed domain name and because Complainant did not authorize respondent to use its YAHOO! mark); Yahoo! Inc. v. John Morgan, FA 1195421 (Nat. Arb. Forum July 9, 2008) (“The WHOIS domain name registration information for each of the disputed domain names [<yahoocupid.com> and <yahoocupid.net>] lists the registrant as ‘John Morgan,’ which bears a strong dissimilarity to the disputed domain names. More to the point, there is no inference of any express or implied authority or license on behalf of [r]espondent to use Complainant’s YAHOO! mark in any fashion. The Panel therefore finds that [r]espondent is not commonly known by the disputed domain names, and as such lacks rights and legitimate interests under Policy ¶4(c)(ii).”).
ii. YAHOO! Is an Internationally Famous Name and Mark
Moreover, given the international fame of the YAHOO! Mark, Respondent could not be known by the VIDEOYAHOOCOM.COM domain name. See Yahoo! Inc. and GeoCities v. Eitan Zviely a/k/a comyahoo.com, et al., FA 162060 (Nat. Arb. Forum July 24, 2003) (finding “[t]he worldwide fame of Complainant’s marks permit a finding that anyone other than Complainant could [not] be commonly known as YAHOO! . . . ” and that the respondent could therefore not have shown that it was commonly known by any of the disputed domain names pursuant to Section 4(c)(ii) of the UDRP).
iii. Offer to Sell Domain Name
The Disputed Domain Name currently resolves to a website that offers to sell the Disputed Domain Name for $200,000, as it did previously. Numerous UDRP panels have held that registering a domain name that incorporates another party’s mark, with the intention of selling the domain name to the trademark holder, is evidence that the registrant has no legitimate interest in the domain name. See, e.g., PrinterOn Corporation v. Premiere Global Services, FA 744560 (Nat. Arb. Forum August 24, 2006) (holding that the Respondent’s solicitation of business from the Complainant demonstrates that the Respondent has no legitimate interest in the domain name at issue).
iv. The Disputed Domain Name Hosted a Competing Commercial Website
After Yahoo! sent a cease and desist letter to Respondent, Respondent then re-directed the Disputed Domain Name to a competing commercial website. Respondent’s use of the Disputed Domain Name that contains the famous YAHOO! Mark to host a competing website with monetized links and advertisements that redirects users to other competing websites is not a bona fide offering of goods or services, is not a legitimate noncommercial or fair use. Because the Disputed Domain Name contains the famous YAHOO! Mark and hosts a competing website, consumers are likely to be confused that the website and the links at the Disputed Domain Name are approved of, sponsored by, or otherwise associated with Yahoo! and its high quality Internet services because of the reputation of the YAHOO! brand. Moreover, based on the facts above, Complainant is clearly receiving click-through fees when users click on its links and/or advertisements to visit such sites. Finally, nothing in the record suggests that Respondent is making a noncommercial or fair use of the Yahoo! Mark. Panels have routinely found that such use of a domain name does not constitute a bona fide offering of goods or services, or is a legitimate noncommercial or fair use. E.g., Citigroup Inc. v. Adamo Cardosi, FA0605000708953 (Nat. Arb. Forum June 28, 2006) (finding Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business while obtaining click-through fees 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)); WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that a respondent’s use of a disputed domain name to redirect Internet users to websites unrelated to a complainant’s mark, websites where that respondent presumably received a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003); Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).
d. Respondent’s Bad Faith Under Section 4(b) of the UDRP
Respondent’s registration and use of the Disputed Domain Name squarely meet the grounds of bad faith outlined in the UDRP, as well as additional grounds of bad faith defined in previous UDRP decisions.
i. Registration of a Famous Name and Mark
Respondent undoubtedly registered the Disputed Domain Name in bad faith with actual knowledge of Complainant’s rights in its YAHOO! Mark because Complainant’s YAHOO! Mark is internationally famous and is registered in the United States and elsewhere around the world. Indeed, Respondent clearly knew that the inclusion of the YAHOO! Mark in the Disputed Domain Name would serve to draw traffic to the Disputed Domain Name, capitalizing upon the fame of the YAHOO! Mark. Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the UDRP. See, e.g., Yahoo! Inc. v. Sebastian Müller / Privacy Guard, FA1108001403853 (Sept. 29, 2011) (“Respondent undoubtedly registered the <removeyahoo.com> domain name with actual knowledge of Complainant’s rights in the YAHOO! mark because the mark is internationally famous”); Yahoo! Inc. v. Yuan Zhe Quan, FA 117877 (Nat. Arb. Forum Oct. 10, 2002) (“[R]espondent’s registration of the domain names with knowledge of Complainant’s rights was in bad faith because “the YAHOO! mark has developed into one of the most famous marks associated with the Internet by way of the mark’s use on the highly popular <yahoo.com> website.”); Yahoo! Inc. v. Denis Jalbert, FA 166020 (Nat. Arb. Forum Aug. 26, 2003) (holding respondent registered the disputed domain names including <yahhoowebcam.com> and <yahhoowebcams.com> in bad faith with knowledge of Complainant’s rights in its YAHOO! Mark by virtue of Complainant’s registration of its mark in Canada, where respondent is located, and in the United States).
ii. Offer to Sell Domain Name
Respondent offered and currently offers to sell the Disputed Domain Name for $200,000. It is well established by numerous UDRP panels that registering a domain name that incorporates another party’s trademark, with the intention of selling the domain name to the trademark holder, is evidence of bad faith. See, e.g., Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum September 30, 2003) (“Respondent’s general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶4(b)(i).”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶4(b)(i) where it offered for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum October 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶4(b)(i)).
iii. Intent to Disrupt Competitor’s Business
By registering the Disputed Domain Name to trade off Complainant’s goodwill in the famous YAHOO! Mark and to link to either a website offering to sell the domain name or a competing commercial website, Respondent had the clear goal to disrupt the business of the prior existing Yahoo! services by diverting Internet traffic meant for Complainant’s websites to Respondent’s own for commercial gain. E.g., Yahoo! Inc. v. Sebastian Müller / Privacy Guard, FA1108001403853 (Sept. 29, 2011) (finding bad faith under Section 4(b)(iii) because of “competitive relationship between [] complainant and respondent”); Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006); Harrod’s Ltd. V. Harrods Univ. of Applied n Allied Sciences, 2006 UDRP LEXIS 630 (UDRP 2006) (“The fact that the Respondent has not actually constructed a website which reflects in any way the descriptive element of the domain name—“university”—or which offers even a scintilla of justification for the use of the HARRODS Trademark, confirms that this is an abusive registration which was clearly made in bad faith.”). Indeed, Registrant is using the Disputed Domain Name to link to a website that appears to be in open competition with Complainant’s websites. E.g., Control Techniques Ltd. V. Lektronix Ltd., 2006 UDRP LEXIS 558 (UDRP 2006) (finding bad faith where “the Respondent is using the domain name to run a business in open competition with the Complainant . . . it is equally clear that the Respondent is trying by means of the domain names to divert or siphon off as many [customers] as it can to get the business for itself.”).
iv. Intent to Attract, for Commercial Gain, Internet Users to the Disputed Domain Names by Creating a Likelihood of Confusion with Complainant’s Mark and Collecting Click-through Fees
Respondent’s registration and use of the Disputed Domain Names also constitutes bad faith under Section 4(b)(iv) of the Policy. As demonstrated above, the Disputed Domain Name is confusingly similar to Complainant’s YAHOO! Mark. By registering a confusingly similar domain name to Complainant’s Mark and offering to sell the Disputed Domain Name at its website and previously the hosting a competing website at that domain name to link to competing websites, Respondent has the clear goal of attracting Internet Users to Respondent’s competing website for commercial gain by either selling the Disputed Domain Name or creating a likelihood of confusion with Complainant’s Mark and generating click-through fees. Indeed, when the Disputed Domain Name hosted a competing linking website, consumers were likely to be confused when they saw the Disputed Domain Name and believed that the website at the Disputed Domain Name and its monetized links were approved of, sponsored by, or otherwise associated with Yahoo! and its high-quality Internet services because of the reputation of the YAHOO! brand. Again, through its recent use of the Disputed Domain Name, Respondent was either trying to sell the Disputed Domain Name for $200,000 or was receiving advertising and click-through fees when users click on the links at the Disputed Domain Name’s current website. Intentionally causing such confusion for commercial gain is strong evidence of bad faith. E.g., Citigroup Inc. v. Adamo Cardosi, FA0605000708953 (Nat. Arb. Forum June 28, 2006) (finding Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to competing websites unrelated to Complainant's business while obtaining click-through fees is evidence of bad faith under Section 4(b)(iv) of the Policy); Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's mark when the domain name resolves to commercial websites that respondent was using the domain name in bad faith pursuant to Policy ¶4(b)(iv)); Yahoo! Inc. v. Sebastian Müller / Privacy Guard, FA1108001403853 (Sept. 29, 2011) (“By providing . . . competing . . . services at the disputed domain name, however, the Panel concludes that Respondent intended to profit in some manner from its use of the disputed domain name. The Panel infers that Respondent intentionally registered the disputed domain name containing Complainant’s well-known YAHOO! mark to generate higher traffic to the resolving website and create a likelihood of confusion as to the source, sponsorship, or affiliation of Respondent’s website.”); DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); Kapula Candies (Proprietary) Ltd. v. Wayne Stuart Dixon, 2002 UDRP LEXIS 1083 (UDRP 2002) (“[A] domain name that is identical to the Complainant’s registered trademark to redirect Internet users to a website of the Respondent’s which sells goods which compete with those . . . sold by the Complainant is strong evidence . . . of bad faith”); Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
v. Respondent Has Provided False or Incomplete Whois
Respondent has clearly provided false Whois, or at the least, incomplete Whois. Here, Respondent has provided the street address Sofia, Sofia, Sofia 1000 Bulgaria in the relevant fields. While Sofia is a city in Bulgaria, Respondent has not provided a sufficient street number to contact Respondent there. Respondent has a duty to be honest and complete when registering domain names. Registering a domain name with incorrect or incomplete WHOIS information constitutes bad faith. See, e.g., Farouk Systems Inc. v. David, D2009-1245 (WIPO November 24, 2009) (“An applicant for registration of a domain name has a duty to act honestly. The deliberate use of fictitious and/or ineffective contact particulars to register a domain name in the absence of extenuating circumstances speaks of bad faith registration and intention to use, and the subsequent use of the domain name will accordingly be tainted by bad faith as well.”); see also Birkenstock Orthopädie GmbH & Co. KG v. ugg outlets, D2010-0771 (WIPO July 20, 2010) (finding bad faith where “the address used by the Respondent for registering the Disputed Domain Name is highly suspicious.”).
B. Respondent failed to submit a Response in this proceeding.
Complainant Yahoo! Inc. is an international digital media company whose content includes news, shopping, photo sharing, finance, and electronic mail service. Complainant holds multiple trademark registrations for its YAHOO! mark with multiple trademark registries, including the United States Patent and Trademark Office (“USPTO”) and the Patent Office of the Republic of Bulgaria (“PORB”).
USPTO
Reg. No. 2,040,691 registered January 2, 1996;
Reg. No. 2,187,292 registered September 22, 1997; and
Reg. No. 2,040,222 registered January 24, 1996.
PORB
Reg. No. 30,660 registered May 23, 1997;
Reg. No. 30,661 registered May 23, 1997;
Reg. No. 58,44Y registered May 23, 1997; and
Reg. No. 64,756 registered April 23, 2008.
Respondent SDN Group registered the <videoyahoocom.com> domain name on May 8, 2008. Respondent’s disputed domain name previously resolved to a website that offered the domain name for sale for the price of $200,000.00. The domain name then resolved to a website that displays hyperlinks and advertisements. Currently, the domain name resolves to a website displaying an unrelated and nonsensical photograph.
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 draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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 holds multiple trademark registrations for its YAHOO! mark with multiple trademark registries, including the USPTO and the PORB:
USPTO
Reg. No. 2,040,691 registered January 2, 1996;
Reg. No. 2,187,292 registered September 22, 1997; and
Reg. No. 2,040,222 registered January 24, 1996.
PORB
Reg. No. 30,660 registered May 23, 1997;
Reg. No. 30,661 registered May 23, 1997;
Reg. No. 58,44Y registered May 23, 1997; and
Reg. No. 64,756 registered April 23, 2008.
The Panel determines Complainant has established rights in the YAHOO! mark under Policy ¶4(a)(i) by its numerous registrations with multiple trademark agencies throughout the world. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark . . . through its numerous registrations with many governmental trademark authorities . . . including the State Intellectual Property Office of the People’s Republic of China . . . and the United States Patent and Trademark Office . . .”). Other panels have agreed with this conclusion.
Complainant claims the disputed domain name <videoyahoocom.com> is confusingly similar to its YAHOO! mark. Complainant claims adding the descriptive term “video,” the generic term “com,” and the generic top-level domain (“gTLD”) “.com” and removing the exclamation point from the mark do not sufficiently distinguish the domain name from its mark. First of all, a domain name cannot exist without a gTLD or ccTLD, so the addition of a gTLD or ccTLD cannot adequately distinguish a domain name from a mark (otherwise infringement would be impossible to prove for a typical mark). Second, an exclamation point is not within the permissible character set for a domain name. Therefore, no domain name can contain an exclamation point. The Panel is faced with two alternatives:
1. A domain name can never be confused with a mark which contains an exclamation point (clearly not accurate from a factual view point); and
2. Holding a domain name may be confused with a mark that contains an exclamation point (which appears to be factually correct):
This Panel holds in favor of the latter.
The Panel determines these alterations do not adequately set apart the domain name from Complainant’s mark for the purposes of Policy ¶4(a)(i). 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); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel concludes Respondent’s <videoyahoocom.com> domain name is confusingly similar to Complainant’s YAHOO! mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant argues Respondent does not possess any rights or legitimate interests in the <videoyahoocom.com> domain name. Under Policy ¶4(a)(ii), Complainant must present a prima facie case supporting the allegations. After this requirement is met, the burden of proof shifts to the respondent to show why it has rights or interests in the disputed domain name. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). The Panel finds Complainant successfully presented a prima facie case. As a result of Respondent’s failure to answer to the proceedings, the Panel may proceed under the presumption Respondent lacks rights or legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). Out of an abundance of caution, the Panel will review the record to make a finding as to whether or not Respondent has rights or legitimate interests in the disputed domain name under Policy ¶4(c).
Complainant argues Respondent is not commonly known by the <videoyahoocom.com> domain name. Complainant has not authorized Respondent to use the YAHOO! mark in any way. Complainant also argues Respondent is not commonly known by the domain name. The WHOIS information identifies “SDN Group” as the registrant of the disputed domain name, which does not imply Respondent is in any way known by the mark. The Panel determines Respondent is not known by the disputed domain name based upon this record. Respondent cannot claim rights or legitimate interests in the name according to Policy ¶4(c)(iii). See 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); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (“Given the Complainants’ established use of their famous VICTORIA’S SECRET marks it is unlikely that the Respondent is commonly known by either [the <victoriasecretcasino.com> or <victoriasecretcasino.net>] domain name.”).
Complainant argues Respondent is not making a bona fide offering of goods or services in relation to the disputed domain name, as evidenced by its attempt to sell the name for an inflated price. The <videoyahoocom.com> domain name previously resolved to website that offered to sell the domain name for $200,000.00. The Panel concludes Complainant’s registration of the disputed domain name with the intent to sell it for an excessive price amounts to a lack of bona fide offering of goods and services under Policy ¶4(c)(i) and does not constitute a legitimate noncommercial or fair use under Policy ¶4(c)(iii). George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).
Complainant argues Respondent’s previous use of the disputed domain name does not constitute 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). Complainant contends that following its cease and desist letter to Respondent, the disputed domain name was re-directed to a competing commercial website. The screen shots reveal a website containing links and advertisements that are likely to confuse visitors to the website. The Panel determines such use of a domain name to misdirect Internet users to either competing hyperlinks or unrelated content does not demonstrate a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or 4(c)(iii). See 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)); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business 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).”).
Complainant argues Respondent’s current use of the disputed domain name does not constitute 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). Currently, the domain name forwards to another web page at another domain name (www.3aka4ka.com). Complainant claims this is a competing web site which contains advertising links. The Panel finds using a domain name in such a manner does not represent a bona fide offering of goods or services, or a noncommercial or fair use under Policy ¶¶4(c)(i) or 4(c)(iii). See Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that the respondent’s use of the complainant’s WELLS FARGO mark to redirect Internet users to a domain name featuring magazine subscriptions was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant argues Respondent demonstrates bad faith in registering and using the <videoyahoocom.com> domain name because Respondent offered to sell the domain name for more than its out-of-pocket registration costs. The original website led to a page offering the domain name for sale for $200,000.00. This Panel is willing to assume Respondent’s out of pocket costs for the domain name were substantially less than $200,000.00. The Panel finds registering a domain name that includes another party’s trademark in its entirety, with the intention of selling the domain name to the holder of the trademark, shows bad faith registration and use under Policy ¶4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).
Complainant argues Respondent’s prior use of the <videoyahoocom.com> domain name indicates disruption to Complainant’s business, as evidenced by the competing hyperlinks displayed on the resolving website. Complainant claims Respondent used the goodwill built in the YAHOO! mark to siphon consumers to its own website and profit from the confusion. The Panel finds Respondent registered and used the domain name in bad faith under Policy ¶4(b)(iii) by diverting Internet traffic to its website to mislead consumers with competing links. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶4(b)(iii).”); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶4(b)(iii)).
Complainant argues Respondent used the disputed domain name to purposely direct Internet traffic away from Complainant’s website and to Respondent’s website for commercial profit, which is evidence of bad faith registration and use under Policy ¶4(b)(iv). Complainant contends the <videoyahoocom.com> domain name fosters confusion as to the relationship between Complainant’s YAHOO! mark and Respondent’s website by formerly redirecting Internet users to a website displaying hyperlinks whose corresponding websites belong to businesses in competition with Complainant’s business. The Panel finds Respondent attempted to take advantage of the fame and reputation connected with the YAHOO! mark to mislead consumers to its website for financial gain, which is evidence of bad faith registration and use under Policy ¶4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds the disputed domain name currently forwards to a web site Complainant argues is a competing web site with numerous links. The Panel presumes Respondent commercially benefits from this use in some way by redirecting Internet users interested in Complainant to Respondent’s unrelated website (probably by collecting “click through” fees). The Panel concludes Respondent registered and currently uses the <videoyahoocom.com> domain name in bad faith pursuant to Policy ¶4(b)(iv) because Respondent is attempting to create, and profit from, Internet user confusion. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
Complainant claims Respondent had constructive and actual notice of Complainant's rights in the YAHOO! mark before Respondent registered the domain name. Complainant claims Respondent had actual notice of the mark because of the international use of the mark and its trademark registrations with the USPTO and the PORB. Respondent’s response to the cease and desist letter was short, very clear and not suitable for quoting in this decision, despite its brevity and this Panel’s proclivity for quoting to original documents for transparency reasons. The Panel concludes Respondent had actual notice of Complainant's mark and therefore registered the disputed domain names in bad faith under Policy ¶4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration)."; see also Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <videoyahoocom.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, March 13, 2012
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