national arbitration forum

 

DECISION

 

Yahoo! Inc. v. huafang liu

Claim Number: FA1201001426589

 

PARTIES

Complainant is Yahoo! Inc. (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington D.C., USA.  Respondent is huafang liu (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yahoosir.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2012; the National Arbitration Forum received payment on January 25, 2012.

 

On January 26, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <yahoosir.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 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@yahoosir.com.  Also on January 27, 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 Honorable Paul A. Dorf (Ret.) 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <yahoosir.com> domain name is confusingly similar to Complainant’s YAHOO! mark.

 

2.    Respondent does not have any rights or legitimate interests in the <yahoosir.com> domain name.

 

3.    Respondent registered and used the <yahoosir.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Yahoo! Inc., operates an international digital media company that covers news, shopping, photo sharing, and finance for Internet users. Yahoo! Inc. has done business under the YAHOO! mark since 1994 and owns trademark registration with the United States Trademark and Patent Office (“USPTO”) and the State Administration for Industry and Commerce of the People's Republic of China (“SAIC”) for the YAHOO! mark:

 

USPTO

Reg. No. 2,040,691              registered February 25, 1997;

Reg. No. 2,187,292              registered September 8, 1998;

Reg. No. 2,040,222              registered February 25, 1997; and

Reg. No. 2,403,227              registered November 13, 2000.

 

SAIC

Reg. No. 1,109,289              registered September 21, 1997; and

Reg. No. 1,327,419              registered October 21, 1999.

 

Complainant, Huafang Liu, registered the <yahoosir.com> domain name on January 6, 1998. Respondent’s disputed domain name resolves to a website that contains an information blog which provides information regarding online business and technology and also displays hyperlinks to Complainant’s websites, as well as competing websites.

 

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 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 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.

 

Identical and/or Confusingly Similar

 

Complainant owns trademark registrations for its YAHOO! mark with the USPTO and the SAIC:

 

USPTO

Reg. No. 2,040,691              registered February 25, 1997;

Reg. No. 2,187,292              registered September 8, 1998;

Reg. No. 2,040,222              registered February 25, 1997; and

Reg. No. 2,403,227              registered November 13, 2000.

 

SAIC

Reg. No. 1,109,289              registered September 21, 1997; and

Reg. No. 1,327,419              registered October 21, 1999.

 

The Panel determines that by registering the YAHOO! mark with multiple trademark agencies, Complainant has successfully secured rights in the mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s State Intellectual Property Office was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)).

 

Complainant argues that the <yahoosir.com> domain name is confusingly similar to its YAHOO! mark. Complainant bases its allegation on the addition of the generic word “sir,” the addition of the generic top-level domain (“gTLD”) “.com,” and the removal of the exclamation point from the YAHOO! mark. The Panel determines that the changes made in the disputed domain name are not enough to render the name unique from Complainant’s YAHOO mark under Policy ¶ 4(a)(i). See Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to the complainant’s marks and likely to mislead Internet users into believing that products and services offered by the respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Due to the evidence presented, the Panel finds that Respondent’s <yahoosir.com> domain name is confusingly similar to Complainant’s YAHOO! mark under Policy ¶ 4(a)(i).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant argues that Respondent has no rights or legitimate interests in the <yahoosir.com> domain name. Complainant must make a prima facie showing under Policy ¶ 4(a)(ii) supporting these allegations. After Complainant has successfully satisfied that requirement, the burden of proof then shifts to Respondent to demonstrate that it does have rights or interests in the disputed domain name. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel finds that Complainant successfully established a prima facie case. Because Respondent did not reply to these proceedings, the Panel may infer that Respondent lacks any rights or legitimate interests in the disputed domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).  However, the Panel chooses to analyze the record and determine if Respondent owns any rights and legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Complainant argues that Respondent is not commonly known by the <yahoosir.com> domain name. The WHOIS information lists the domain name registrant as “Huafang Liu,” which bears no resemblance to the YAHOO! mark or the disputed domain name, nor is there any other evidence on the record that would support a conclusion that Respondent is commonly known by the domain name. Complainant further alleges that it has not authorized the use of its YAHOO! domain name by Respondent. The Panel concludes that the lack of evidence that Respondent is commonly known by the disputed domain name supports a finding that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”).

 

Complainant argues that Respondent is using the disputed domain name in a manner not connected with a bona fide offering of goods or services under Policy ¶ 4(c)(i) and also that Respondent’s use does not constitute a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). The <yahoosir.com> domain name resolves to a website that contains the stylized YAHOO! mark and provides information regarding online business and technology and links to competing websites. Complainant claims that Respondent uses the fame associated with the YAHOO! mark to draw Internet traffic to its website, which does not demonstrate any manner of legitimate noncommercial or fair use of the mark. Further, Complainant alleges that the displayed hyperlinks generate income for Respondent via “click-through” fees, which does not amount to a bona fide offering of goods or services. The Panel finds that Respondent’s use of the disputed domain name to divert Internet traffic to its website by taking advantage of the famous YAHOO! mark does not amount to a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

The Panel concludes that Respondent has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s use of the disputed domain name constitutes a disruption to its business because the <yahoosir.com> domain name diverts Internet traffic meant for Complainant’s website to Respondent’s website. Complainant alleges that the content within Respondent’s website is in direct competition with Complainant’s website because both provide information regarding the Internet, and Respondent’s website includes hyperlinks to website whose contents compete with Complainant’s business.. The Panel finds that misleading Internet users seeking Complainant’s website to the website associated with the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

 

Complainant argues that Respondent’s use of the disputed domain name to reroute Internet traffic to the corresponding website in an effort to make a profit demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). Complainant argues that the <yahoosir.com> domain name generates confusion as to the relationship between Complainant’s YAHOO! mark and Respondent’s website and that Respondent makes financial gains from the pay-per-click fees generated when confused Internet users click on the displayed links. Complainant also alleges that Respondent takes advantage of the fame and status of Complainant’s mark by registering the confusingly similar domain name in order to attract Internet users to its site, which is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). The Panel finds that Respondent’s use of the domain name to attract Internet users, confuse consumers, and profit from the confusion constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites.  Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); 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).

 

Complainant argues that the fame and notoriety of Complainant's YAHOO! mark renders it implausible that Respondent could have registered the <yahoosir.com> domain name without actual and constructive knowledge of Complainant's rights in the mark. The Panel determines that arguments based on constructive notice to indicate bad faith are immaterial, however, because UDRP case precedent rejects a finding of bad faith due to constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel does find that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."); 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 concludes that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <yahoosir.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  March 8, 2012

 

 

 

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