Yahoo! Inc. v. Dill Dough d/b/a Yasexhoo
Claim
Number: FA0403000245971
Complainant is Yahoo! Inc. (“Complainant”), represented
by David M. Kelly, of Finnegan, Henderson, Farabow, Garrett & Dunner L.L.P., 1300 I Street NW, Washington, DC
20005-3315. Respondent is Dill Dough d/b/a Yasexhoo (“Respondent”),
1455 Talevast Road, Sarasota, FL 34243.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <yasexhoo.com>, registered with Go
Daddy Software, Inc.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 18, 2004; the Forum received a hard copy of the
Complaint on March 19, 2004.
On
March 19, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum
that the domain name <yasexhoo.com> is registered with Go Daddy
Software, Inc. and that Respondent is the current registrant of the
name. Go Daddy Software, Inc. has verified that Respondent is bound by
the Go Daddy Software, 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
March 23, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 12, 2004 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@yasexhoo.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
April 21, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <yasexhoo.com>
domain name is confusingly similar to Complainant’s YAHOO mark.
2. Respondent does not have any rights or
legitimate interests in the <yasexhoo.com> domain name.
3. Respondent registered and used the <yasexhoo.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 delivers a
branded network of comprehensive searching, directory, information,
communication, and shopping services and other online activities to millions of
Internet users daily. Complainant holds
several registrations for the YAHOO! mark with the U.S. Patent and Trademark
Office (“USPTO”), including Reg. Nos. 2,040,222 and 2,564,976 (registered on
February 25, 1997 and April 30, 2002, respectively). Complainant uses the <yahoo.com> domain name in conjunction
with its business.
Respondent
registered the <yasexhoo.com> domain name on February 18,
2004. Respondent’s domain name offers
web search services, directory services, and shopping services, which focus
exclusively on adult entertainment. The
domain name’s website contains a disclaimer that states “[i]f you are looking
for serious white collar content and the mostest bestest [sic] site in the
whole wide world ‘IMHO’ check out <yahoo.com>.”
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.
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 rights in the YAHOO mark through registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Respondent’s <yasexhoo.com>
domain name is confusingly similar to Complainant’s mark because the
disputed domain name incorporates Complainant’s mark and inserts the generic
term “sex” within the mark. See
Victoria's Secret v. Victoria's Cyber Secret, FA 96536 (Nat. Arb. Forum
Mar. 9, 2001) (finding that the addition of the terms “sex” and “sexy” in
between the words of Complainant’s VICTORIA’S SECRET mark was insufficient to
distinguish the domain names <victoriassexsecret.com> and
<victoriassexysecret.com> from the mark); see also Yahoo! Inc. v. Casino Yahoo, Inc.,
D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name
<casinoyahoo.com> is confusingly similar to Complainant’s mark).
Furthermore, the
addition of the generic top-level domain “.com” to the mark is irrelevant in
determining whether the domain name is confusingly similar to the YAHOO!
mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to Complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name POMELLATO is not
relevant); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar).
Although,
Respondent’s website located at the <yasexhoo.com> domain name
contains a disclaimer with a link to Complainant’s website, this is
insufficient to prevent initial user confusion and therefore is insufficient to
circumvent the Panel from finding the domain name confusingly similar to
Complainant’s mark. See Alta Vista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000)
(finding that since a disclaimer does not, and could not, accompany the domain
name, then the “domain name attracts the consumer’s initial interest and the
consumer is misdirected long before he/she has the opportunity to see the
disclaimer”); see also Las
Vegas Sands, Inc. v. Red Group,
D2001-1057 (WIPO Dec. 6, 2001) (justifying the conclusion that Respondent
wishes to trade on the fame of Complainant’s trademark, regardless of the
presence of a small-print disclaimer that is unavailable to Internet users
until they have already entered the gambling site, because the disclaimer fails
to remedy initial confusion).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to contest the allegations of the Complaint; therefore, the Panel
presumes that Respondent lacks rights and legitimate interests in the <yasexhoo.com>
domain name. See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
Respondent lacks
rights and legitimate interests in the <yasexhoo.com> domain name
because the record fails to establish that Respondent is commonly known by the
domain name. Granted, the WHOIS
information for the <yasexhoo.com> domain name states that the
registrant is YASEXHOO, but this alone is insufficient to show that Respondent
is commonly known by the domain name.
Thus, the Panel finds that Respondent lacks rights and legitimate rights
in the domain name pursuant to Policy ¶ 4(c)(ii). See Yoga
Works, Inc. v. Arpita,
FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not
“commonly known by” the <shantiyogaworks.com> domain name despite listing
its name as “Shanti Yoga Works” in its WHOIS contact information because there
was “no affirmative evidence before the Panel that Respondent was ever
'commonly known by' the disputed domain name prior to its registration of the
disputed domain name.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail"); see
also Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate
interests where (1) Respondent is not a licensee of Complainant; (2)
Complainant’s prior rights in the domain name precede Respondent’s
registration; (3) Respondent is not commonly known by the domain name in
question).
Furthermore,
Respondent’s <yasexhoo.com> domain name resolves to a website that
provides web search services, directory services, and shopping services, which
focus exclusively on adult entertainment.
Respondent’s use of the domain name does not constitute 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). See Sony Kabushiki Kaisha v. Domain
rajadomain@yahoo.com +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16, 2002)
(finding that Respondent’s use of its domain name in order to divert Internet
users to a website that offers search engine services and links to adult
orientated websites was not considered to be in connection with a bona fide
offering of goods or services or a legitimate noncommercial or fair use
pursuant to Policy); see also McClatchy Mgmt. Serv., Inc. v.
Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that
Respondent’s use of the disputed domain names to divert Internet users to a
website that features pornographic material, had been “consistently held” to be
neither a bona fide offering of goods or services . . . nor a legitimate
noncommercial or fair use); see also ABB Asea Brown Boveri Ltd. v.
Quicknet, D2003-0215 (WIPO May 26, 2003) (stating that the fact that the
“use of the disputed domain name in connection with pornographic images and
links tarnishes and dilutes [Complainant’s mark]” was evidence that Respondent
had no rights or legitimate interests in the disputed domain name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <yasexhoo.com>
domain name takes advantage of the goodwill associated with Complainant’s
mark and the domain name is presumably used for commercial benefit. The Panel finds that Respondent’s use of the
misleading domain name for commercial gain constitutes bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See
H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8,
2003) (finding that the disputed domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use
of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using Complainant’s famous marks and
likeness); see also G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because
Respondent was using the confusingly similar domain name to attract Internet
users to its commercial website).
In addition,
Respondent’s <yasexhoo.com> domain name is used in connection with
adult –oriented websites. The Panel
finds that Respondent’s use of the domain name to associate with adult-oriented
websites is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Microsoft Corp. v.
Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of
Complainant’s mark to post pornographic photographs and to publicize hyperlinks
to additional pornographic websites evidenced bad faith use and registration of
the domain name); see also Ty,
Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent
contrary evidence, linking the domain names in question to graphic,
adult-oriented websites is evidence of bad faith); see also Nat’l
Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL,
D2001-1387 (WIPO Jan. 23, 2002) (“it is now well known that pornographers rely
on misleading domain names to attract users by confusion, in order to generate
revenue from click-through advertising, mouse-trapping, and other pernicious
online marketing techniques”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <yasexhoo.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
May 5, 2004
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