national arbitration forum
DECISION
Yahoo! Inc. and Overture Services, Inc.
v. J. Lee
Claim Number: FA0503000436932
PARTIES
Complainant is Yahoo! Inc. and Overture
Services, Inc. (“Complainant”), represented by David M. Kelly of Finnegan,
Henderson, Farabow, Garrett and Dunner, L.L.P., 901 New York Avenue NW,
Washington, DC 20001. Respondent is J. Lee (“Respondent”), 18 Salisbury
Road, Kowloon, Hong Kong.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <2005yahoo.com>, <aktavista.com>, <chatyaho.com>, <e-yahoo.net>,
<fifaworldcupyahoo.com>, <groups-yahoo.com>, <loginyahoo.com>, <musicayahoo.com>, <musicyahoo.com>, <muyahoo.com>, <myyaoo.com>, <postalyahoo.com>, <wwwhyahoo.com>, <wwwiyahoo.com>, <wwwlaunchyahoo.com>, <wwwmusicyahoo.com>, <wwwstoreyahoo.com>, <wwwtyahoo.com>, <wwwuyahoo.com>, <wwwyahgoo.com>, <wwwyahoomusic.com>, <wwwyahyoo.com>,
<wwwyhahoo.com>, <wwwytahoo.com>,
<wwwyuahoo.com>, <wwwyyahoo.com>, <yabhoo.com>, <yaghoomail.com>, <yahgoomail.com>, <yahjoomail.com>, <yahoj.com>, <yahomai.com>, <yahomal.com>,
<yahooamericangreeting.com>, <yahoohroups.com>, <yahooil.com>, <yahooit.com>, <yahoomessener.com>, <yahoomessenge.com>, <yahoomessengr.com>, <yahooml.com>, <yahoomobil.com>, <yahoomssenger.com>, <yahoomusica.com>, <yaoomessenger.com>, <yayoo.net>, <ydahoo.com>, <yfahoo.com>,
<yxahoo.com>, <yzahoo.com>, <geocioties.com>, <geocitied.com>, <iahoomail.com>, <pornoyahoo.com>, <tyahoomail.com>, <uyahoomail.com>, <www0yahoo.com>, <wwwwyahoomail.com>, <wwwyahoo.biz>, <yagoo.biz>, <yahoc.com>, <yahooai.com>,
<yahooal.com>, <yahoomaol.com>, <yahoomarket.com>, <yahoomessneger.com>, <yahoomi.com>, <yhahoomail.com> and <yzhoomail.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.
PANEL
The undersigned certifies that he has
acted independently and impartially and, to the best of his knowledge, has no
known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr.
(Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on March 8, 2005; the National
Arbitration Forum received a hard copy of the Complaint on March 9, 2005.
On March 14, 2005, Iholdings.com, Inc.
d/b/a Dotregistrar.com, confirmed by e-mail to the National Arbitration Forum
that the domain names <2005yahoo.com>,
<aktavista.com>, <chatyaho.com>, <e-yahoo.net>,
<fifaworldcupyahoo.com>, <groups-yahoo.com>, <loginyahoo.com>, <musicayahoo.com>, <musicyahoo.com>, <muyahoo.com>, <myyaoo.com>, <postalyahoo.com>, <wwwhyahoo.com>, <wwwiyahoo.com>, <wwwlaunchyahoo.com>, <wwwmusicyahoo.com>, <wwwstoreyahoo.com>, <wwwtyahoo.com>, <wwwuyahoo.com>, <wwwyahgoo.com>, <wwwyahoomusic.com>, <wwwyahyoo.com>,
<wwwyhahoo.com>, <wwwytahoo.com>,
<wwwyuahoo.com>, <wwwyyahoo.com>, <yabhoo.com>, <yaghoomail.com>, <yahgoomail.com>, <yahjoomail.com>, <yahoj.com>, <yahomai.com>, <yahomal.com>,
<yahooamericangreeting.com>, <yahoohroups.com>, <yahooil.com>, <yahooit.com>, <yahoomessener.com>, <yahoomessenge.com>, <yahoomessengr.com>, <yahooml.com>, <yahoomobil.com>, <yahoomssenger.com>, <yahoomusica.com>, <yaoomessenger.com>, <yayoo.net>, <ydahoo.com>, <yfahoo.com>,
<yxahoo.com>, <yzahoo.com>, <geocioties.com>, <geocitied.com>, <iahoomail.com>, <pornoyahoo.com>, <tyahoomail.com>, <uyahoomail.com>, <www0yahoo.com>, <wwwwyahoomail.com>, <wwwyahoo.biz>, <yagoo.biz>, <yahoc.com>, <yahooai.com>,
<yahooal.com>, <yahoomaol.com>, <yahoomarket.com>, <yahoomessneger.com>, <yahoomi.com>, <yhahoomail.com> and <yzhoomail.com> are registered
with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the
current registrant of the names. Iholdings.com, Inc. d/b/a Dotregistrar.com has
verified that Respondent is bound by the Iholdings.com, Inc. d/b/a
Dotregistrar.com 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 16, 2005, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of April 5, 2005 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@2005yahoo.com, postmaster@aktavista.com, postmaster@chatyaho.com,
postmaster@e-yahoo.net, postmaster@fifaworldcupyahoo.com,
postmaster@groups-yahoo.com, postmaster@loginyahoo.com,
postmaster@musicayahoo.com, postmaster@musicyahoo.com, postmaster@muyahoo.com,
postmaster@myyaoo.com,
postmaster@postalyahoo.com, postmaster@wwwhyahoo.com,
postmaster@wwwiyahoo.com, postmaster@wwwlaunchyahoo.com,
postmaster@wwwmusicyahoo.com, postmaster@wwwstoreyahoo.com,
postmaster@wwwtyahoo.com, postmaster@wwwuyahoo.com, postmaster@wwwyahgoo.com,
postmaster@wwwyahoomusic.com, postmaster@wwwyahyoo.com, postmaster@wwwyhahoo.com,
postmaster@wwwytahoo.com, postmaster@wwwyuahoo.com, postmaster@wwwyyahoo.com,
postmaster@yabhoo.com, postmaster@yaghoomail.com, postmaster@yahgoomail.com,
postmaster@yahjoomail.com, postmaster@yahoj.com, postmaster@yahomai.com, postmaster@yahomal.com, postmaster@yahooamericangreeting.com,
postmaster@yahoohroups.com, postmaster@yahooil.com, postmaster@yahooit.com,
postmaster@yahoomessener.com, postmaster@yahoomessenge.com,
postmaster@yahoomessengr.com, postmaster@yahooml.com, postmaster@yahoomobil.com,
postmaster@yahoomssenger.com, postmaster@yahoomusica.com,
postmaster@yaoomessenger.com, postmaster@yayoo.net. postmaster@ydahoo.com,
postmaster@yfahoo.com, postmaster@yxahoo.com, postmaster@yzahoo.com,
postmaster@geocioties.com, postmaster@geocitied.com, postmaster@iahoomail.com,
postmaster@pornoyahoo.com, postmaster@tyahoomail.com,
postmaster@uyahoomail.com, postmaster@www0yahoo.com,
postmaster@wwwwyahoomail.com, postmaster@wwwyahoo.biz, postmaster@yagoo.biz,
postmaster@yahoc.com, postmaster@yahooai.com, postmaster@yahooal.com,
postmaster@yahoomaol.com, postmaster@yahoomarket.com,
postmaster@yahoomessneger.com, postmaster@yahoomi.com,
postmaster@yhahoomail.com, and postmaster@yzhoomail.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 National Arbitration Forum transmitted to the parties a
Notification of Respondent Default.
On April 14, 2005, pursuant to
Complainant's request to have the dispute decided by a single-member Panel, the
National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr.
(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."
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
names be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A.
Complainant makes the following assertions:
1. Respondent’s
<2005yahoo.com>, <aktavista.com>, <chatyaho.com>, <e-yahoo.net>,
<fifaworldcupyahoo.com>, <groups-yahoo.com>, <loginyahoo.com>, <musicayahoo.com>, <musicyahoo.com>, <muyahoo.com>, <myyaoo.com>, <postalyahoo.com>, <wwwhyahoo.com>, <wwwiyahoo.com>, <wwwlaunchyahoo.com>, <wwwmusicyahoo.com>, <wwwstoreyahoo.com>, <wwwtyahoo.com>, <wwwuyahoo.com>, <wwwyahgoo.com>, <wwwyahoomusic.com>, <wwwyahyoo.com>,
<wwwyhahoo.com>, <wwwytahoo.com>,
<wwwyuahoo.com>, <wwwyyahoo.com>, <yabhoo.com>, <yaghoomail.com>, <yahgoomail.com>, <yahjoomail.com>, <yahoj.com>, <yahomai.com>, <yahomal.com>,
<yahooamericangreeting.com>, <yahoohroups.com>, <yahooil.com>, <yahooit.com>, <yahoomessener.com>, <yahoomessenge.com>, <yahoomessengr.com>, <yahooml.com>, <yahoomobil.com>, <yahoomssenger.com>, <yahoomusica.com>, <yaoomessenger.com>, <yayoo.net>, <ydahoo.com>, <yfahoo.com>,
<yxahoo.com>, <yzahoo.com>, <geocioties.com>, <geocitied.com>, <iahoomail.com>, <pornoyahoo.com>, <tyahoomail.com>, <uyahoomail.com>, <www0yahoo.com>, <wwwwyahoomail.com>, <wwwyahoo.biz>, <yagoo.biz>, <yahoc.com>, <yahooai.com>,
<yahooal.com>, <yahoomaol.com>, <yahoomarket.com>, <yahoomessneger.com>, <yahoomi.com>, <yhahoomail.com> and <yzhoomail.com> domain names are
confusingly similar to Complainant’s YAHOO!, GEOCITIES, or ALTAVISTA marks.
2. Respondent
does not have any rights or legitimate interests in the domain names.
3. Respondent
registered and used the domain names in bad faith.
B.
Respondent, J. Lee, failed to submit a Response in this proceeding.
FINDINGS
Overture Services, Inc. is a subsidiary
of Yahoo! Inc.; both will be referred to collectively as “Complainant.” Complainant is a global Internet
communications, media and commerce company that delivers a branded network of
comprehensive searching, directory, information, communication, shopping
services and other online activities and features to millions of Internet users
daily. In continuous use since 1994,
Complainant’s YAHOO! mark has become one of the most recognized brands in the
world, with a value of nearly U.S. $3.9 billion.
Complainant’s services under the YAHOO!
mark include both local and international web directory and search services
covering a wide variety of subjects, including but not limited to games, people
searches, astrology and horoscopes, clubs, greetings, corporate network
software and services, travel-related services, real estate and mortgage
information and quotes, movie reviews, news, weather, sports, yellow pages,
maps, auctions, message boards, and various types of entertainment.
Furthermore, Complainant offers a wide
variety of services using the YAHOO! mark together with a descriptive name of
its services, including but not limited to YAHOO! Launch, YAHOO! Mail, YAHOO!
Messenger, YAHOO! Chat, YAHOO! Mobile, YAHOO! Finance, YAHOO! Personals, YAHOO!
Groups, YAHOO! Maps and YAHOO! Shopping.
Complainant also offers personalized services under the MY YAHOO! mark.
In addition, Complainant offers personal
home-page services under the GEOCITIES mark.
The GEOCITIES mark has been used by Complainant and/or its
predecessor-in-interest to identify its website development and hosting
services since at least as early as February 1995. In July 2004, the <geocities.yahoo.com> domain name
received over 35 million page views of which nearly 7 million were from
registered users.
Moreover, Complainant offers online
marketing services including a full suite of Internet search products and
search-related services under the ALTAVISTA mark. The ALTAVISTA mark has been continuously used by Complainant and
its predecessors-in-interest to identify Internet-related services, including
Internet search engine services, since at least as early as December 1995.
Complainant holds trademark registrations
with the United States Patent and Trademark Office (“USPTO”) for the YAHOO!
Mark (Reg. No. 2,040,222 issued February 25, 1997; Reg. No. 2,403,227 issued
November 14, 2000; Reg. No. 2,040,691 issued February 25, 1997; and Reg. No.
2,187,292 issued September 8, 1998).
Additionally, Complainant holds trademark registrations with the USPTO
for the GEOCITIES mark (Reg. No. 2,124,762 issued December 30, 1997 and Reg.
No. 2,424,484 issued January 30, 2001).
Furthermore, Complainant holds trademark registrations with the USPTO
for the ALTAVISTA mark (Reg. 2,047,808 issued March 25, 1997; Reg. No.
2,112,885 issued November 11, 1997; and Reg. No. 2,953,472 issued June 15,
2004).
Complainant’s global web network includes
25 world properties, with offices in Europe, Asia Pacific, Latin America,
Canada, and the United States.
Complainant operates its main websites at the <yahoo.com>,
<geocities.yahoo.com>, and <altavista.com> domain names.
Respondent registered the disputed domain
names between August 16, 2002 and January 2, 2005. Respondent is using the disputed domain names to direct Internet
users to websites that offer Internet search services and web directory
services that compete directly with Complainant’s goods and services. Respondent’s websites include a notice stating that the links listed on the
websites are pay-per-click sites for which Respondent receives
commissions. Respondent is not
currently using the <wwwyahoo.biz>
and <yagoo.biz> domain names,
which were both registered on July 18, 2004.
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.
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’s registration for the
YAHOO!, GEOCITIES and ALTAVISTA marks with the USPTO confirms Complainant’s
rights in the marks. 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 and
that a respondent has the burden of refuting this assumption); see also Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not
require a complainant to demonstrate “exclusive rights,” but only that the
complainant has a bona fide basis for making the complaint in the first place).
Respondent’s <aktavista.com>, <geocioties.com>,
<geocitied.com>, <yabhoo.com>, <yagoo.biz>, <yahoc.com>, <yahoj.com>,
<yayoo.net>, <ydahoo.com>, <yfahoo.com>, <yxahoo.com> and <yzahoo.com> domain names are
confusingly similar to Complainant’s YAHOO!, GEOCITIES or ALTAVISTA marks
because the domain names incorporate misspellings or slight variations of
Complainant’s marks. These slight
changes do not significantly distinguish the domain names from Complainant’s
marks. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July
13, 2000) (finding that a domain name which differs by only one letter from a
trademark has a greater tendency to be confusingly similar to the trademark
where the trademark is highly distinctive); see
also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18,
2000) (finding that, by misspelling words and adding letters to words, a
respondent does not create a distinct mark but nevertheless renders the domain
name confusingly similar to the complainant’s marks); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan.
15, 2001) (finding that the domain names <tdwatergouse.com> and
<dwaterhouse.com> are virtually identical to Complainant’s TD WATERHOUSE
name and mark).
In addition, the <2005yahoo.com>, <chatyaho.com>,
<e-yahoo.net>, <groups-yahoo.com>,
<loginyahoo.com>, <musicayahoo.com>, <musicyahoo.com>, <muyahoo.com>, <myyaoo.com>, <postalyahoo.com>, <yaghoomail.com>, <yahgoomail.com>, <yahjoomail.com>, <yahomai.com>, <yahomal.com>, <yahoohroups.com>,
<yahooil.com>, <yahooit.com>, <yahoomessener.com>, <yahoomessenge.com>, <yahoomessengr.com>, <yahooml.com>, <yahoomobil.com>, <yahoomssenger.com>, <yahoomusica.com>, <yaoomessenger.com>, <iahoomail.com>, <pornoyahoo.com>, <tyahoomail.com>, <uyahoomail.com>, <yahooai.com>, <yahooal.com>, <yahoomaol.com>, <yahoomarket.com>, <yahoomessneger.com>, <yahoomi.com>, <yhahoomail.com> and <yzhoomail.com> domain names are
confusingly similar to Complainant’s YAHOO! mark because the domain names
simply add to Complainant’s mark or a misspelling of Complainant’s mark, a
generic term or a misspelling of a generic term and/or a generic prefix or
suffix. Also, in most instances the
generic terms describe services and features offered by Complainant. The additions of a generic term, a
misspelled generic term and/or a generic suffix or prefix do not differentiate
Respondent’s domain names from Complainant’s mark. Thus, the Panel finds that Respondent’s minor alterations to
Complainant’s mark are not ample to
make a distinction between Respondent’s domain names and Complainant’s mark
pursuant to Policy ¶ 4(a)(i). 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 AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO
Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can
rarely be relied upon to differentiate the mark if the other elements of the
domain name comprise a mark or marks in which another party has rights); see also Caterpillar Inc. v. Quin,
D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names
<caterpillarparts.com> and <caterpillarspares.com> were confusingly
similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because
“the idea suggested by the disputed domain names and the registered trademarks
is that the goods or services offered in association with [the] domain name are
manufactured by or sold by the complainant or one of the complainants [sic]
approved distributors. The disputed trademarks contain one distinct component,
the word Caterpillar”).
The <wwwhyahoo.com>,
<wwwiyahoo.com>, <wwwlaunchyahoo.com>, <wwwmusicyahoo.com>, <wwwstoreyahoo.com>, <wwwtyahoo.com>, <wwwuyahoo.com>, <wwwyahgoo.com>, <wwwyahoomusic.com>, <wwwyahyoo.com>,
<wwwyhahoo.com>, <wwwytahoo.com>,
<wwwyuahoo.com>, <wwwyyahoo.com>, <www0yahoo.com>, <wwwwyahoomail.com> and <wwwyahoo.biz> domain names are
confusingly similar to Complainant’s YAHOO! mark because the domain names
simply include Complainant’s mark or a misspelling of Complainant’s mark and/or
a generic term. In addition, the
letters “www” and the generic top-level domain (“gTLD”) “.com” are added to all
of these domain names. The mere
additions of the letters “www” and the gTLD “.com” to Complainant’s mark or
misspelled mark and a simple addition of the letters “www” do not negate the
confusingly similarity of Respondent’s domain name pursuant to Policy ¶
4(a)(i). See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23,
2000) (finding confusing similarity where a respondent combined the
complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com>
domain name); see also Bank of Am. Corp.
v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the
respondent’s domain name <wwwbankofamerica.com> is confusingly similar to
the complainant’s registered trademark BANK OF AMERICA because it “takes
advantage of a typing error (eliminating the period between the www and the
domain name) that users commonly make when searching on the Internet”); see also Sporty’s Farm L.L.C. v. Sportsman’s
Mkt., Inc., 202 F.3d 489 (2d Cir. 2000) cert.
denied, 530 U.S. 1262 (2000) (“For
consumers to buy things or gather information on the Internet, they need an
easy way to find particular companies or brand names. The most common method of
locating an unknown domain name is simply to type in the company name or logo
with the suffix .com.”).
Finally, Respondent’s <yahooamericangreeting.com> and <fifaworldcupyahoo.com> domain
names are confusingly similar to Complainant’s YAHOO! mark because the domain
names wholly incorporate Complainant’s mark and the third party marks of
AMERICAN GREETING or FIFA WORLD CUP.
The mere addition of a third party mark does not significantly
distinguish the domain name from Complainant’s mark pursuant to Policy ¶
4(a)(i). See G.D. Searle & Co. v. Entm’t Hosting Servs., Inc., FA 110783
(Nat. Arb. Forum June 3, 2002) (“The Panel concludes that the
<viagra-propecia-xenical-celebrex-claritin-prescriptions.com> domain name
is confusingly similar to Complainant’s CELEBREX mark because the mere addition
of related competing products’ names in the domain name does not defeat a
confusing similarity claim.”); see also
G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002)
(finding that the addition of other drug names does not create a distinct mark
capable of overcoming a claim of confusing similarity, “it merely creates a
domain name with severe potential to confuse Internet users as to the source,
sponsorship and affiliation of the domain”).
Therefore, Complainant has established
that the disputed domain names are confusingly similar to Complainant’s marks
pursuant to Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Respondent failed to contest
Complainant’s assertion that Respondent lacks rights and legitimate interests
in the disputed domain names. Because
Complainant’s evidence and arguments are unopposed, the Panel is permitted to
accept all reasonable inferences made in the Complaint as true. 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 Bayerische
Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
response the panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do);
see also Desotec N.V. v. Jacobi Carbons
AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows
a presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
Additionally, Complainant has
alleged that Respondent has no rights or legitimate interests in the sixty-nine
disputed domain names that contain Complainant’s YAHOO!, GEOCITIES and/or ALTAVISTA marks. The burden shifts to Respondent to show that
it has rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii). Respondent has failed to
provide any evidence that it has rights or legitimate interests in the domain
names. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9,
2000) (finding that by not submitting a response, the respondent failed to
invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name); see also
Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that
the respondent has no rights or legitimate interests in the domain name because
the respondent never submitted a response or provided the panel with evidence
to suggest otherwise); see also 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”).
In the WHOIS contact
information, Respondent lists its name as “J Lee.” However, since Respondent failed to respond to the Complaint,
there has not been any affirmative evidence provided to the Panel showing that
Respondent was ever commonly known by any of the disputed domain names. Moreover, Complainant’s first use of the
YAHOO!, GEOCITIES and ALTAVISTA marks in commerce and its registration of the
marks predate Respondent’s registrations of the domain names. Furthermore, Respondent has not been authorized
by Complainant to use the YAHOO!, GEOCITIES or ALTAVISTA marks in its domain
names. Thus, the Panel concludes that
Respondent has not been commonly known by the domain names pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (“[N]othing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply); see
also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) the respondent is not a licensee of the complainant; (2) the
complainant’s prior rights in the mark precede the respondent’s registration;
(3) the respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where a respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name).
Respondent has passively held
the <wwwyahoo.biz> and <yagoo.biz> domain names, which
are confusingly similar to Complainant’s YAHOO! mark. The Panel finds that Respondent’s failure to use the domain names
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 Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000)
(finding no rights or legitimate interests where a respondent failed to submit
a response to the complaint and had made no use of the domain name in
question); see also Melbourne IT Ltd. v.
Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate
interests in the domain name where there is no proof that a respondent made
preparations to use the domain name in connection with a bona fide offering of
goods and services before notice of the domain name dispute, the domain name
did not resolve to a website, and the respondent is not commonly known by the
domain name); see also Boeing Co. v.
Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate
interests where the respondent advanced no basis on which the panel could conclude
that it had rights or legitimate interests in the domain names, and no use of
the domain names was established).
Respondent uses the other
sixty-seven domain names to direct Internet users to websites that offer
Internet search services and web directory services that compete directly with
Complainant’s goods and services.
Respondent’s use of domain names that are confusingly similar to
Complainant’s YAHOO!, GEOCITIES or ALTAVISTA marks dilute Complainant’s marks
by diverting Internet users to websites unrelated to those marks and therefore
is not a use in connection with 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 G.D. Searle & Co. v. Mahoney, FA
112559 (Nat. Arb. Forum June 12, 2002) (finding a respondent’s use of the
disputed domain name to solicit pharmaceutical orders without a license or
authorization from the complainant does not constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i)); see
also Ziegenfelder Co. v. VMH Enter., Inc.
D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
based on the fact that the domain names bear no relationship to the business of
the respondent and that the respondent would only legitimately choose to use
the complainant’s mark in a domain name if the respondent was seeking to create
an impression that the two businesses were affiliated); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (holding that a respondent’s appropriation of the
complainant’s mark to market products that compete with the complainant’s goods
does not constitute a bona fide offering of goods and services).
The Panel finds that
Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad
Faith
Respondent purposely
registered the <wwwyahoo.biz>
and <yagoo.biz> domain names,
which are confusingly similar to Complainant’s YAHOO! mark and do not resolve
to a developed website. Respondent has
failed to market any bona fide goods or services at least since this proceeding
was initiated. Respondent’s passive
holding of domain names confusingly similar to Complainant’s mark evidences bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000)
(“[I]t is possible, in certain circumstances, for inactivity by the Respondent
to amount to the domain name being used in bad faith.”); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug.
30, 2000) (finding that a respondent made no use of the domain name or website
that connects with the domain name, and that passive holding of a domain name
permits an inference of registration and use in bad faith); see also Alitalia –Linee Aeree Italiane
S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith
where a respondent made no use of the domain name in question and there are no
other indications that the respondent could have registered and used the domain
name in question for any non-infringing purpose).
Moreover, Respondent is using
the other sixty-seven disputed domain names to direct Internet users to
websites that offer Internet search services and web directory services that
compete directly with Complainant’s goods and services. The Panel finds that, by creating confusion
around Complainant’s marks via the disputed domain names, Respondent is
attempting to disrupt the business of a competitor. Respondent’s use of Complainant’s marks in its domain names to
sell goods and services similar to Complainant’s goods and services is evidence
of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See
EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that a
respondent registered and used the domain name <eebay.com> in bad faith
where the respondent has used the domain name to promote competing auction
sites); see also Hewlett Packard Co. v.
Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that a
respondent registered and used the domain name primarily for the purpose of
disrupting the business of the complainant by offering personal e-mail accounts
under the domain name <openmail.com> which is identical to Complainant’s
services under the OPENMAIL mark); see
also S. Exposure v. S. Exposure, Inc., FA 94864
(Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by
attracting Internet users to a website that competed with the complainant’s
business).
Furthermore, Respondent
deliberately registered the disputed domain names that contain either
Complainant’s marks or a misspelling of Complainant’s marks and did so for
Respondent’s commercial gain.
Respondent’s disputed domain names divert Internet users who seek
Complainant’s products and services online to Respondent’s commercial websites
through the use of domain names that are confusingly similar to Complainant’s
marks. The Panel infers that Respondent
is receiving click through fees from the third party links on its
websites. Therefore, Respondent is unfairly
and opportunistically benefiting from the goodwill and reputation associated
with Complainant’s marks. Respondent’s
practice of diversion, motivated by commercial gain, through the use of
confusingly similar domain names 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 a respondent’s registration and use
of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using the 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 a respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar
domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its
diversionary use of the complainant’s mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)).
The Panel finds 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 <2005yahoo.com>, <aktavista.com>, <chatyaho.com>, <e-yahoo.net>,
<fifaworldcupyahoo.com>, <groups-yahoo.com>, <loginyahoo.com>, <musicayahoo.com>, <musicyahoo.com>, <muyahoo.com>, <myyaoo.com>, <postalyahoo.com>, <wwwhyahoo.com>, <wwwiyahoo.com>, <wwwlaunchyahoo.com>, <wwwmusicyahoo.com>, <wwwstoreyahoo.com>, <wwwtyahoo.com>, <wwwuyahoo.com>, <wwwyahgoo.com>, <wwwyahoomusic.com>, <wwwyahyoo.com>, <wwwyhahoo.com>,
<wwwytahoo.com>, <wwwyuahoo.com>, <wwwyyahoo.com>, <yabhoo.com>, <yaghoomail.com>, <yahgoomail.com>, <yahjoomail.com>, <yahoj.com>, <yahomai.com>, <yahomal.com>,
<yahooamericangreeting.com>, <yahoohroups.com>, <yahooil.com>, <yahooit.com>, <yahoomessener.com>, <yahoomessenge.com>, <yahoomessengr.com>, <yahooml.com>, <yahoomobil.com>, <yahoomssenger.com>, <yahoomusica.com>, <yaoomessenger.com>, <yayoo.net>, <ydahoo.com>, <yfahoo.com>,
<yxahoo.com>, <yzahoo.com>, <geocioties.com>, <geocitied.com>, <iahoomail.com>, <pornoyahoo.com>, <tyahoomail.com>, <uyahoomail.com>, <www0yahoo.com>, <wwwwyahoomail.com>, <wwwyahoo.biz>, <yagoo.biz>, <yahoc.com>, <yahooai.com>,
<yahooal.com>, <yahoomaol.com>, <yahoomarket.com>, <yahoomessneger.com>, <yahoomi.com>, <yhahoomail.com> and <yzhoomail.com> domain names be TRANSFERRED from Respondent to
Complainant.
The <yahooamericangreeting.com> and <fifaworldcupyahoo.com> domain names incorporate other
parties’ marks. Because Complainant
initiated this dispute prior to any other interested party, it has the
opportunity to acquire these two domain names, while seeking to protect its
YAHOO! mark from an infringing use. The
Panel finds that Complainant seeks acquisition of the subject domain names in
good faith, and will forfeit its interest in these two contested domain names
if the other represented marks are infringed upon by Complainant following a
transfer of the domain name registrations to Complainant. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(finding that the complainant’s continuing control of the <viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name was contingent upon
good faith possession, and the complainant would forfeit its interest in the
domain name if it infringed on the other represented marks); see also G.D. Searle v. Dunham, FA
123901 (Nat. Arb. Forum Oct. 9, 2002).
The Honorable Charles K.
McCotter, Jr. (Ret.), Panelist
Dated: April 26, 2005
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