National Arbitration Forum

DECISION

Yahoo! Inc. v Bill Skipton d/b/a Cowboy Clothing

Claim Number: FA0510000575666

PARTIES

Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 901 New York Avenue NW, Washington, DC 20001-4413. Respondent is Bill Skipton d/b/a Cowboy Clothing (“Respondent”), 36d George Street, Tamworth, B79 7LJ, GB.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yprog.com>, registered with Tucows Inc.

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.

Terry F. Peppard as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 13, 2005.

On October 12, 2005, Tucows Inc confirmed by e-mail to the National Arbitration Forum that the <yprog.com> domain name is registered with Tucows Inc and that the Respondent is the current registrant of the name. Tucows Inc has verified that Respondent is bound by the Tucows 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 October 14, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 3, 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@yprog.com by e-mail.

A timely Response was received and determined to be complete on November 3, 2005.

Complainant timely filed an Additional Submission on November 8, 2005.

On November 9, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends, among other things, that:

Complainant, a Delaware corporation headquartered in Sunnyvale, California, is a global Internet communications, media and marketing company offering comprehensive search, directory, information, shopping and other online services to millions of Internet users daily.

Complainant is the owner of the famous YAHOO! service marks and trademarks and its abbreviation, Y!.

The YAHOO! mark has been in continuous use in commerce since 1994, while the Y! mark has been in continuous use since at least 1997.

Both marks are and have been registered with the competent authorities of the European Community and the United States from the dates indicated.

Respondent registered the disputed domain name on May 31, 2005.

Respondent uses the web site associated with the subject domain name to promote the sale of software designed to hack Complainant’s YAHOO! Messenger software for the purpose of stealing its users’ names and passwords to facilitate the distribution to such users of unsolicited commercial e-mail messages, commonly known as “spam.”

Because Respondent’s software products are specifically targeted at Complainant’s customers, there can be no question that Respondent knew of Complainant and its famous registered marks when it registered the disputed domain name.

The subject domain name is confusingly similar to Complainant’s YAHOO! mark, and, most especially, to its Y! mark.

Respondent’s registration and use of the challenged domain name for the purpose of marketing software programs intended to facilitate the theft of Complainant’s customers’ personal information is not a bona fide use of that name.

Respondent has registered and is using the subject domain name in bad faith.

B. Respondent

Respondent contends, among other things, that:

The only similarity between Complainant’s marks and Respondent’s domain name is the letter Y.

Complainant has no exclusive right to the commercial use of the letter Y.

The disputed domain name cannot be said to trade on the goodwill associated with Complainant’s marks, or either of them, merely because it begins with the letter Y.

It must be obvious to any visitor to Respondent’s web site that it is not authorized, endorsed or sponsored by Complainant.

Although “it sells programs which would allow others to do so,” Respondent’s web site is not itself used to send “spam” e-mails or to steal Internet users’ passwords.

C. Additional Submissions

Complainant’s Additional Submission alleges, among other things, that:

Confusing similarity is demonstrated by comparing the subject domain name to the trademark at issue, independent of any marketing or use considerations which might appropriately be weighed in the context of a claim for trademark infringement or unfair competition.

FINDINGS

Complainant has failed to demonstrate that the <yprog.com> domain name is either identical or confusingly similar to Complainant’s YAHOO! or Y! marks sufficient for purposes of Policy ¶ 4(a)(i).

Because proof of either identity or confusing similarity between the mark in issue and the contested domain name is essential to Complainant’s claim under Policy ¶ 4(a)(i), Complainant cannot succeed on its Complaint.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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

Analysis of the problem presented by the instant Complaint may begin with the observation that Complainant cannot succeed in its contention that Respondent’s <yprog.com> domain name is either identical or confusingly similar to its YAHOO! mark. The differences between the mark and domain name are simply too many and too profound. Moreover, Complainant has cited no authority which could sustain its contention in this regard, and the Panel is aware of none. We therefore proceed to examine whether Complainant has established identity or confusing similarity with regard to its Y! mark.

The question of identity between the Y! mark and the <yprog.com> domain name may be dispensed with quickly. Complainant does not contend that the domain name and the mark are identical. Indeed it could not credibly do so. Complainant’s Y! mark includes the punctuation usually described as an exclamation mark, while the domain name does not. The domain name, for its part, contains the suffix “prog,” while the mark does not. Each having an element not found in the other, they cannot fairly be said to be identical. This leaves the question of confusing similarity.

Thus reduced, this proceeding presents what appears to be a novel proposition, which is that a single letter of the English alphabet, in this instance the letter Y, may ground a claim of confusing similarity within the meaning of Policy ¶ 4(a)(i).

In the absence of authorities specific to this proposition, the Panel is left to rely on two core principles. The first is that recently enunciated by the United States Court of Appeals in Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135 (9th Cir. 2002), where the court said, at 1147:

Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.

The second is advanced in Complainant’s Additional Submission, and may be summarized as follows:

On this point, see: Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000); see also: Fed. Home Loan Mortgage Corp. v. Blodgett, FA 566605 (Nat. Arb. Forum Nov. 4, 2005).

We weigh each of these principles separately, starting with the former.

Complainant argues, in essence, that Y can only stand for Y!. But Y is not Y!. It is no more than a literal truth that the expressive punctuation for which Complainant is well known is fully half its mark. And, as was noted in Entrepreneur Media, supra, small differences matter. Indeed, without the exclamation mark, Y is just Y. It could as easily stand for the chemical element yttrium, or instead for YMCA, or, particularly aptly here, an unknown quantity.

We may note that the essential problem presented here finds a close parallel in an earlier panel decision made in the context of a comparison of the phrase “World Cup” with the abbreviation “WC” contained in two challenged domain names, <wc2002.com> and <wc02.com>. In an analysis with which we agree, the panelist there wrote:

Whilst it can be argued that <WC> is an abbreviation of <WORLD CUP>, this Administrative Panel does not consider that this is the likely meaning which most people would give to these letters. These letters are open to being interpreted as meaning any number of things, as well as meaning nothing at all. There is nothing in the context of the use of these letters in the domain names that suggests they are an abbreviation of anything. Even if the context of their use did make clear that the letters <WC> were an abbreviation, it is quite likely many native speakers of the English language would consider they were an abbreviation either for "water closet" (and hence an allusion to "toilet") or "West Central" (see Concise Oxford English Dictionary, entry for "WC"), or for "without charge" (see Merriam-Webster’s Collegiate Dictionary, entry for "WC"). As for how native speakers of other languages using the Romanised alphabet would most likely interpret these letters as an abbreviation, this Administrative Panel is unable to decide. In short, the letters <WC>, even in conjunction with the year <2002> or the year abbreviation <02>, do not likely suggest <WORLD CUP>, and hence domain names (14) and (15) are not confusingly similar to any of the trademarks referred to in paragraph 4.4 above.

ISL Mktg. AG v. Chung, D2000-0034 (WIPO Apr. 3, 2000).

It bears emphasis that the reasoning of the decision in ISL Mktg. deals with a two-letter combination. The force of that reasoning is greatly multiplied in the case of a mark-domain name contest involving but a single letter.

It may also be noted that Complainant’s position in this proceeding is not enhanced by the presence in Respondent’s domain name of the generic suffix “prog.” While “prog” might stand for “program,” it does not follow that “program” would necessarily stand for software program in the minds of Internet users, even if that is Respondent’s intent. It might as well suggest a program of entertainment or instruction or other activities. Indeed it might not stand for program at all, but instead for “progressive” or any number of other terms.

Thus Complainant’s contention with regard to the question of confusing similarity is undone by its own first principle, which requires that the Panel treat this issue without regard to context. Necessarily this prevents the Panel from considering under this head such matters as Respondent’s acknowledged illicit use of the disputed domain name, no matter how repugnant.

We hasten to say that this Panel takes no position as to whether a single letter of the alphabet can ever ground a claim for confusing similarity under the Policy. We need only decide, as we do, that in the circumstances here presented, “Y” does not.

For the reasons indicated, the Panel finds that Complainant has failed to satisfy the requirements of proof set out in Policy ¶ 4(a)(i).

Rights or Legitimate Interests

In order to prevail in this proceeding, Complainant must prove to the satisfaction of the Panel each of the three distinct elements set out in Policy ¶ 4(a)(i)-(iii) (i.e.: identity or similarity, rights or interests, and bad faith). In light of the above finding, it is therefore unnecessary for the Panel to address the issue of rights or interests. Am. Online, Inc. v. GSD Internet, D2001-0629 (WIPO Jun. 25, 2001).

We may note, however, that, were it necessary to do so, in light of the fact that Respondent concedes that its purpose for registering and operating the web site associated with the subject domain name is to market software which is used to purloin from Complainant’s web site confidential customer information in order to facilitate the distribution of spam e-mails to Complainant’s customers, there is no sense in which this activity constitutes either a bona fide offering of goods or services or a fair use of the disputed domain name within the meaning of Policy ¶ 4(c). Juno Online Services, Inc., v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004).

Accordingly, we would, if called upon, find that Respondent has no rights to or interests in the subject domain name for purposes of Policy ¶ 4(a)(ii).

At the same time, we are constrained to observe that Complainant appears to be using this proceeding to attempt to achieve through the processes of the Policy an end best accomplished in another forum under the law of trademark infringement, unfair competition or the like. See, e.g.: CITGO Petroleum Corp. v. Tercsak, D2003-0003 (WIPO Feb. 28, 2003). While we would not judge that the Complaint herein amounts to an abuse of the Policy, it does seem to represent at least a misuse of it, no matter how sorely-provoked or well-intentioned.

Registration and Use in Bad Faith

For the reason enunciated immediately above, the Panel need not make any finding under this heading. Am. Online, supra. However, if the circumstances were otherwise, we would hold, in keeping with the reasoning of the panel in Juno Online, supra, that, without question, the behavior of Respondent admitted here must constitute bad faith registration and use of the subject domain name within the meaning of Policy ¶ 4(a)(iii).

DECISION

Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.

Terry F. Peppard, Panelist
Dated: November 23, 2005