Yahoo! Inc. v. Jason Malm
Claim Number: FA0611000841031
Complainant is Yahoo! Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <yahoolocal.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 electronically on
On
On November 15, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 5, 2006 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@yahoolocal.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <yahoolocal.com> domain name is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <yahoolocal.com> domain name.
3. Respondent registered and used the <yahoolocal.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc., operates one of the
leading search engines on the Internet.
Since 1994, Complainant has continuously used the YAHOO! mark in connection with Internet communications products and
services. In 2006, a Business
Week/Interbrand Annual Brand Report valued Complainant’s YAHOO! mark at over $6 billion.
As of October
2006, over 215 million Internet users held personalized accounts with Complainants,
which include e-mail services, auctions, chat rooms and classifieds. Globally, there are over 418 million unique
Internet users of Complainant’s search engine at the <yahoo.com> domain
name and other online activities.
Complainant has also offered a YAHOO! Local service
since
Complainant holds numerous trademark registrations for the YAHOO! mark with trademark authorities in over ninety countries around the world, including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,040.222 issued February 25, 1997; Reg. NO. 2,187,292 issued September 8, 1998; Reg. No. 2,403,227 issued November 14, 2000).
Respondent registered the <yahoolocal.com>
domain name on
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.
Complainant has established rights in the YAHOO! mark pursuant to Policy ¶ 4(a)(i) through its numerous trademark registrations of the mark with the USPTO and various other trademark authorities around the world. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (“Complainant’s numerous registrations for its HONEYWELL mark throughout the world are sufficient to establish Complainant’s rights in the HONEYWELL mark under the Policy ¶ 4(a)(i).”); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”).
Respondent’s <yahoolocal.com> domain name
wholly incorporates Complainant’s YAHOO! mark,
eliminates the exclamation point, and adds the term “local,” a term that
Complainant uses in connection with its online services. The Panel finds that these alterations are
not distinguishing differences. As a
result, the disputed domain name is confusingly similar to mark pursuant to
Policy ¶ 4(a)(i).
See Warner Bros. Entm’t
Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the
term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the
domain name from the mark); see also Am. Express Co. v. Buy Now,
FA 318783 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant maintains that Respondent does not have rights
to or legitimate interests in the disputed domain name. Complainant has the initial burden of proof
in establishing that Respondent has no rights or legitimate interests in the
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii).
See Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that, under certain circumstances, the mere assertion by the complainant that
the respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist); see also G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain name. See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
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 the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names). However, the Panel will now examine the record to determine
if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Because the WHOIS information lists Respondent as “Jason
Malm” and there is no other evidence in the record suggesting that Respondent
is commonly known by the disputed domain name, the Panel finds that Respondent
has not established rights or legitimate interests in the disputed domain name
under Policy ¶ 4(c)(ii). See Great S.
Wood Preserving, Inc. v. TFA Assocs., FA
95169 (Nat. Arb. Forum
Moreover, Respondent’s <yahoolocal.com>
domain name, which is confusingly similar to Complainant’s YAHOO! mark, resolves to a commercial search engine providing services
that compete with Complainant’s own services under the YAHOO! mark. In Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat.
Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <yahoolocal.com> domain
name, which includes Complainant’s YAHOO! mark, to
divert Internet users seeking Complainant’s localized listing services to its
own search engine website offering similar services and featuring links to
various types of content. Respondent
likely receives click-through fees for each consumer it diverts to this website
and via links on the website. Therefore,
Respondent is taking advantage of the confusing similarity between the <yahoolocal.com>
domain name and Complainant’s YAHOO! mark, and
profiting from the goodwill associated with the mark. Use of the disputed domain name for this
purpose suggests bad faith registration and use under Policy ¶ 4(b)(iv). 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).
Moreover, Respondent has
registered and used the domain name in order to disrupt Complainant’s business,
as Respondent is using the <yahoolocal.com> domain name to maintain
its own search engine website offering localized listings similar to the
services Complainant offers under its YAHOO! mark. In Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003), the panel found that the respondent
had registered and used the <euro-disney.com> domain name in bad faith
pursuant to Policy ¶ 4(b)(iii) because it resolved to a website promoting a
competing theme park. Here, Respondent’s
use of the disputed domain name to operate a search engine website that prominently
displays Complainant’s YAHOO! mark provides evidence
that it registered the domain name primarily to disrupt Complainant’s business
in violation of Policy ¶ 4(b)(iii). See
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoolocal.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 25, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum