Yahoo! Inc. v. Roger Brotherton d/b/a Jays
Model Agency
Claim Number: FA0608000778969
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. Respondent is Roger Brotherton d/b/a Jays Model Agency (“Respondent”), PO Box 75609, Oklahoma City, OK 73147.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yahooboy.com> and <yahooboys.com>, registered with Go Daddy Software, Inc.
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.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 16, 2006; the National Arbitration Forum received a
hard copy of the Complaint on August 17, 2006.
On August 17, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <yahooboy.com> and <yahooboys.com> domain names are registered with Go Daddy
Software, Inc. and that the Respondent is the current registrant of the
names. 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 August 21, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 11, 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@yahooboy.com and
postmaster@yahooboys.com by e-mail.
A timely Response was received and determined to be complete on September
5, 2006.
An Additional Submission from the Complainant was received on September
11, 2006. That Additional Submission
complied with Supplemental Rule 7. An
Additional Submission from the Respondent was received on September 12, 2006. This submission was also received in a timely manner according to the
Forum's Supplemental Rule #7.
On September 11, 2006 pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National Arbitration
Forum appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant alleges that it 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.
The
Complainant also states that it is the owner of the service mark and trademark
YAHOO!, the trade name YAHOO!, as well as the domain name
<yahoo.com>. In continuous use
since 1994, the YAHOO! mark has become one of the most recognized brands in the
world having a value of over US $5.2 billion according to 2005
BusinessWeek/Interbrand Annual Brand Report.
According
to the Complainant, its services include both local and international Internet
search services covering a wide variety of subjects and media, including web,
image and video search, and network software and services including, but not
limited to, answers, astrology and horoscopes, auctions, chat, corporate
network software and services, email, finance, games, greetings, groups,
health, instant messenger, job search, maps, message boards, mobile services,
movie information and reviews, music, news, people search, personals, photos,
real estate and mortgage information, shopping, sports, travel-related
services, weather, yellow pages and various types of entertainment.
The
Complainant alleges that it offers and has offered for many years a wide
variety of services using the YAHOO! mark together with a descriptive name of
its services, including but not limited to, YAHOO! Auctions, YAHOO! Calendar,
YAHOO! Finance, YAHOO! Groups, YAHOO! Mail, YAHOO! Maps, YAHOO! Music, YAHOO!
Messenger, YAHOO! News, YAHOO! Personals, YAHOO! Shopping, and YAHOO! Sports.
According
to the Complainant, the Respondent registered the disputed domain names on
March 1, 2004, long after the Complainant began using its YAHOO! mark, many
years after the Complainant registered its YAHOO! mark in the U.S. and
elsewhere, and many years after the Complainant’s YAHOO! mark became famous.
Further,
alleges the Complainant, the Respondent uses the disputed domain names for a
commercial, fee-based, pornographic website featuring “Pictures of Teenage Boy
Models” and “Photography of the Cutest Young Men in the World.” The “Enter Artistic Nude Gallery” link on
Respondent’s website connects to Respondent’s <modelboy.com> website that
offers subscriptions (“JOIN FOR $30 FOR 30 DAYS”). The “CLICK HERE TO ENTER BOY MODEL” link on Respondent’s website
connects to Respondent’s <teenmalemodels.com> website that also offers
subscriptions (“PRICE OF GALLERY IS $30”).
And, says
the Complainant, the Respondent has registered at least one additional
trademark-related domain name, <googleboys.com>, that links to the same
pornographic website.
On June 10, 2006, the Complainant sent to the
Respondent a cease-and-desist letter demanding, among other things, the
transfer of one of the disputed domain names, and sent to the Respondent’s ISP
a letter requesting the removal of the Respondent’s website. The Respondent responded, refusing the
Complainant’s demands. The Respondent’s
ISP removed the Respondent’s website, and the Respondent subsequently changed
ISPs. The Respondent responded again to
Yahoo!’s demands by offering to sell the disputed domain name to the
Complainant for $120,000, and also asked the Complainant for $15,000 as
compensation for sales the Respondent claimed were lost when the Respondent’s
ISP terminated his hosting services for the disputed domain name in response to
the Complainant’s request.
The Complainant alleges that the disputed domain names are confusingly similar to the Complainant’s YAHOO! mark because each is comprised of the Complainant’s mark and a generic term (“boy” or “boys”). UDRP panels have consistently held that the addition of a generic term to the complainant’s mark in a domain name does not distinguish the domain name from the mark at issue. See, e.g., Yahoo! Inc. v. Manage Technical, FA 238649 (Nat. Arb. Forum Apr. 8, 2004) (finding the domain name <yahooauto.com> confusingly similar to Complainant's YAHOO! mark because “Under the Policy, the incorporation of a third-party’s registered trademark in a domain name, combined with a generic or descriptive term, fails to eliminate the confusing similarity between a name and mark.”); Yahoo! Inc. v. Whois Privacy Protection Service, Inc., FA 412705 (Nat. Arb. Forum Mar. 17, 2005) (“[R]espondent’s <yahoomusic.com> domain name is confusingly similar to Complainant’s YAHOO! mark. [R]espondent’s domain name incorporates Complainant’s mark in its entirety with the exception of the exclamation point in Complainant’s mark and the addition of the generic term ‘music’ and the generic top-level domain ‘.com.’ Such minor alterations are insufficient to negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).”).
According to the Complainant, the Respondent’s use of the disputed domain names for a commercial, pornographic website does not constitute a bona fide use of the domain names pursuant to Section 4(c)(i) of the UDRP. Nor do the Respondent’s activities constitute a legitimate noncommercial or fair use under the UDRP. See, e.g., Yahoo! Inc. v. Jalbert, FA 166020 (Nat. Arb. Forum Aug. 26, 2003) (holding respondent’s use of the domain names for a pornographic website is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the UDRP); Yahoo! Inc. v. Fato, FA 286410 (Nat. Arb. Forum July 26, 2004) (same); Yahoo! Inc. v. Hannah, FA 250785 (Nat. Arb. Forum May 27, 2004) (same); Yahoo! Inc. v. Moldes Matrices y Diseno FA 133764 (Nat. Arb. Forum Jan. 15, 2003) (“When one misleadingly diverts consumers to a pornographic website, it is deemed to be not a fair or legitimate use of the domain name.”).
Further, says the Complainant, the Respondent is not and has not been commonly known by the disputed domain names. The Respondent’s frivolous “defense” in his e-mails to the Complainant that the term “yahoo” is a word appearing first in Jonathan Swift’s novel Gulliver’s Travels and since in television shows and western movies fails to demonstrate any legitimate interest in the disputed domain names. Initially, the fact that “yahoo” is a term in the English dictionary cannot justify the Respondent’s registration of the disputed domain names because the English word “yahoo” does not at all relate to the Respondent’s use of the disputed domain names. Moreover, numerous Panels have rejected similar defenses that were based on the presence of the term “yahoo” in the English dictionary, and other UDRP decisions have similarly held that the presence of a term in the dictionary does not automatically provide a legitimate basis for the registration and use of a trademark-related domain name. See Yahoo! Inc. v. Silicon City, D2000-1711 (WIPO Feb. 13, 2001) (“The [R]espondent has submitted a reference from Merriam-Webster’s Collegiate Dictionary as to the meaning of the word ‘yahoo’ and by implication the [r]espondent offers the [defense] that the word is of ordinary meaning and available for use. The view of the Administrative Panel is that the word ‘yahoo’ has lately acquired a stronger meaning as the trademark of Yahoo! Inc., than as a dictionary word.”); see also Yahoo! Inc. v. Microbiz, D2000-1050 (WIPO Nov. 7, 2000); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000); see also Yahoo! Inc. v. Hangzhou Hi2000, FA 141825 (Nat. Arb. Forum Feb. 26, 2003); see also, e.g., Madonna Ciccone p/k/a Madonna v. Dan Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“The statement that ‘madonna’ is a word in the English language, by itself, is no more of a defense than would be the similar statement made in reference to the word ‘coke.’ [R]espondent has not even attempted to tie in his website to any dictionary definition of Madonna. The only plausible explanation for [r]espondent’s actions appears to be an intentional effort to trade upon the fame of [c]omplainant’s name and mark for commercial gain.”).
Regarding bad faith use and registration, the Complainant alleges that the Respondent’s registration and use of the disputed domain names meet the bad faith element set forth in Section 4(b)(iv) of the UDRP. Specifically, the Respondent uses the disputed domain names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its YAHOO! mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s commercial, pornographic website. See, e.g., Yahoo! Inc. v. Hannah, FA 250785 (Nat. Arb. Forum May 27, 2004) (holding respondent's use of the domain name for a pornographic website constitutes bad faith pursuant to Section 4(b)(iv) of the UDRP); Yahoo! Inc. v. Fato, FA 286410 (Nat. Arb. Forum July 26, 2004) (same); Yahoo! Inc. v. Seocho, FA 109050 (Nat. Arb. Forum May 13, 2002) (same); see also Yahoo! Inc. v. Kirovsky, D2000-0428 (WIPO Aug. 9, 2000) (finding respondent’s use of YAHOO!-formative domain names for commercial gain was in bad faith); Yahoo! Inc. v. Yahoo Computer Services, DPH2001-0001 (WIPO Mar. 21, 2001) (same).
Second, the Respondent’s registration and use of the disputed domain names meet the bad faith element set forth in Section 4(b)(iii) of the UDRP because the Respondent is disrupting Complainant’s business by using the Domain Names for a pornographic website. See, e.g., Yahoo! Inc. v. Jalbert, FA 166020 (Nat. Arb. Forum Aug. 26, 2003) (finding respondent’s use of the domain name for a pornographic website disrupted Complainant’s business in bad faith); Yahoo! v. Internet Entertainment Group, D2000-1595 (WIPO Feb. 1, 2001) (same).
Third, the Respondent’s registration and use of the disputed domain names for a pornographic website constitutes an independent ground for bad faith under prior UDRP decisions. See, e.g., Yahoo! Inc. v. Fato, FA 286410 (Nat. Arb. Forum July 26, 2004) (“[R]espondent is using the disputed domain name to peddle pornography. Appropriating someone else’s mark within a domain name to promote pornography is bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (“The Panel finds that [r]espondent’s use of the domain name [yasexhoo.com] to associate with adult-oriented websites is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Respondent’s bad faith is not in any way mitigated, as Respondent appears to claim in his e-mails to the Complainant, by the fact that Internet users can use the Complainant’s search services and chat room services to search for and discuss adult content.
Fourth, the Respondent’s registration of the disputed domain names that are the subject of this Complaint, as well as his registration of the domain name <googleboyes.com>, constitutes a pattern of registering trademark-related domain names in bad faith pursuant to Section 4(b)(ii) of the UDRP. See, e.g., Yahoo! Inc. v. Syrynx, Inc. and Hugh Hamilton, D2000-1675 (WIPO Jan. 30, 2001) (finding bad faith in respondent’s registration of two domain names incorporating Complainant’s mark); Yahoo! Inc. v. Domain Web, FA 128671 (Nat. Arb. Forum Dec. 31, 2002) (finding the same for four domain names incorporating Complainant’s mark).
Fifth, the Respondent’s offers to sell the disputed domain names to the Complainant for $120,000 and for $125,000, as well as his threat to increase the price if the Complainant did not purchase the disputed domain names, are further evidence of the Respondent’s bad faith. See, e.g., Yahoo! Inc. v. Somsak Sooksripanich, et al., D2000-1461 (WIPO Jan. 29, 2001) (finding bad faith in the respondent’s offer to sell YAHOO!-formative domain names); Yahoo! v. CPIC NET et al., D2001-0195 (WIPO May 8, 2001) (same); IndyMac Bank F.S.B. v. David a/k/a David Bakers, FA 296598 (Nat. Arb. Forum Sept. 2, 2004) (holding respondent’s threat to sell the disputed domain name to another party if the complainant did not purchase it constituted evidence of respondent’s bad faith pursuant to Section 4(b)(i) of the UDRP).
Sixth, there is no plausible explanation for the Respondent’s unauthorized registration of the disputed domain names other than to trade on the goodwill of the YAHOO! mark, given the widespread use and fame of the Complainant’s YAHOO! mark and because the disputed domain names have no value apart from Complainant’s famous YAHOO! trademark other than to trade on the Complainant’s goodwill. See, e.g., Yahoo! Inc. v. Yahoosexy.com et al., D2001-1188 (WIPO Feb. 20, 2002) (finding bad faith where respondent registered the disputed domain names yahoo-sexy.com, yahoo-sexy.net, yahoosexy.com, yahoosexy.net, and yahousexy.com with knowledge of Complainant’s YAHOO! mark and used the domain names for a pornographic, commercial website); Yahoo! Inc. v. Yahoo-Asian Company Limited, D2001-0051 (WIPO Feb. 28, 2001) (finding “no plausible explanation for the respondent’s registration of the disputed domain names other than to benefit from the goodwill of Yahoo! and its famous YAHOO! mark”); Yahoo! Inc. v. CPIC NET et al., D2001-0195 (WIPO May 8, 2001) (same).
Finally, alleges the Complainant,
the Respondent’s registration of the disputed domain names with knowledge of
the Complainant’s rights in its famous and federally registered YAHOO! mark
constitutes bad faith. See, e.g.,
Yahoo! Inc. v. Pham, FA 109699 (Nat. Arb. Forum May 21, 2002) (“Because
of the famous and distinctive nature of Complainant’s YAHOO! mark, [the
respondent] is thought to have been on notice of the existence of Complainant’s
mark at the time [r]espondent registered the infringing [domain name].”); Yahoo!
Inc. v. Domain Web, FA 128671 (Nat. Arb. Forum Dec. 31, 2002) (same); Yahoo!
v. Yahoo-sexy.com et al., D2001-1188 (WIPO Feb. 20, 2002) (holding
respondent registered the domain names in bad faith because the YAHOO! mark has
international renown).
B. Respondent
The Respondent alleges that it does not infringe upon the Complainant’s
mark “YAHOO!” because the disputed domain names do not contain the exclamation
point “!” that forms an integral part of the Complainant’s mark. The Complainant does not own the letters
“y-a-h-o-o” nor do they own its audible sound.
The Complainant owns its self-designed trademark logo of YAHOO!. The printed word YAHOO appeared as early as
1726 in the novel Gullivers Travels by Jonathan Swift almost 300 years
ago. The word yahoo was NOT CREATED by
YAHOO!. The printed word “yahoo” is at
least 270 years old and the AUDIBLE SOUND of the word “yahoo” has been in MANY
television and theatrical movies for at least 70 years prior to the YAHOO!
trademark registration.
The Respondent states that the word YAHOO! is not the same as the word
“yahooboy” or “yahooboys” just as the words COW & BOY are not the same as
the word COWBOY.
The Respondent alleges that the websites at the disputed domain names
do not associate themselves in any way with YAHOO! and do not use any
trademarks or other information to even suggest that either site is related in
any manner to the Complainant. It must
be obvious to any visitor to the Respondent’s web site that it is not
authorized, endorsed or sponsored by the Complainant. There are no trademarks, services, nor anything that would
suggest that the disputed domain names are in any way associated with the
YAHOO! trademark. There is not even the spelled word of “yahoo” on the web
site's home-page, only the domain name itself.
According to the Respondent, the Complainant accused him of acquiring
the disputed domain names for commercial and financial gain. If this was the Respondent’s intent he would
have tried to sell to the Complainant or to its competitors both domains in
March of 2004 when they were registered.
The only time he ever considered selling the domains was after the
Complainant sent the June 2006 e-mail accusing the Respondent of trademark
infringement. The Respondent informed
the Complainant that if they want the domains then they can buy them, which the
Complainant refused. This was the only
time the Respondent had ever considered selling either domain.
Further, says the Respondent, the Complainant has failed to prove that
the Respondent had acquired the domains for commercial or financial gain. Neither of the disputed domain names are
even ranked in the top 10,000,000 domains.
The Complainant has no proof of any financial or commercial gain that
has in any way provided funds or any commercial gain that has benefited the
Respondent.
According to the Respondent, bona fide means truth and fair in it's
most basic descriptive meaning. The
domains point to the Respondent’s sites whose content is photography of boys,
males, and models. This was done in
good faith since “yahooboy” is a descriptive term for males, boys, and young
men in accordance with the Respondent’s other registered domains.
Also, says the Respondent, the disputed domain names have no commercial
value or financial gain. Both domains
link to one of the Respondent’s other web sites. Thus the Complainant has not proven a pattern of commercial or
financial gain.
In addition, the Respondent raises a number of issues that are outside
the scope of the UDRP, for example relating to alleged infringements by the
Complainant of the Respondent’s copyrights (because the Complainant included printouts
of sample pages of the Respondent’s website in its Complaint), to allegations
of libel and tort, to the nature of the content of portions of the
Complainant’s websites, etc. Prima
facie, these issues appear to be frivolous, irrelevant, or ill-founded. Such issues should be resolved in the
competent national courts, if either party wishes to pursue them. Since those issues are outside the scope of
the present procedure, they will not be considered here.
The Respondent requests dismissal of the Complaint and ask the Panel to
make a finding of reverse domain-name hijacking.
C. Additional Submissions
In its Additional Submission, the Complainant alleges that the
Respondent has done nothing to overcome the Complainant’s showing of trademark
rights. Its rights in the YAHOO! mark,
based on trademark registrations in the United States and other countries, and
on its use of YAHOO! as a trademark and trade name, were established years
before the Respondent registered the domain names on March 1, 2004. Nor has the Respondent offered any evidence
to show that the findings by UDRP panels in 58 previous UDRP decisions that the
Complainant has valid and protectable rights in the YAHOO! mark were erroneous
in any way.
Further, says the Complainant, the mere presence of the term “yahoo” in
a dictionary in no way diminishes Yahoo!’s rights in the YAHOO! mark. Many famous trademarks are dictionary terms
(e.g., APPLE computers, GATEWAY computers, TIME magazine, PEOPLE magazine,
SPRITE soda). The important point is
that YAHOO! is an arbitrary mark as applied to the Complainant’s
Internet-related services, and is therefore an inherently distinctive and
protectable trademark. See Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (noting that
arbitrary marks “are deemed inherently distinctive and are entitled to
protection”); see also Yahoo! Inc. v. Hangzhou Hi2000, FA
141825 (Nat. Arb. Forum Feb. 26, 2003)
(holding respondent’s “assertions that the Complainant’s famous mark is a
generic word are untenable” in the face of Yahoo!’s evidence of its ownership
of the YAHOO! mark, its registrations for the YAHOO! mark in the U.S. and
elsewhere, and the fact that “this mark enjoys world-wide notoriety.”)
And, alleges the Complainant, the Respondent’s argument that “The word
YAHOO! [is] not the same as the word yahooboy or yahooboys just as the word COW
& BOY are not the same as the word COWBOY” has no merit. Initially, unlike the term “cowboy” which is
a commonly used word found in the dictionary, the terms “yahooboy” and
“yahooboys” are neither commonly used nor found in the dictionary. More importantly, combining a famous
trademark and the generic term “boy” or “boys” does not avoid confusing
similarity because the dominant portion of the resulting domain name is the trademark, not the generic term. Here, the dominant portion of the domain
names is unquestionably the YAHOO! mark.
Further, the Respondent’s claim that the disputed domain names are not
confusingly similar to the YAHOO! mark because the disputed domain names do not
include the exclamation point of the Complainant’s YAHOO! mark is equally
frivolous. It is common knowledge that
exclamation points and other punctuation marks are not permissible characters
in domain names, and UDRP Panels have routinely disregarded punctuation when
comparing a trademark and a domain name in the confusing similarity test. In particular, the UDRP Panels who decided
58 prior UDRP Decisions involving Yahoo!’s YAHOO! mark have all disregarded the
exclamation point in the YAHOO! mark when holding the disputed domain names to
be confusingly similar to Yahoo!’s mark.
See, e.g., Yahoo! Inc. v. Yuan Zhe Quan, FA 117877
(Nat. Arb. Forum Oct. 10, 2002) (finding the domain names <bryahoo.com>,
<cnyahoo.com>, and <espanolyahoo.com> confusingly similar to the
YAHOO! mark and noting “The omission of the exclamation point is of no
consequence because [only] letters, numbers and hyphens are permitted in domain
names.”
Finally, according to the Complainant, the Respondent fails to rebut its
showing that his use of the disputed domain names for a commercial website does
not constitute a bona fide offering of services or a legitimate
noncommercial fair use under the UDRP.
In fact, Respondent’s statement that he uses the disputed domain names
for his commercial website located at <modelboy.com> directly
acknowledges that the Respondent has an existing website and is using the
YAHOO-formative domain names to drive Internet traffic to his site. UDRP panels have consistently held that use
of a trademark-related domain name to drive Internet traffic to another website
owned by the respondent does not constitute a legitimate interest in the
disputed domain name. See, e.g.,
Yahoo! Inc. v. Klein, FA 124852 (Nat. Arb. Forum Oct. 30, 2002) (holding
respondent’s use of the domain name weyahoo.com to resolve to respondent’s
commercial website does not constitute a bona fide offering of goods or
services).
Turning to the issue of bad faith, the Complainant states that the
Respondent’s allegations that his registration and use of the disputed domain
names are not in bad faith have no merit.
Even if, as the Respondent alleges, he did not register the disputed
domain names primarily for the purpose of selling them to the
Complainant, the record shows that the Respondent registered the disputed
domain names, which are confusingly similar to the Complainant’s YAHOO! mark, primarily
for using them to attract Internet users to the Respondent’s commercial
website. Additionally, the Respondent
did so with knowledge of the Complainant’s rights in its famous and federally
registered YAHOO! mark, a fact the Respondent does not deny. The Respondent’s actions therefore
constitute textbook bad faith under the UDRP and prior UDRP decisions.
Moreover, says the Complainant, the Respondent’s bald assertion that
the disputed domain names “have no commercial value or financial value” is
completely undermined by the Respondent’s own admissions. Specifically, the Respondent claims that he
lost sales when the Respondent’s ISP terminated his hosting services for one of
the disputed domain names in response to the Complainant’s request. However, the Respondent’s admissions that
his websites do not bear the YAHOO! mark or name in any way but rather operate
under different names (“Jays Model Agency,” “BoyModel,” and “ModelBoy.com”)
establish that the Respondent’s alleged lost profits were derived solely from
the presence of the YAHOO! mark in the disputed domain names. The Respondent’s admissions thus make it
abundantly clear that the Respondent registered and uses the disputed domain
names containing the famous YAHOO! mark to attract Internet users to his
commercial website by creating a likelihood of confusion with the Complainant
and its YAHOO! mark as to the source, sponsorship, affiliation, and/or
endorsement of the Respondent’s website.
The Respondent has also made an Additional Submission. In it, he states that Google contacted him
last year regarding his use of <googleboys.com> and he explained to them
his legal use of this domain and they did not pursue the issue.
Further, Respondent alleges that the Complainant failed to cite the
UDRP case where relief was denied because the Respondent clearly illustrated
the same argument that the Respondent has made, namely that the Complainant is
best known for its “Y!” and that it cannot own letters or words.
Finally, the Respondent contests the Complaint’s comment to the effect
that the word “yahooboy” is not in the English dictionary. According to him, the rest of the world have
their own dictionaries. The Internet is
global and it is not owned by the U.S.A., nor is the English language or
dictionaries the prominent entity of the Internet.
FINDINGS
The Complainant has trademark rights in the
string “YAHOO!,” and that mark is famous around the world when used in
connection with web sites.
The Respondent does not have any particular
claim to use of the word “yahoo,” apart from his use of the word in the
disputed domain names.
The Respondent is using the disputed domain names
to offer adult content for commercial gain.
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.
As the Complainant correctly notes, there are
countless common words that have acquired secondary meaning and thus become
trademarks. Well-known examples include
“apple,” “coke,” “frigid air,” “international business machines,” etc.
The Complainant presents evidence to the
effect that it has registered trademark rights in the string “YAHOO!.”
As specified in 3.5 of Request for Comment (RFC)
1034 of the Internet Engineering Task Force (IETF), which document specifies
the domain name system, domain names can only be composed of combinations of
the letters A-Z, the numbers 0-9, and the hyphen
“-.” That is, as the Complainant
correctly points out, the only special character allowed in a domain name is
“-” and thus the string “YAHOO!” cannot be registered as a domain name.
Therefore, in order to obtain a domain name
that includes and reflects its trademark, the Complainant has no choice except
to register domain names containing the string “yahoo.”
As the Complainant
correctly notes, the disputed domain names are comprised of that part of the
Complainant’s mark that can be expressed in the domain name system, with the
addition of the descriptive terms, “boy” and “boys,” respectively. In AOL LLC v. iTech Ent, LLC,
FA 726227 (Nat. Arb. Forum July 21, 2006), the panel found that the
<theotheraol.com> and <theotheraol.net> domain names were
confusingly similar to the AOL mark, as the addition of common terms to a mark
did not distinguish the domain names from the mark.
The same holds here. The Panel finds that the disputed domain
names are confusingly similar to the Complainant’s trademark.
The Respondent correctly notes that the word
“yahoo” was created by the well-known English writer Jonathan Swift in Gulliver’s
Travels. The Online Oxford English
Dictionary defines the noun as referring to “a human being of a degraded or bestial type. Frequently in modern use, a person lacking
cultivation or sensibility, a philistine; a lout, a hooligan.”
As the Respondent clearly shows through is own
submissions, his web sites does not at all refer to that type of human
being. On the contrary, his web sites
show young males who are more appropriately referred to as “ephebe” (a young
man, see the cited Dictionary[1])
or perhaps “ganymede.”
Thus the Respondent cannot legitimately claim that
he is using the disputed domain names to point to web sites related to the noun
“yahoo.”
The Respondent states that he is using the term
“yahoo” as an onomatopeia, that is, as a sound or cry denoting excitement or
enthusiasm. While it may be true that
some people would display excitement or enthusiasm when accessing the
Respondent’s web sites, the Respondent has not alleged—much less presented
evidence to show—that this would be the case for the average Internet
user. On the contrary, it may well be
the case that the average Internet user would use rather different onomatopeias
to describe the Respondent’s web sites.
Thus, the Respondent has failed to prove that, even as an onomatopeia,
the use of the term “yahoo” is legitimately associated with his web sites.
As the Complainant correctly notes, the Respondent
has admitted that he derives revenue from traffic generated by his use of the
disputed domain names. Thus, it is
clear that those names are used for commercial gain.
In this context, see Am. Online, Inc. v. Bates, FA 192595 (Nat. Arb. Forum Oct. 7, 2003) (“Attempts to commercially benefit from a domain name that is confusingly similar to another's mark by linking the domain name to an adult-oriented website [is] evidence that the registrant lacks rights or legitimate interests in the domain name.”); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant correctly points out that the
disputed domain names, which are confusingly similar to its registered mark, resolve to a commercial website
offering adult content, thereby potentially confusing Internet users as to the
affiliation between the Complainant’s and the Respondent’s website. As a result, the Panel finds that the
Respondent’s use of the disputed domain name demonstrates bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See State Fair of
Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding
bad faith where the respondent registered the domain name <bigtex.net> to
infringe on the complainant’s goodwill and attract Internet users to the
respondent’s website); see also Entrepreneur Media, Inc. v. Smith,
279 F.3d 1135, 1148 (9th Cir. 2002) (“While an intent to confuse consumers is
not required for a finding of trademark infringement, intent to deceive is
strong evidence of a likelihood of confusion.”).
See also Motorola, Inc. vs NewGate Internet, Inc., D2000-0079 (WIPO Apr. 14 2000), where the panel stated:
While … many adult sex sites are perfectly
legal and constitute bona fide offerings of goods or services, the use of
somebody else’s trademark as a domain name (or even as a meta-tag) clearly does
not constitute a “bona fide” offering of goods or services when the web site
owner has no registered or common law rights to the mark, since the only reason
to use the trademark as a domain name or meta-tag is to attract customers who
were not looking for an adult sex site, but were instead looking for the
products or services associated with the trademark. Such use of a trademark can create customer confusion or dilution
of the mark, which is precisely what trademark laws are meant to prevent. And actions that create, or tend to create,
violations of the law can hardly be considered to be “bona fide”.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED. The Respondent’s request for a finding of
reverse domain name hijacking is denied.
Accordingly, it is Ordered that the <yahooboy.com>
and <yahooboys.com> domain names be TRANSFERRED from
Respondent to Complainant.
Richard Hill, Panelist
Dated: September 22, 2006
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