national arbitration forum

 

DECISION

 

    Yahoo! Inc. v. Patrick Sullivan

Claim Number: FA0703000945961

 

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, USA.  Respondent is Patrick Sullivan (“Respondent”), 109 W Main St. Apt.E, Rockwell, NC 28138, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <yahoo-help.com>, <yahoo-help.net> and

<y-tunnel.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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 28, 2007.

 

On March 27, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <yahoo-help.com>, <yahoo-help.net> and

<y-tunnel.com> domain names are registered with Go Daddy Software, Inc. and that 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 April 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 23, 2007, 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@yahoo-help.com, postmaster@yahoo-help.net, and postmaster@y-tunnel.com> by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 30, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <yahoo-help.com> and <yahoo-help.net> domain names are confusingly similar to Complainant’s YAHOO! mark.  Respondent’s
<y-tunnel.com> domain name is confusingly similar to Complainant’s Y! mark.

 

2.      Respondent does not have any rights or legitimate interests in the <yahoo-help.com>, <yahoo-help.net>, and <y-tunnel.com> domain names.

 

3.      Respondent registered and used the <yahoo-help.com>, <yahoo-help.net>, and <y-tunnel.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Yahoo! Inc., is a global Internet communications, media, and commerce company that del ivers a branded network of comprehensive searching, directory, information, communication, shopping and other online activities and features to millions of Internet users daily.  In October 2006, Complainant’s global audience grew to 418 million unique users.  In connection with its online products and services, Complainant has registered numerous marks with the United States Patent and Trademark Office (“USPTO”), including YAHOO! (Reg. No. 2,040,222 issued February 25, 1997) and Y! (Reg. No. 2,638,064 issued October 22, 2002).

 

Complainant uses its YAHOO! mark in conjunction with various services it offers, for example: YAHOO! Finance, YAHOO! Games, YAHOO! Help, and YAHOO! Messenger.  Complainant uses its Y! mark as a shorthand for its YAHOO! mark and uses it in conjunction with various services it offers for use on mobile telephones and handheld devices, for example: Y! Finance, Y! Games, and Y! News.   

 

Respondent registered the <yahoo-help.com> domain name on February 15, 2003, the <yahoo-help.net> domain name on August 13, 2004, and the <y-tunnel.com> domain name on March 2, 2003.  Respondent is using the <yahoo-help.com> and <yahoo-help.net> domain names for websites containing a directory of links and advertisements, including products and services that directly compete with Complainant’s search engine and online messenger software.  Respondent is using the <y-tunnel.com> domain name to promote Respondent’s software that circumvents the protocol and user credentials used on Complainant’s online messenger product and service.  Additionally, Respondent’s <y-tunnel.com> website prominently displays Complainant’s Y! mark and also displays a directory of sponsored links for products and services that compete with Complainant.

 

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.  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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the YAHOO! and Y! marks pursuant to Policy ¶ 4(a)(i) through its registrations with the USPTO.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Respondent’s <yahoo-help.com> and <yahoo-help.net> domain names are confusingly similar to Complainant’s YAHOO! mark because the domain names incorporate Complainant’s mark in its entirety (the “!” special character is not allowed in a domain name), add a hyphen, the generic term “help,” and the generic top-level domains “.com” and “.net,” respectively.  Incorporating Complainant’s mark in its entirety with the mere addition of a hyphen, a generic term, and a top-level domain does not sufficiently distinguish Respondent’s domain names from Complainant’s mark under Policy ¶ 4(a)(i).  See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity).

 

Respondent’s <y-tunnel.com> domain name is confusingly similar to Complainant’s Y! mark because the domain name incorporates Complainant’s mark in its entirety (the “!” special character is not allowed in a domain name), adds a hyphen, the generic term “tunnel,” and the generic top-level domain “.com.”  Incorporating Complainant’s mark in its entirety with the mere addition of a hyphen, a generic term, and a top-level domain does not sufficiently distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i).  See Columbia Sportswear Co. v. Keeler, D2000-0206 (WIPO May 16, 2000) (finding “[t]he use of hyphens ‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR COMPANY”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights or legitimate interests in the <yahoo-help.com>, <yahoo-help.net>, and <y-tunnel.com> domain names.  Complainant has the intitial burden of proof in asserting that Respondent has no rights or legitimate interests in the domain names.  Once Complainant makes a prima facie case under Policy ¶ 4(a)(ii), the burden then shifts to Respondent to show that it does have rights or legitimate interests.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also 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).

 

Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the disputed domain names.  See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Respondent is using the <yahoo-help.com>, <yahoo-help.net>, and <y-tunnel.com> domain names, which are confusingly similar to Complainant’s marks, to divert Internet users to websites that display sponsored links to third-party websites, including products and services that compete with Complainant.  Moreover, Respondents is displaying Complainant’s marks on the websites at the disputed domain names.  Such use of the disputed domain names does not constitute a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), or a legitmate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).  See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).

 

Respondent’s WHOIS information, as well as other information in the record, does not suggest that Respondent is commonly known by the <yahoo-help.com>, <yahoo-help.net>, and <y-tunnel.com> domain names.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).  See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).   

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

Respondent is using the <yahoo-help.com>, <yahoo-help.net>, and <y-tunnel.com> domain names, which are confusingly similar to Complainant’s YAHOO! and Y! marks, to divert Internet users seeking Complainant’s online service to websites containing sponsored links to products and services that compete with Complainant.  The Panel infers that Respondent earns click-through revenues for diverting Internet users to the third-party websites.  Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the respondent registered the domain name <statefarmnews.com> in bad faith because the respondent intended to use the complainant’s marks to attract the public to the web site without permission from the complainant); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the 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). 

 

Respondent is using domain names that are confusingly similar to Complainant’s marks to operate commercial websites featuring sponsored links to competing services.  The Panel finds such use indicates bad faith according to Policy ¶ 4(b)(iii) because it appears that Respondent has registered and is using the <yahoo-help.com>, <yahoo-help.net>, and <y-tunnel.com> domain names for the primary purpose of disrupting Complainant’s business.  See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the 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 Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

 

In addition to displaying Complainant’s YAHOO! and Y! marks on the websites at the disputed domain names, Respondent used an email account hosted by Complainant for Respondent’s WHOIS administrative contact information, demonstrating Respondent’s full knowledge of Complainant’s business and marks.  Such use of the disputed domain names is further evidence of Respondent’s bad faith use and registration under Policy ¶ 4(a)(iii).  See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the respondent demonstrated bad faith where the respondent was aware of the complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks.  The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).

 

The Panel finds that Complainant 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 <yahoo-help.com>, <yahoo-help.net>, and

<y-tunnel.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  May 14, 2007

 

 

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