Yahoo! Inc. v. Craig Butler
Claim Number: FA0607000744444
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 Craig Butler (“Respondent”), 16004 Mariners Dr., Huntington Beach, CA 92649.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yahooanswers.com> and <yahooanswers.info>, registered with Go Daddy Software, Inc., and <yahooanswer.com>, <yahooanswers.net> and <yahooanswer.net>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide. These domain names are hereinafter referred to as the “Domain Names.”
The undersigned, Christopher Gibson, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 7, 2006.
On July 6, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <yahooanswers.com> and <yahooanswers.info> 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 July 7, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <yahooanswer.com>, <yahooanswers.net> and <yahooanswer.net> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On July 10, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 31, 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 email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com by e-mail.
A timely Response from the Respondent was received and determined to be complete on July 26, 2006.
A timely Additional Submission from the Complainant was received on July 31, 2006, and was accompanied by the appropriate fee.
On August 2, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, and with the Respondent’s agreement to a single-member Panel noted in its Additional Submission, the National Arbitration Forum appointed Christopher Gibson as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
The Complainant’s contentions are summarized below.
The Complainant has set out statements and supporting evidence to demonstrate the strong reputation, goodwill and distinctiveness in its well-known and famous YAHOO! and YAHOO marks, and highlights that it has actively enforced its trademark rights over the years, including by filing other UDRP cases involving other domain names allegedly infringing the YAHOO! trademark.
Yahoo! owns trademark registrations and applications for the YAHOO and YAHOO! marks (hereinafter referred to as the “Trademark” or YAHOO! mark) in more than 90 countries, including the following examples:
a. U.S. Registration No. 2,040,222, first used June 1, 1994, filed January 24, 1996, issued February 25, 1997, covering goods and services in International Classes 16, 35, and 42, including directory and search engine services.
b. U.S. Registration No. 2,187,292, first used September 22, 1997, filed February 28, 1997, issued September 8, 1998, covering services in International Class 35, including an online buyer’s guide to the goods and services of others;
c. U.S. Registration No. 2,159,115, first used October 1997, filed August 13, 1997, issued May 19, 1998, covering services in International Class 38, including electronic mail services; and
d. U.S. Registration No. 2,403,227, dates of first use occurring June 1994 through March 16, 1998, filed August 13, 1997, issued November 14, 2000, covering goods and services in International Classes 9, 35, 38, 39 and 42, including computer software for providing multiple-user access to computer networks and for use in creating and designing websites, online retail and mail order services, directory services to help locate people, places, organizations, phone numbers, home pages and electronic mail addresses, online facilities for real-time interaction with other computer users concerning topics of general interest and for playing games, and online reservations and bookings for lodging and transportation.
The Complainant contends that confusing similarity exists between Complainant's Trademark and the Domain Names. In particular, Complainant contends that the Domain Names are confusingly similar to Complainant’s YAHOO! mark because each is comprised of Complainant’s mark and a generic term, “answers” or “answer”.
The Complainant also contends that the Respondent has no legitimate interests in the Domain Names. Complainant alleges that Respondent is not and has not been commonly known by the Domain Names. The WHOIS information lists “Craig Butler” as the registrant of the Domain Names and there is no evidence in the record suggesting that Respondent is commonly known by the Domain Names. The crux of the Complainant’s contention in this regard is that, because Respondent’s registration and use of the Domain Names constitutes a deliberate attempt to trade on the reputation and fame in Complainant’s famous YAHOO! mark, this does not qualify as a bona fide use of the Domain Names under Section 4(c)(i) of the UDRP.
The Complainant has raised multiple allegations that the Domain Names were registered and are being used in bad faith, including:
(i) Respondent’s registration and use meet the bad faith element in Section 4(b)(iv) of the UDRP because Respondent uses and/or intends to use the Domain Names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its Trademark as to the source, sponsorship, affiliation, and endorsement of Respondent, Respondent’s websites, and the goods and services offered and advertised on those websites. The Complainant has provided evidence of confusion in support of this contention.
(ii) Respondent’s registration and use of the Domain Names meet the bad faith element in Section 4(b)(ii) of the UDRP. In particular, Respondent’s registration of the five Domain Names in and of itself constitutes a pattern of registering trademark-related domain names in bad faith. The Complainant has provided evidence that the Respondent has registered other domain names which incorporate the trademarks of other Internet-based companies such as AOL and Google.
(iii) Respondent’s use and registration of the Domain Names meet the bad faith element of Section 4(b)(i) of the UDRP because Respondent registered the Domain Names primarily to sell, rent, or otherwise transfer them for valuable consideration in excess of his documented out-of-pocket expenses. In particular, the Complainant has provided evidence that the Respondent specifically offered to sell the Domain Names directly to Complainant for $54,000. The Respondent does not deny this but has instead offered a response.
(iv) Respondent acted in bad faith because, as a customer of Yahoo!, he had actual knowledge of Complainant’s rights in its YAHOO! mark when he registered the Domain Names. Further, Respondent admitted in his posting on a third-party bulletin board that he registered the Domain Names because they incorporate Complainant’s YAHOO! mark and capitalize on Yahoo!’s goodwill.
(v) Respondent’s registration and use of the domain names <YAHOOANSWERS.INFO>, <YAHOOANSWERS.NET>, and <YAHOOANSWER.NET> for “parking” websites is in bad faith because the Domain Names incorporate Complainant’s famous YAHOO! mark in entirety and there is no conceivable use of the Domain Name by Respondent that would be legitimate given his allegedly infringing activities to date.
Respondent has raised a number of points in support of his registration and use of the Domain Names, which are summarized (and in some places paraphrased) below:
(i) Yahoo! has had many years to purchase the Domain Names and has only become interested now that the on-line “answers” business is receiving increased attention from the press and becoming profitable. The Yahoo! answers site was launched eight months after the Respondent’s own web site and it seems that the right time to have confronted this dispute should have been earlier, during the period when Yahoo! was developing their site. However, since that time the Respondent has invested money and time in building his own sites.
(ii) Respondent registered the Domain Names through a Yahoo! site and they were reviewed and then activated by Yahoo! “I have a right to these names as these names were purchased from Yahoo! Inc and Yahoo! Inc accepted my money for this transaction, they reviewed the domain names before releasing the[m] for my use.” Respondent also indicates that Yahoo! could have written a program excluding any sequence of letters – presumably including “yahoo” – from being sold on their domain name sales site. “The[ir] lack of planning doesn’t entitle them anything.”
(iii) “Yahoo” is also an expression or term, describing a joy of discovery as in finding something – something like an answer. The term “yahoo” was also used in the Old West for excitement (e.g., a cowboy riding a horse might scream yahoo!). The Respondent points out that Yahoo! owns only the mark, not the word.
(iv) Regarding the price of $54,000 which Respondent indicated for sale of the Domain Names, the Respondent contends “My price is cheap and more than fair.” The price was fair because the Respondent’s web sites associated with the Domain Names “are a source of income.” Respondent explained how he calculated this price: (1) income from answering questions to date is $200 per month, (2) Google’s AdSense sends Respondent another $40 per month, and (3) this total ($240) was then multiplied by 12 months and 30 years to obtain $54,000.
C. Additional Submissions
Complainant submitted an Additional Submission, in which it contends that “[n]othing in Respondent’s Response changes the showing made by Yahoo! in its Complaint that clearly entitles Yahoo! to relief.” In brief, the Complainant has noted the following additional points:
(i) Respondent has failed to deny many of the allegations made in the Complaint;
(ii) Yahoo!, like all other domain name registrars, does not prescreen or filter domain name applications for registration;
(iii) Instead, it was Respondent’s responsibility, when he registered the Domain Names, to warrant that to the best of his knowledge and belief, neither the registration or use of the Domain Names infringed the legal rights of any third party;
(iv) Respondent ignored his obligations under Yahoo!’s contractual Terms. In particular, Respondent was not authorized to register or use domain names incorporating Complainant’s YAHOO! mark;
(v) Respondent’s use of the Domain Names does not pre-date Yahoo!’s rights in its Trademark;
(vi) Respondent’s investment of time and money in the Domain Names does not convert Respondent’s alleged infringement into a legitimate right to the Domain Names;
(vii) Respondent’s suggestion that it chose the word “yahoo” for its ordinary dictionary meaning is not credible; and
(viii) Respondent registered the Domain Names in bad faith knowledge of Yahoo!’s Trademark rights and then offered to sell the Domain Names for $54,000, a substantial profit in excess of the out-of-pocket expenses relating to the registration of the Domain Names.
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.
The Panel finds that Complainant’s trademark registrations, as well as the YAHOO! mark’s widespread and international use since 1994, amply demonstrate its rights in the YAHOO! mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). The Panel also finds that Complainant’s Trademark rights in its YAHOO! mark, and variations thereof, predate Respondent’s registration of the Domain Names.
The Panel also finds that the mere addition of a common term such as “answer” or “answers” to Complainant’s YAHOO! mark (and the omission of the exclamation point), are insufficient to differentiate the Domain Names from the Complainant’s well-known and distinctive Trademark under Policy ¶ 4(a)(i). The Panel therefore finds that the Domain Names are confusingly similar to Complainant’s YAHOO! mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also 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."); see also 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).").
The Panel is reminded that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.
As discussed above, the Respondent is not commonly known by the Domain Names, nor has the Complainant authorized Respondent to use its well-known Trademark. Furthermore, Complainant has asserted that the Domain Names resolve to a website offering a fee-based informational advice service and displaying pay-per-click ads provided via Google’s AdSense advertising program. As an initial matter, given that the Respondent selected Domain Names which have no connection to himself and which combine Complainant’s well-known Trademark with common generic terms, in what would appear to be an effort to take advantage of the reputation and goodwill in Complainant’s Trademark, these basic points would appear to indicate that Respondent does not have any rights or legitimate interests in the Domain Names pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Yahoo! Inc. v. Microbiz, Inc., D2000-1050 (WIPO Nov. 16, 2000) (finding that respondent’s use of YAHOO!-formative domain names for a commercial website was not bona fide because “use that intentionally trades on another can not constitute a ‘bona fide’ offering of goods or services.”); see also Yahoo! Inc. v. WWW Enterprise et al., FA 535381 (Nat. Arb. Forum Sept. 28, 2005) (finding no legitimate interest in the domain names <auctionyahoo.net>, <blogyahoo.com>, <localyahoo.net>, and <yahoovacationsstore.com>, among others, because "[R]espondent is using the confusingly similar domain names to operate websites that feature links to various third-party commercial websites, through which [r]espondent presumably earns referral fees. The Panel finds that such diversionary use of the confusingly similar domain names is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).").
The Panel considers that the Respondent, perhaps like other registrants who register domain names comprised at least in part of a well-known trademark, is confused as to the nature of the rights conferred through registration of the domain name. The Panel will therefore address the several points raised by the Respondent in defense of its registration and use of the Domain Names.
First, the Respondent asserts that Yahoo! has had many years to purchase these Domain Names and became interested in them only recently when the on-line “answers” business increased in popularity. The Respondent, meanwhile, has invested money and time in developing his own web site using the Domain Names. The problem with this argument is that it seeks to have the Panel ignore the well-known trademark rights which Yahoo! has already acquired and developed at great cost since 1994, particularly in the on-line commercial sphere. The Respondent’s argument also ignores the fundamental fact that he did not choose domain names which were unique, self-standing and independent of any third-party trademark rights – for example, as of the date of this decision the following domain names, which bear some relation to the registrant’s last name and his putative on-line answers business, are available: <craigbutler.info>, <butleranswers.com> and <butleranswers.info>. Choosing these domain names would have required that the Respondent invest time and money to develop some goodwill and reputation in his chosen business name and the associated domain names, and perhaps register appropriate trademark rights to secure them. Instead, however, he chose the Domain Names which, due to their confusing similarity with the Complainant’s Trademark, opportunistically take advantage of the Complainant’s goodwill and reputation. The Respondent’s use to-date under these circumstances does not constitute a bona fide use of the Domain Names pursuant to Section 4(c)(i) of the UDRP.
Second, the Respondent has asserted that he registered the Domain Names through a Yahoo! site and that they were reviewed and then activated by Yahoo! before releasing them for his use. Here, the Panel agrees with the Complainant’s position stated in its Additional Submission. Complainant has confirmed that, acting as a domain name registrar, it does not prescreen or filter domain name applications for potential infringements. Further, as the Ninth Circuit Court of Appeals noted in Lockheed Martin Corp. v. Network Solutions Inc., 985 F. Supp. 949 (C.D. Cal. 1997), aff’d, 194 F.3d 980 (9th Cir. 1999), a domain name registrar such as NSI had no affirmative duty to monitor and screen domain names for potential infringement as they were being registered. Instead, it is well-understood (and a common term required in registration contracts for ICANN-accredited domain name registrars) that the responsibility is on the domain name registrant to warrant that, to the best of registrant's knowledge and belief, neither its registration of a domain name nor the manner in which it is used, infringes the legal rights of a third party.
Third, the Respondent in his response apparently contends that he selected the term “yahoo” as part of his domain name for its common dictionary meaning. However, the evidence including his posting on a third-party blog supports the view that this claim is not credible, and that instead he was well-aware of the Complainant’s well-known YAHOO! mark at the time he registered the Domain Names. See Yahoo! Inc. v. Silicon City, D2000-1711 (WIPO Feb. 19, 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 Respondent 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.”).
Finally, the Respondent has argued that the price of $54,000 for sale of the Domain Names is “cheap and more than fair.” However, whatever basis the Respondent relies upon to justify this figure as supposedly reasonable, his argument presupposes that he has some right or legitimate interest in the Domain Names in the first place. The Panel concludes he does not. The Panel concludes that the Respondent’s use of the Domain Names which are confusingly similar to the Complainant’s well-known trademark, to offer a fee-based informational advice service for its own commercial gain, 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 Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii)).
In light of the above discussion and findings, the Panel does not need to draw out further this decision. Panel finds that the Respondent was well-aware of the Complainant’s YAHOO! mark at the time of registration and is taking advantage of the confusing similarity between the Domain Names and Complainant’s YAHOO! mark in order to profit from the goodwill associated with the mark, which is indicative of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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); see also Yahoo! Inc. v. Manage Technical, FA 238649 (Nat. Arb. Forum Apr. 8, 2004) (holding respondent’s use of the domain name <yahooauto.com> for a commercial website constituted bad faith because "It is well established that when a domain name registrant incorporates a well-known registered mark in a domain name for the purpose of creating Internet-user confusion as to the sponsorship of the name and then uses it for commercial gain, the registrant has registered and used the name in bad faith pursuant to Policy ¶ 4(b)(iv)."); see also Yahoo! Inc. v. Chinayahoo.com a/k/a Kevin Kevin, FA 236538 (Nat. Arb. Forum Mar. 23, 2004) ("[R]espondent’s domain name [chinayahoo.com] redirects Internet users who intend to search under Complainant’s famous [YAHOO!] mark to a website sponsored by [r]espondent through the use of a confusingly similar domain name. Respondent’s commercial use of a domain name confusingly similar to Complainant’s mark evidences registration and use in bad faith pursuant to ¶ 4(b)(iv)."); see also Yahoo! Inc. v. Kelvin 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 yahoonail.com].”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahooanswers.com>, <yahooanswer.com>, <yahooanswers.info>, <yahooanswers.net> and <yahooanswer.net> domain names be TRANSFERRED from Respondent to Complainant.
Christopher Gibson, Panelist
Dated: August 17, 2006
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