Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The complainants are Yahoo! Inc., ("Yahoo!") a Delaware corporation with its principal place of business at Santa Clara, State of California, United States of America, and GeoCities ("GeoCities") a wholly owned subsidiary of Yahoo! that is also a Delaware corporation with its principal place of business at Santa Clara, State of California, United States of America. The respondent is Roger Campanera Renom, ("Roger") an individual resident in Barcelona, Spain.

The domain name at issue is "geocities-yahoo.com", which domain name is registered with Network Solutions, Inc. ("NSI") based in the United States of America

A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on August 10, 2000, and the signed original together with four copies forwarded by express courier under cover of a letter of the same date received August 15, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the complainants, dated August 18, 2000.

On August 24, 2000 a Request for Registrar Verification was transmitted to the registrar, NSI requesting it to: (1) confirm that the domain name at issue is registered with NSI (2) confirm that the person identified as the respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), email address(es)) available in the registrar's Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) provide a copy of the registration agreement that was in effect at the time of the original registration of the domain name, as well as any subsequent amendments to the agreement; (5) provide a copy of the domain name dispute policy (if different from ICANN's Uniform Domain Name Dispute Resolution Policy) that was in effect at the time of the original registration of the domain name, as well as any subsequent amendments to the policy.

On August 25, 2000, NSI confirmed by reply email that the domain name "geocities-yahoo.com" is registered with NSI and that Roger was the current registrant of the name. The registrar also forwarded the requested Whois details, as well as copies of the registration agreement. The dispute resolution policy in effect at the time of the original registration of the domain name was NSI’s Service Agreement version 5.0.

A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on August 30, 2000. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the complainants.

No formal deficiencies having been recorded, on August 30, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to Roger (with copies to the complainants, NSI and ICANN), setting a deadline of September 18, 1999, by which Roger could file a Response to the Complaint. The Commencement Notification was transmitted to Roger by email to the email addresses indicated in the Complaint and specified in NSI’s Whois confirmation, as well as to "info@geocities-yahoo.com". In addition, the complaint was sent by express courier to all available postal addresses and by facsimile to the administrative contact specified in NSI’s Whois confirmation. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."

On September 27, 2000, having received no Response from the designated respondent, using the same contact details and methods as were used for the Commencement Notification, the WIPO Center transmitted to the parties a Notification of Respondent Default.

On October 5, 2000, in view of the complainants’ designation of a single panelist (but without prejudice to any election to be made by Roger) the WIPO Center invited Gary N. Bouchard to serve as a panelist in Case No. D2000-1012, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.

Having received on October 6, 2000, Gary N. Bouchard’s Statement of Acceptance and Declaration of Impartiality and Independence, on October 24, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Gary N. Bouchard was formally appointed as the Sole Panelist. The Projected Decision Date was November 6, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.

The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Uniform Rules, the WIPO Supplemental Rules, and without the benefit of any Response from respondent.

A. Yahoo!'s Trademark Holdings

Registration No. 2,040,222 for the mark YAHOO!, issued February 25, 1997, covering computer software for searching and retrieving information, sites, and other resources on computer networks; computer software, namely, a directory of information, sites, and other resources available on computer networks in International Class 9; books regarding computer networks and searching and retrieving information, sites, and other resources on computer networks in International Class 16; promoting the goods and services of others by placing advertisements and promotional displays in an electronic site accessed through computer networks in international Class 35; computer services, namely, creating indexes of information, sites, and other resources available on computer networks; searching and retrieving information, sites, and other resources available on computer networks for others; providing an online link to news, weather, sports, current events, and reference materials in International Class 42.

Registration No. 2,040,691 for the mark YAHOO! (stylized), issued February 25, 1 997, covering computer services, namely, creating indexes of information, sites, and other resources available on computer networks; searching and retrieving information, sites, and other resources available on computer networks for others; providing an online link to news, weather, sports, current events, and reference materials in International Class 42.

Registration No. 2,076,457 for the mark YAHOO!, issued July 1, 1997, covering magazines regarding computer networks and searching and retrieving nformation, sites, and other resources on computer networks in International Class 16.

Registration No. 2,1 59,1 1 5 for the mark YAHOO!, issued May 1 9, 1998, covering electronic mail services in International Class 38.

Registration No. 2,187,292 for the mark YAHOO!, issued September 8, 1998, covering online computer services, namely, providing information regarding the goods and services of others in the nature of a buyers' guide, by means of a global computer network in International Class 42.

Registration No. 2,243,909 for the mark YAHOO!, issued May 4, 1999, covering posters, in International Class 16; shirts, sweatshirts, jackets, visors, and hats in International Class 25.

Registration No. 2,243,823 for the mark YAHOO!, issued May 4, 1999, covering credit card services in International Class 36.

Registration No. 2,273,128 for the mark YAHOO!, issued August 24, 1999, covering computer software for use as a screen saver in International Class 9; housewares, namely, cups and mugs in International Class 21; demographic consultation services in International Class 35.

Application No. 75/536,236 for the mark YAHOO!, filed August 13, 1998, covering computer software for providing multiple-user access to computer networks; and computer software for use in creating and designing web sites in International Class 9; online retail and mail order services in the field of general consumer merchandise; directory services to help locate people, places, organizations, phone numbers, homepages, and electronic mail address; promoting the web sites of others, namely, distributing advertising for others via an online electronic communications network in International Class 35; telecommunications services, namely, providing telephone communications via computer networks; electronic transmission of data, images, and documents via computer terminals and networks; and broadcasting services, namely, audio broadcasting, radio broadcasting, cable television broadcasting, television broadcasting, and video broadcasting in International Class 38; making reservations and bookings for transportation and online reservations and bookings for transportation in International Class 39; computer services, namely, providing multiple-user access to computer networks for the transfer and dissemination of a wide range of information; providing a wide range of general interest information via computer networks; computer bulletin and message boards in the fields of general interest; design, creation, hosting, maintenance, consulting, and technical assistance in the fields of designing, creating, hosting, maintaining, operating, managing, advertising, and marketing of online commerce web sites; providing online facilities for real-time interaction with other computer users concerning topics of general interest and for playing games; making reservations and bookings for temporary lodging and online reservations and bookings for temporary lodging and online reservations and bookings for temporary lodging; and club services relating to web searching and web site information in International Class 42.

The registrations issued in the name of Yahoo! Inc. (a California corporation), are now owned by Yahoo! Inc. (a Delaware corporation) by virtue of the merger of the California corporation into the Delaware corporation on May 18, 1999. A copy of the merger document as recorded at the U.S. Patent and Trademark Office on September 17, 1999, is included in the Complaint as part of Exhibit 13.

Yahoo! also owns the domain name YAHOO.COM. The YAHOO.COM domain name was registered with NSI on January 18, 1995 and has been used to identify the YAHOO! home page since on or about that date.

B. GeoCities' Trademark Holdings

GeoCities is the owner of U.S. Trademark Registration No. 2,124,762 for the mark GEOCITIES covering "dissemination of advertising for others via on-line electronic communications network" in Class 35, and "computer services, namely, hosting the web sites of others on a computer server for a global computer network; creating and maintaining web sites for others; providing on-line facilities for real-time interaction with other computer users concerning topics of general interest" in Class 42. A copy of this registration is attached as Exhibit 14. This registration issued on December 30, 1997, and is based on an application filed on December 19, 1995.

GeoCities also owns the domain name GEOCITIES.COM. The GEOCITIES.COM domain name was registered with NSI on December 15, 1995 and has been used to identify the GEOCITIES website since from about that date to the present. Internet users have also been able to access the GEOCITIES website through Yahoo!’s website located at http://www.yahoo.com website since approximately May 1999.

Roger registered the domain name "geocities-yahoo.com" for a term of two years from June 23, 1999. Complaint Exhibit 1. Roger is not a licensee of the complainants, nor is he otherwise authorized to use complainants’ marks. Complaint, para. 39.

Yahoo!'s trademark rights in the YAHOO! Marks and variations thereof, based on its trademark filings and on its common law rights acquired through the use of the YAHOO! mark, trade name, and domain name, predate the registration of the domain name by Respondent.

GeoCities' trademark rights in the mark GEOCITIES and variations thereof, based on its trademark filings and on its common law rights acquired through the use of the GEOCITIES mark, trade name, and domain name, predate the registration of the domain name by Respondent.

On August 4, 2000, after a brief email exchange where Roger contacted complainants by email and notified complainants of the registration, respondent stated that he wished to sell the domain at issue for the sum of US$10,000.00. Complainant Exhibit 15.

Respondent registered the domain name less than one month after Yahoo! formally completed its acquisition of GeoCities on May 28, 1999. That acquisition was widely publicized starting in January 1999 when it was first announced. Complaint para. 48.

Respondent has not developed a Web site using the domain name at issue or made any other good faith use of the domain name. Complaint, para. 47. The domain name at issue is not, nor could it be contended to be, a nickname of respondent or other member of his family, the name of a household pet, or in any other way identified with or related to a legitimate interest of respondent.

A. Complainants

Complainants contends that respondent has registered, as a domain name, a mark which is substantially similar to the trademarks registered and used by Yahoo! and GeoCities, that respondent has no rights or legitimate interests in respect to the domain name at issue, and that respondent has registered and is using the domain name at issue in bad faith.

B Respondent

Respondent has not contested the allegations of the Complaint.

Paragraph 4(a) of the Policy directs that the complainants must prove each of the following:

1) that the domain name registered by Roger is identical or confusingly similar to a trademark or service mark in which the complainants has rights; and,

2) that Roger has no legitimate interests in respect of the domain name; and,

3) the domain name has been registered and used in bad faith.

It is clear that the domain name "geocities-yahoo.com" is identical or confusingly similar to the trademarks registered and used by Yahoo! and GeoCities. It is also apparent that Roger has no rights or legitimate interests in respect of the domain name. Since Respondent registered the domain name less than one month after Yahoo! formally completed its acquisition of GeoCities on May 28, 1999, the Panel finds that the name was registered in bad faith.

However, the name must not only be registered in bad faith, but it must also be used in bad faith. Paragraph 4,b,i of the Policy, provides that "the following circumstances . . . shall be evidence of the registration and use of a domain name in bad faith: . . . circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainants who is the owner of the trademark or service mark . . . for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name."

Because respondent offered to sell the domain name to a complainant for U.S.$10,000, and it is the Panel’s finding that U.S.$10,000 is greater than respondent’s out-of-pocket costs directly related to the domain name, it is, therefore, the Panel’s finding that respondent has "used" the domain name in bad faith as defined in the Policy.

For all of the foregoing reasons, the Panel decides that the domain name registered by respondent is identical or confusingly similar to the trademarks in which the complainants have rights, and that Roger has no rights or legitimate interests in respect of the domain name, and that Roger's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4,i of the Policy, the Panel requires that the registration of the domain name "geocities-yahoo.com" be transferred to the complainants.

Gary N. Bouchard
Presiding Panelist