Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The complainant is Yahoo! Inc. a Delaware corporation with its principal place of business at 3420 Central Expressway, Santa Clara, California 95051, and represented by David M. Kelly ("the Complainant").

The respondent is Jorge O. Kirovsky, an individual with an address at Artigas 601, Colonia, Uruguay ("the Respondent").

The domain names at issue are "yahooemail.net", "yahoofree.net", "yahoofree.com" and "yahoochat.net" (the "Domain Names"). The Registrar of the Domain Names is Network Solutions Inc. 505 Huntmar Park Drive, Herndon, Virginia 20170 – 5139, USA ("the Registrar").

A complaint was submitted with the World Intellectual Property Organization, Arbitration and Mediation Center (The "WIPO Center") on May 12, 2000 ("the Complaint"). The WIPO Center sent an Acknowledgement of Receipt to the Complainant on May 17, 2000.

On May 17, 2000, a Request for Register Verification was transmitted to the Registrar. On May 19, 2000, the Registrar confirmed by e-mail that the domain names "yahooemail.net", "yahoofree.net", "yahoofree.com" and "yahoochat.net" are registered with the Registrar and that the Respondent is the current registrant of those domain names.

On May 23, 2000, a Notification of Complaint and Commencement of Administrative Proceedings (the "Commencement Notification") was transmitted by email to the Respondent setting a deadline by which the Respondent could make a response to the Complaint.

On June 9, 2000, Respondent submitted to the WIPO Center its response ("the Response"). Respondent's response identifies himself as respondent and as the person to whom communications should be sent, confirms that Respondent is the owner of the domain names "yahoomail.net", "yahoofree.net", "yahoofree.com", "yahoochat.net" and agrees that the dispute is decided by three members of the approved list of panellists ("the Panel").

On June 23, 2000, Complainant submitted to the WIPO Center a Supplemental Submission ("the Supplement"). On June 28, 2000, Respondent submitted to the WIPO Center a Response to the Supplement ("the Second Response"). The Panel accepted these documents on [July 27, 2000].

On July 20, 2000, the WIPO Center sent a Notification of Appointment of Administrative and Projected Decision Date to the parties, in which Wolter Wefers Bettink, Mayer Gabay and Frederick Mostert were appointed as the Panel. The Panel finds that the Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

On the basis of the documents submitted by the parties the following facts can be established as agreed between the parties or insufficiently disputed.

The Complainant is the owner of nine US federal trademarks for the trademark YAHOO! (also stylized). The first was issued on February 25, 1997, and the last on August 24, 1999. The trademarks are registered for goods and services in the international classes 9 (computer software and networks, 16 (books regarding computer networks), 35 (promoting goods on an electronic site) and 42 (computer services).

Complainant began its web directory in early 1994 and now offers a wide variety of services using the YAHOO! Trademark, also in combination with a descriptive name of its services, such as YAHOO!Mail and YAHOO!Chat. Complainant offers various, popular websites under the YAHOO! trademark. For example, it offers free e-mail services at the YAHOO!Mail portion of its YAHOO! website. Complainant offers sites specific to particular countries, such as YAHOO.COM.FR and YAHOO.COM.UK, or directed to particular cities. Complainant also offers sites specific to particular population groups, such as ESPANOL.YAHOO.COM, directed to Spanish speakers around the world.

In most parts of the world YAHOO! is a well-known mark, by virtue of the millions of visitors to the YAHOO! network every day worldwide. Complainant currently has a market capitalization value of approximately U.S.$70 billion.

Complainant has 45,000 registered users in Uruguay, the country of domicile of Respondent. According to figures for April 1999, Uruguay had 90,000 Internet users. Yahoo! is therefore known by most part of the Uruguay’s population that is a Internet user. This is supported by evidence of the number of page views of Yahoo! Websites from .uy addresses, which exceeded 4 million per month in May 2000.

Respondent registered the domain names "yahoomail.net" and "yahoofree.com" on March 8, 2000. It registered the domain names "yahoofree.net" and "yahoochat.net" on March 26, 2000. On February 15, 2000, Respondent had already registered the domain name "yahoo.com.uy". Respondent has linked the Domain Names to its Spanish language website on pets under the yahoo.com.uy domain name.

After the Complaint was submitted, Respondent registered the domain names "yahoochat.cl", "yahoofree.cl" and "miyahoo.cl". These also connect to the website offered under the domain name "yahoo.com.uy".

Also after the Complaint was submitted, Respondent on May 30, 2000, registered the trademark "YAHOO" in Uruguay and on June 2, 2000, established a business called "yahoo S.R.L".

Respondent has not offered any of the Domain Names for sale.

In June, hundreds of emails intended for Complainant have been received at Respondent’s postmaster address at "yahoo.com.uy"

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

(i) the domain name in issue is identical or confusingly similar to Complainant's trademark, and

(ii) Respondent has no rights or legitimate interest in respect of the domain name, and

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of paragraph 4(a)(iii) above.

Paragraph 4(c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent's rights or legitimate interest to the domain name for the purpose of paragraph 4(a)(ii) above.

A. Complainant

In the Complaint and its further Submission, Complainant states that it uses the name Yahoo through its trademarks YAHOO!, mainly through websites on the internet. Complainant’s trademark is famous, also in Uruguay.

The grounds for the Complaint are:

(1) the Domain Names "yahooemail.net", "yahoofree.net", "yahoofree.com" and "yahoochat.net" are confusingly similar to Complainant’s trademark YAHOO! in accordance with Article 4(a)(i) of the Policy;

(2) Respondent has no rights or legitimate interest in respect of the Domain Names as provided in Article 4(a)(ii) in connection with Article 4(c) of the Policy. Respondent is not using and has not used or is not demonstrating and has not demonstrated an intent to use the Domain Names legitimately for providing goods and services in commerce. Respondent failed to illustrate its claim that it is commonly known by the name "yahoo" in Uruguay;

(3) the Domain Names "yahooemail.net", "yahoofree.net", "yahoofree.com" and "yahoochat.net" were registered in bad faith as provided in article 4(a)(iii) in connection with article 4(b) of the Policy. Respondent has registered the trademark "yahoo" in Uruguay and has set up the Uruguayan company "Yahoo S.R.L", after the filing date of the Complaint. Furthermore, Respondent has registered YAHOO-formative domain names in Chile and Mexico subsequent to the filing date of the Complaint. Given the uniqueness and fame of Complainant’s trademark YAHOO!, Respondent merely uses the Domain Names with the intent to mislead and divert consumers or to tarnish Complainant’s YAHOO! trademark for commercial gain.

Additionally, Complainant provides evidence of the fact that Uruguay had 90,000 Internet users as of April 1999 (Exhibit 24) and of the substantial traffic it receives from Uruguayan visitors.

In the Complaint, Complainant requests that Respondent transfers the ownership of the domain names in issue to it.

B. Respondent

In his Response and Second Response, Respondent states that since 1995 he has a business engaged in the sale of veterinary products and services, accessories and similar products. Respondent also states that he named his business "YAHOO" because that is the name of a dog in Uruguay, and it also is a word in Spanish meaning "beast". On February 22, 2000, he registered the domain name "yahoo.com.uy" and subsequently the Domain Names. Because of its prior use of the name "YAHOO", Respondent argues that he has a legitimate interest in the Domain Names.

Respondent also states that Complainant's trademarks are not famous in Uruguay, since of only 3,000,000 inhabitants less than 1% of the population are internet users [figure does not match Yahoo’s figure above at 6A]

The trademark YAHOO! is therefore unknown for the greatest part of the population. Respondent was unaware of Complainant’s trademark. Consequently, it has not registered its Domain Names in bad faith.

a) Identical or confusingly similar

The Domain Names "yahooemail.net", "yahoofree.net", "yahoofree.com" and "yahoochat.net" are clearly confusingly similar to Complainant's trademark YAHOO!.

Moreover, "email" and "chat" are so closely associated with YAHOO!’s business that the combination with YAHOO! cannot be but confusing.

b) Rights or legitimate interests

Article 4(c) of the Policy states circumstances which demonstrate a Respondent’s right or legitimate interest to a domain name. The article sets out by providing:

Therefore, on the basis of this article, Respondent has the burden of proof of its rights or legitimate interest in the Domain Names.

Respondent argues to have a legitimate interest given its use of the domain name "yahoo.com.uy" for ‘offering in good faith , products and services, before receiving notice of the dispute’ (article 4(i) UDRP).

Respondent supports this by stating :

it has used the name "yahoo" since 1995 for a business engaged in the sale of veterinary products and services, accessories and similar products;

the name was chosen because of it being the Spanish translation for "beast";

its business is commonly known under that name in Uruguay;

in early 2000 Respondent decided to create a website to provide information on his products and services;

on February 22, 2000, it registered the domain name "yahoo.com.uy" for that purpose and thereafter the Domain Names;

all of these domain names were ‘created in order to attract users to its main site to provide them information on its veterinarian services and products exclusively’.

As evidence thereof, Respondent has provided the Panel with a copy of the webpages of its website "yahoo.com.uy". According to the date at the bottom of the document, it was printed on June 1, 2000.

The website is in Spanish. On the home page, the name "yahoo" is used twice. Once, as part of a banner for Yahoofreemail and once as part of a disclaimer, indicating that "yahoo" is a registered trademark. No mention is made of Yahoo as the name of a shop for veterinarian products.

The website features information on pets. The menu on the home page comprises of ten categories, each leading to a single webpage. Some pages have photos of dogs; there is a picture of dog leashes and other accessories ; there are pages with information on Dog Training Schools, Veterinary Doctors and dog food. On none of the webpages mention is made of a shop for veterinary products and accessories, either under the name "yahoo", or any other name.

Respondent has provided evidence in the form of prints of web pages that each of the Domain Names leads to the website of Respondent under yahoo.com.uy. The print date at the bottom of these documents is June 1, 2000.

As further evidence, Respondent has provided, inter alia:

a copy of its registration form for the domain name "yahoo.com.uy", dated February 15, 2000;

an undated copy of an English translation of its Uruguay trademark registration form of the word "yahoo";

an undated copy of its company registration form for a business under the name Yahoo S.R.L.;

a copy of an English translation of a Limited Partnership agreement for a company under the name Yahoo S.R.L, dated June 6, 2000. In article 17 it is stated that the company will start business on June 10, 2000.

From the above and from evidence provided by Complainant which is either (1) not disputed or, (2) not disproved by any formal -evidence provided by Respondent- it appears that:

1) "yahoo" is not a common word in the Spanish language for "beast";

2) the domain name "yahoo.com.uy" was registered on February 22, 2000;

3) The trademark "yahoo" has been registered in Uruguay on May 30, 2000, therefore after Respondent received notice of the Complaint on May 23;

4) The company registration was made on June 2, 2000, again after the Complaint was notified to Respondent.

5) The Domain Names on May 3, 2000, led to websites "under construction", whereas the website under "yahoofree.com" allowed for the creation of a free email account which could be used to send emails.

From the above, it is clear that the facts submitted by Respondent to demonstrate its rights or legitimate interests are not proven, but are mere allegations unsupported by evidence. In particular, Respondent has not provided evidence that it used the Domain Names in connection with a bona fide offering of goods or services, prior to receiving the notice to him of the dispute on May 23, 2000, because the print date of the relevant web pages submitted by Respondent is June 1, 2000.

To the extent that the possibility to open a free email account on the yahoofree.com website – which was found and explored by Complainant on May 3, 2000, therefore prior to filing the Complaint - could be considered an offering of services, it is considered that this apparently was not bona fide. This conclusion is drawn from the many unproven, disproven and contradictory allegations of Respondent referred to above and the fact that he applied for the company and trademark registrations on which he relies as well as a number of other domain name registrations under the .cl and .mx ccTLD’s after the Complaint was notified to him.

From the facts referred to above it is also clear that Respondent has not provided evidence that he was commonly known by the domain name (article 4(c)(ii) UDRP), nor that he was making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue (article 4(c)(iii) UDRP).

In conclusion, under the circumstances of this case, it should be held that Respondent has no right or legitimate interest in the Domain Names "yahooemail.net", "yahoofree.net", "yahoofree.com" and "yahoochat.net" in accordance with Article 4(c) of the Policy.

c. Bad faith

Article 4(b) of the Policy states circumstances which are found to be evidence of the registration and use of a domain name in bad faith. Article 4(b) (iv) of the Policy determines that evidence of bad faith is found if:

Complainant has submitted evidence that in its opinion proves Respondent’s bad faith.

Complainant has used its trademark YAHOO since early 1994 and it has become famous and well-known internationally. Complainant’s trademark is also well-known within a substantial segment of the Internet sector of the public in Uruguay. Respondent registered the Domain Names in the beginning of this year. It is unlikely that Respondent was unaware of Complainant’s trademark at that time.

This impression is reinforced by the fact that Respondent argues to have consulted the website "www.nameprotect.com" before registration. The main object of this website is to check a domain name for corresponding trademarks.

Respondent has admitted that it checked that website for domain names containing the word YAHOO. However, when it subsequently found some 200 domain names with that word, Respondent did not check the existence of corresponding trademark registrations. As Complainant has submitted, the first option on the "nameprotect" website is to check for corresponding US federal trademark registration. If one fills out YAHOO and enters the "search" command, a list appears which includes the nine trademark registrations submitted by Complainant in this case.

On the basis of the above, it is likely that Respondent knew or should have known of the existence of the trademark rights of Complainant.

This in itself is insufficient to conclude that the Domain Names were registered and used in bad faith. There are, however, other circumstances which make it likely not only that Respondent knew of Complainant’s trademarks, but also that he used them to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark.

First, while Respondent professes to trade only in Uruguay, he has also registered several domain names and trademarks containing the word "yahoo" in Mexico and Chile.

Second, these registrations took place after the Complaint was notified to him.

Third, Respondent has in fact provided direct evidence of confusion, i.e. that Internet users are actually confused, since Respondent has received hundreds of emails on its site "yahoo.com.uy" which were apparently intended for Complainant. Although Respondent alleges that this was a consequence of actions of Complainant, no evidence thereof has been provided..

In conclusion, The Panel finds that by having registered the Domain Names, it should be held that Respondent has intentionally attempted to attract, for commercial gain, users to its site, by creating confusion with complainant’s well-known mark YAHOO!.

The Panel has, accordingly, based its conclusion that the Respondent registered and used the domain names at issue in bad faith on Section 4(b)(iv) of the UDRP. Nonetheless, it is important to note that Section 4(b) specifically stipulates that: "...the following circumstances, in particular but without limitation..." (emphasis added) shall be evidence of bad faith. The Panel is, therefore, not limited to rely on these four circumstances enumerated in Section 4(b). Additional circumstances from which bad faith can be inferred are particularly relevant in the present case and will, therefore, in the interest of thoroughness, be examined.

In accordance with the international legal principles relating to famous and well-known marks, it has been recognized that bad faith will, more often than not, be inferred from the circumstantial evidence, since intent is a subjective state of mind 1. Circumstances on which tribunals have tended to focus include such factors as to whether there is a close similarity between the respective marks; whether the mark at issue is inherently distinctive (being arbitrary, fanciful, coined or invented) or has acquired distinctiveness (i.e. become famous or well-known); whether the mark was adopted by a defendant as a foreign language word in the local jurisdiction, whether a defendant's explanation of why it chose a mark that "coincidentally" is very similar to a famous or well-known mark defies all credulity 2 and whether (in a UDRP case) the Respondent filed a trademark after the Complainant had objected to the domain name registration by Respondent 3. In weighing such circumstances, a case-by-case approach is usually adopted since each case will depend upon its own special circumstances. It is unlikely that the trier of fact will find the presence or absence of any one factor to be determinative but the overall picture that emerges from the totality of the evidence may be dispositive.

In the present case, the Panel finds that the circumstances from which bad faith on the part of the Respondent can be inferred are compelling. The series of domain names registered by Respondent (YAHOOEMAIL.NET, YAHOOFREE.NET, YAHOOFREE.COM and YAHOOCHAT.NET) are almost identical and certainly similar to the Complainant's YAHOO! mark. In fact, the Complainant's YAHOO! mark is not only fanciful but also an international well-known mark constituting one of the most famous marks in the on-line world today (see the Panel's decision above at 7c.; see also WIPO decisions Yahoo! Inc. v. David Ashby, Case No. D2000-0241 and Yahoo! Inc. v. Eitan Zviely, et al., Case No. D2000-0273 and Yahoo! Inc. v. Akash Arora & ANR, High Court of Delhi, February 19, 1999). Respondent's explanation of coincidentally registering a series of almost identical domain names is not convincing. If anything, Respondent's own evidence tends to point in the opposite direction. Not only is there no evidence to support the statement that a "dog" with the same name gave Respondent the idea to adopt YAHOO as a name for his business and, accordingly, his domain name, but the only evidence tendered by Respondent demonstrates that his business and company under the name "Yahoo S.R.L." was, in fact, only formally registered after the filing of the complaint. In addition, as pointed out above, the Respondent applied for several other YAHOO formative domain names and trademark applications after the Complainant filed this case. Furthermore, the Complainant has provided evidence to demonstrate that the word YAHOO has no known meaning in the Spanish language in Uruguay. Consequently, the registration of the word YAHOO as a series of domain names by Respondent in Uruguay in an almost identical format to a foreign well-known mark requires the Respondent to explain such similarity to justify the coincidence. A mere allegation unsupported by evidence, by Respondent that the word YAHOO means "beast" in Spanish is not sufficient to explain the coincidence. Moreover, it is inconsistent for the Respondent to rely on an alleged Spanish meaning for the word YAHOO when the domain names registered by him also just happen to prominently feature foreign English words such as "EMAIL" and "CHAT" which, in turn, constitute services for which the Complainant is known amongst internet users. Use of these domain names also appears to be inconsistent with the fact that, according to his own allegations, Respondent is only in the business of veterinarian products and services. As set out above under 6B. Respondent's other arguments and actions also contradict each other, such as the fact that his website does not prominently depict the name YAHOO - allegedly Respondent's company's name 4.

In the opinion of the Panel, all these coincidences do accumulate in hoc casu. As Lord Denning once remarked: "the arm of coincidence may be long but it does not reach to infinity". In sum, based on the overall evidentiary circumstances, it is the view of the Panel that there are a sufficient number of circumstances present from which to infer that the Respondent registered and used the domain names in bad faith and intended to trade upon the reputation of the Complainant's famous and well-known mark YAHOO! to confirm the Panel's decision under the Section 4(b)(iv) on this issue.

In sum, the Panel believes that the pre-emption and interception of a famous and well-known foreign mark by simply registering it first as a domain name in the local jurisdiction , should not be sanctioned or seen to be sanctioned in the interest of preserving the integrity of the global trading system of the new economy 5.

In light of the foregoing, the Panel finds that the Domain Names "yahooemail.net", "yahoofree.net", "yahoofree.com" and "yahoochat.net" are confusingly similar to Complainant’s trademark YAHOO!, that Registrant has no legitimate interest in respect of the Domain Names and that the Domain Names have been registered and used in bad faith and consequently, the Panel decides that the Domain Names be transferred to Complainant.

Wolter W. Bettink
Presiding Panelist

Mayer Gabay Frederick Mostert
Panelists

Dated: August 9, 2000

Footnotes:

1. James A. Carney (1991) "Setting Sights on Trademark Piracy: The Need for Greater Protection Against Imitation of Foreign Trademarks" 81 TMR 30 at 41, 55-56; J. Thomas McCarthy (4th Edition) "McCarthy on Trademarks and Unfair Competition" at paragraph 23.113.

2. See, for example, RH Macy & Co Inc. v. Trade Accents (Singapore High Court, 27 June 1991) [1992] 1 SLR 581 at 589.

3. Lion Nathan Limited v. Wallace Waugh (Case No. D2000-0030).

4. Primaily, the fact that Respondent received through the Domain Names hundreds of e-mails intended for Complainant, evidences the bad faith nature of Respondent’s use of those Domain Names, deliberately distracting internet traffic from Complainant.

5. In this context the observations of the court in the VACA QUE RIE "Laughing Cow" Fromageries Bel SA v Ivaldi, Enrique, La Ley (Argentine Supreme Court, Federal Chamber, Buenos Aires, June 26, 1963) case is noteworthy to the effect that the law "…should not allow slavish copies of trademarks registered abroad". (Reported by E.D. Aracama Zorraquin, La Piraterie Des Marques En Droit Argentina, La Propriété Industrielle 339 at 342-343 (November 1982).