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Generic Top Level Domain Name (gTLD) Decisions |
Yahoo! Inc. v. Yuan Zhe Quan
Claim Number: FA0208000117877
PARTIES
Complainant
is Yahoo! Inc., Sunnyvale, CA, USA
(“Complainant”) represented by David M.
Kelly, of Finnegan Henderson Farabow
Garrett & Dunner L.L.P.
Respondent is Yuan Zhe Quan,
Beijing, CHINA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <bryahoo.com>,
<cnyahoo.com> and <espanolyahoo.com>, registered with Tucows, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 6, 2002; the Forum received
a hard copy of the
Complaint on August 7, 2002.
On
August 8, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain
names <bryahoo.com>,
<cnyahoo.com> and <espanolyahoo.com> are registered
with Tucows, Inc. and that Respondent is the current registrant of the
names. Tucows, Inc. has verified that
Respondent is bound by the Tucows, 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 12, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of September
3, 2002, 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@bryahoo.com, postmaster@cnyahoo.com and postmaster@espanolyahoo.com
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
September 26, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed
Hon. Carolyn Marks
Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the 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 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
allegations in this proceeding:
The
<bryahoo.com>, <cnyahoo.com>
and <espanolyahoo.com> domain names are confusingly similar to
Complainant’s YAHOO! Mark.
Respondent
has no rights or legitimate interests in the <bryahoo.com>, <cnyahoo.com> and <espanolyahoo.com>
domain names.
Respondent
registered and used the <bryahoo.com>,
<cnyahoo.com> and <espanolyahoo.com> domain names
in bad faith.
B.
Respondent failed to come forward and submit a Response.
FINDINGS
Complainant holds numerous registrations
for the YAHOO! trademark and service mark with the United States Patent and
Trademark Office,
including, inter alia, Registration Numbers 2,273,128;
2,243,909; 2,040,222; and 2,076,457.
Complainant has also actively protected its YAHOO! mark by registering
the mark with approximately 80 countries around the world,
including
Respondent’s home country, China (e.g., Reg. No. 1,115,500 and 1,209,289).
Complainant uses the YAHOO! mark in
connection with, inter alia, domestic and international web directory
and search services, online games, people searches, astrology and horoscopes,
clubs, greetings,
corporate network software and services, travel-related
services, Internet access and email.
Complainant offers a wide variety of services under the YAHOO! mark and
continues to expand its YAHOO! related business ventures. In an effort to promote the YAHOO! mark and
the assorted services that Complainant offers under the mark, Complainant uses
and/or
licenses the mark on a number of products, including clothing, books,
magazines and computer accessories.
Complainant’s services are accessed and
used by a wide variety of individuals, as the <yahoo.com> website is one
of the leading
Internet websites worldwide, in terms of traffic. Complainant’s global audience was cataloged
at 237 million users in March 2002, and during the same month a record 98
million active
registered members logged on to their personalized YAHOO!
accounts. Complainant has recorded up
to “1.62 billion page views” per day.
Complainant uses its YAHOO mark to
specifically target particular regions, countries, topics or population
groups. Specifically, Complainant uses
the YAHOO! mark for websites that are directed toward Brazilian, Chinese and
Spanish audiences, <br.yahoo.com>,
<cn.yahoo.com> and
<espanol.yahoo.com>, respectively.
By virtue of Complainant’s expanding
business ventures connected to the YAHOO! mark, extensive promotion and
advertising efforts,
and massive worldwide use of YAHOO! related services,
Complainant’s mark has become famous.
Well after Complainant established
trademark rights in the YAHOO! mark, Respondent registered the <bryahoo.com>, <cnyahoo.com> and <espanolyahoo.com> domain names. Respondent registered the <bryahoo.com> domain name
on October 13, 1999, and the domain names <cnyahoo.com> and <espanolyahoo.com>
on February 3, 2000. Respondent uses
the domain names to redirect Internet users to internal web pages of Chick
Publications’ website, which is a commercial
website that sells religious
texts. The web pages that the domain
names resolve to are comic strips.
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
will draw such inferences as it considers
appropriate pursuant to paragraph
14(b) of the Rules.
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.
Complainant established in this
proceeding that it has rights to the YAHOO! mark through proof of registration
with the USPTO and
by continuous extensive use of the mark.
The <bryahoo.com> and <cnyahoo.com>
domain names contain Complainant’s YAHOO! mark without the exclamation
point along with the addition of generic letter prefixes. The omission of the exclamation point is of
no consequence because letters, numbers and hyphens are only permitted in
domain names. The prefixes “br” and
“cn” appear to be random letters, however, they most likely are used to
abbreviate Brazil and China, respectively.
This is likely the case because Complainant owns registration rights in
the <br.yahoo.com> and <cn.yahoo.com> domain names. While Complainant does not hold trademark
rights in those domain names, Respondent’s domain names incorporate the
substantive portion
of Complainant’s famous YAHOO! mark. It has been consistently held that a prefix,
whether it is random letters or a geographic identifier, does not create a
distinct and
separate mark capable of overcoming a Policy ¶ 4(a)(i) confusingly
similar analysis. Therefore, Respondent’s
<bryahoo.com> and <cnyahoo.com> domain names are
confusingly similar to Complainant’s mark.
See Chi-Chi’s Inc. v. Rest.
Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name
<chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite
the omission of the apostrophe and hyphen from the mark); see also Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and
<oicq.com> are confusingly similar to Complainant’s
mark, ICQ); see
also CMGI, Inc. v. Reyes,
D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name
<cmgiasia.com> is confusingly similar to Complainant’s CMGI mark).
Likewise, the domain name registered by
Respondent, <espanolyahoo.com>, is confusingly similar to
Complainant’s YAHOO! mark. The use of a
generic term, such as “espanol,” in connection with Complainant’s YAHOO! mark
does not add any source identifying significance. The focus of the domain name, <espanolyahoo.com>,
registered by Respondent, remains on Complainant’s famous YAHOO! mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of Complainant
combined with a generic word or term); 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 Policy ¶ 4(a)(i) has
been satisfied.
Complainant asserts that Respondent has
no rights or legitimate interests in the <bryahoo.com>,
<cnyahoo.com> and <espanolyahoo.com> domain names
and Respondent has allowed those assertions to go uncontested. Complainant met its burden of establishing a
prima facie case, which shifts the burden to Respondent to articulate rights
and legitimate
interests in the domain name.
Since Respondent failed to proffer either evidence or an argument in
support of such rights or interests, the Panel is permitted to
assume that
Respondent has no such rights or legitimate interests. See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts
that Respondent has no rights or legitimate interests in
respect of the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate
interests in the domain name); see also
Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondent’s
failure to respond can be construed as an admission that they have no
legitimate interest in the domain names).
Furthermore, Respondent’s failure to
submit a Response in this proceeding allows all reasonable inferences of fact
to be drawn in
Complainant’s favor. See
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”).
Respondent uses the <bryahoo.com>, <cnyahoo.com> and <espanolyahoo.com>
domain names to divert Internet traffic to a website developed and operated by
Chick Publications, which is a commercial website
designed to sell religious
texts. The domain names link Internet
users to internal pages of the website, all of which are religious comic
strips. Respondent attracts more
Internet users to its commercial website by capitalizing on Complainant’s famous
YAHOO! mark. Thus, Respondent’s
diversionary use of the domain names does not represent a connection with a
bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), and it
does not constitute a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc.,
FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial
use of the domain name to confuse and divert Internet
traffic is not a
legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by
using Complainant’s trademarks).
Respondent has no business connection
with Complainant and, therefore, is not an authorized user of the YAHOO!
mark. Considering the notoriety and
fame of the YAHOO! mark, it is highly unlikely that anyone other than
Complainant would be commonly
known by the mark or a confusingly similar
version thereof. The Panel knows
Respondent only as Yuan Zhe Quan, as there is no evidence that Respondent is
commonly referred to by the <bryahoo.com>, <cnyahoo.com> and <espanolyahoo.com> domain names. Therefore, Respondent has no rights or legitimate interests in
the domain names pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark); see also Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interest where Respondent was not commonly known by the
mark and
never applied for a license or permission from Complainant to use the
trademarked name).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the <bryahoo.com>, <cnyahoo.com> and <espanolyahoo.com>
domain names; thus, Policy ¶ 4(a)(ii) has been satisfied.
Circumstances surrounding the case make
it clear that Respondent knew that the YAHOO! mark was of value to its rightful
owner. First, the YAHOO! mark has
developed into one of the most famous marks associated with the Internet by way
of the mark’s use on the
highly popular <yahoo.com> website. Because of the established identity of the
YAHOO! mark, Respondent had at the very least constructive knowledge of
Complainant’s rights
in the mark.
Second, Respondent’s <bryahoo.com>,
<cnyahoo.com> and <espanolyahoo.com> domain names
are merely slight variations of three of Complainant’s domain names,
<br.yahoo.com>, <cn.yahoo.com> and <espanolyahoo.com>. It is evident that Respondent not only
wanted to profit from Complainant’s YAHOO! mark but that Respondent
specifically sought a targeted
segment of Complainant’s Internet audience. Respondent attempts to capture Internet
users that omit the first period when typing <br.yahoo.com>,
<cn.yahoo.com> or
<espanol.yahoo.com>. Therefore, circumstances indicate that Respondent was fully aware
of Complainant’s valuable interests in the YAHOO! mark prior to
registering the
subject domain names. Hence, Respondent
registered the domain names in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Ashby,
D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark
negated any plausible explanation for Respondent’s registration
of the
<yahooventures.com> domain name); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000)
(finding that Respondent had actual and constructive knowledge of Complainant’s
EXXON mark given
the world-wide prominence of the mark and thus Respondent
registered the domain name in bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly
known mark at the time of registration).
Furthermore, Respondent’s diversionary
use of the <bryahoo.com>,
<cnyahoo.com> and <espanolyahoo.com> domain names
was done with a profit motive.
Respondent uses the domain names to ensnare Internet users searching for
Complainant’s services. Internet users
that mistype the domain name are linked to Respondent’s website, which promotes
religious texts, and users are likely
to be confused as to Complainant’s
affiliation or level of sponsorship.
Respondent’s use fits squarely under the bad faith circumstance listed
in Policy ¶ 4(b)(iv). Therefore,
Respondent uses the <bryahoo.com>,
<cnyahoo.com> and <espanolyahoo.com> domain names
in bad faith. See Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent
directed Internet users seeking Complainant’s site
to its own website for
commercial gain); see also Yahoo!
Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding bad faith where
Respondent linked the domain names, which contained the YAHOO! mark, to
several
of YAHOO!’s own websites).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby
granted.
Accordingly, it is Ordered that the
domain names <bryahoo.com>,
<cnyahoo.com> and <espanolyahoo.com> be
transferred from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: October 10, 2002.
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