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Generic Top Level Domain Name (gTLD) Decisions |
Yahoo! Inc. v. Seocho
Claim Number: FA0204000109050
PARTIES
Complainant
is Yahoo!, Sunnyvale, CA
(“Complainant”) represented by David M.
Kelly, of Finnegan, Henderson,
Farabow, Garrett & Dunner, L.L.P.
Respondent is Seocho, Seoul,
KOREA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <auctionyahoo.com>, <cyahoo.com>, <emailyahoo.com>, <eyahoo.com>, <mapyahoo.com>, <ryahoo.com>, <wwwyahoogames.com>, <yahoochatrooms.com>, <yahooco.com>, <yahoodirectory.com>, <yahoolove.com>, <yahoon.com>, <yahooooo.com>, <yahoopersonal.com>, <yahooquote.com>, <yahooquotes.com>, <yahoor.com>, <yahoosearchengine.com>, <yahoospades.com>, <yahooxxx.com>, and <yahooyahoo.com>, registered with BulkRegister.com.
PANEL
On
May 8, 2002, pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed James
P. Buchele as Panelist. The
undersigned 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 4, 2002; the Forum received
a hard copy of the
Complaint on April 5, 2002.
On
April 5, 2002, BulkRegister.com confirmed by e-mail to the Forum that the
domain names <auctionyahoo.com>, <cyahoo.com>, <emailyahoo.com>, <eyahoo.com>, <mapyahoo.com>, <ryahoo.com>, <wwwyahoogames.com>, <yahoochatrooms.com>, <yahooco.com>, <yahoodirectory.com>, <yahoolove.com>, <yahoon.com>, <yahooooo.com>, <yahoopersonal.com>, <yahooquote.com>, <yahooquotes.com>, <yahoor.com>, <yahoosearchengine.com>, <yahoospades.com>, <yahooxxx.com>, and <yahooyahoo.com>, are registered with BulkRegister.com and
that Respondent is the current registrant of the name. BulkRegister.com has verified that
Respondent is bound by the BulkRegister.com 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 8, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 29,
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@auctionyahoo.com, postmaster@cyahoo.com, postmaster@emailyahoo.com,
postmaster@eyahoo.com, postmaster@mapyahoo.com,
postmaster@ryahoo.com, postmaster@wwwyahoogames.com,
postmaster@yahoochatrooms.com, postmaster@yahooco.com, postmaster@yahoodirectory.com,
postmaster@yahoolove.com, postmaster@yahoon.com, postmaster@yahooooo.com, postmaster@yahoopersonal.com,
postmaster@yahooquote.com,
postmaster@yahooquotes.com, postmaster@yahoor.com, postmaster@yahoosearchengine.com,
postmaster@yahoospades.com, postmaster@yahooxxx.com,
and postmaster@yahooyahoo.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.
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
1.
Complainant contends that the disputed domain names are confusingly similar to
Complainant’s famous YAHOO! mark.
Complainant asserts that each of the twenty-one disputed domain names
incorporates the mark in its entirety and either adds a generic
term (i.e.
“auction” in <auctionyahoo.com>), a nondistinguishing letter (i.e. the “c”
in <cyahoo.com>), or a repeats the famous mark (i.e. <yahooyahoo.com>).
Therefore, Complainant concludes that the disputed domain names are
confusingly similar to Complainants famous mark.
2. The various uses of the disputed domain names do
not constitute a bona fide offering in connection with any of the disputed
domain
names, nor do they demonstrate a legitimate, noncommercial or fair use
of any of the disputed domain names.
Furthermore, Respondent is not commonly known by any of the disputed
domain names. Therefore, Respondent
does not have a right or legitimate interest in any of the disputed domain
names.
3. Respondent has used the disputed domain names to
intentionally attract Internet users to its affiliated websites by creating a
likelihood of confusion with Complainant’s famous YAHOO! mark as to the source,
sponsorship, affiliation and endorsement of Respondent’s
affiliated websites
and goods and services offered on those websites. Second, Respondent’s
unauthorized use of the domain names for commercial gain suggests opportunistic
bad faith given the widespread use
and fame of Complainant’s YAHOO! mark and
name.
Furthermore, Respondent’s registration and use of the disputed
domain names meet the bad faith element set forth in Policy ¶ 4(b)(iii),
because
Respondent is disrupting Complainant’s business. Finally, Respondent’s registration and use
of the domain names meet the bad faith element set forth in Policy ¶
4(b)(ii). Respondent’s registration of
the twenty-one domain names in and of itself constitutes a pattern of
registering trademark-related domain
names in bad faith. Further, Respondent’s use of
trademark-related domain names has been the subject of at least seven adverse
UDRP decisions. Therefore, Respondent
has registered and used the twenty-one domain names in bad faith.
B.
Respondent
No
Response was submitted.
FINDINGS
Complainant has registered various marks
incorporating the distinctive YAHOO! mark with the United States Patent and
Trademark Office:
1. Registration No. 2,040,222, issued
February 25, 1997, covering goods and services in International Classes 9
(computer software),
16 (books), 35 (advertising), and 42 (computer and online
services).
2. Registration No. 2,040,691, issued
February 25, 1997, covering services in International Class 42 (computer and
online services).
3. Registration No. 2,076,457, issued July
1, 1997, covering goods in International Class 16 (magazines).
Complainant has also registered YAHOO! in
Respondent’s homeland of Korea:
1.
Registration No. 393,148, issued January 26,
1998, covering publications.
2.
Registration No. 42,273, issued April 3,
1998, covering computer services.
3.
Registration No. 42,272, issued April 3,
1998, covering advertising services.
Complainant uses the YAHOO! mark in
connection with a global Internet communications, media, and commerce company
that delivers a
branded network of comprehensive searching, directory,
information, communication, shopping services and other online activities
and features
to millions of Internet users daily. As
the result of marketing and promoting its brand name, the YAHOO! mark has
become one of the most recognized brands in the world
and Complainant boasts
revenues of $717,422,000 in 2001.
Although Complainant utilizes several domain names that incorporate its
YAHOO! mark, Complainant uses <yahoo.com> as its main
site.
Respondent has registered the following
domain names connected with websites with the following functions:
|
Disputed Domain Name |
Date
of Registration
|
Redirected
Website Function
|
|
<yahooyahoo.com> |
December 12, 2000 |
Competing search engine |
|
<auctionyahoo.com> |
December 13, 2000 |
Competing search engine |
|
<wwwyahoogames.com> |
December 19, 2000 |
Casino-related popup advertisement |
|
<emailyahoo.com> |
February 14, 2001 |
Competing search engine |
|
<yahoopersonal.com> |
February 14, 2001 |
Competing personal ads |
|
<yahooooo.com> |
February 22, 2001 |
Competing search engine |
|
<mapyahoo.com> |
April 4, 2001 |
Competing travel reservation |
|
<yahooxxx.com> |
April 16, 2001 |
Competing search engine/ offers pornogarphic services |
|
<yahoosearchengine.com> |
May 5, 2001 |
Competing search engine |
|
<yahoochatrooms.com> |
May 5, 2001 |
Competing search engine |
|
<yahooquote.com> |
May 5, 2001 |
Competing financial services |
|
<yahooquotes.com> |
May 5, 2001 |
Competing financial services |
|
<yahoolove.com> |
May 6, 2001 |
Competing personal ads |
|
<yahoospades.com> |
May 6, 2001 |
Gambling |
|
<yahooco.com> |
May 11, 2001 |
Competing search engine |
|
<yahoodirectory.com> |
June 1, 2001 |
Competing search engine |
|
<cyahoo.com> |
June 23, 2001 |
Competing search engine |
|
<eyahoo.com> |
June 24, 2001 |
Competing search engine |
|
<ryahoo.com> |
June 25, 2001 |
Competing search engine |
|
<yahoon.com> |
June 26, 2001 |
Competing search engine |
|
<yahoor.com> |
June 26, 2001 |
Competing search engine |
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 the 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.
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; and
(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.
Identical and/or Confusingly Similar
Complainant has established its rights
to the YAHOO! mark through registration in the United States and in
Respondent’s home country
of Korea and subsequent continuous use
internationally.
The Panel finds that all twenty-one
disputed domain names are confusingly similar to Complainant’s mark in three
different aspects. All twenty-one
disputed domain names incorporate Complainant’s famous mark and either adds: a
generic term; a nondistinguishing character;
or Complainant’s distinctive
mark. In all three instances the minor
differences do not distinguish the particular disputed domain name from
Complainant’s famous mark.
First,
merely adding a generic term to the famous YAHOO! mark does not diminish the
confusing similarity between the mark and the
disputed domain names. See
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); see
also Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that, given the similarity of
the Complainant’s marks with the domain name, consumers
will presume the domain
name is affiliated with the Complainant; the Respondent is attracting Internet
users to a website, for commercial
gain, by creating a likelihood of confusion
with the Complainant’s mark as to the source, sponsorship, or endorsement of
the Respondent’s
website). Therefore, <auctionyahoo.com>, <emailyahoo.com>, <mapyahoo.com>, <yahoochatrooms.com>, <yahoodirectory.com>, <yahoolove.com>, <yahoopersonal.com>, <yahooquote.com>, <yahooquotes.com>, <yahoosearchengine.com>, <yahoospades.com>, and <yahooxxx.com> are
confusingly similar with Complainant’s famous YAHOO! mark. Because a “www” preceding a mark is not
considered a distinguishing feature and since a generic term does not create a
distinction,
<wwwyahoogames.com> is confusingly similar to YAHOO!. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1,
2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is
confusingly similar
to Complainant’s registered trademark BANK OF AMERICA
because it “takes advantage of a typing error (eliminating the period between
the www and the domain name) that users commonly make when searching on the
Internet”).
Second, given that a generic term added to a famous
mark does not distinguish the disputed domain name from the mark, the
disputed domain becomes even more confusingly similar when Respondent repeats
the famous mark in the disputed domain name.
Therefore, the Panel finds that <yahooyahoo.com> is confusingly
similar to Complainant’s YAHOO! mark.
Finally, a nondistinguishing letter added to a famous mark does not
create a distinct domain name capable of overcoming the claim of confusing
similarity. See Kelson Physician Partners, Inc. v. Mason,
CPR003 (CPR) (finding that “kelsonmd.com” is identical or confusingly similar
to Complainant’s federally registered service mark,
“Kelson”); see also Nat’l Geographic Soc. v. Stoneybrook Inv.,
FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name
<nationalgeographics.com> was confusingly similar to
Complainant’s “National Geographic” mark). Therefore, the Panel finds that <cyahoo.com>, <eyahoo.com>, <ryahoo.com>, <yahooco.com>, <yahoon.com>, <yahooooo.com>, and <yahoor.com> are
confusingly similar to Complainant’s YAHOO! mark.
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has not filed a Response. Therefore, the Panel presumes that
Respondent has no rights or legitimate interests in any of the disputed domain
names. See Strum v. Nordic Net Exchange AB,
FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that Respondent's failure to
respond to the Panel's additional requests warranted
a finding for
Complainant). Because a Response was
not filed, the Panel presumes that all allegations in the Complaint are
true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant
to be deemed true).
Based on the facts presented in the
Complaint, and given that there are no facts to the contrary, it is apparent
that nineteen of
the twenty-one disputed domain names were linked to websites
that offer competing goods and services.
This is not a bona fide use in connection with the disputed domain names
pursuant to Policy ¶ 4(c)(i). See Chip Merchant, Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were
confusingly similar to Complainant’s mark and that
Respondent’s use of the
domain names to sell competing goods was illegitimate and not a bona fide
offering of goods); see also Ticketmaster
Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no
rights or legitimate interests where Respondent generated commercial gain by
intentionally
and misleadingly diverting users away from Complainant's site to
a competing website).
The two domain names that do not fit in
the “competing category,” <yahoospades.com> and <wwwyahoogames.com>, offer gambling advertisements and services, which is not considered a bona
fide use in connection with the disputed domain names pursuant to Policy ¶
4(c)(i). See Société
des Bains de Mer v. Int’l Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding
no rights or legitimate interests where Respondent used the
<casinomontecarlo.com>
and <montecarlocasinos.com> domain names in
connection with an online gambling website).
Respondent
has used the disputed domain names to redirect Internet users to various
websites that offer commercial goods and services. This activity by Respondent does not demonstrate a legitimate,
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D.Mass
2002) (finding that, because Respondent's sole purpose in selecting the domain
names was to cause confusion with Complainant's
website and marks, it's use of
the names was not in connection with the offering of goods or services or any
other fair use); see also 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).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Complainant’s YAHOO! mark has become a
famous and distinctive mark internationally.
See Yahoo! Inc. v. Kirovsky,
D2000-0428 (WIPO Aug. 9, 2000) (holding that the “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” and ordering transfer of four disputed
domain names).
Based on this fame, the Panel may infer
that Respondent knew or should have known about Complainant’s famous YAHOO!
mark before registering
all twenty-one disputed domain names. Therefore, Respondent has registered the
disputed domain names in bad faith. 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).
Respondent has registered twenty-one
domain names that incorporate Complainant’s YAHOO! mark. This activity by Respondent is considered to
be bad faith registration pursuant to Policy ¶ 4(b)(ii). See YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad
faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two
domain
names incorporating Complainant's YAHOO! mark); see also Harcourt, Inc. v. Fadness, FA 95247
(Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of
several infringing domain names satisfies
the burden imposed by the Policy ¶
4(b)(ii)).
Nineteen of the disputed domain names
reflect Complainant’s mark and redirect Internet users to websites that offers
goods and services
that compete with Complainant. This is evidence that Respondent has registered these nineteen
disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See
Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5,
2001) (finding that, given the competitive relationship between Complainant and
Respondent, Respondent
likely registered the contested domain name with the
intent to disrupt Complainant's business and create user confusion).
Finally, Respondent has used the disputed domain names to
intentionally attract Internet users to its affiliated websites by creating a
likelihood of
confusion with Complainant’s famous YAHOO! mark as to the source,
sponsorship, affiliation and endorsement of Respondent’s affiliated
websites
goods and services. This is evidence
that Respondent has used the disputed domain names in bad faith pursuant to
Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent
registered the domain name <bigtex.net> to infringe
on Complainant’s
goodwill and attract Internet users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent
directed Internet users seeking the Complainant’s site
to its own website for
commercial gain); see also TM
Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001)
(finding bad faith where Respondent used the domain name, for commercial gain,
to intentionally
attract users to a direct competitor of Complainant). This activity is even more apparent when it
is considered that two of the disputed domain names link Internet users to
websites that
offer gambling information and one disputed domain name offers
pornography. See Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24,
2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the
domain name <marssmusic.com>,
which is identical to Complainant’s mark,
to a gambling website); see also Geocities
v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where
Respondent linked the domain name in question to websites displaying banner
advertisements and pornographic material).
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
should be hereby
granted.
Accordingly, it is Ordered that the
following domain names: <auctionyahoo.com>, <cyahoo.com>, <emailyahoo.com>, <eyahoo.com>, <mapyahoo.com>, <ryahoo.com>, <wwwyahoogames.com>, <yahoochatrooms.com>, <yahooco.com>, <yahoodirectory.com>, <yahoolove.com>, <yahoon.com>, <yahooooo.com>, <yahoopersonal.com>, <yahooquote.com>, <yahooquotes.com>, <yahoor.com>, <yahoosearchengine.com>, <yahoospades.com>, <yahooxxx.com>, and <yahooyahoo.com> be transferred from Respondent to
Complainant.
James P. Buchele, Panelist
Dated: May 13, 2002
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