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Generic Top Level Domain Name (gTLD) Decisions |
Yahoo! Inc. v. Richard Dank
Claim Number: FA0310000203169
PARTIES
Complainant
is Yahoo! Inc. (“Complainant”),
represented by David Kelly, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 1300 I Street NW, Washington, DC,
20005. Respondent is Richard Dank (“Respondent”), 65
Chenango Dr., Jericho, NY, 11753.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <yahoo-wallet.com>,
registered with Network Solutions, Inc.
PANEL
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.
Judge
Richard B. Wickersham, (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 14, 2003; the Forum received
a hard copy of the
Complaint on October 15, 2003.
On
October 20, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <yahoo-wallet.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network Solutions, Inc.
has verified that
Respondent is bound by the Network Solutions, 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
October 20, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of November 10, 2003 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@yahoo-wallet.com by
e-mail.
A
timely Response was received on November 10, 2003, however, the Response was
not in compliance with UDRP Rule #5 and Forum Supplemental
Rule #5. I choose not to accept the Response.
On
November 17, 2003 Additional Submission was received in a timely manner and was
fully considered by Panel.
On November 18, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Judge Richard B.
Wickersham, (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. This dispute concerns the domain name <yahoo-wallet.com> (the “Domain
Name”).
2. The registrar of the Domain Name is
Network Solutions, Inc. (“NSI”).
3. Yahoo! Is a Delaware corporation with its
principal place of business at 701 First Avenue, Sunnyvale, California 94089.
4. For the purpose of this proceeding,
Complainant can be contacted through its counsel, David M. Kelly of Finnegan,
Henderson, Farabow,
Garrett & Dunner, L.L.P.
5. Respondent Richard Dank is the registrant
of, and administrative and technical contacts for, the Domain Name.
6. Yahoo! is 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.
7. Yahoo! is the owner of the service mark and
trademark YAHOO!, as well as the trade name YAHOO! and the domain name
<yahoo.com>. In use since 1994,
the YAHOO! mark has become one of the most recognized brands in the world, with
a value of nearly $3.9 billion
according to Interbrand.
8. The main YOHOO! website at <yahoo.com>
is one of the leading websites worldwide.
9. Yahoo!’s services include both local and
international web directory and search services.
10. Yahoo! also offers a wide variety of
services using the YAHOO! mark together with a descriptive name of its
services, notably including
YAHOO! Wallet.
11. Since its inception, the YAHOO! website has
been recognized with numerous industry awards.
12. Forty-one UDRP decisions involving the
YAHOO! mark have been issued in Yahoo!’s favor.
13. Yahoo! also owns the domain name
<yahoo.com>, which was registered on January 18, 1995 and which has been
used to identify the
YAHOO! website since on or about that date.
14. Yahoo!’s trademark rights in the mark YAHOO!
and variations thereof, based on its trademark filings and on its common law
rights acquired
through the use of those marks, long predate Respondent’s
registration of the Domain Name.
15. Respondent misappropriated Yahoo!’s goodwill
when he registered the Domain Name on June 14, 2003, long after Yahoo!
registered and
used its YAHOO! mark and long after that mark became famous.
16. Respondent uses the Domain Name in
connection with an Internet scam intended to defraud Yahoo! users into
revealing personal and proprietary
information including credit card numbers
and PIN codes. Respondent’s scheme
involves sending e-mail messages to Yahoo!’s users, making them appear as
though they were sent from Yahoo! itself,
and informing the users that their
Yahoo! accounts need to be renewed.
Respondent’s e-mail messages falsely state that they are a “final
notice” to the Yahoo! user and that their “service will be terminated”
if the
user does not click on a hypertext link in the e-mail in order to resubmit
their credit card information.
17. The e-mail link imbedded in the e-mail messages takes the
recipient to
Respondent’s
website where Respondent posted a data input form to be completed by the
user. The form requests that the Yahoo!
user enter his or her e-mail address, password, first and last name, zip code,
debit card or credit
card number, card expiration date and PIN number.
B.
Respondent
Respondent
states as follows, “As per my email to Laura Covington from Yahoo, I did not
register the domain name yahoo-wallet.com.com,
rather, I believe someone stole
my personal information and is using it.
I have informed Ms. Covington that I am willing to cooperate with Yahoo
in finding the individuals responsible for the fraudulent
use of my name and am
willing to file charges against the wrong doers.
“I
was surprised when I received the formal complaint from National Arbitration
Forum. Prior to receipt of the
complaint, Ms. Covington had asked me to sign a statement transferring
ownership of Yahoo-wallet.com to Yahoo.
I refused to sign such a document as this would imply I was responsible
for this domain name, which I am not.
“I
want my name immediately removed from all complaints and all other items
relating to the yahoo-wallet.com issue including the removal
of all my personal
information as the owner of Yahoo-wallet.com.
Sincerely, Richard Dank, 65 Chenango Dr., Jericho, NY 11753.”
FINDINGS
Procedural
Issue: Deficient Response
Respondent submitted a Response that was
not in compliance with Forum Supplemental Rule #5 and UDRP Rule #5. Panel chooses to disregard the Response for
these reasons. See Six Continents Hotel, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4,
2003).
DISCUSSION
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.
Complainant
maintains that it has established rights in the YAHOO! mark through
registration of the mark on the Principal Register
of the U.S. Patent and
Trademark Office. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002).
(finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Complainant alleges that the <yahoo-wallet.com> domain name is
confusingly similar to the YAHOO! mark. See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000)
(holding that confusing similarity under the Policy is decided upon the
inclusion of a trademark
in the domain name rather than upon the likelihood of
confusion test under U.S. trademark law); see also Space
Imaging LLC v. Brownwell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s
domain name combines Complainant’s mark with
a generic term that has an obvious
relationship to Complainant’s business).
I concur.
Complainant contends that Respondent’s use of the
disputed domain name, which utilizes Complainant’s YAHOO! mark, to mislead
Internet
users into believing that Complainant is associated with the disputed
domain name and thus submit confidential credit card information
to Respondent
is evidence that Respondent lacks rights or legitimate interests in the
disputed domain name. Agreed.
Accordingly,
the Panel finds that Respondent does not have rights or legitimate interests in
the <yahoo-wallet.com> domain
name under Policy ¶ 4(a)(ii).
Complainant
alleges that Respondent is using the disputed domain name to create a
likelihood of confusion with Complainant’s YAHOO!
mark and YAHOO! Wallet
service for illegal commercial gain, evidence that the disputed domain name was
registered and used in bad
faith pursuant to Policy ¶ 4(b)(iv). See
Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13,
2002) (finding that where Complainant’s mark was appropriated at registration,
and a copy of
Complainant’s website was used at the domain name in order to
facilitate the interception of the Complainant’s customer’s account
information, Respondent’s behavior evidenced bad faith use and registration of
the domain name). I am in accord.
The Panel thus finds that Respondent
registered and used the <yahoo-wallet.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yahoo-wallet.com>
domain name be TRANSFERRED from Respondent to Complainant.
___________________________________________________
Judge Richard B. Wickersham, (Ret.),
Panelist
Dated: December 6, 2003
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