DECISION

Yahoo! Inc. v. Hangzhou Hi2000 InfoTech Co. Ltd. a/k/a Hangzhou Shixin Info Tech Co. Ltd.

Claim Number: FA0301000141825

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 Hangzhou Hi2000 InfoTech Co. Ltd. a/k/a Hangzhou Shixin Info Tech Co. Ltd., Hangzhou Zhejiang, China (“Respondent”) represented by Kaiqi Chen, of Hangzhou Hi2000 InfoTech Co. Ltd.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <chemyahoo.com>, <chemicalyahoo.com>, <packyahoo.com>, <pharmyahoo.com>, <texyahoo.com>, <textileyahoo.com> and <yahoochem.com>, registered with OnlineNIC, 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.

Dennis A. Foster as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 13, 2003; the Forum received a hard copy of the Complaint on January 14, 2003.

On January 15, 2003, OnlineNIC, Inc. confirmed by e-mail to the Forum that the domain names <chemyahoo.com>, <chemicalyahoo.com>, <packyahoo.com>, <pharmyahoo.com>, <texyahoo.com>, <textileyahoo.com> and <yahoochem.com>, are  registered with OnlineNIC, Inc. and that the Respondent is the current registrant of the names.  OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, 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 January 16, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 5, 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@chemyahoo.com, postmaster@chemicalyahoo.com, postmaster@packyahoo.com, postmaster@pharmyahoo.com, postmaster@texyahoo.com, postmaster@textileyahoo.com and postmaster@yahoochem.com by e-mail.

A timely Response was received and determined to be complete on January 29, 2003.

Complainant’s additional submission was timely received on February 5, 2003. Respondent’s additional submission was timely received on February 10, 2003. 

However, having read the Complaint and the Response, the Panel has decided in accordance with Policy Rule 12 that no further submission from either the Complainant or the Respondent is needed to decide this Case.  Therefore, in reaching this Decision,  the Panel did not take into consideration the additional submissions of either side.

On February 13, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster as Panelist.

RELIEF SOUGHT

Complainant requests that the seven (7) disputed domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant (Summarized Contentions)

--Respondent registered the disputed domain names years after the Complainant began worldwide use of the Yahoo mark in 1994.  The Complainant’s Chinese website was launched on May 4, 1998.

--Respondent uses the domain name <chemyahoo.com> to redirect Internet users to its  ChemNet website and to offer web directory services, news, product information and advertising for companies in the chemical industry.  (Complaint Exhibit 12).

--Respondent uses the domain name <texyahoo.com> to frame its website called ChinaTexnet. Respondent’s ChinaTexnet website offers web directory, auction, and advertising services for companies in the textile industry. (Complaint Exhibit 13).

--Respondent’s use of the domain names <chemyahoo.com> and <texyahoo.com> to direct Internet users to Respondent’s <chemnet.com> and <chinatexnet.com> websites is likely to confuse Internet users into mistakenly believing that Respondent and its websites are offered or sponsored by Complainant. The fact that Respondent’s websites mimic the look and feel of Complainant’s websites exacerbates the likelihood of confusion.  (Complaint Exhibits 12 and 13 (Respondent’s websites) and Exhibit 9 (Complainant’s websites)).

--Respondent does not appear to be currently using the domain names <chemicalyahoo.com>, <packyahoo.com>, <pharmyahoo.com>, <textileyahoo.com>, and <yahoochem.com> for websites.  (Complainant attaches as Exhibit 15 screen shots of the error messages received when attempts were made to access those websites).

--Each of the Domain Names is confusingly similar to Complainant’s famous YAHOO! mark because each incorporates the mark in its entirety and adds only a generic word.

--Respondent is not using and has not demonstrated an intent to use the disputed domain names in connection with a bona fide offering of goods or services.  The Respondent’s use deliberately trades on the Complainant’s mark.

--The Respondent has not been commonly known by the disputed domain names and the mere filing of a trademark application is not enough to establish rights in a mark.

--Respondent’s unauthorized use of the domain names <chemyahoo.com> and <texyahoo.com> for commercial gain suggests opportunistic bad faith given the widespread use and fame of Complainant’s YAHOO! marks.

--Respondent’s registration and nonuse of the domain names <chemicalyahoo.com>, <packyahoo.com>, <pharmyahoo.com>, <textileyahoo.com>, and <yahoochem.com> is in bad faith because those domain names incorporate the famous YAHOO! mark in its entirety.

--Respondent’s registration of the seven disputed domain names in and of itself constitutes a pattern.      

B. Respondent (Summarized)

--To supplement the offerings on “China Chemical Network” and to reach the global business customer base in the chemical industry without disrupting the existing services, the Respondent used <chemyahoo.com> to host additional and expanded services at the end of 1998. 

--In February, 2002, the Respondent merged the chemyahoo service into <chemnet.com>.  Between the inception of the site and February, 2002, <chemyahoo.com> was in continuous operation independent of any other website.

--The Respondent filed applications of trademark registration for CHEMYAHOO under international class 38 in China.  The Complainant filed opposition to the registration.

--The word Yahoo is a generic dictionary word.

--It might be said that, to some extent, there is similarity between the disputed domain names and the Yahoo mark because of the incorporation of the same dictionary word.  However, the Respondent submits that the similarity among them has not reached this level of confusion.

--The terms, chem., chemical, tex, textile, pharm and pack are neither random nor generic.

--Prior to the merging of service on <chemyahoo.com> into <chemnet.com> in February, 2001, where <chemyahoo.com> was turned into a redirection to <chemnet.com>, <chemyahoo.com> was an independent site in its own right. 

--By the time of filing for the Chemyahoo trademark, the website had already been in continuous operation for over 3 years.  The remaining domain names are inactive because the Respondent is being prudent about the Complainant’s objections.

--As demonstrated by the case of chemyahoo, the Respondent builds readership to its site through active and vigorous promotion of the site in the target industry, as well as providing compelling content on the site.

--There is ample evidence, including the use of the <chemyahoo.com> domain name, that the Respondent plans to use the remaining domain names in the future.

FINDINGS

The Complainant  is an internet company that uses the Yahoo! trademark to offer on-line directory, shopping and other Internet services and products.  The Complainant began doing business in 1994.

The Respondent is also a company offering Internet on-line directory services in specific product areas such as chemicals.  The Respondent began doing business around  early 1998.  The Respondent registered the disputed domain names as follows: <chemyahoo.com> on October 13, 1998; <chemicalyahoo.com>, <packyahoo.com>, <textileyahoo.com>, <texyahoo.com> and <yahoochem.com> on November 19, 1999; and <pharmyahoo.com> on November 28, 2000. 

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.

Identical and/or Confusingly Similar

The Complainant has shown that it owns theYahoo! mark for Internet services and that this mark enjoys world-wide notoriety.  The Complainant’s mark has multiple registrations in China, the location of the Respondent’s business, and  the United States of America (Complaint Exhibits 9 and 10).  In the face of this evidence, the Respondent’s assertions that the Complainant’s famous mark is a generic word are untenable.

The seven (7) disputed domain names, <chemyahoo.com>, <chemicalyahoo.com>, <packyahoo.com>, <pharmyahoo.com>, <texyahoo.com>, <textileyahoo.com> and <yahoochem.com> are all composed of the Complainant’s famous mark plus either a generic word used in its generic sense or the first several letters of a generic word that readily allow a reader or a search engine to intuit  the suggested generic word being used on the Respondent’s website in its generic sense.  The Panel believes it is settled beyond doubt under the Policy that the top level domain indicators such as “.com” should not be considered in an analysis to determine identity or confusing similarity. 

Similarly, it is also well-established under the Policy that a domain name composed of a trademark coupled with a generic term still is confusingly similar to the trademark.  In this Case, for example, the Panel finds that most people would readily assume that both <chemicalyahoo.com> and <yahoochem.com> are related to the Yahoo! web search service related to chemical products and so on for textiles and the other disputed domain names. See Yahoo! Inc. v. Yuan Zhe Quan, FA 117877 (Nat. Arb. Forum Oct. 10, 2002).

The Panel thus finds the Complainant has shown that the disputed domain names are confusingly similar to the Yahoo! mark in which Complainant has rights.  The Complainant has satisfied its burden of proof under Paragraph 4(a)(i) of the Policy.   

Rights or Legitimate Interests

The Complainant contends that the Respondent has no legitimate rights or interests in the disputed domain names.  According to the Complainant, the Respondent can not claim legitimate rights and interests under the Policy at paragraph 4(c)(i) because the Respondent is not making a bona fide offering of goods and services: the Respondent is well aware it is violating the Complainant’s rights in its famous trademark.

The Respondent for its part argues that it is using one of the disputed domain names, <chemyahoo.com>, to offer a searchable data base on chemical products.  The Respondent states it did not try to use the remaining six (6) domain names because it was afraid of the Complainant’s legal efforts to stop it. 

The Panel is not at all convinced the Respondent is in good faith using the <chemyahoo.com> domain name for a searchable data base on chemical products.  Rather, the Panel is convinced the Respondent is in bad faith because the Respondent clearly is counting on the fame of the Complainant’s Yahoo! mark to bring it web traffic and customers.  

The Respondent and the Complainant agree that the Respondent has filed a trademark application for the disputed domain name <chemyahoo.com> in China, but the Complainant has filed an objection to this application and, in any case,  it is widely recognized under the Policy that trademark applications confer no trademark rights.  See Yahoo! Inc. v. David Ashby, D2000-0241 (WIPO June 14, 2000) (finding that a California State trademark application conferred no mark rights).

The Panel finds the Complainant has shown the Respondent has no legitimate rights or interests in the disputed domain name (the Policy  Paragraph 4(a)(ii)).          

Registration and Use in Bad Faith

The Complainant contends the Respondent has violated the bad faith provisions of the Policy at Paragraph 4(b)(iv) in that the Respondent has used for commercial gain the disputed domain names <chemyahoo.com> and <texyahoo.com> and the resulting confusion with Complainant’s mark.  The Panel entirely agrees. 

The Panel also agrees that the Respondent’s holding the remaining five (5) disputed domain names without using them for from two (2) to three (3) years also is widely accepted as grounds for bad faith registration and use under the Policy.  See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb.18, 2000).

The Complainant moreover contends the Respondent’s multiple registrations of domain names all using the Complainant’s famous mark is bad faith registration and use under the Policy at Paragraph 4(b)(ii) because these multiple registrations constitute a pattern.  The Panel believes this is self-evident, but Paragraph 4(b)(ii) also requires that the Respondent have intended to prevent the Complainant from registering the same domain names.  That is not apparent here.

    

DECISION

The Panel has found the Respondent has registered seven (7) domain names that are all confusingly similar to the Complainant’s famous Yahoo! mark.  The Panel has also found that the Respondent’s use of the Complainant’s famous mark in domain names along with generic words like “chem.”  or “chemical” to offer a searchable data base on chemical products is not a bona fide offering of goods or services.  And the Panel also has found the Respondent registered and is using the disputed domain names in bad faith in violation of the Policy by, among other things, registering domain names containing the Complainant’s mark in order to profit from the confusion.

Therefore, per Paragraph 4(i) of the Policy and Rule (15), the Panel orders that the seven (7) disputed domain names, <chemyahoo.com>, <chemicalyahoo.com>, <packyahoo.com>, <pharmyahoo.com>, <texyahoo.com>, <textileyahoo.com> and <yahoochem.com> be transferred from the Respondent, Hangzhou Hi2000 InfoTech Co., Ltd. a/k/a Hangzhou Shixin Info Tech Co. Ltd., to the Complainant, Yahoo! Inc.   

Dennis A. Foster, Panelist
Dated: February 26, 2003

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