Generic Top Level Domain Name (gTLD) Decisions

DECISION

Yahoo! Inc. v. DFI Inc.

Claim Number:  FA0303000147313

PARTIES

Complainant is Yahoo! Inc., Sunnyvale, CA, USA (“Complainant”) represented by David Kelly, of Finnegan Henderson Farabow Garrett & Dunner L.L.P.. Respondent is DFI Inc., Toronto, Ontario, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <yahoocasinogames.com> and <yahooonlinecasino.com>, registered with Tucows.

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 3, 2003; the Forum received a hard copy of the Complaint on March 4, 2003.

On March 4, 2003, Tucows confirmed by e-mail to the Forum that the domain names <yahoocasinogames.com> and <yahooonlinecasino.com> are registered with Tucows and that Respondent is the current registrant of the names. Tucows has verified that Respondent is bound by the Tucows 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 March 4, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 24, 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@yahoocasinogames.com and postmaster@yahooonlinecasino.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 March 31, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 assertions:

1.      Respondent’s <yahoocasinogames.com> and <yahooonlinecasino.com> domain names are confusingly similar to Complainant’s YAHOO! mark.

2.      Respondent does not have any rights or legitimate interests in the <yahoocasinogames.com> and <yahooonlinecasino.com> domain names.

3.      Respondent registered and used the <yahoocasinogames.com> and <yahooonlinecasino.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Yahoo! Inc., 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. Since 1994, Complainant has used the YAHOO! mark to denote such services. Complainant holds a registered trademark for YAHOO! with the United States Patent and Trademark Office (Reg. No. 2,040,222, registered on February 25, 1997). 

Complainant’s YAHOO! related services are largely provided at its <yahoo.com> website. Complainant’s services have attracted over 101 million active registered members.

Respondent, DFI Inc., registered the <yahoocasinogames.com> and <yahooonlinecasino.com> domain names on July 27, 2002, and is not licensed or authorized to use Complainant’s YAHOO! mark for any purpose. Respondent uses the <yahoocasinogames.com> domain name to host a webpage displaying numerous advertisements for online casinos. Respondent receives a commission for Internet gamers referred to these online casinos as a member of an affiliate program associated with  <referback.com>. Respondent posts no content at the <yahooonlinecasino.com> domain name.

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 draw such inferences 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.

Identical and/or Confusingly Similar

Complainant has established rights in the YAHOO! mark through registration with the U.S. Patent and Trademark Office as well as through widespread and continuous use of the mark in commerce.

Respondent’s <yahoocasinogames.com> and <yahooonlinecasino.com> domain names are confusingly similar to Complainant’s YAHOO! mark. Complainant’s famous YAHOO! mark is entirely incorporated into the infringing domain names, along with the inconsequential addition of the generic words “casino,” “games” and “online.” The dominant feature of each domain name remains Complainant’s distinctive 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 Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark).

Accordingly, the Panel finds that the <yahoocasinogames.com> and <yahooonlinecasino.com> domain names are confusingly similar to Complainant’s YAHOO! mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The burden lies upon Complainant to show that Respondent has no rights or legitimate interests in the disputed domain names. In demonstrating to the Panel that Policy ¶¶ 4(c)(i)-(iii), which lists three ways in which Respondent can demonstrate rights and legitimate interests in its domain names, does not apply to Respondent, Complainant meets its burden. 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 with respect to 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

Respondent uses the <yahoocasinogames.com> domain name to divert Internet users to its revenue-generating web portal for online casinos. By appropriating Complainant’s distinctive YAHOO! mark for this purpose, Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it making a legitimate noncommercial or fair use of the domain names 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 MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests where Respondent attempted to profit through using Complainant’s famous MSNBC mark by redirecting Internet traffic to its own website).

Respondent’s failure to use the infringing <yahooonlinecasino.com> for any purpose, and its failure to demonstrate to the Panel any future planned use for the domain name, means that Respondent also fails to meet the criteria of Policy ¶¶ 4(c)(i) or (iii) with respect to this domain name. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

Respondent appears to be “commonly known by” the name DFI, Inc. In light of the widespread fame surrounding Complainant’s distinctive YAHOO! mark, the Panel finds that Policy ¶ 4(c)(ii) does not apply to Respondent. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

In this dispute, the Panel also chooses to view Respondent’s lack of Response as evidence that it lacks rights and legitimate interests in the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response nor provided the Panel with evidence to suggest otherwise).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <yahoocasinogames.com> and <yahooonlinecasino.com> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s <yahoocasinogames.com>was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv). The nature of Respondent’s infringing domain name creates the likelihood that Internet users will be confused as to whether Complainant sponsors or endorses Respondent’s website, satisfying the first prong of a Policy ¶ 4(b)(iv) analysis. As Respondent earns a commission from its membership in <referback.com>’s affiliate program for each Internet user redirected from its infringing website, Respondent’s ultimate goal is commercial gain, satisfying the second prong of a Policy ¶ 4(b)(iv) analysis. The Panel thus infers that Respondent registered and used the <yahoocasinogames.com> domain name in bad faith. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website, presumably receiving a portion of the advertising revenue from the site, thus using a domain name to attract Internet users for commercial gain).

Respondent has made no use of the <yahooonlinecasino.com> domain name since its registration eight months ago. Given the infringing nature of Respondent’s domain name, the Panel infers that Respondent has no good faith use planned for the domain name, and doubts that any good faith use would be possible for a domain name incorporating the famous and distinctive YAHOO! mark. Thus, the Panel finds that Respondent’s passive holding of the infringing <yahooonlinecasino.com> evidences bad faith use and registration.  See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Alitalia -Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose).

The Panel thus finds that Respondent registered and used the <yahoocasinogames.com > and <yahooonlinecasino.com> domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <yahoocasinogames.com > and <yahooonlinecasino.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY ( Ret.)

Dated:  April 2, 2003