DECISION

Yahoo! Inc. v. Wooyoun Cho

Claim Number: FA0302000146934

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 Wooyoun Cho, Kyungki Do, KOREA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <yahooplus.com> registered with Yesnic.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 26, 2003; the Forum received a hard copy of the Complaint on February 27, 2003.

On March 6, 2003, Yesnic confirmed by e-mail to the Forum that the domain name <yahooplus.com> is registered with Yesnic and that the Respondent is the current registrant of the name.  Yesnic has verified that Respondent is bound by the Yesnic 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 7, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 27, 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@yahooplus.com by e-mail.

A timely Response was received and determined to be complete on March 26, 2003.

Complainant timely filed an Additional Submission on March 31, 2003.

On April 7 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1.         Respondent’s domain name <yahooplus.com> is identical to Complainant’s  registered and famous mark YAHOO!.

2.         Respondent does not have any rights or legitimate interests in respect of the <yahooplus.com> domain name.

3. Respondent registered the domain name <yahooplus.com> in bad faith.

B. Respondent

Respondent argues that the <yahooplus.com> domain name is a combination of two generic terms “yahoo” and “plus.”  Therefore, Respondent contends that Complainant cannot have exclusive rights in a domain name that consists of two generic terms.

Respondent argues that he registered and used the domain name because of the dictionary meaning of the term “ya-hu.”

Respondent maintains that he has operated his website at the disputed domain name for eight months providing service for Internet beginners.  Respondent contends that his use of the domain name is bona fide because it occurred prior to notice of the dispute. 

Respondent argues that he is not a competitor of Yahoo! because he does not offer the competing services advertised on his <yahooplus.com> website but rather provides links to third parties that offer competing services.

Respondent argues that he is not attempting to attract Internet users by creating a likelihood of confusion between Respondent’s domain name and Complainant’s mark.  Respondent asserts that the content of Respondent’s website and Complainant’s services is clearly different.

Respondent also contends that his use of the domain name is not in bad faith because he has posted a disclaimer.

C. Additional Submissions

Complainant, Yahoo!, Inc., established rights in the YAHOO! mark years before Respondent registered the domain name.  Internet users will likely be confused that Respondent’s <yahooplus.com> website is a “plus,” i.e., an enhanced or improved or premium Korean version of Yahoo!’s website, or is otherwise connected with Yahoo!.  Respondent is a direct competitor of Yahoo!.  Respondent’s registration and use of the domain name to advertise competing services, especially on a website modeled on Yahoo!’s website, is not a bona fide use.  Respondent was not commonly known as <yahooplus.com> before he registered the domain name.  Respondent’s argument that he registered and used the domain name, not because of the global fame of Yahoo!’s mark but because of the dictionary meaning of the term “ya-hu,” has no credibility.  Respondent’s use of the domain name to offer competing services constitutes bad faith.  Respondent’s use of a disclaimer does not mitigate his bad faith.

FINDINGS

1. Complainant, Yahoo!, Inc. (“Complainant” or “Yahoo!”), is a Delaware corporation with its principal place of business at 701 First Avenue, Sunnyvale, California 94089.

2.         Yahoo! is a global Internet communications, media, and commerce company that delivers a branded network of comprehensive searching, directory, information, communication, and shopping services, and other online services and features. 

3. Yahoo! is the owner of the service mark and trademark YAHOO!, as well as the trade name YAHOO! and the domain name <yahoo.com> (the “YAHOO! Marks”).  In use since 1994, the YAHOO! mark has become one of the most recognized brands in the world, with a value of nearly U.S. $3.8 billion according to Interbrand.

4. The main YAHOO! website <yahoo.com> is one of the leading websites worldwide.  In December 2002, Yahoo!’s website had 213 million unique users and 101 million active registered members. 

5. Yahoo! operates many sites specific to particular countries or regions, such as Korea (Yahoo! Korea, located at the domain name <yahoo.co.kr> or <kr.yahoo.com>).  The Yahoo! Korea website was launched on September 3, 1997, and is operated by Yahoo! Korea Corp., a majority-owned subsidiary of Yahoo!.

6. Yahoo! offers a wide variety of services using the YAHOO! mark together with a descriptive name, including, for example, YAHOO! Mail, YAHOO! Chat, YAHOO! Finance, YAHOO! Shopping, YAHOO! Auctions, YAHOO! Games and YAHOO! Lottery Results.   Yahoo! offers its services in English at the main YAHOO! website and in Korean at the YAHOO! Korea website.

7. Over thirty UDRP decisions involving the YAHOO! mark have been issued in Yahoo!’s favor, and the Panelists in many of these cases expressly found the YAHOO! mark to be famous. See, for example, Yahoo! Inc. v. Jorge O. Kirovsky, D2000-0428 (WIPO August 9, 2000) (finding 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”); Yahoo! Inc. v. Yuan Zhe Quan, FA117877 (Nat. Arb. Forum October 10, 2002) (holding that “the YAHOO! mark has developed into one of the most famous marks associated with the Internet”).

8.         Yahoo! is the owner of numerous U.S. trademark registrations and dozens of Korean trademark registrations and applications for the YAHOO! mark.

9. Respondent, Wooyoun Cho, registered the domain name on July 25, 2002, many years after Yahoo! commenced use of the YAHOO! mark in 1994 and many years after Yahoo! registered the YAHOO! mark in Korea, the United States, and elsewhere.  Respondent uses the domain name <yahooplus.com> for a Korean website offering numerous services that directly compete with Yahoo!’s services, including services relating to Internet searching, e-mail, chat, shopping, auctions, financial information, games, and lotteries.

10. Respondent’s activities are likely to confuse Internet users into mistakenly believing that Respondent and/or his <yahooplus.com> website are offered, authorized, or sponsored by Yahoo!; or are otherwise connected, associated, or affiliated with Yahoo! or its websites or its services.

11. Yahoo!’s counsel twice contacted Respondent demanding that Respondent cease his infringement and transfer the domain name.  Respondent refused Yahoo!’s demands.  Respondent offered to sell the domain name to Yahoo! for U.S. $800.

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

Complainant holds numerous trademark registrations with the U.S. Patent and Trademark Office for the YAHOO! mark, including Reg. No. 2,040,222 (registered on February 25, 1997) related to Complainant’s Internet communications, media and commerce services.  Complainant also provides evidence that it holds dozens of Korean trademark registrations and applications.  This evidence of trademark registrations proves Complainant’s rights in the YAHOO! mark. See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of the Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark.  “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves”).  Similar administrative panels have found that Complainant’s mark is distinctive and famous. 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).

Respondent’s <yahooplus.com> domain name is confusingly similar to Complainant’s YAHOO mark because the disputed domain name appropriates Complainant’s entire mark and simply adds the descriptive term “plus” and the generic top-level domain (gTLD) “.com” to the end of Complainant’s registered mark.  Complainant’s mark is the dominant element of the disputed domain name and the addition of the descriptive term “plus” and the gTLD “.com” does not sufficiently differentiate Respondent’s <yahooplus.com> domain name. See Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element), see alsoYahoo! Inc. v. Kelvin Pham, FA109699 (Nat. Arb. Forum May 21, 2002) (finding the domain name yahoonail.com confusingly similar to the YAHOO! mark and holding the addition of a generic term to the mark is “inconsequential to the confusing similarity inquiry, as the addition of a generic term does not detract from the dominant portion of the mark”).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has no rights or legitimate interests with respect to the disputed domain name.  Respondent’s use of the <yahooplus.com> domain name in competition with Complainant is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services); 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); see also Yahoo! Inc. v. Microbiz, Inc. (WIPO D2000-1050, November 7, 2000) (Respondent’s use of YAHOO!-formative domain names for a commercial website was not bona fide because “use that intentionally trades on another can not constitute a ‘bona fide’ offering of goods or services”).

Respondent is not and never has been commonly known by either YAHOO PLUS or <yahooplus.com>. See 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); 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").

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Evidence of Respondent’s registration and use of the domain name in bad faith is readily available.  Pursuant to Policy ¶ 4(b)(iv), Respondent intentionally attracted, for commercial gain, Internet users to his <yahooplus.com> website by creating a likelihood of confusion with Yahoo!’s famous YAHOO! Marks as to the source, sponsorship, affiliation and endorsement of Respondent’s website and/or the competing services offered on Respondent’s website.  See Yahoo! Inc. v. Jorge O. Kirovsky, D2000-0428 (WIPO August 9, 2000) (Respondent’s use of YAHOO!-formative domain names for commercial gain was in bad faith).

Respondent’s registration and use of the <yahooplus.com> domain name to compete with Complainant also demonstrates Respondent’s bad faith registration and use.  Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also 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); see also Yahoo! Inc. et al. v. Cupcakes, et al., D2000-0777 (WIPO November 2, 2000) (Respondents’ use of YAHOO!-formative domain names for commercial websites disrupted Yahoo!’s business in bad faith).

Respondent acted in bad faith when he offered to sell the domain name to Yahoo! for more than his documented out-of-pocket expenses. Policy ¶ 4(b)(i); see also Yahoo!, Inc v. Somsak Sooksripanich and Others, D2000-1461 (WIPO January 29, 2001).

Respondent acted in bad faith when he registered the domain name with knowledge of Yahoo!’s YAHOO! Marks. See Yahoo! Inc. v. Kelvin Pham FA109699, (Nat. Arb. Forum May 21, 2002) (“Because of the famous and distinctive nature of Complainant’s YAHOO! mark, Respondent is thought to have been on notice of the existence of Complainant’s mark at the time Respondent registered the infringing <yahoonail.com>domain name.”).  Respondent’s unauthorized use of the domain name for commercial gain evidences opportunistic bad faith given the fame of Yahoo!’s YAHOO! Marks. See Yahoo! Inc. v. David Ashby, D2000-0241 (WIPO June 14, 2000) (finding bad faith where Respondent registered the disputed domain name with knowledge of Yahoo!’s mark and used its website to seek commercial gain).  No justification, excuse, or plausible explanation exists for Respondent’s unauthorized registration of the domain name because it has no value apart from Yahoo!’s famous YAHOO! Marks other than to trade on Yahoo!’s goodwill. See Yahoo! Inc. v. Yahoo-Asian Company Limited, D2001-0051 (WIPO February 28, 2001) (“no plausible explanation for the respondent’s registration of the disputed domain names other than to benefit from the goodwill of Yahoo! and its famous YAHOO! mark”).

The use of a disclaimer does not mitigate Respondent’s bad faith.  The use of disclaimers does not convert infringements into a bona fide or fair use because the initial interest confusion caused by the unauthorized use of trademark-related domain names cannot be relieved by disclaimers. See Compaq Information Technologies Group, L.P. v. Dealer Direct, Inc. d/b/a Inacom Information Systems FA97062 (Nat. Arb. Forum June 14, 2001) (finding Respondent’s use of domain names comprised of Complainant’s mark in bad faith even though Respondent posted a disclaimer); see also Madonna Ciccone p/k/a Madonna v. Dan Parisi and Madonna.com, D2000-0847 (WIPO October 12, 2000) (use of disclaimer is insufficient to avoid a finding of bad faith because disclaimers do not dispel initial interest confusion).

The Panel finds that Policy ¶ 4(a)(iii) has been 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 <yahooplus.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 16, 2003

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