DECISION

Yahoo! Inc. v. Moldes Matrices y Diseno

Claim Number: FA0211000133764

PARTIES

Complainant is Yahoo! Inc., Sunnyvale, CA, USA (“Complainant”) represented by David Kelly, of Finnegan Henderson Farabow Garrett & Dunner LLP.  Respondent is Moldes Matrices y Diseno, Valencia, SPAIN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yahoox.com>, registered with Network Solutions.

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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 21, 2002; the Forum received a hard copy of the Complaint on November 22, 2002.

On November 25, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <yahoox.com> is registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 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 November 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 16, 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@yahoox.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 January 2, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Complainant argues that Respondent’s  <yahoox.com> domain name is confusingly similar to Complainant’s YAHOO! mark.

2. Complainant argues that Respondent does not have rights to or legitimate interests in the <yahoox.com> domain name.

3. Complainant argues that Respondent registered and used the <yahoox.com> domain name in bad faith.

B. Respondent

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 and other online activities and features to millions of Internet users daily. Complainant utilizes its mark in conjunction with various services it offers, for example: YAHOO! Mail, YAHOO! Chat, YAHOO! Classifieds, and YAHOO! Careers.  Since as early as 1994, the YAHOO! mark has been established as one of the most recognized marks in the world. In August 2002, Nielson/NetRatings ranked Complainant’s global network as the world’s most trafficked Internet destinations for the 27^th consecutive month. Complainant maintains 1.62 billion page views per day internationally.

Complainant is the owner of numerous marks incorporating YAHOO!. YAHOO! is registered with the United States Patent and Trademark Office (“USTPO”) on the Principle Register (Reg. No. 2,040,222). Moreover, the YAHOO! and other YAHOO! formative marks are registered in several other countries, including the European Community, which covers Spain, where Respondent is listed as residing (European Community Reg. Nos. 001076181 and 000693127). Since Complainant’s inception in 1994, Complainant has continuously used and applied the YAHOO! marks.

Respondent registered <yahoox.com> on January 20, 2000. Respondent primarily has used the domain name to host a pornographic website as well as provide links to other pornographic websites. Respondent has also used the disputed domain name for web indexing services, something that Complainant also engages in. Complainant has never granted permission to Respondent to use Complainant’s mark in any fashion. The website currently is inactive, however, Respondent has threatened to restart it, again using it to re-direct Internet users to pornographic websites.

Complainant, in a separate action, has instigated criminal charges under Spain’s anti-obscenity laws regarding the portrayal of pornography on <yahoox.com>. Complainant has sought for deactivation of the disputed domain name and that Respondent be fined. All actions in that matter are currently pending.

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 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.

Complainant has acknowledged that it has initiated a court proceeding in Spain, under Spain’s anti-obscenity laws. Paragraph 18(a) of the Policy specifically states that in a case where there is a concurrent pending legal action, the Panel “shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.” The Panel concludes that since the legal proceeding initiated in Spain does not request transfer of the disputed domain name, as is requested in this proceeding, and in lieu of a Response or objection from Respondent, the Panel shall utilize its discretion to proceed with the administrative action.

Identical and/or Confusingly Similar

Complainant has established rights in the YAHOO! marks through registration with the USTPO, the European Community, and subsequent continuous use of the marks.

Respondent’s <yahoox.com> domain name is confusingly similar to Complainant’s famous YAHOO! mark. The mere addition of the letter “x” does not significantly alter the second-level domain so as to distinguish it from Complainant’s famous mark.  Therefore, the addition of the letter does not create a distinct mark capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.  See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to Complainant’s mark, ICQ); see also Crédit Lyonnais v. Ass’n Etre Ensemble, D2000-1426 (WIPO Dec. 7, 2000) (finding that the addition of the letter “e” and a hyphen does not affect the power of the mark in determining confusing similarity).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has thus been satisfied.

Rights or Legitimate Interests

Respondent did not respond to the Complaint, thereby allowing the Panel to accept all reasonable inferences alleged by Complainant. Moreover, by Respondent failing to reply, it failed to fulfill its burden of demonstrating rights or legitimate interests in the disputed domain name.  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”);  see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).  There is no evidence that contradicts the allegations of Complainant.  Complainant has presented evidence that substantiates its claim that Respondent has no legitimate rights or interests in the contested domain name.

Respondent’s <yahoox.com> domain name has used the domain as a link to pornographic websites as well as a web indexing service. Respondent’s use of the domain name shows that it is intentionally using the fame of Complainant’s mark to attract Internet traffic to other websites, which are not associated with Complainant. Respondent’s behavior with relation to the domain name has not exhibited a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”); 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).

There has been no evidence submitted to indicate that Respondent has a substantial affiliation with, or is known by the <yahoox.com> domain name. Complainant has established itself as the sole holder of all rights and legitimate interests in the YAHOO! marks. Since Respondent has not come forward with a viable alternative supporting its use of Complainant’s mark, and does not have authorization or consent to use the mark, the Panel may accept the proposition proposed by Complainant that Respondent has no rights or legitimate interests to the domain name under Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also 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).

Respondent used  <yahoox.com> to divert Internet users to pornographic websites. When one misleadingly diverts consumers to a pornographic website, it is deemed to be not a fair or legitimate use of the domain name under Policy ¶ 4(c)(iii).  See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish Complainant’s mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has thus been satisfied.

Registration and Use in Bad Faith

Respondent registered and is using the disputed domain name in bad faith. Complainant’s YAHOO! mark is registered with the European Community, which includes Spain. Respondent was placed on constructive notice by virtue of registration of Complainant’s mark with the European Community’s trademark authorities. Moreover, given the worldwide identification of the YAHOO! mark, it can also be inferred that Respondent was aware of the mark, and therefore had actual notice of Complainant’s rights. Respondent’s registration of the disputed domain name thereafter, containing Complainant’s mark despite actual knowledge of Complainant’s rights, is evidence of bad faith registration. See 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 worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also 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, by means of linking  <yahoox.com> to pornographic websites, used the domain name in bad faith. Respondent is intentionally trying to attract Internet consumers to its websites for commercial gain by deliberately trying to cause confusion between Respondent’s domain name and Complainant’s mark. This behavior is evidence that Respondent is in violation of Policy ¶ 4(b)(iv). See 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); see also Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent utilized a domain name confusingly similar to Complainant’s mark and used a confusingly similar pornographic depiction of Complainant’s registered trademark on its website to cause confusion as to the source or affiliation of the site).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has thus been satisfied.

DECISION

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

Accordingly, it is ordered that the domain name <yahoox.com> be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated: January 15, 2003

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