DECISION

Yahoo! Inc. v. Manage Technical a/k/a Administration Local

Claim Number:  FA0402000238649

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 20005-3315.  Respondent is Manage Technical a/k/a Administration Local  (“Respondent”), PO Box 33180, Sheung Wan, HK 00000, Hong Kong.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yahooauto.com>, registered with Neteka, Inc. d/b/a Namesbeyond.com.

PANEL

The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically February 20, 2004; the Forum received a hard copy of the Complaint February 23, 2004.

On February 23, 2004, Neteka, Inc. d/b/a Namesbeyond.com confirmed by e-mail to the Forum that the domain name <yahooauto.com> is registered with Neteka, Inc. d/b/a Namesbeyond.com and that Respondent is the current registrant of the name. Neteka, Inc. d/b/a Namesbeyond.com verified that Respondent is bound by the Neteka, Inc. d/b/a Namesbeyond.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 27, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 18, 2004 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@yahooauto.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 25, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 makes the following assertions:

1. The domain name registered by Respondent, <yahooauto.com>, is confusingly similar to Complainant’s YAHOO! mark.

2. Respondent has no rights to or legitimate interests in the <yahooauto.com> domain name.

3. Respondent registered and used the <yahooauto.com> domain name in bad faith.

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

FINDINGS

Complainant is a widely recognized global Internet communications, media, and commerce company.  Complainant delivers a branded network of comprehensive searching and directory services, as well as other online activities that have attracted hundreds of millions of Internet users since 1994.  Complainant’s global web network includes 25 world properties with offices in Europe, Asia Pacific, Latin America, Canada, and the U.S.

Complainant operates its business under the YAHOO! mark.  Complainant owns numerous registrations for the YAHOO! mark, which were filed and successfully registered with the United States Patent and Trademark Office (“USPTO”), including registration numbers 2403227 (registered Nov. 14, 2000), 2040222 (registered Feb. 25, 1997), and 2273128 (registered Aug. 24, 1999).

Complainant has used the YAHOO! mark continuously in international commerce since 1994.  Since then, the YAHOO! mark has become one of the most recognized brands in the world, with a value of nearly U.S. $3.9 billion, according to Interbrand. 

The services that Complainant offers under the YAHOO! mark are vast and include both local and international web directory and search services covering an equally vast array of subjects.  One such subject relates to automobiles, which is located at <autos.yahoo.com>.

Respondent registered the disputed domain name <yahooauto.com> April 30, 2003.  Respondent uses the domain name to host an automobile-related web directory website provided by Dark Blue Affiliate Network, an online marketing company.

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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 to and/or Confusingly Similar

Complainant established with extrinsic proof in this proceeding that it has rights in the YAHOO! mark as a result of its numerous registrations with the USPTO and by Complainant’s continuous use of the mark in international commerce since at least as early as 1994. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also Men’s Wearhouse, Inc. v. 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.”).

Under the Policy, the incorporation of a third-party’s registered trademark in a domain name, combined with a generic or descriptive term, fails to eliminate the confusing similarity between a name and mark.  In this case, Respondent incorporated Complainant’s YAHOO! mark in the disputed domain name <yahooauto.com> and has merely added the term “auto.”  See Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the terms “traffic school,” “defensive driving,” and “driver improvement,” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporated the VIAGRA mark in its entirety, and deviated only by the addition of the word “bomb,” the domain name was 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).

Thus, the disputed domain name is confusingly similar to Complainant’s YAHOO! mark under Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Respondent has not provided the Panel with a Response.  Therefore, the Panel construes such a failure as an implicit admission that Respondent lacks rights to or legitimate interests in the domain containing in its entirety Complainant’s protected mark. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also 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).

The Panel finds no evidence in the record to show that Respondent was authorized by Complainant to use the YAHOO! mark in the disputed domain name and the record permits the inference that Respondent is not commonly known by Complainant’s protected mark or the domain name pursuant to Policy ¶ 4(c)(ii).  Thus, Respondent’s use if not a bona fide offering of goods or services envisioned by the Policy. See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“[The] 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.”); see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that Respondent lacked rights and legitimate interests in the domain name because Respondent was not authorized by Complainant to use its trademarks and the mark was distinct in its nature, such that one would not legitimately choose it unless seeking to create an impression of an association with Complainant); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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").

Under the Policy, a domain name that is confusingly similar to a third-party’s registered mark and that is used to host content relating to the services provided under the third-party’s mark does not confer rights or legitimate interests in the name to a Respondent.  Here, Respondent has used the domain name to host an automobile-related web directory website, which is a service offered by Complainant under the YAHOO! mark.  Such use not only is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) ("[Using] Complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use."); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”); see also Yahoo! Inc. v. Microbiz, Inc., D2000-1050 (WIPO Nov. 7, 2000) (“[U]se that intentionally trades on another can not constitute a ‘bona fide’ offering of goods or services.”).

Complainant established that Respondent lacks rights to and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

It is well established that when a domain name registrant incorporates a well-known registered mark in a domain name for the purpose of creating Internet-user confusion as to the sponsorship of the name and then uses it for commercial gain, the registrant has registered and used the name in bad faith pursuant to Policy ¶ 4(b)(iv). In this case, Respondent incorporated the famous YAHOO! mark in the disputed domain name and used the name to provide the same type of directory services offered by Complainant, as well as the same automobile-related content that Complainant provides at <autos.yahoo.com>. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market).

Additionally, the Panel finds that Respondent actually knew or had constructive notice of Complainant’s rights in the YAHOO! Mark.  Complainant’s YAHOO! mark is well-known worldwide and Respondent provided used it to provide the same type of service and content provided by Complainant under the YAHOO! mark. 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); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) (“Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.”).

Moreover, Respondent did not provide the Panel with any good faith basis for registering and using the disputed domain name. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where Respondent failed to provide evidence to controvert Complainant's allegation that Respondent registered the name in bad faith and any future use of the name would only cause confusion with Complainant’s mark); see also Kraft Foods v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent [chose] to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue.”); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding bad faith registration and use where Respondent registered a domain name incorporating Complainant’s mark and Respondent failed to show circumstances in which such a registration could be done in good faith).

Therefore, Complainant has established that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

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 <yahooauto.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: April 8, 2004

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