DECISION

Yahoo! Inc. v. Person Marccel Marcel

Claim Number:  FA0312000215345

PARTIES

Complainant is Yahoo! Inc., Sunnyvale, CA (“Complainant”) represented by David M. Kelly, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., 1300 I Street, NW, Washington, DC 20005-3315.  Respondent is Person Marccel Marcel, 20, rue de la Manche, 47000 Agen, France (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yahoux.com>, registered with Bookmyname Sas.

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 1, 2003; the Forum received a hard copy of the Complaint on December 2, 2003.

On December 9, 2003, Bookmyname Sas confirmed by e-mail to the Forum that the domain name <yahoux.com> is registered with Bookmyname Sas and that Respondent is the current registrant of the name. Bookmyname Sas has verified that Respondent is bound by the Bookmyname Sas 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 December 10, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 30, 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@yahoux.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, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condonu 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 makes the following assertions:

1. Respondent’s <yahoux.com> domain name is confusingly similar to Complainant’s YAHOO mark.

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

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

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

FINDINGS

Complainant is the owner of the famous YAHOO! service mark and trademark, registered with the United States Patent and Trademark Office on February 25, 1997 (Reg. No. 2040222).  Complainant also owns numerous European Community Trademark registrations for its YAHOO! mark (e.g. Reg. Nos. 1076181 and 176396).  Complainant has used its YAHOO! mark in commerce since 1994.

Complainant also owns the registration for its famous <yahoo.com> domain name.  The website attached to the <yahoo.com> domain name is one of the leading websites worldwide and in August 2003, the site had 765 million unique users and 101 million active registered members.

Respondent registered the disputed domain name on December 30, 2002.  Respondent uses the domain name to host a pornographic web directory in the French language, under the names “Yahoux!” and “Yahoux France.” 

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 and continuous use since 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).

The degree of difference between a domain name and mark is the determining factor in identifying a confusing similarity.  Thus, the fact that Respondent’s name merely changed the last syllable “HOO” in Complainant’s famous mark, to the French looking “HOUX,” provides an insignificant difference for the purpose of Policy ¶ 4(a)(i).  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Desktop Media, Inc. v. Desktop Media, Inc., FA 96815 (Nat. Arb. Forum Apr. 12, 2001) (“for the limited purposes of the domain name dispute resolution process[,] a low threshold of proof is all that is required to meet the first element”).

Besides the former, the disputed domain name is confusingly similar to Complainant’s registered YAHOO! mark because the name is phonetically identical to Complainant’s mark when spoken in its French form.  See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding a domain name that is phonetically identical to Complainant’s mark satisfies Policy ¶ 4(a)(i)); see also YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to Complainant’s YAHOO mark).

Thus, Policy ¶ 4(a)(i) is satisfied.

Rights or Legitimate Interests

Respondent has not asserted any rights or legitimate interests in the disputed domain name.  Therefore, the Panel may presume that Respondent lacks rights and legitimate interests in the domain name.  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).

Additionally, there is no evidence that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  The WHOIS registration information fails to imply that Respondent is commonly known by the name.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating, “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

Furthermore, Respondent is using the disputed domain name to provide a pornographic web directory, which is not 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 Paws, Inc. v. Zuccarini a/k/a Country Walk, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also McClatchy Mgmt. Servs., Inc. v. Carrington a/k/a Party Night Inc., FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features pornographic material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use).

Thus, Policy ¶ 4(a)(ii) is satisfied.

Registration and Use in Bad Faith

Paralleling the treatment of pornography under Policy ¶ 4(a)(ii) has been the consistent holding of Panels that pornographic content posted at a disputed domain name, that infringes upon another’s famous mark, evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  The corresponding rationale involves the protection of one’s efforts to build a reputable mark, while affording the protection from the inevitable leeches that may tarnish or dilute that mark for their own unscrupulous ends.  See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO March 4, 2003) (stating, “whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); see also Wells Fargo & Co. v. Party Night Inc. & Peter Carrington, FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith).

Additionally, the distinctiveness and notoriety of Complainant’s YAHOO! mark is sufficient to infer that Respondent reasonably should have been aware of Complainant’s rights in the mark.  Therefore, Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  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. Feb. 11, 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Thus, Policy ¶ 4(a)(iii) is satisfied.

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

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

  

Louis E. Condon, Panelist

Dated:  January 16, 2004

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