DECISION

Yahoo! Inc. v. James Fato d/b/a 458 Online

Claim Number:  FA0406000286410

PARTIES

Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 1300 I Street NW, Washington, DC 20005.  Respondent is James Fato d/b/a 458 Online (“Respondent”), P.O. Box 35, Olney, MD 20830-0035.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fuckyahoo.com>, registered with Go Daddy Software, Inc. a/k/a GoDaddy.com.

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 June 14, 2004; the Forum received a hard copy of the Complaint on June 15, 2004.

On June 15, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <fuckyahoo.com> is registered with Go Daddy Software, Inc. a/k/a GoDaddy.com and that Respondent is the current registrant of the name. Go Daddy Software, Inc. a/k/a GoDaddy.com has verified that Respondent is bound by the Go Daddy Software, Inc. a/k/a GoDaddy.com 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 June 16, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 6, 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@fuckyahoo.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 July 13, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E.Condon 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 <fuckyahoo.com> domain name is confusingly similar to Complainant’s YAHOO! mark.

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

3. Respondent registered and used the <fuckyahoo.com> domain name 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, and shopping services and other online activities and features to millions of Internet users daily. 

Complainant has continuously used the YAHOO! mark since as early as 1994.  Complainant is the owner of the service mark and trademark YAHOO!, as well as the trade name YAHOO! and the domain name <yahoo.com>.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office for the YAHOO! mark (Reg. No. 2,040,222, issued February 25, 1997, Reg. No. 2,564,976, issued April 30, 2002, Reg. No. 2,187,292, issued September 8, 1998, Reg. No. 2,403,227, issued November 14, 2000, Reg. No. 2,040,691, issued February 25, 1997).

Respondent registered the <fuckyahoo.com> domain name February 8, 2004.  Respondent is using the domain name to direct users to a pornographic website offering Internet search services, web directory services and shopping services focusing exclusively on adult entertainment.  Specifically, Respondent’s website is a commercial website that advertises products for sale ad commercial search listings for which Respondent is presumably paid each time a user clicks on a listing.  Respondent’s website also displays banner advertisements, for which Respondent receives commissions.  Respondent’s website has directly copied numerous features of Complainant’s YAHOO! website, including the font colors, styles, graphics and logo.

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 acquired rights to the YAHOO! mark through registration with the USPTO and use in commerce.  See Men’s Warehouse, 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that 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).

First address the fact that the domain name omits the exclamation point from Complainant's mark and use citations. Then in the next para use language similar to below.

Respondent’s omission of an exclamation point from the <fuckyahoo.com> domain name is of no consequence because the omission of punctuation is not significant in the determination of a disputed domain name’s similarity to a mark.  See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark")

The registration of a domain name that contains another's mark with the addition of the word "fuck" was recently addressed in Am. Online, Inc. v. Vercetti, FA 244091 (Nat. Arb. Forum Apr. 23, 2004). 

“The domain name simply adds the word “fuck” to Complainant’s mark.  Generally, a domain name that consists of a mark and a generic word does not significantly distinguish itself from the mark.  However, “fuck” may be analogous to “sucks”: it may be  a word that connotes greater distinction.  In fact, the only case to examine the word “fuck” and its bearing on similarity used an anaolgy to the words “sucks” for its analysis.  See Koninklijke Phillips Elecs. V. Snelling Domains Best, D2002-1041 (WIPO Dec. 16, 2002) (finding the <fuckphilips.com>domain name to be confusingly similar to Complainant’s PHILLIPS mark).

Courts and UDRP Panels have addressed the issue of appending the term “-sucks” to another’s trademark.  See Lucent Technologies, Inc. v. Lucentsucks.com, 95 F.Supp.2d 528 (E.D. Va. 2000) (<lucentsucks.com>); see also Bally Total Fitness v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998) (<ballysucks.com>); see also Wal-mart Stores, Inc. v. Walsucks and Walmart Puerto Rico, D2000-0477 (WIPO July 20, 2000) (<walmartsucks.com>); see also Cabela’s Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Frum Aug. 29, 2000) (<cabelassucks.com>); see also Lockheed Martin Corp. v. Parisi, D2000-1015 (WIPO Jan. 26, 2001) (<lockheedmartinsucks.com> and <lockheedsucks.com>).  In Lockheed, a majority of the Panel held: “Both common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the words “sucks” or language clearly indicating that the domain name is not affiliated with the trademark owner cannot be considered confusingly similar to the trademark” Id; accord, Talk Radio Network v. Fotuard, FA 155181 (Nat. Arb. Forum June 24, 2003).

However, in Cabela’s, the Panel determined that “-sucks” domain names are not “immune from scrutiny as being confusingly simlar to trademarks to which they are appended.”  See Cabela’s Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum August 2000) construed in Infospace, Inc. v. Sunwave Communications, FA 198015 (Nat. Arb. Forum Nov. 10, 2003); see e.g., Infospace, Inc. v. Sunwave Communications, FA 198015 (Nat. Arb. Forum Nov. 10, 2003); Wachovia Corp. v. Flanders, D2003-0596 (WIPO Sept. 19, 2003); Savin Corp. v. savinsucks.com, FA 103982 (Nat. Arb. Forum Mar. 5, 2002).

In claims where Respondent has not responded, Panels have accepted Complainants’ assertions of confusing similarity under the Policy.  See Quilogy, Inc. v. Ruddick, FA 134653 (Nat. Arb. Forum Jan. 9, 2003); see also Diners Club Int’l v. SPS, FA 149414 (Nat. Arb. Forum April 21, 2003).  The test in Policy ¶ 4(a)(i) has a low threshold of proof.  See Desktop Media, Inc. v. Desktop Media, Inc., FA 96815 (Nat. Arb. Forum Apr. 12, 2001) (“[F]or 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…”).  All that Complainant need demonstrate is that its mark is included in the domain name.  See Nikon, Inc. and Nikon Corp. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law); see also Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law).  Thus, since Respondent’s domain name wholly incorporates Complainant’s AOL mark and merely adds the word “fuck,” the Panel finds that the domain name is confusingly similar to Complainant’s mark for purposes of Policy 4(a)(i).”

The Panel follows the same reasoning as discussed above and finds that Respondent's <fuckyahoo.com> domain name is confusingly similar to Complainant's YAHOO! mark.

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

Rights or Legitimate Interests

Complainant has established that it has rights to and legitimate interests in its mark and has alleged that Respondent has no such rights or legitimate interests in the domain name that contains in its entirety the Complainant’s mark.  Due to Respondent’s failure to respond to the Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain name.  In fact, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights to or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that 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”); see also 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 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).

Moreover, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the domain name).

Complainant alleges that Respondent is using the disputed domain name to promote pornography.  Using Complainant’s mark to promote pornography is neither a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶ 4(c)(iii).  See Isleorth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that Respondent’s use of its domain name, to link unsuspecting Internet traffic to an adult oriented website, containing pornography, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to “define the location of Respondent’s website on the Internet” and to host a pornographic website was not a legitimate noncommercial or fair use of the domain name).

Moreover, Respondent offered no evidence and no proof in the record suggests that Respondent is commonly known by the <fuckyahoo.com> domain name.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests 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 Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

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

Registration and Use in Bad Faith

Respondent intentionally registered a domain name that contains in its entirety Complainant’s well-known mark and did so for Respondent’s commercial gain, as is evidenced by Respondent’s direct appropriation of numerous features of Complainant’s YAHOO mark including the font color and style.  Respondent’s domain name diverts Internet users who seek Complainant’s YAHOO mark to Respondent’s commercial website through the use of a domain name that is confusingly similar to Complainant’s mark.  Furthermore, Respondent is unfairly benefiting from the goodwill associated with Complainant’s YAHOO mark.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also 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).

Respondent is using the disputed domain name to peddle pornography.  Appropriating someone else’s mark within a domain name to promote pornography is bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“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 Ty Inc. v, O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

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

Louis E. Condon, Panelist

Dated:  July 26, 2004

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