WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. v. David Ashby
Case No. D2000-0241
1. The Parties
Complainant is Yahoo! Inc., a Delaware corporation with its principal place of business at 3420 Central Expressway, Santa Clara, California 95051, U.S.A. ("Yahoo!"). Respondent is David Ashby, an individual residing at 815 Covington Rd., Los Altos, California 94024, U.S.A. ("Ashby").
2. Domain Name and Registrar
The domain name in issue is "YAHOOVENTURES.COM". The registrar is Network Solutions, Inc. (NSI).
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received Yahoo!’s complaint on March 31, 2000, via email, and on April 4, 2000, in hard copy form. The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Yahoo! made the required payment to the Center. The formal date of the commencement of this administrative proceeding is April 21, 2000.
On April 10, 2000, the Center transmitted via email to Network Solutions a request for registrar verification in connection with this case. On April 10, 2000, Network Solutions transmitted via email to the Center Network Solutions’ Verification Response, (1) confirming that the registrant of the domain name in issue is Ashby, both the administrative and billing contacts are Ashby, and Network Solutions’ 5.0 Service Agreement is in effect, and (2) stating:
"The domain name YAHOOVENTURES.COM is in ‘Active’ status."
On April 21, 2000, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, to Ashby via email at "firstname.lastname@example.org", to the postmaster at YAHOOVENTURES.COM, and via post/courier to both Ashby’s residence address and his business address. The Center advised that the response was due by May 10, 2000.
On May 8, 2000, Ashby transmitted copy of his response to the complaint to Yahoo!’s counsel and to the Center.
On May 19, 2000, the Center advised the parties via emails that (1) Mr. David Plant had been appointed as the panelist in this proceeding, and (2) Mr. Plant had submitted a Statement of Acceptance and Declaration of Impartiality and Independence 1.
The Center’s May 19, 2000, notice advised that the decision in this case is due June 2, 2000. That date was extended to June 16, 2000, pursuant to the Center’s emails of June 1, 2000, to the parties.
On June 1, 2000, Yahoo! transmitted to the Center via email "Correction of Factual Error in Respondent’s Answer." Also, Yahoo! transmitted a copy to the Center by fax on June 2, 2000. Yahoo! certified that it had sent a copy to Respondent. On June 7, 2000, the Center transmitted a copy to the Panel.
4. Factual Background; Parties’ Contentions
a. The Trademarks
The complaint (paragraph 34) is based on the trademark and service mark YAHOO!, registered in the U.S. Patent and Trademark Office pursuant to eight registrations, copies of which appear at Exhibit 7 to the complaint, viz.:
YAHOO! Reg. No. 2,040,222 Feb. 25, 1997
YAHOO! (stylized) Reg. No. 2,040,691 Feb. 25, 1997
YAHOO! Reg. No. 2,076,457 July 1, 1997
YAHOO! Reg. No. 2,159,115 May 19, 1998
YAHOO! Reg. No. 2,187,292 Sept. 8, 1998
YAHOO! Reg. No. 2,243,909 May 4, 1999
YAHOO! Reg. No. 2.243,823 May 4, 1999
YAHOO! Reg. No. 2,273,128 Aug. 24, 1999.
The complaint avers also (paragraph 34) that Yahoo! owns a pending trademark application, copy of a status report for which is at Exhibit 7 2.
The foregoing trademark and service mark registrations and the application relate inter alia to computer software for various searching and retrieving purposes, books, promoting goods and services via advertisement on electronic sites, computer services, magazines, email services, posters, shirts, computer software for use as a screen saver, housewares, demographic consultation services, computer software for use in creating and designing web sites, online retail and mail order services, telecommunications services, broadcasting services, consulting re marketing online, making reservations and bookings, and club services.
Yahoo! asserts also (paragraph 35) that it owns the domain name YAHOO.COM, registered with NSI on January 18, 1995, and used to identify the Yahoo! website since about that date.
b. The Complaint
Yahoo! asserts (paragraph 9):
"a. The disputed Domain Name fully incorporates Complainant’s valuable and protectable trademark YAHOO! within the second-level domain name under the top level .COM. Therefore, the disputed Domain Name is confusingly similar to Complainant’s YAHOO! mark.
"b. Ashby does not have rights or a legitimate interest in the Domain Name by virtue of the fact that Yahoo!’s YAHOO! mark is famous, and Ashby’s use of the mark is unauthorized.
"c. Ashby’s registration and use of the Domain Name meets the bad faith requirement described in Paragraph 4(a) of the UDRP [the Policy]."
In paragraph 14, Yahoo! avers that Yahoo! offers a wide variety of services under its mark, including inter alia web directory and search services, stock quotes, insurance quotes, tax information and filing services, small business advice and services, business and financial information and services, and real estate and mortgage information and rate quotes.
In paragraphs 14 and 15, Yahoo! asserts that the main Yahoo! web site can be accessed at http://www.yahoo.com. Yahoo! offers financial information and services at its YAHOO!FINANCE website, at http://finance.yahoo.com. In addition to the financial services listed in the preceding paragraph, Yahoo! offers stock and finance chat rooms and bulletin boards plus links to over 20 different Yahoo! websites covering international finance and investment in countries around the world.
At paragraph 16, Yahoo! asserts it is actively involved in equity investment and venture capital services, i.e. Yahoo! has made equity investments in affiliated companies. Also, Yahoo! was started with a venture capital from a well-known venture capital firm.
At paragraph 17, Yahoo! avers it has formed strategic relationships with unaffiliated companies by taking equity stakes in them. Further, it is not uncommon for Internet companies like Yahoo! to offer venture capital services, citing Lycos Ventures as an example.
According to paragraph 19, Yahoo!’s web directory was first known as YAHOO! in June 1994.
In paragraph 20, Yahoo! asserts its current market capitalization is approximately $100 billion.
At paragraph 21, Yahoo! asserts that its directory and search services enable Internet users, "even non-technical ones," to find information relevant for their purposes out of the vast amount of content on the Web.
At paragraphs 22-24, Yahoo! describes its advertising services and avers its income is "primarily derived from the sale of advertising and co-branding or sponsorship agreements with other companies." Yahoo! asserts it annual revenues have grown from $1,620,000 in 1995 to $588,068,000 in 1999.
At paragraphs 25-28, Yahoo! avers that its popular website is one of the leading web guides, is one of the most recognized brands associated with the Internet, has been ranked number one among websites in numerous categories, and in 1998 and 1999 averaged 100's of millions of page views per day or tens of millions discrete visits per month. As of December 31, 1999, Yahoo! had over 120 million unique registered users. The Yahoo! website has been recognized with numerous industry awards.
At paragraphs 29-30, Yahoo! describes various YAHOO! websites in specific countries (e.g. YAHOO.COM.CN (China)), regions (e.g. YAHOO.COM.AU (Australia and New Zealand)), and U.S. cities (e.g. D.C.YAHOO.COM, MIAMI.YAHOO.COM)). Yahoo! also operates other websites specific to particular topics or population groups (e.g. CHINESE.YAHOO.COM, YAHOOLIGANS.COM).
At paragraph 31, Yahoo! asserts that it offers a variety of services using the YAHOO! mark plus a descriptive name of the service (e.g. "YAHOO!Finance", "YAHOO!Chat"). A copy of a printout from the YAHOO!FINANCE website, inter alia, appears in Exhibit 5 to the complaint.
Yahoo! avers (paragraph 33) that Ashby has never been authorized by Yahoo! to use the YAHOO! marks.
At paragraph 36, Yahoo! avers that Yahoo!’s rights in the mark YAHOO! "and variations thereof" predate Ashby’s registration of the domain name in issue.
Yahoo! avers (paragraphs 32 and 37) that the Yahoo! marks are "famous" and "enjoy unquestionable fame as a result of favorable public acceptance and recognition worldwide."
As for Ashby’s activities, Yahoo! avers (paragraphs 38-55) the following:
Ashby has operated a website using the domain name YAHOOVENTURES.COM (paragraph 38).
Ashby registered the domain name YAHOOVENTURES.COM with NSI on December 13, 1999 (paragraph 39). Also, on December 13, 1999, Ashby filed an intent to use application with the U.S. Patent and Trademark Office for the mark YAHOO VENTURES, for "Financial services including venture capital and banking."
Ashby used the domain name in issue, "a confusingly similar variation of the famous YAHOO! mark, trade name, and YAHOO.COM domain name, to divert Internet users attempting to reach the YAHOO! site and to trade on the goodwill of the famous YAHOO! mark and name" (paragraph 41).
Ashby’s website prominently features the mark and name YAHOO VENTURES, includes a description of Ashby’s venture capital and business consulting services, and offers connections to professional service providers (paragraph 42). A printout of YAHOOVENTURES.COM website home page is at Exhibit 10 to the complaint.
At the time Ashby registered the domain name in issue, Ashby had actual knowledge of "Yahoo!’s rights to the YAHOO! mark and yahoo.com domain name" and registered the domain name in issue in bad faith "to take advantage of the tremendous reputation and goodwill of the YAHOO! mark and name" (paragraph 43). Referring to Exhibit 11, a copy of Ashby’s "Yahoo Ventures Free Speech Page," Yahoo! avers that Ashby "explicitly states that he had full knowledge of Yahoo!’s rights in the YAHOO! mark and name." Yahoo! iterates that at no time has Yahoo! authorized Ashby to use or register the domain name in issue, to apply to register the YAHOO VENTURES mark with the U.S. Patent and Trademark Office, or to use the mark or trade name YAHOO VENTURES.
In paragraph 44, Yahoo! avers that Ashby "intentionally and willfully misrepresented" to NSI that the registration of the YAHOOVENTURES.COM domain name "did not interfere with or infringe upon the rights of any third parties and that the domain name was not being registered for any unlawful purpose."
Yahoo! "became aware" of Ashby’s activities about March 21, 2000, when Yahoo’s in-house counsel, Michael Rodenbaugh, discovered Ashby’s trademark application in the U.S. Patent and Trademark Office (paragraph 45). Rodenbaugh called Ashby that day and also sent a cease and desist letter to Ashby (Exhibit 12). Yahoo! avers that on March 21, 2000, no active website was posted at the domain name in issue.
On March 22, 2000, Ashby sent a letter to Rodenbaugh (paragraph 46; Exhibit 13). Ashby stated that in his opinion Ashby’s use of the YAHOO VENTURES mark was not likely to cause confusion with Yahoo!’s marks.
On March 23, 2000, Yahoo! first discovered that Ashby began posting an active website at the domain name in issue. The website contained the YAHOO VENTURES mark and name, plus a description of the services offered by Yahoo Ventures (Paragraph 47; Exhibit 14).
On March 23, 2000, James Dubey, another in-house counsel at Yahoo! "contacted" a law partner of Ashby’s at Ashby’ law firm re the YAHOO VENTURES website (paragraph 48). Shortly thereafter,
"the YAHOO VENTURES website was taken down, and Internet users typing in the YAHOOVENTURES.COM domain name were forwarded to a website entitled EVENTURES GROUP which was located at the domain name EVENTURESGROUP.COM, another domain name owned by Ashby. That website contained a description of venture capital services nearly identical to the description at the YAHOO VENTURES website, as previously posted." (Exhibit 15)
On March 24, 2000, Rodenbaugh telephoned to Ashby (paragraph 49). "As requested by Ashby, Yahoo!’s in-house counsel informed Ashby of proof that Yahoo! has used its YAHOO! mark in connection with services highly related to those described in Ashby’s trademark application well before the filing date of that application." Yahoo! refers to Exhibit 3, an excerpt from an annual report re Yahoo! investments in affiliated companies.
On March 24, 2000, Ashby sent a second letter to Rodenbaugh, asserting inter alia that Ashby would not cease using the YAHOO VENTURES mark or name (paragraph 50; Exhibit 16).
On March 27, 2000, Yahoo! discovered a new website posted at the domain name in dispute (paragraph 51). As averred by Yahoo!:
"That website features a nearly identical description of services, as well as a new web page entitled ‘Yahoo Ventures Free Speech Page.’ At the ‘Free Speech’ page, Ashby explains how he decided to use the YAHOO VENTURES trademark and domain name despite Yahoo!’s rights in the YAHOO! mark. See printout ... Exhibit 11. ... the website states that ... he will use this site as an open forum for speech about the conduct of Yahoo! Inc.’"
As of March 30, 2000, Ashby’s YAHOOVENTURES.COM website was "under construction" (paragraph 52).
Ashby specializes in intellectual property law (paragraph 53). "Given his expertise in intellectual property law, Ashby knew or should have known that his arguments of no likelihood of confusion with Yahoo!’s famous YAHOO! trademark had no factual or legal basis" (paragraph 54). Notwithstanding the "proof" that Rodenbaugh had provided that Yahoo! offered "highly related financial services," Ashby’s website remained active, Yahoo! had received no confirmation that Ashby would abandon his trademark application or cease use of his mark or domain name. Also, Ashby should be familiar with the law of trademark dilution (paragraph 55), whereas, Ashby had focused only on likelihood of confusion.
Yahoo! avers that Ashby acted in bad faith (paragraphs 56-61), viz.:
Ashby registered the domain name in issue with prior knowledge of the YAHOO! mark (paragraph 56).
Ashby uses the domain name "to intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Yahoo!’s" mark (paragraph 57).
"By attracting Internet users away from Yahoo!’s website toward his own website, Ashby proved that his registration and use of the Domain Name was primarily for the purpose of disrupting the business of a competitor" (paragraph 58).
There is no plausible explanation for Ashby’s registration of the domain name "given the fame of the ‘YAHOO!’ mark" (paragraph 59).
"As an intellectual property lawyer and a partner at a prominent Silicon Valley intellectual property law firm," Ashby’s use and registration of the domain name are in bad faith (paragraph 60).
Ashby has not satisfied any of the three factors set forth at Section 4(c) of the Policy (paragraph 61).
Yahoo! requests that the domain name in issue be transferred to Yahoo!.
c. Respondent’s Answer
In his May 8, 2000, answer to the complaint, Ashby urges inter alia the following:
Ashby criticizes Yahoo! for focusing on irrelevancies, e.g. web page samples of Yahoo!’s Internet directory and travel services allegedly completely irrelevant to Ashby’s use of the domain name for "venture capital investment management" (paragraph 9).
As averred in paragraph 10, before any notice to Ashby of the dispute, Ashby used and made demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services. Also, Ashby has (a) formed a business commonly known by the name Yahoo Ventures, (b) has acquired a "registered California State trademark", and (c) has "two U.S. federal trademark applications pending."
Yahoo is a common word in the English dictionary, has been in use for decades, and is often used to express excitement and enthusiasm by sports enthusiasts (paragraph 11).
As averred in paragraph 12 and shown in Exhibit B, four "Yahoo-related" trademarks were registered before Yahoo! formed its business. Two are owned by the same entity and relate to cakes. The third relates to watercraft; the fourth, barbecue sauce.
As averred in paragraph 13 and shown in Exhibit C, other companies "currently" use Yahoo in connection with their goods and services, e.g. Yahoo Chicken, Yahoo Compost Service, Yahoo Construction Corp, Yahoo Enterprises, and Yahoo Stables. (Exhibit C also lists 10 "Yahoo Inc." company names.) Ashby states that Yahoo! cannot claim it is the only company entitled to use Yahoo, and "clearly there are a number of legitimate businesses using the name Yahoo."
Yahoo! has never engaged in "venture capital investment management for investors" (paragraph 15). Yahoo!’s Exhibit 3 merely shows Yahoo!’s expansion into Japan and Korea, not the management of investments for investors.
At paragraphs 16 and 17, Ashby (a) points to Yahoo!’s annual report’s references to "broadcast media, communication, and commerce services," and Yahoo!’s generating it revenues "primarily through the sale of advertisements, promotions, sponsorships, merchandising and direct marketing," and (b) avers that Yahoo!’s 1999 Annual Report does not identify "venture capital investment management" as a service performed by Yahoo! -- a business that "certainly would be mentioned" if Yahoo! were in that business.
As averred in paragraph 18, on December 13, 1999, Ashby "was in the process of developing a venture capital business and was looking for a name and URL that was available on the Internet." Ashby reviewed "the available names" and "identified YahooVentures.com as an available URL." Ashby performed "due diligence", including a search in the U.S. Patent and Trademark Office and found "no other party had any trademark rights for the name Yahoo Ventures in the field of venture capital." Ashby reviewed the "Yahoo.com" website and "did not see any use by Complainant in the field of venture capital." That same day, Ashby "secured the domain name" through NSI and filed a federal trademark application. A copy of the federal trademark application is allegedly at Exhibit E and "is currently pending." (The panel notes that Exhibit E shows that the application is an intent to use application for "Financial services including venture capital and banking.")
Ashby is the owner of a second federal trademark application for Yahoo Ventures "in the field of legal services" (paragraph 19: Exhibit F). (The panel notes that Exhibit F is a copy of a TEAS service report acknowledging receipt of an intent to use trademark application apparently on April 6, 2000. It states the goods or services to which the application relates are "legal services".)
Ashby is the owner of "California Trademark No. 53,148 for Yahoo Ventues in the field of venture capital" (paragraph 20; Exhibit G). Ashby avers further:
"The State of California conducted a search of the registered names and found that Yahoo Ventures does not cause confusion with any registered name. Clearly the State of California recognizes Ashby’s legitimate ownership of the trademark Yahoo Ventures in the field of venture capital."
Ashby avers (paragraph 21) that Exhibit H (a copy of a web page) shows that on December 20, 1999 Ashby launched the Yahoo Ventures web site. Ashby asserts:
"The site was linked as YahooVentures.com and remained in continuous use until Complainant threatened Ashby over the telephone and began to illegally disrupt Ashby’s business."
At paragraph 22, Ashby avers that Exhibit I shows the "current web site linked as YahooVentures.com." (Exhibit I states that "Yahoo Ventures manages venture capital investments for accredited investors . ... we provide startup companies with initial legal services and we have connections with professional service providers ... For more information, visit our links.")
In paragraph 23, Ashby avers that Yahoo!’s attorney Rodenbaugh "has threatened" both Ashby and his law firm "with harm to its business if Ashby does not turn over the domain name and trademarks" to Yahoo!. Ashby avers also that Yahoo! has taken "actual steps to disrupt Ashby’s business," constituting an "illegal business tort."
In paragraph 24, Ashby asserts:
"Ashby has remained willing to review examples of use by Complainant in the field of venture capital. ... However, Complainant has not produced any evidence of their use in the field of venture capital. Ashby believes that is because Complainant has never used its mark in such regard and consequently does not have any such evidence."
In paragraphs 25 - 32, Ashby sets out his averments in support of his conclusion that "there will be no confusion (paragraphs 31 and 32).
In paragraph 25, Ashby avers that Yahoo! has never engaged in "venture capital management for accredited investors" and has taken "affirmative actions to avoid being governed as an investment company ... ."
In paragraph 26, Ashby asserts that California "awarded Ashby a trademark for Yahoo Ventures in the field of venture capital," performed a search, and "found that there is no likelihood of confusion."
In paragraph 27, Ashby avers that Yahoo!’s reference to "an investment in a Japanese and Korean subsidiary" is not use under the trademark law, but rather "simply corporate expansion."
In paragraph 28, Ashby avers that Lycos’s creation of a separate company called Lycos Ventures is "no reason for anyone to believe that Ashby’s Yahoo Ventures is in any way related to Complainant."
In paragraph 29, Ashby concludes that, in light of the four Yahoo registered trademarks and the others doing business using the name Yahoo:
"Clearly, these companies are doing business without confusion with Complainant. These companies demonstrate that the word Yahoo in a business name is not necessarily associated with Yahoo!, Inc."
In paragraph 30, Ashby asserts:
"The consumers who are likely to invest in Ashby’s Yahoo Ventures business are sophisticated accredited investors having a net worth in excess of $1M... . Such consumers will perform their own due diligence on Ashby’s Yahoo Ventures business before investing and are not likely to confuse Ashby’s Yahoo Ventures business with Complainant’s Internet directory business."
In paragraph 31, Ashby avers that based on "these factual differences, ... there is no confusion between the name Yahoo!, Inc. for Internet directory services and Yahoo Ventures for venture capital."
In paragraph 32, Ashby avers that he has a pending federal trademark application in the "field of legal services," and continues that because Yahoo! is prohibited from practicing law there will be no confusion with respect to "Yahoo Ventures legal services business."
In paragraphs 33 and 34, Ashby avers that he has a legitimate interest in the domain name in issue, citing his California trademark registration and two pending U.S. federal trademark applications. Ashby avers that he "intends to move forward ... to build a successful investment management and legal services business."
In paragraph 35, Ashby avers that he has demonstrated good faith by performing "due diligence on his business name," citing his registration of the domain name in issue, filing his U.S. federal trademark applications, and obtaining the "California State trademark."
In paragraph 36, Ashby avers the filing the complaint in this arbitration is both irresponsible and premature, pointing out that the federal trademark applications will be published for opposition at which time Yahoo! may oppose the applications.
In paragraph 37, Ashby avers that he has taken "affirmative and demonstrable steps to use the domain name YahooVentures.com for his legitimate purpose," citing again filing U.S. federal trademark applications, developing the web sites shown in Exhibits H and I, and receiving California State trademark No. 53,148.
In paragraph 38, Ashby avers:
"Ashby plans to use the web site in accordance with his issued California trademark and his U.S. federal trademarks when they issue."
In paragraph 39, Ashby asserts that his averments in Paragraphs 37 and 38 are clearly "demonstrable preparations to use the domain YahooVentures.com for a legitimate purpose."
In paragraph 40, under the heading "Ashby’s Business Is Known As Yahoo Ventures,"Ashby avers:
"Ahby has been awarded a California State trademark for Yahoo Ventures in the field of venture capital. Ashby and his business are known as providing venture capital and legal services to businesses."
In paragraph 41, Ashby urges the Panel find that (a) Yahoo! has not met its burden of proof, (b) Ashby has a legitimate interest in the domain name YahooVentures.com, and (c) Ashby has "exercised efforts toward that interests [sic]," and thus (d) Ashby is entitled to keep the domain name.
c. Yahoo!’s Correction of Factual Error
In its June 1, 2000, Correction of Factual Error filing, Yahoo! asserts that three of the four trademark registrations for "YAHOO-formative marks" relied on by Ashby (e.g. Response, paragraph 12, Exhibit B) were assigned to Yahoo! in 1996, as shown in attachments to the Correction of Factual Error document.
5. Discussion and Findings
Paragraph 4.a. of the Policy directs that Yahoo! must prove, with respect to each domain name in issue, each of the following:
(i) The domain name in issue is identical or confusingly similar to the Yahoo! trademark, and
(ii) Ashby has no rights or legitimate interests in respect of the domain name, and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4.b of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4(a)(iii) above shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4.c of the Policy sets out three illustrative circumstances which, if proved by respondent, shall demonstrate respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.
a. Identity or Confusing Similarity
Yahoo! urges, and has the burden of proving, that the domain name in dispute is confusingly similar to the Yahoo! mark.
On its face, the domain name in issue incorporates the term "Yahoo". Ashby does not challenge Yahoo!’s assertions that the "Yahoo!" mark and name are widely and favorably known among millions of Internet users, in connection with a wide variety of services and goods. In addition, Ashby does not challenge the fact that Yahoo! owns a wide variety of domain names incorporating the term "Yahoo", such as YAHOO.COM, YAHOO.COM.CN, YAHOO.COM.TW, YAHOO.COM.UK, NYC.YAHOO.COM, DC.YAHOO.COM, and SEATTLE.YAHOO.COM.
Especially pertinent here, Yahoo! undisputably owns the domain name YAHOO.FINANCE. Ashby does not challenge the fact that the main Yahoo! website (Yahoo! Exhibit 2) offers services relating to "Business & Economy", "Finance", "Small Business", and "Economics", or that the YAHOO!FINANCE website (Complaint, paragraph 15, Exhibit 5) offers "a variety of finance-related information and services" including links to "over 20 different Yahoo! websites covering international finance and investment in countries around the world."
Ashby does assert, however, that Yahoo is a common English name, other trademarks comprise the term Yahoo, other business names include the term Yahoo, Yahoo! has not engaged in the management of investments of investors, Yahoo!’s 1999 Annual Report does not identify "venture capital investment management" as a service performed by Yahoo!, and Yahoo! has taken affirmative steps to avoid being governed as an investment company. Ashby rightly points out that Yahoo!’s Exhibit 3 merely refers to Yahoo!’s expansion into Japan and Korea and not to the management of investments for investors. In addition, Ashby urges that Lycos’s creation of Lycos Ventures does not afford any basis for believing Yahoo Ventures is related to Yahoo!. Also, Ashby urges that his clients will be sophisticated, "accredited investors" who are not likely to confuse Yahoo Ventures with Yahoo!.
Yahoo!’s challenge as to Ashby’s averments as to three of the four U.S. federal trademark registrations allegedly belonging to an organization other than Yahoo! is soundly grounded. However, in pointing out this error, and not challenging any other factual (as opposed to inferential) assertion by Ashby, Yahoo! has tended to reinforce the credibility of Ashby’s unchallenged factual assertions. Thus, for purposes of this decision the panel does not hesitate to take as true of Ashby’s unchallenged factual assertions, but not necessarily the inferences Ashby draws from those assertions.
Assuming each of Ashby’s unchallenged factual averments to be true, the undisputed facts remain that Yahoo!’s mark and web sites (1) are indeed well-known, (2) are associated with goods and services offered over the Internet -- at least some of which relate expressly to finances and related matters --, and (3) are seen and used by tens of millions of persons monthly. On this record, it is fair to infer that a substantial number of such users are not sophisticated accredited investors. Also on this record, the facts recited above plus the inference as to the level of sophistication of Yahoo! domain names and websites, lead to the conclusion that YAHOOVENTURES.COM is likely to be regarded by significant numbers of Internet users familiar with the term Yahoo as related to, affiliated with, or endorsed by Yahoo!. Accordingly, YAHOOVENTURES.COM is likely to cause confusion among users of the Internet -- the relevant segment of the public -- with Yahoo!’s trademark and service mark.
The fact that the State of California registered the service mark "Yahoo Ventures" on March 20, 2000, for "Venture capital" does not establish superior rights in Ashby vis-a-vis Yahoo!. It is clear from the letter accompanying the registration (Ashby Exhibit G) that the State of California determined only that Ashby’s mark "does not appear to resemble any previous registration" in California. It is also clear that the State of California advised Ashby that
"... there may be unregistered marks or California trade names ... under which individuals conduct business which may resemble your registration. A check for such names is beyond the scope of the review of this office in registering marks."
Thus, Ashby’s California registration is not in any respect a determination by the State of California that Ashby’s mark "Yahoo Ventures" is not confusingly similar to Yahoo!’s trademark and service mark. The State of California makes plain that its determination is of limited scope. Ashby simply asks too much of the registration in the State of California.
Further Ashby’s December 13, 1999, intent to use application to register Yahoo Ventures with the U.S. Patent and Trademark Office states that the services covered are "Financial services including [but not limited to] venture capital and banking." (Italics added) Not having confined his intent to use to "venture capital" services, but rather describing his universe of intended services to be "Financial" including inter alia "banking", Ashby is on brittle ground in contending that Yahoo!’s trademark and service marks are not likely to be adversely affected by Yahoo Ventures’s mark and domain name and the services Ashby promotes under his mark and domain name.
Also, that Yahoo! may not have offered investments management services, may have taken steps to avoid being governed as an investment company, and is not authorized to practice law in no respect dispel the likelihood of confusion in the minds of ordinary Internet users. It is the ordinary Internet user who is the litmus here, not the so-called sophisticated, accredited investor.
The conclusion of confusing similarity is buttressed by the following:
(1) by December 1999, when Ashby purportedly commenced his venture capital investment business, Yahoo! had been in business for five years, was expanding rapidly, and was indisputably well-known to millions of Internet users around the world as providing a variety of services, including financial services,
(2) Ashby carefully searched trademark and domain name registers to find a combination of terms including "Yahoo" that was technically available -- as a matter of registration,
(3) at that time of his registrations and as late as March 30, 2000, Ashby’s email address was "email@example.com" (e.g. Complaint, Exhibits 8, 14),
(4) Ashby’s websites have customarily referred to other services "In addition to investing money" (e.g. Complaint, Exhibits 10, 14; Response, Exhibits H, I), and
(5) any Internet user, regardless of the user’s degree of sophistication, will not know that Ashby’s website is not affiliated with Yahoo! until after the user has visited on Ashby’s site and either read Ashby’s "Free Speech" page or clicked on other addresses suggested on Ashby’s home page.
It is fair to conclude that point (6) above is precisely what Ashby hoped to achieve in deliberately selecting a domain name and mark including the term "Yahoo". By trading on the fame and good will associated with Yahoo!’s marks and domain names, Ashby expected to attract visitors to his website. Confusing similarity is what Ashby has been counting on.
b. Rights or Legitimate Interests
On this record, Ashby’s unsupported inferences are more than countered by the undisputed facts and the circumstantial evidence. Ashby levels no challenge to (1) the validity of any Yahoo! trademark or service mark, (2) Yahoo!’s rights in those marks with respect to Yahoo! services and goods, (3) the global fame and goodwill associated with those marks, or (4) any fact averred by Yahoo! as to the promotion and use of the marks (save the matter of expansion into Japan and Korea) and total sales of services and goods under the marks.
In addition, the following facts are undisputed:
(1) at the time Ashby registered the domain name and applied for trademark registrations in California and the U.S. Patent and Trademark Office for his future investment services, he "did not have any personal attachment to the name" (Complaint, Exhibit 11),
(2) On March 21, 2000, after receipt of notice from Yahoo! of the dispute, Ashby had no active website,
(3) Ashby began posting an active website at the domain name in issue on about March 23, 2000.
(4) Shortly after March 23, 2000, the YAHOOVENTURES.COM websit was taken down and inquiries were forwarded to EVENTURESGROUP.COM, a web site containing information virtually identical to the earlier YAHOOVENTURES.COM web site.
(5) On March 24, 2000, Ashby wrote to Yahoo! that his intention was to build a venture capital business using the name "Yahoo Ventures" (Complaint, Exhibit 16).
(6) On about March 27, 2000, a new web site was posted at YAHOOVENTURES.COM.
(7) The new website included the prior description of services plus a "Free Speech" page describing how Ashby decided to use the Yahoo Ventures trademark and domain name in dispute and stating that, whereas initially Ashby had no "personal attachment to the name," the matter "is now personal," and the site will be used "as an open forum for speech about the conduct of Yahoo! Inc."
(8) On March 30, 2000, the YAHOOVENTURES.COM web site was "under construction" (Complaint, paragraph 52).
(9) On April 6, 2000, after the complaint had been served and filed in this proceeding, Ashby filed an intent-to-use application in the U.S. Patent and Trademark Office to register the mark "Yahoo Ventures" for "Legal Services" (Response, Exhibit F). In that application, Ashby listed his email address as "firstname.lastname@example.org."
Ashby does not challenge any of the foregoing facts. Ashby does aver:
(1) Before any notice from Yahoo!, Ashby had used and made demonstrable preparation to use the domain name.
(2) Ashby has formed a business commonly known as Yahoo Ventures, has acquired the California "trademark", and has two U.S. federal trademark applications pending.
(3) Ashby "intends to move forward ... to build a successful investment management and legal services business."
The undisputed history of Ashby’s website, especially the consistent evidence through the filing of the April 6, 2000, intent-to-use application for a federal registration of "Yahoo Ventures" for legal services, suggests strongly that Ashby has no viable business at present in regard to investment services, and prior to notice from Yahoo! as to this dispute had made only preliminary preparations to conduct such a business. Ashby’s replications of web pages are not enough to establish a legitimate business before Ashby received notice of this dispute or that Ashby selected the name of his business and the domain in dispute for any legitimate reason. Ashby’s statements to Yahoo! and his trade mark applications are all forward looking. None contains any support for the inference that Ashby has a viable investment services business, much less one "commonly" known as Yahoo Ventures.
Ashby’s protests of due diligence suggest strongly that Ashby did all he could to ride the coat-tails of Yahoo!’s fame and goodwill on the Internet. On this record, legitimate rights and interests in Ashby are not established by a single State registration and the pendancy of two intent to use applications for federal registrations. The facts as to use, similarity of the marks and terms in question, similarity of products and services, similarity of channels of distribution, and similarity of consumers all point to a lack of rights and legitimate interests in Ashby. As we have noted, Ashby did all he could to benefit from those obvious similarities.
This record demonstrates that Ashby has no rights or legitimate interests in the domain name in issue.
c. Registration and Use in Bad Faith
Registration and use of the domain name in issue in bad faith are matters of the appropriate inferences to draw from circumstantial evidence. Each is to be proved by Yahoo!. Yahoo! has carried its burden.
Yahoo! avers inter alia:
(1) Ashby registered the domain name in issue with prior knowledge of the YAHOO! mark.
(2) Ashby uses the domain name in issue to "intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion."
(3) By attracting users away from Yahoo!’s website to his own website, Ashby has "proved" his registration and use of the domain name were "primarily for the purpose of disrupting the business of a competitor."
(4) The fame of the YAHOO! mark deprives Ashby of any plausible explanation for his registration of the domain name in dispute.
(5) Ashby’s conduct is inconsistent with each of three factors set out in Paragraph 4.c of the Policy, summarized in Section 5.d below.
Ashby claims he has acted in good faith because:
(1) Ashby performed "due diligence" on his business name, registering the domain name in issue, and filing applications to register the name "Yahoo Ventures".
(2) Ashby has taken affirmative and demonstrable steps to use the domain name in issue for legitimate purpose, by filing applications to register his alleged mark, developing "the web sites" as shown in his Exhibits H and I, and planning to use the web site in accordance with his "issued California trademark and his U.S. federal trademark when they issue."
(3) Ashby and his business "are known as providing venture capital and legal services to businesses."
Ashby’s assertions ring hollow when measured against his conduct, for example:
(1) Carefully selecting a domain name including the term "Yahoo" when he knew of the fame of Yahoo!’s mark and the wide variety of financial services offered by Yahoo!.
(2) Filing intent to use applications for trademark registrations.
(3) Filing his "legal services" intent to use application after the complaint was served in this matter -- quite likely for the purpose of attempting to distance his alleged services from those offered by Yahoo!.
(4) After hearing from Yahoo!, forwarding users of the domain name in issue to his EVENTURES GROUP website which offered the same services as the website in issue.
(5) Failing to demonstrate that before this dispute arose he was conducting a business commonly known as "Yahoo Ventures" -- at best, as his various declarations of "intent" reveal, Ashby was looking to the future.
As the panel has found in Sections 5.a and 5.b above, and in Section 5.d below, Ashby has intended to take advantage of Yahoo!’s fame and goodwill. To justify this effort, Ashby has twisted the ordinary meaning of "due diligence", has created a transparent facade of alleged good faith by filing intent to use applications for trademark registrations, and has extrapolated far too much from his California trademark registration. In so doing, he has registered and used the domain name in issue in bad faith.
d. Paragraph 4.c Factors
With respect to the domain name in issue, Ashby has failed to prove any of the three circumstances set out in Paragraph 4.c of the Policy, viz.:
(i) before any notice to Ashby of the dispute, Ashby’s use of or preparations to use the domain name were in connection with a bona fide offering of goods or services,
(ii) Ashby or a related entity has been commonly known by the domain name, and
(iii) Ashby is making legitimate noncommercial or fair use of the domain name, "without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
Before Ashby received Yahoo!’s March 21, 2000, letter (Complaint, Exhibit 12), Ashby’s use of and preparation to use the domain name in issue were not bona fide. The evidence in large and persuasive measure points away from Ashby’s having a viable investment services business before or after March 21. Rather the evidence persuasively points to Ashby’s having only an unfulfilled intent of establishing such a business by riding the coattails of Yahoo!.
Neither Ashby nor a related entity has been commonly known by the domain name in issue. Ashby concedes this in his "Free Speech" page (Complaint, Exhibit 11).
The evidence also points to Ashby’s intent for commercial gain by misleading consumers to utilize Ashby’s website rather than the Yahoo! website, or otherwise to utilize Ashby’s website in the mistaken belief that Ashby’s website is somehow affiliated with Yahoo!.
In light of the foregoing, the Panel decides that (a) the domain name registered by Ashby and in issue here is confusingly similar to the Yahoo! marks, (b) Ashby has no right or legitimate interests in respect of the domain name in issue, and (c) the domain name in issue has been registered and is being used in bad faith by Ashby.
Accordingly, the Panel requires that the registration of the domain name YAHOOVENTURES.COM be transferred to Yahoo!.
David W. Plant
Dated: June 14, 2000
1. Also on May 19, 2000, the Center appointed Mr. Plant as panelist in Yahoo! Inc. v. Eitan Zviely, Zvieli Fisher, F.Z., OZ domains, E.Z.O.F, E&O Domains, and Fisher Zvieli, Case No. D2000-0273.
2. Each registration and application refers to Yahoo! as a California corporation. In its complaint, Yahoo! avers it is a Delaware corporation. Ashby does not challenge complainant Yahoo!’s asserted ownership of the registrations and the application.