WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Yahoo! Inc. v. DomainCollection

Case No. D2000-0476

 

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 identifies itself at "DomainCollection", with no conventional postal address, but rather with the following:

"1, YNOTMAKEURSELFEASIEST2BEREMEMBERRED
"ADOFTVORRADIOTOODEARTOOSHORT
"NEEDSIMPLESTDOMAIN, RU 1937
"RU".

     

 

2. Domain Name and Registrar

The domain name in issue "CAMPYAHOO.COM". The registrar is Network Solutions, Inc. (NSI).

     

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received Yahoo!ís complaint on May 22, 2000 by email, and on May 24, 2000 via hard copy. 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 June 5, 2000.

The complaint identifies DomainCollection as Respondent and annexes as Exhibit 1 NSIís 05/19/2000 WHOIS page setting out Administrative Contact, Billing Contact, Technical Contact and Zone Contact for DomainCollection. The complaint states that a copy of the complaint has been sent by international certified mail, return receipt requested, to DomainCollection (paragraph 7).

On May 24, 2000, the Center transmitted via email to NSI a request for registrar verification in connection with this case. On June 4, 2000, NSI transmitted via email to the Center NSIís Verification Response, confirming that the registrant is DomainCollection, the contact information in the Exhibit 1 WHOIS page is correct, and "The domain name registration CAMPYAHOO.COM is in ĎActiveí status."

On May 24, 2000, the Center transmitted Acknowledgement [sic] of Receipt of Complaint via email and facsimile to DomainCollection. On May 24, 2000, the Center received an email from "MYINTERNET SUPPORT < support@myinternet.com>." "support@MYINTERNET.COM" is listed by NSI as an email address for Domain Collectionís Technical Contact and Zone Contact. The email requested the Center to keep the sender "informed of the outcome" with respect to the Acknowledgment of Receipt of Complaint transmitted by the Center earlier that day.

On June 5, 2000, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, via email and facsimile to Domain Collection. The Center advised that the response was due by June 24, 2000 and set out the consequences of default (e.g. an Administrative Panel will be appointed "to review the facts of the dispute and to decide the case").

On June 5, 2000, the Center received email advice that the Centerís June 5, 2000 email to "postmaster@campyahoo.com" could not be delivered.

On June 13, 2000, Yahoo! advised the Center via email that the copy of the complaint sent by Yahoo! to DomainCollection had been returned by the US Postal Service "because Respondentís address was incomprehensible."

The Center received no response to the complaint by June 24, 2000.

On June 26, 2000, Yahoo! advised the Center via email of two UDRP decisions relating to Yahoo! decided pursuant to the Centerís procedures.

On June 26, 2000, the Center transmitted Notification of Respondent Default via email and facsimile to DomainCollection , advising inter alia that the Center would appoint an Administrative Panel which "will decide in its sole discretion whether to consider your Response (if submitted later) in deciding the case."

On July 10, 2000, the Center advised the parties via email, and also via fax to Domain Collection, that David W. Plant (USA) had been appointed as the panelist in this proceeding, and absent exceptional circumstances, the Administrative Panelís decision is due July 23, 2000. Mr. Plant comprised the Administrative Panel in the two earlier Yahoo! matters pending before the Center.

Also, on July 10, 2000, the Center transmitted via email and fax to DomainCollection a copy of Transmission of Case File to Administrative Panel.

 

4. Factual Background; Partiesí Contentions

A. The Trademarks

The complaint (paragraph 29) 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. 2,042,222 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 29) that Yahoo! owns a pending trademark application, copy of a status report for which appears at Exhibit 7.

The foregoing service mark and trademark 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 29, second occurrence) that it owns the domain name YAHOO.COM, registered with NSI on January 18, 1995. Yahoo! uses that domain name alone and "in combination with numerous third-level domains, including camp.yahoo.com."

At paragraph 30, Yahoo! avers that its rights in its mark, trade name and domain name pre-date DomainCollectionís registration of the domain name in issue.

At paragraph 31, Yahoo! avers that its marks "enjoy unquestionable fame as a result of favorable public acceptance and recognition worldwide."

B. The Complaint

At paragraph 6, Yahoo! avers:

"a. The disputed Domain Name fully incorporates Complainantís valuable and famous trademark YAHOO! within the second-level domain name under the top level .COM, and fully incorporates Complainantís CAMP YAHOO! mark as well. Therefore, the disputed Domain Names [sic] are confusingly similar to Complainantís YAHOO! and CAMP YAHOO! marks 1.

"b. Respondent does not have rights or a legitimate interest in the Domain Name by virtue of the fact that Yahoo!ís YAHOO! mark is famous and it prominently uses its CAMP YAHOO! mark, and Respondentís use of Yahoo!ís marks is unauthorized.

"c. Respondentís registration and use of the Domain Name meets the bad faith requirement described in Paragraph 4(a) of the UDRP."

At paragraphs 11 - 26, Yahoo! describes its organization and its services. Relevant here, Yahoo! avers (paragraph 12) it has created "a beginner-level Internet education program, Camp Yahoo!." Yahoo! partners with non-profit organizations and government agencies to provide program materials to serve as a curriculum for beginner-level Internet training by "Camp Counsellors". A copy of the CAMP YAHOO! home page is at Exhibit 4. Approximately 1000 requests for the program materials have been received.

Paragraphs 13 and 14 summarize Yahoo!ís history. At paragraph 15, Yahoo! describes its Internet directory and search services. At paragraphs 16 - 18, Yahoo! describes its role in carrying advertising and reports its almost exponential growth in annual revenues.

Paragraphs 19 - 22 describe the popularity of the YAHOO! website, viz.: it has been "ranked number one among websites in numerous categories" (paragraph 19), it has been recognized with "numerous industry awards" (paragraph 20), the number of visits to the YAHOO! website has increased dramatically each year since Yahoo!ís inception with hundreds of millions of visits to the website each quarter (paragraph 21), and as of March 31, 2000 Yahoo! had over 145 million unique registered users (paragraph 22).

Paragraphs 23 - 26 describe the large variety of Yahoo! websites using "YAHOO!-formative trademaks and domain names," e.g. websites that are specific to particular countries, regions and cities, to particular topics or population groups, and to particular services. A printout from different sections of the Yahoo! website appear at Exhibit 5.

Paragraph 27 sets out the basis for concluding that the YAHOO! mark is famous.

At paragraph 28, Yahoo! avers DomainCollection is not and has never been authorized to use "the YAHOO! or CAMP YAHOO! marks."

At paragraphs 32 - 37, Yahoo! describes DomainCollectionís allegedly "infringing activities". The domain name in issue was registered with NSI on February 14, 2000 (paragraph 32). The domain name has not been used "in any manner since it was registered, other than as an item for sale or lease" (paragraph 33). The domain name in issue incorporates Yahoo!ís famous mark and "yahoo.com" domain name, and is virtually identical to Yahoo!ís CAMP YAHOO! domain name ("camp.yahoo.com") and is thus confusingly similar with the Yahoo! domain name (paragraph 34). DomainCollection "used and/or intends to use the Domain Name to divert Internet users attempting to reach YAHOO!ís sites and to trade on the goodwill of the famous Yahoo! marks and names" (paragraph 35). DomainCollection had actual knowledge of Yahoo!ís rights in its mark and domain name and registered the domain name "in bad faith to take advantage of the tremendous reputation and goodwill of the YAHOO! mark and name" (paragraph 36). DomainCollection "intentionally and willfully misrepresented to NSI that the registration of the 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." (paragraph 37).

At paragraphs 38 - 42, Yahoo! describes DomainCollectionís allegedly "bad faith" acts. DomainCollection "used and is using the Domain Name to intentionally attract, for commercial gain, a buyer or lessee of the Domain Name by creating a likelihood of confusion with Yahoo!ís YAHOO! and/or CAMP YAHOO! marks and domain names" in violation of the Section 4(b)(iv) of the Policy (paragraph 38). As shown by DomainCollectionís "scant and obfuscatory" address information, DomainCollection registered the domain name primarily to sell, rent or otherwise transfer it for valuable consideration, thus violating Section 4(b)(i) of the Policy (paragraph 39). DomainCollection registered the domain name under an "obviously phony" name and provided "obviously phony" contact information (paragraph 40). There is no plausible explanation for DomainCollectionís registration other than to trade upon the goodwill of Yahoo! and its famous and well-respected marks and names (paragraph 41). Finally, DomainCollection satisfies none of the factors set out in Section 4(c) of the Policy (paragraph 42).

In the final paragraph, Yahoo! requests that the domain name in issue be transferred immediately to Yahoo!.

C. The Response

The Center has received no response from DomainCollection.

     

 

5. Discussion and Findings

Paragraph 4.a. of the Policy directs that Yahoo! must prove, with respect to the domain name in issue, each of the following:

(i) The domain name in issue is identical or confusingly similar to Yahoo!ís trademark and service mark, and

(ii) Respondent 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 respondentís rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.

A. Identity or Confusing Similarity

Yahoo! urges inter alia that the domain name in issue "incorporates Yahoo!ís famous mark", is "virtually identical" to Yahoo!ís CAMP YAHOO domain name", and is "confusingly similar to Complainantís YAHOO! and CAMP YAHOO! marks." Thus YAHOO! must prove that the domain name in issue is either (1) "identicalí to Yahoo!ís trade mark and service mark or (2) confusingly similar to Yahoo!ís trademark and service mark. DomainCollectionís failure to respond does not relieve Yahoo! of its burden of proof on this element or on either of the other two elements of Paragraph 4(a) of the Policy. However, DomainCollectionís failure to deny any of Yahoo!ís averments permits this panel to take Yahoo!ís averments as true and to draw appropriate inferences.

We focus here only on Yahoo!ís YAHOO! mark. Yahoo!ís averments are insufficient to establish for purposes of this proceeding that CAMP YAHOO! is also a Yahoo! trademark or service mark.

The domain name in issue indisputably incorporates Yahoo!ís YAHOO! mark and indisputably is virtually identical to Yahoo!ís CAMP YAHOO domain name. At minimum, in light of the well-known status of Yahoo!ís mark with respect to a wide variety of Internet services and Yahoo!ís use of the mark as a part of its CAMP YAHOO domain name, DomainCollectionís CAMPYAHOO.COM domain name is confusingly similar to Yahoo!ís YAHOO! mark.

B. Rights or Legitimate Interests

On this record, no challenge has been leveled with respect to (1) the validity of any Yahoo! trademark or service mark, (2) Yahoo!ís rights in the YAHOO! mark with respect to Yahoo! services and goods, (3) the global fame and goodwill associated with the Yahoo! mark, or (4) any fact averred by Yahoo! as to promotion of marks, use of the marks, and total sales of services and goods under the marks.

No challenge has been leveled with respect to Yahoo!ís averments as to DomainCollectionís acts and intentions.

On this record, it is fair to conclude that Domain Collection has no rights or legitimate interests vis-a-vis the Yahoo! mark

C. Registration and Use in Bad Faith

Registration and use of the domain names in issue in bad faith are matters of the appropriate inferences to draw from circumstantial evidence. Each is to be proved by Yahoo!.

Yahoo! avers that the domain name in issue has not been used at all by DomainCollection (other than as bait for a buy-sell transaction), and there is no evidence to the contrary. The nonsensical address and contact information supplied by DomainCollection to NSI is evidence of bad faith both with respect to registration and use - there is no discernible good faith basis for providing such unintelligible and diversionary information if the registrant intends to register or to use the domain name in good faith. DomainCollectionís inclusion of "ForSaleLeaseCoOpOrAnyImaginatio" as part of its contact information supports the inference that DomainCollection registered the domain name for the purpose of selling it or otherwise trading on the Yahoo!ís goodwill.

Yahoo!ís uncontested averments, in light of the realities of the Internet world, compel the conclusion that the only reason DomainCollection registered CAMPYAHOO.COM was to trade in bad faith on the good will of Yahoo!ís widely known and highly respected mark.

D. Paragraph 4.c. Factors

With respect to the domain name in issue, by failing to respond to the complaint, Domain Collection has failed to prove any of the three circumstances set out in Paragraph 4.c. of the Policy, viz.:

(i) before any notice to DomainCollection of the dispute, DomainCollectionís use of or preparations to use the domain name were in connection with a bona fide offering of goods or services,

(ii) DomainCollection or a related entity has been commonly known by the domain name, and

(iii) DomainCollection 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."

As averred by Yahoo! and properly inferred from the undisputed facts as to DomainCollectionís conduct, each of these three factors must be resolved in favor of Yahoo!

     

 

6. Decision

The Panel has jurisdiction of this dispute. DomainCollection has received notice of the commencement of the proceeding, the Policy, the complaint, the consequences of Domain Collectionís default, and the appointment of the Panel. DomainCollection has been afforded due process.

In light of the findings by the Panel, the Panel decides that Yahoo! has met its burden of proving: (a) the CAMPYAHOO.COM domain name in issue is confusingly similar to the YAHOO! marks, (b) DomainCollection has no rights and no legitimate interest in respect of the domain name in issue, and (c) the domain name in issue has been registered and is being used by DomainCollection in bad faith.

Accordingly, the Panel requires that the registration of the CAMPYAHOO.COM domain name be transferred to Yahoo!.

 


 

David W. Plant
Presiding Panelist

Dated: July 21, 2000


 

Footnotes:

1. In this paragraph and in paragraphs 28 and 38, Yahoo! refers to its CAMP YAHOO! "mark." Yahoo! does not otherwise aver that CAMP YAHOO! comprises a trademark or a service mark.