WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. v. Casino Yahoo, Inc., Jon Maranda
Case No. D2000-0660
1. The Parties
The Complainant is Yahoo! Inc., a corporation organized under the laws of the State of Delaware, United States of America, having its principal place of business at 3420 Central Expressway, Santa Clara, California, United States of America.
The Respondents are Casino Yahoo, Inc., which initially gave no valid postal address to the Registrar, but whose contact information lists all contacts as Domain Hoster, 3480 Rene-Levesque West, Montreal, Quebec, Canada, and Jon Maranda, an individual who admitted to Complainant that he controlled casinoyahoo.com, giving an email address at email@example.com. For ease of reference, the respondents will be referred to, jointly and severally, as "Respondent."
2. The Domain Name
The domain name at issue is <casinoyahoo.com>, which domain name is registered with Network Solutions, Inc., located in Herndon, Virginia, United States of America.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on June 22, 2000, and the signed original together with four copies was received on June 27, 2000. The WIPO Center sent an Acknowledgment of Receipt to the Complainant, dated June 28, 2000.
On June 29, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain name at in issue is registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
On June 21, 2000, NSI confirmed by reply e-mail that the domain name <casinoyahoo.com> is registered with NSI, that it is currently in active status, that the Policy is in effect, and that the Respondent Casino Yahoo Inc is the current registrant of the name, giving an address of 3521 Cascade Ln, Milwaukee, Wisconsin, United States of America.
The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a sole Panelist were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on July 5, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of July 24, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI’s confirmation. In addition, the complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
On July 26, 2000, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.
On August 8, 2000, the WIPO Center received a communication from the Complainant, attaching an English translation of a communication received from Respondent Jon Maranda. An Acknowledgment of receipt of that communication was transmitted by the WIPO Center on August 9, 2000.
On August 14, 2000, in view of the Complainant's designation of a single Panelist, the WIPO Center appointed M. Scott Donahey to serve as sole Panelist.
4. Factual Background
Complainant first registered the trademark and service mark YAHOO on February 27, 1997, in connection with computer software for searching and retrieving information and related services with the United States Patent Office ("USPTO"), and has since registered the mark in connection with several other goods and services.
Complainant registered the domain name "yahoo.com" on January 18, 1995, and since has established a commanding and well-known presence on the World Wide Web.
Complainant began as a web directory and search engine in 1994, adopting the name "YAHOO!" in June of that year. Complainant derives revenues from, among other sources, the advertising on its site. In 1999, Complainant carried advertisements from more than 3,500 companies, including American Express, Apple, Colgate-Palmolive, Disney, The Gap, Honda, IBM, Lego, Microsoft, Procter & Gamble, Sony, and others.
In 1999, Complainant's revenues were in excess of US$588 million.
The price one can command for advertising placed on the World Wide Web depends on "hits" and/or "page views." A "hit" is defined as a user arriving at a given site. A "page view" is defined as one electronic page of information displayed in response to a user request. One "hit" or user visit can result in more than one page view. By either measure, Complainant's web site is consistently listed as the first or second most popular site on the World Wide Web.
Respondent registered the domain name at issue on May 2, 2000. Complainant first learned of such registration on June 1, 2000, when the URL was submitted by Jon Maranda to Complainant for its review and possible inclusion in Complainant's web directory.
Until on or about June 12, 2000, the domain name at issue resolved to a web site entitled "Casino Yahoo" that offered a free download of software which one could use to gamble online. Various games of chance such as blackjack, poker, roulette, keno, baccarat, and others were offered on the site. Complaint, Annex 12.
In response to a request from Complainant's Canadian affiliate made to the Administrative Contact, the site was cancelled as a violation of a Canadian law that prohibits gambling.
In an email transmitted on June 14, 2000, Jon Miranda sent Complainant a message that is largely unintelligible.
On June 30, 2000, Respondent Jon Maranda sent Complainant an email in the Korean language. The email stated in part (in the English translation): "And you'd better buy my domain if you need it desperately. I am always ready to sell it to you."
5. Parties’ Contentions
Complainant contends that Respondent has registered as a domain name a mark which is confusingly similar to the service mark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) That the Respondent has no legitimate interests in respect of the domain name; and,
Since it is likely that one who utilized Respondent's URL likely understood that the web site to which it resolved was owned, controlled or sponsored, in whole or in part, by the Complainant, the Panel finds that the domain name at issue is confusingly similar to Complainant's mark.
Complainant has alleged and Respondent has failed to deny that Respondent has no right or legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-007; Ronson Plc v. Unimetal Sanayai ve Tic.A.S., WIPO Case No. D2000-0011.
Respondent has been trading on the value established by Complainant in its marks to attract users to Respondent's web site. Clearly, Respondent has derived economic benefit from this practice, either by attracting users to Respondent's web site, where goods and services are offered, or by the receipt of compensation from the owner of the web site for delivering users to that site, if the site is owned or operated by someone other than Respondent.
This constitutes bad faith registration and use as defined by ¶4(b)(iv) of the Policy: "[T]he following circumstances …. shall be evidence of the registration and use of a domain name in bad faith . . . by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or a product or service on your web site or location."
While a user who arrived at the site might promptly conclude that it was not what he or she anticipated, Respondent would have already succeeded in its purpose of using the service mark to attract the user with a view to commercial gain. National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, ICANN Case No. D2000-0118.
The fact that the offending use of the web site ceased sometime prior to the issuance of the Panel's decision, as the result of actions taken in response to an intervention by Complainant, does not change the fact that the domain name at issue "has been registered and is being used in bad faith," since the phrase "is being used" has been interpreted to refer not to a particular point in time, but to any time during the period of time following registration of the domain name at issue. Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, ICANN Case No. D2000-0021.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is confusingly similar to the service marks in which the Complainant has rights, that the Respondent has no right or legitimate interest in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <casinoyahoo.com> be transferred to the Complainant.
M. Scott Donahey
Dated: August 24, 2000