WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Yahoo! Inc. and GeoCities v. Cupcakes, Cupcake city, Cupcake Confidential, Cupcake-Party, Cupcake Parade,and John Zuccarini

Case No. D2000-0777

 

1. The Parties

Complainants are Yahoo! Inc. ("Yahoo") and GoeCities ("GeoCities"). Yahoo! is a Delaware corporation with its principal place of business at 3420 Central Expressway, Santa Clara, California 95051, United States of America (USA). GeoCities is a Delaware corporation and a wholly-owned subsidiary of Yahoo!, sharing the same principal place of business. Respondents are Cupcakes, Cupcake City, Cupcake Confidential, Cupcake-Party, Cupcake Parade, and John Zuccarini. Respondentsí address is: 957 Bristol Pike Suite D-6, Andalusia, PA 19020, (USA).

 

2. The Domain Names and Registrars

This dispute concerns the following 27 domain names (the "Domain Names"), which are listed in alphabetical order with the Registrar (CORE or Network Solutions, Inc.):

Domain Name

 

Registrar

     

40CHATYAHOO.COM

-

CORE

GEOCITIESCHAT.COM

-

Network Solutions, Inc.

YAHOCHAT.COM

-

CORE

YAHOLAGANS.COM

-

CORE

YAHOLAGINS.COM

-

CORE

YAHOOCHATROOM.COM

-

Network Solutions, Inc.

YAHOOCLASSIFIED.COM

-

Network Solutions, Inc.

YAHOOE-MAIL.COM

-

Network Solutions, Inc.

YAHOOFINANCIAL.COM

-

Network Solutions, Inc.

YAHOOHOME.COM

-

Network Solutions, Inc.

YAHOOHOROSCOPES.COM

-

Network Solutions, Inc.

YAHOOLAGENS.COM

-

CORE

YAHOOLAGIN.COM

-

CORE

YAHOOLGAN.COM

-

CORE

YAHOOLGINS.COM

-

CORE

YAHOOLIGENS.COM

-

CORE

YAHOOLIGIN.COM

-

CORE

YAHOOLIGINS.COM

-

CORE

YAHOOLLIGANS.COM

-

CORE

YAHOOLOGINS.COM

-

CORE

YAHOOMESSANGER.COM

-

Network Solutions, Inc.

YAHOOMESSENGER.COM

-

Network Solutions, Inc.

YAHOOPEOPLESEARCH.COM

-

CORE

YAHOOSERCH.COM

-

CORE

YAHOOTRAVEL.COM

-

Network Solutions, Inc.

YAHOOVOICECHAT.COM

-

Network Solutions, Inc.

YAOOLIGANS.COM

-

CORE

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received Yahoo! and GeoCitiesí complaint by email on July 12, 2000 and in hard copy on July 17, 2000. The Center verified that the complaint satisfies the formal requirements of the ICANN Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Yahoo! and GeoCities made the required payment to the Center. The formal date of the commencement of this administrative proceeding is August 9, 2000.

Issuance of Complaint

The complaint indicates that WHOIS records for the Domain Names list all of the Respondents at the same address: 957 Bristol Pike Suite D-6, Andalusia, PA 19020, (USA) and the Complainants sent a copy of the complaint by certified mail to this address. John Zuccarni is the Administrative and Billing contact for all of the Domain Names. His email is JohnZ@cupcakeparty.com.

The complaint further indicates that all of the Domain Names have nearly identical CUPCAKE-formative registrant names, identical addresses, and nearly identical Administrative and Billing Contact information and that it is clear that all of the Domain Names were registered by the same person (namely, John Zuccarini) using fictitious registrant names.

Section 3(c) of the Rules provides that a complaint may relate to more than one domain name as long as the domain names are registered by the same domain-name holder. The Panel concludes in situations such as this one where it is clear that the same person is registering domain names using different fictitious names, it is appropriate to proceed in a single complaint against multiple registrant names.

Confirmation of Registration Details

On July 18, 2000 the Center transmitted via email to Network Solutions and CORE a request for registrar verification in connection with this case. On July 21, 2000 and August 4, 2000, Network Solutions, Inc. and CORE respectively transmitted by email to the Center their verification response confirming the registrations in paragraph 2 (above) and indicating that the Administrative and Billing contact is John Zuccarini.

Notification of Respondents

On August 9, 2000, the Center transmitted to JohnZ@cupcakeparty.com , Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the response was due by August 28, 2000.

On the same day, the Center transmitted both facsimile and hard copies via air mail/courier service, of the foregoing documents to:

John Zuccarini ( Cupcakes, Cupcake City, Cupcake Confidential, Cupcake-Party, Cupcake Parade)
957 Bristol Pike Suite D-6
Andalusia, PA 19020
U.S.A

Filing of Response

Respondents have filed no response. On August 29, 2000, the Center transmitted Notification of Respondent Default to Respondentsí by email to JohnZ@cupcakeparty.com .

Constitution of Administrative Panel

On September 19, 2000, the Center notified the parties via email that Mr. David Wagoner had been appointed as the panelist in this proceeding.

Compliance with the formalities of the Policy and the Rules

Upon review of the file, the Panel concludes that the Center has fully complied with the formalities of the Policy and Rules, that Respondents were given adequate notice of this proceeding, and that Respondents have been accorded due process.

 

4. Factual Background

Section 5 (e) of the Rules provides "If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint." Here there are no exceptional circumstances and therefore the Panel decides the dispute based upon the Complaint and the Exhibits attached thereto and finds the following facts as established.

Complainantsí Activities

Yahoo! and its Services

[21]* Yahoo! is a global Internet communications, commerce and media company that offers a branded network of searching, directory, information, communication, and shopping services to millions of Internet users daily. Yahoo!ís services include web directory and search services, Internet access, real estate and mortgage information and rate quotes, movie reviews, weather, yellow pages, directory services, maps, an online shopping mall, travel reservations, and classified advertising. The main YAHOO! site can be accessed at the URL http://www.yahoo.com.

[22] Yahoo! also offers the following services:

- travel-related information and services at its YAHOO! TRAVEL page, located at the URL http://travel.yahoo.com

- instant electronic messaging services at the YAHOO! MESSENGER page, located at the URL http://messenger.yahoo.com

- music-related services including providing an MP3 and music video player and downloads at the YAHOO! MUSIC page, located at the URL http://music.yahoo.com and at other websites within the Yahoo! network

- online chat services at the YAHOO! CHAT page, located at the URL http://chat.yahoo.com

- free e-mail services at the YAHOO! MAIL page, located at the URL http://mail.yahoo.com

- online games at the YAHOO! GAMES page, located at the URL http://games.yahoo.com

- financial information and stock quotes at its YAHOO! FINANCE page, located at the URL http://finance.yahoo.com

- auction services at its YAHOO! AUCTIONS page, located at the URL http://auctions.yahoo.com

- electronic greeting card services at its YAHOO! GREETINGS page, located at the URL http://greetings.yahoo.com

- credit card services including a YAHOO! VISA card located at the URL http://visa.yahoo.com

- horoscopes and astrological information at its YAHOO! ASTROLOGY page, located at the URL http://entertainment.yahoo.com/astrology

- a childrenís version of many of its services at the YAHOOLIGANS! page, located at the URL http://www.yahooligans.com.

- [23] Yahoo! began as a web directory and search engine. Yahoo!ís web directory was developed in early 1994. In March 1994 the directory of websites was made available on the Internet free of charge.

- [24] Yahoo!ís web directory was initially called "Jerry and Davidís Guide to the World Wide Web." A short time later, in June 1994, the name was changed to "YAHOO!".

- [25] Yahoo!ís Initial Public Offering of stock was in April 1996. Yahoo! currently has a market capitalization of approximately U.S. $80 billion.

- [26] Yahoo!ís 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. The YAHOO! web directory and search services allow users to quickly locate information on the Internet by typing in a word or words relating to the subject matter of interest to the user.

- [27] Yahoo! also sells advertising on its site. Much of the advertising consists of banner advertisements that appear on the top of directory pages within the YAHOO! website. A "hypertext link" is embedded in each banner advertisement, which allows the user to click on the banner and instantaneously access the advertiserís own website to obtain additional information or to purchase products or services. In addition to banner advertisements, Yahoo! also sells merchandising units, sponsorships, and promotions, and also sends targeted direct e-mail advertisements to registered users who have opted to receive such e-mails.

- [28] Yahoo! carried the advertisements of more than 200 companies in 1996, more than 1,750 companies in 1998, and more than 3,500 companies during 1999. Among the companies that have advertised their products or services on the YAHOO! site are American Express, Apple, Colgate-Palmolive, Disney, The Gap, Honda, IBM, Lego, Microsoft, Procter & Gamble, Sony, Swatch, Toshiba, and Visa.

- [29] Nearly all of Yahoo!ís current Internet services are offered to the public free of charge, its income being primarily derived from the sale of advertising and co-branding or sponsorship agreements with other companies. Yahoo! also receives revenues from certain electronic commerce transactions originating from the Yahoo! site. Yahoo! also sells merchandise bearing the YAHOO! mark such as clothing, hats, posters, watches, clocks, duffel bags, baseballs, and the like. Yahoo!ís revenues have skyrocketed since it started accepting advertising in August 1995. Revenues were $1,666,000 in 1995 and $588,608,000 in 1999.

- [30] The YAHOO! website has become incredibly popular, with traffic of Internet users to the site increasing rapidly. The YAHOO! site is one of the leading Internet web guides in terms of traffic, advertising, household and business user reach, and the YAHOO! trademark is one of the most recognized brands associated with the Internet. The site has also been ranked number one among websites in numerous categories including the Arts, Entertainment, Finance, Health and Fitness, News, Regional/Local Content, Politics, Shopping, and Travel. The YAHOO! mark is unique and not diluted.

- [31] The number of visits to the YAHOO! website has increased dramatically since Yahoo!ís inception. In 1996, for example, the YAHOO! website was averaging 8 million "page views" per day. This translates into tens of millions of discrete visits to the YAHOO! site every month. Yahoo! has consistently been listed first or second on Web21ís list of top 100 websites at its 100Hot.com site, which provides weekly rankings of the Webís 100 most popular sites. According to a November 1999 report from the Web market research firm Media Metrix, the Yahoo! network of properties was ranked number two in reach among work users (62.3%), second in home reach (57.5%), and second in combined work/home reach (64.7%) during that month.

- [32] Since its inception, the YAHOO! website has been recognized with numerous industry awards, including the 1998 "Entrepreneurial Company of the Year" award from Harvard Business School, the "Best of the Net Ď97" award from Internet World magazine, and the 1998 "ASAP - Number One Internet Services and Content" from Forbes magazine.

- [33] As of March 31, 2000, Yahoo! had over 145 million unique registered users, i.e., users who register with Yahoo! in order to participate in Yahoo!ís registered member services, including shopping, auctions, classifieds, e-mail, clubs, calendars, message boards, chat rooms, and more.

- [34] In addition to the variety of services offered at Yahoo!ís main site located at the domain name YAHOO.COM, Yahoo! operates many additional sites under the YAHOO! mark and using YAHOO-formative trademarks and domain names. Yahoo! has sites that are specific to particular countries or regions, such as China (YAHOO.COM.CN), Taiwan (YAHOO.COM.TW), Hong Kong (YAHOO.COM.HK), Japan (YAHOO.CO.JP), Canada (YAHOO.CA), Mexico (YAHOO.COM.MX), the United Kingdom (YAHOO.CO.UK), France (YAHOO.FR), Korea (YAHOO.CO.KR), Australia and New Zealand (YAHOO.COM.AU), Denmark (YAHOO.DK), Germany (YAHOO.DE), Norway (YAHOO.NO), Sweden (YAHOO.SE), and others. Yahoo! also has sites directed to particular U.S. cities, including New York City (NYC.YAHOO.COM), Washington, D.C. (DC.YAHOO.COM), Miami (MIAMI.YAHOO.COM), Atlanta (ATLANTA.YAHOO.COM), Boston (BOSTON.YAHOO.COM), Los Angeles (LA.YAHOO.COM), Seattle (SEATTLE.YAHOO.COM), and others.

- [35] YAHOO! operates other sites specific to particular topics or population groups, such as the YAHOO! Chinese site which is directed to Chinese speakers around the world (CHINESE.YAHOO.COM), the YAHOO! en Español site which is directed to Spanish speakers around the world (ESPANOL.YAHOO.COM), and the YAHOOLIGANS! site which is specifically designed for children aged 7-12 (YAHOOLIGANS.COM). Yahoo! has operated the YAHOOLIGANS! website since 1996. The YAHOOLIGANS! website received FamilyPC magazineís "Best of the Web Award," and in July/August 1998 was ranked the number one Internet navigational guide for kids. Since its launch, traffic to the YAHOOLIGANS! site has rapidly increased each year. The average number of page views per month were 3.8 million in 1997. From January to May 2000, the YAHOOLIGANS! site has received an average of 56.7 million page views per month.

- [36] Yahoo! offers a wide variety of services using the YAHOO! mark together with a descriptive name of its services. Other examples include YAHOO! Photos, YAHOO! Address Book, YAHOO! Calendar, YAHOO! Bill Pay, and YAHOO! Store.

- [37] There are millions of links to "YAHOO.COM" from third-party websites. A search for links to "YAHOO.COM" on the AltaVista search engine revealed nearly 14 million web pages.

- [38] By virtue of the arbitrary nature and hence the inherent strength of the YAHOO! mark as applied to Yahoo!ís services; the millions of visitors to the YAHOO! network of websites every day; the millions of links to the YAHOO! site from third-party websites; and Yahoo!ís extensive use, promotion, and registration of its YAHOO! mark, the YAHOO! mark and YAHOO.COM domain name have become famous.

- [39] Two WIPO Administrative Panel decisions have also found the YAHOO! mark to be famous and widely-known among millions of Internet users

- [40] Respondents are not and have never been licensees of Yahoo! Respondents are not and have never been otherwise authorized by Yahoo! to use the YAHOO! Marks.

GeoCities and its Services

- [45] GeoCities is one of the leading hosts of personal home pages on the Internet and owner of the internationally famous GEOCITIES trademark and trade name. The GEOCITIES website can be accessed at the URL http://www.geocities.com.

- [46] GeoCities hosts the websites of others, provides online tools for the creation and maintenance of websites, and communicates information relating to a wide variety of subjects through a global computer network. GeoCities has used its GEOCITIES mark and GEOCITIES.COM domain name to identify its Internet website development and hosting services since at least as early as February 1995.

- [47] The explosive growth of the Internet has resulted in a large number of people seeking to create websites to post personal information on the Web. GeoCities provides a place where users can easily do so, free of charge. GeoCities provides tools that assist users in creating and enhancing their personal web pages.

- [48] GeoCitiesí website is divided into "neighborhoods" which are arranged by general topics such as Art and Literature, Education, and Entertainment. Each neighborhood functions as a themed community where users of GeoCitiesí web hosting services may "park" their websites according to their interests.

- [49] GeoCities presently has more than 7,775,000 homesteaders (i.e., those who have signed up with GeoCities for full access to all GeoCities services, including web hosting). In March 2000, the entire GEOCITIES website received over 1.7 billion page hits, while the GEOCITIES home page alone received in excess of 50 million page hits.

- [50] GeoCities also sells advertising on its site. Much of the advertising consists of banner advertisements that appear on the top of pages within the GEOCITIES website. A "hypertext link" is embedded in each banner advertisement, which allows the user to click on the banner and instantaneously access the advertiserís own website to obtain additional information or to purchase products or services.

- [51] GeoCities carried the advertisements of 357 companies during 1998 and carried the advertisements of 390 companies during the first half of 1999. Among the companies that have advertised their products or services on the GEOCITIES site are E-Trade, CDnow, Microsoft, ABC, Disney, ESPN, Amazon.com, and Women.com.

- [52] Nearly all of GeoCitiesí current Internet services are offered to the public free of charge, its income being primarily derived from the sale of advertising and co-branding or sponsorship agreements with other companies.

- [53] GeoCitiesí revenues have increased exponentially since the site was launched in 1995. Revenues were $46,000 in 1995 and $18,359,000 in 1998. GeoCities was acquired by Yahoo! on May 28, 1999, and has been operated as a wholly-owned subsidiary of Yahoo! since then. At the time the acquisition was announced in January 1999, GeoCities hosted more than 3,500,000 websites. That number had more than doubled to 7,775,000 by April 2000.

- [54] The GEOCITIES mark has appeared in the website address of each and every one of the approximately 7,775,000 users of GeoCitiesí web hosting services since the launch of GeoCities. In each case, the URL of the site begins with the domain name "http://www.geocities.com" followed by the user name (e.g., http://www.geocities.com/johnsmith).

- [55] There are millions of links to "GEOCITIES.COM" from third-party websites. A search for links to "GEOCITIES.COM" on the AltaVista search engine revealed over 22 million web pages.

- [56] GeoCities has received extensive unsolicited media attention since its inception in 1995. For example, a search for the name "GeoCities" on the NEXIS database, which contains stories from newspapers and other periodicals as well as newswire services, revealed over 13,000 stories between July 1995 and April 2000

- [57] By virtue of the inherent strength of the GEOCITIES mark as applied to GeoCitiesí services; the millions of visitors to the GEOCITIES website every day; the millions of links to the GEOCITIES site from third-party websites; and GeoCitiesí extensive use, promotion, and registration of its GEOCITIES mark, the GEOCITIES mark and GEOCITIES.COM domain name have become famous.

- [58] Respondents are not and have never been licensees of GeoCities. Respondents are not and have never been otherwise authorized by GeoCities to use the GeoCities Marks.

Complainantsí Trademarks

YAHOO!ís trademark holdings

- [41] Yahoo! is the owner of the following federal trademark registrations and application:

(i) Registration No. 2,040,222 for the mark YAHOO!, filed January 24, 1996, issued February 25, 1997, covering computer software for searching and retrieving information, sites, and other resources on computer networks; computer software, namely, a directory of information, sites, and other resources available on computer networks in International Class 9; books regarding computer networks and searching and retrieving information, sites, and other resources on computer networks in International Class 16; promoting the goods and services of others by placing advertisements and promotional displays in an electronic site accessed through computer networks in International Class 35; computer services, namely, creating indexes of information, sites, and other resources available on computer networks; searching and retrieving information, sites, and other resources available on computer networks for others; providing an online link to news, weather, sports, current events, and reference materials in International Class 42.

(ii) Registration No. 2,040,691 for the mark YAHOO! (stylized), filed April 24, 1996, issued February 25, 1997, covering computer services, namely, creating indexes of information, sites, and other resources available on computer networks; searching and retrieving information, sites, and other resources available on computer networks for others; providing an online link to news, weather, sports, current events, and reference materials in International Class 42.

(iii) Registration No. 2,076,457 for the mark YAHOO!, filed January 24, 1996, issued July 1, 1997, covering magazines regarding computer networks and searching and retrieving information, sites, and other resources on computer networks in International Class 16.

(iv) Registration No. 2,159,115 for the mark YAHOO!, filed August 13, 1997, issued May 19, 1998, covering electronic mail services in International Class 38.

(v) Registration No. 2,187,292 for the mark YAHOO!, filed February 28, 1997, issued September 8, 1998, covering online computer services, namely, providing information regarding the goods and services of others in the nature of a buyersí guide, by means of a global computer network in International Class 42.

(vi) Registration No. 2,243,909 for the mark YAHOO!, filed May 25, 1995, issued May 4, 1999, covering posters, in International Class 16; shirts, sweatshirts, jackets, visors, and hats in International Class 25.

(vii) Registration No. 2,243,823 for the mark YAHOO!, filed October 20, 1997, issued May 4, 1999, covering credit card services in International Class 36.

(viii) Registration No. 2,273,128 for the mark YAHOO!, filed May 25, 1995, issued August 24, 1999, covering computer software for use as a screen saver in International Class 9; housewares, namely, cups and mugs in International Class 21; demographic consultation services in International Class 35.

(ix) Registration No. 2,088,882 for the mark YAHOOLIGANS! and Design, filed March 28, 1996, issued August 19, 1997, covering promoting the goods and services of others by placing advertisements and promotional displays in an electronic site accessed through computer networks in International Class 35; computer services, namely, creating indexes of information, sites, and other resources available on computer networks; searching and retrieving information, sites, and other resources available on computer networks for others; providing an online link to news, weather, sports, current events, and reference materials; and club services relating to web searching and web site information in International Class 42.

(x) Registration No. 2,280,143 for the mark YAHOOLIGANS!, filed February 12, 1996, issued September 21, 1999, covering computer software for searching and retrieving information, sites, and other resources on computer networks, software, namely, a directory of information, sites, and resources available on computer networks in International Class 9; books and magazines regarding computer networks and searching and retrieving information, sites, and other resources on computer networks; posters in International Class 16; clothing, namely, T-shirts in International Class 25; promoting the goods and services of others by placing advertisements and promotional displays in an electronic site accessed through computer networks in International Class 35; computer services, namely, creating indexes of information, sites, and other resources available on computer networks; searching and retrieving information, sites, and other resources available on computer networks for others; providing an online link to news, weather, sports, current events, and reference materials in International Class 42.

(xi) Application No. 75/536,236 for the mark YAHOO!, filed August 13, 1998, covering computer software for providing multiple-user access to computer networks; and computer software for use in creating and designing web sites in International Class 9; online retail and mail order services in the field of general consumer merchandise; directory services to help locate people, places, organizations, phone numbers, home pages, and electronic mail address; promoting the web sites of others, namely, distributing advertising for others via an online electronic communications network in International Class 35; telecommunications services, namely, providing telephone communications via computer networks; electronic transmission of data, images, and documents via computer terminals and networks; and broadcasting services, namely, audio broadcasting, radio broadcasting, cable television broadcasting, television broadcasting, and video broadcasting in International Class 38; making reservations and bookings for transportation and online reservations and bookings for transportation in International Class 39; computer services, namely, providing multiple-user access to computer networks for the transfer and dissemination of a wide range of information; providing a wide range of general interest information via computer networks; computer bulletin and message boards in the fields of general interest; design, creation, hosting, maintenance, consulting, and technical assistance in the fields of designing, creating, hosting, maintaining, operating, managing, advertising, and marketing of online commerce web sites; providing online facilities for real-time interaction with other computer users concerning topics of general interest and for playing games; making reservations and bookings for temporary lodging and online reservations and bookings for temporary lodging and online reservations and bookings for temporary lodging; and club services relating to web searching and web site information in International Class 42.

Although these registrations issued in the name of Yahoo! Inc. (a California corporation), they are now owned by Yahoo! Inc. (a Delaware corporation) by virtue of the recordation of the merger of the California corporation into the Delaware corporation on May 18, 1999.

- [42] Yahoo! owns the domain name YAHOO.COM. The YAHOO.COM domain name was registered with Network Solutions, Inc. on January 18, 1995 and has been used to identify the YAHOO! website since on or about that date. Yahoo! also owns the domain name YAHOOLIGANS.COM. The YAHOOLIGANS.COM domain name was registered with Network Solutions, Inc. on January 26, 1996 and has been used to identify the YAHOOLIGANS! website since on or about that date.

- [43] Yahoo!ís trademark rights in the marks YAHOO! and YAHOOLIGANS! and variations thereof, based on its trademark filings and on its common law rights acquired through the use of the YAHOO! and YAHOOLIGANS! marks and domain names, and the YAHOO! trade name predate the registration of the Domain Names by Respondents.

- [44] Having been used by YAHOO! in connection with its Internet-based business since 1994, and having been widely promoted and advertised among members of the general consuming public, the YAHOO! Marks have become valuable property of Yahoo!. Furthermore, the YAHOO! Marks enjoy unquestionable fame as a result of favorable public acceptance and recognition worldwide. The YAHOOLIGANS! trademark is also famous.

GeoCitiesí Trademark Holdings

- [59] GeoCities is the owner of U.S. Trademark Registration No. 2,124,762 for the mark GEOCITIES covering "dissemination of advertising for others via on-line electronic communications network" in Class 35, and "computer services, namely, hosting the web sites of others on a computer server for a global computer network; creating and maintaining web sites for others; providing on-line facilities for real-time interaction with other computer users concerning topics of general interest" in Class 42. This registration issued on December 30, 1997, and is based on an application filed on December 19, 1995. GeoCities also owns trademark registrations and/or applications for the mark GEOCITIES in approximately 14 other countries.

- [60] GeoCities also owns the domain name GEOCITIES.COM. The GEOCITIES.COM domain name was registered with Network Solutions, Inc. on December 15, 1995 and has been used to identify the GEOCITIES website since from about that date to the present. Internet users have also been able to access the GEOCITIES website through YAHOO!ís website located at http://www.yahoo.com since approximately June 1999.

- [61] GeoCitiesí trademark rights in the mark GEOCITIES and variations thereof, based on its trademark filings and on its common law rights acquired through the use of the GEOCITIES mark, trade name, and domain name since 1995, predate the registration of the Domain Names by Respondents.

- [62] Having been used by GeoCities in connection with its Internet-based business since 1995, and having been widely promoted and advertised among members of the general consuming public, the GEOCITIES mark and name is a valuable property of GeoCities. Furthermore, the GeoCities Marks enjoy unquestionable fame as a result of favorable public acceptance and recognition worldwide.

Respondentsí Activities

- [63] Respondents registered the Domain Names as set forth in Paragraph 2 above.

- [64] When entered into a browser, six of the Domain Names redirect to a particular section of YAHOO!ís website:

(i) the YAHOOMESSENGER.COM and YAHOOMESSANGER.COM domain names redirect to the YAHOO! MESSENGER site at http://messenger.yahoo.com

(ii) the YAHOOHOROSCOPES.COM domain name redirects to the YAHOO! ASTROLOGY site at http://entertainment.yahoo.com/astrology

(iii) the YAHOOTRAVEL.COM domain name redirects to the YAHOO! TRAVEL site at http://travel.yahoo.com

(iv) the GEOCITIESCHAT.COM domain name redirects to the YAHOO! CHAT site at http://chat.yahoo.com

(v) the YAHOOSERCH.COM domain name redirects to the main YAHOO! page at http://www.yahoo.com.

(vi) the GEOCITIESCHAT.COM domain name currently redirects only to YAHOO!ís website, and does not redirect to Respondentsí "pop-up" websites.

At the same time these domain names redirect to various pages of the YAHOO! website, additional windows "pop-up" containing websites and advertisements of third parties for various goods and services including credit card services, auction services, online greeting card services, free music videos and MP3s, and downloadable games. Yahoo! offers all of these goods and services at the Yahoo! website. Furthermore, when users attempt to click "back" on their browserís main window, additional windows open containing these third-party websites and advertisements.

- [65] The following thirteen Domain Names redirect directly to Respondentsí numerous "pop-up" windows, and do not forward the user to Yahoo!ís websites:

40CHATYAHOO.COM

YAHOCHAT.COM

YAHOLAGANS.COM

YAHOLAGINS.COM

YAHOOLAGENS.COM

YAHOOLGAN.COM

YAHOOLGINS.COM

YAHOOLIGENS.COM

YAHOOLIGINS.COM

YAHOOLLIGANS.COM

YAHOOLOGINS.COM

YAHOOVOICECHAT.COM

YAOOLIGANS.COM

- [66] The following Domain Names are currently inactive:

YAHOOCHATROOM.COM

YAHOOCLASSIFIED.COM

YAHOOE-MAIL.COM

YAHOOFINANCIAL.COM

YAHOOHOME.COM

YAHOOLAGIN.COM

YAHOOLIGIN.COM

YAHOOPEOPLESEARCH.COM.

- [67] As a result of Respondentsí webforwarding activities, Internet users may mistakenly enter one of Respondentsí Domain Names and be forwarded to YAHOO!ís or GeoCitiesí own websites. However, when the additional windows "pop-up" containing advertisements for third-party goods and services, these Internet users are likely to be misled into believing that Yahoo! or GeoCities sponsors or endorses those advertisers and their goods and services. Respondents maliciously prey upon Internet users who may not realize that they made an error in the domain name. Indeed, Internet users will likely not know they made an error in the domain name because they actually reached YAHOO!ís site. Similarly, Internet users redirected to Respondentsí "pop-up" websites will mistakenly believe they have reached YAHOO! or GeoCities given the similarity in names and that the products or services offered in the "pop-up" sites are also offered by YAHOO! and/or GeoCities.

- [68] In fact, Respondentsí activities have caused actual confusion. An example is e-mail correspondence between a YAHOO! Travel user and Yahoo!ís customer service department, where the user has apparently been accessing Yahoo!ís travel services by mistyping Respondentsí YAHOOTRAVEL.COM domain name instead of the correct TRAVEL.YAHOO.COM domain name. Unaware that he is incorrectly accessing YAHOO!ís travel services, the user notes that Respondentsí "pop-up" pages are "quite annoying and really [jams] up your page. It makes it quite difficult to do business with your company at times."

- [69] Respondentsí "pop-up" websites directly and unfairly compete with Yahoo! and GeoCities by offering services identical or closely related to those offered by Complainants. Internet users attempting to locate YAHOO!ís or GeoCitiesí services might instead choose to use or purchase the services offered by the third-party advertisers featured in Respondentsí "pop-up" windows. Rather than advertising and promoting their own brands, Respondents registered derivations of the YAHOO! Marks, the YAHOOLIGANS! mark, and GeoCities Marks to deprive Complainants of the Internet traffic and potential revenues rightly intended for Complainants, thereby disrupting Complainantsí businesses.

- [70] On March 29, 1999, YAHOO!ís outside trademark counsel sent a cease and desist letter to John Zuccarini, demanding that he discontinue linking the YAHOOTRAVEL.COM domain name to a website offering pornography, and transfer the domain name to YAHOO!. On March 31, 1999, Zuccarini sent a reply, stating that forwarding it to a pornographic website was a mistake, that he redirected the domain name to YAHOO!ís travel site, and that he would initiate the procedure to transfer the domain name to YAHOO!.

- [71] Subsequently, Yahoo!ís outside trademark counsel followed up numerous times with Zuccarini regarding transfer of the YAHOOTRAVEL.COM domain name. However, Zuccarini never sent the Registrant Name Change Agreement forms as promised.

- [72] On June 9, 1999, Yahoo!ís outside trademark counsel followed up with Zuccarini again after discovering that he owned numerous other YAHOO-formative domain names. Zuccarini subsequently deactivated several of the YAHOO-formative domain names, but did not transfer them to Yahoo! as promised during the course of communications with Yahoo!ís outside trademark counsel. In fact, Zuccarini continued to register new YAHOO-formative domain names despite Yahoo!ís numerous and clear objections to his registration and use of YAHOO-formative domain names.

- [73] Respondents are known prolific cybersquatters that register domain names consisting of well-known trademarks owned by others and celebrity names, and typographical misspellings and phonetic misspellings of well-known trademarks owned by others and celebrity names.

- [74] In addition to their misappropriation of the famous YAHOO!, YAHOOLIGANS!, and GEOCITIES marks, Respondents have registered variations of the following famous trademarks, trade names, and celebrity names as domain names: DISNEY, SONY, BLUE MOUNTAIN ARTS, HEWLETT-PACKARD, NATIONAL CAR RENTAL, BRITNEY SPEARS, SALMA HAYEK, OPRAH WINFREY, JENNIFER LOPEZ, STAR WARS, MAYO CLINIC, MICHAEL JORDAN, ALLY MCBEAL, RICKY MARTIN, USA TODAY, TACO BELL, AUSTIN POWERS, MICROSOFT, and PLAYBOY.

- [75] A United States Federal District Court recently found John Zuccariniís activities to constitute "cybersquatting" under the Anticybersquatting Consumer Protection Act. In Shields v. Zuccarini, 54 U.S.P.Q.2d 1166 (E.D. Pa. 2000), the court found that Zuccariniís registration of domain names containing variations of the famous JOE CARTOON mark, and use of the domain names to identify websites featuring advertisements for other websites and credit card companies constituted a bad faith intent to profit. The court also noted that as a result of misdirecting Internet users to his sites where they are forced to view advertisements, Zuccarini makes nearly $1 million per year from such activities.

- [76] Respondents have been the subject of four administrative decisions under the Policy, finding that they had registered and used domain names containing the well-known trademarks of others in bad faith.

- [77] Respondents use and/or intend to use the Domain Names, all identical or confusingly similar variations of the famous YAHOO!, YAHOOLIGANS!, and/or GEOCITIES marks, trade names, and domain names, to divert Internet users attempting to reach the Complainantsí websites and to trade on the tremendous goodwill of the Complainantsí marks and names.

- [78] It would appear that at the time that Respondents registered the Domain Names, they had actual knowledge of Yahoo!ís rights to the YAHOO! mark and YAHOO.COM domain name and the YAHOOLIGANS! mark and YAHOOLIGANS.COM domain name, and registered the Domain Names in bad faith to take advantage of the tremendous reputation and goodwill of the YAHOO! mark and name. Respondents had actual notice of Yahoo!ís rights in the YAHOO! mark and name for any domain names registered after March 29, 1999 as a result of Yahoo!ís counselís March 29, 1999 letter to Zuccarini. Likewise, it would appear that, at the time that Respondents registered the Domain Names, they had actual knowledge of GeoCitiesí rights to the GEOCITIES mark and GEOCITIES.COM domain name and registered the GEOCITIESCHAT.COM domain name in bad faith to take advantage of the tremendous reputation and goodwill of the GEOCITIES mark and name.

- [79] It would appear that at the time that Respondents registered the Domain Names, Respondents intentionally and willfully misrepresented to Network Solutions, Inc. and CORE that the registration of the Domain Names did not interfere with or infringe upon the rights of any third parties and that the Domain Names were not being registered for any unlawful purpose.

 

5. Partiesí Contentions

The Complaint alleges that this dispute is subject to a mandatory Administrative Proceeding as provided for in Section 4(a) of the Policy because;

(i) Fourteen of the Domain Names fully incorporate Yahoo!ís valuable and famous trademark YAHOO! or a misspelling of the YAHOO! mark within the second-level domain name under the top level .COM, and are confusingly similar to Complainantís YAHOO! mark.

(ii) Twelve of the Domain Names consist of a typographical misspellings of YAHOOLIGANS! within the second-level domain name under the top level .COM, and are confusingly similar to YAHOO!ís YAHOOLIGANS! mark.

(iii) One of the Domain Names fully incorporates GeoCitiesí valuable and famous trademark GEOCITIES within the second-level domain name under the top level .COM, and is confusingly similar to GeoCitiesí GEOCITIES mark.

(iv) Respondents do not have rights or a legitimate interest in the Domain Names by virtue of the fact that they contain and trade on the goodwill of Complainantsí famous YAHOO!, YAHOOLIGANS! and GEOCITIES marks, and Respondentsí use of those marks is unauthorized.

(v) Respondentsí registration and use of the Domain Names meet the bad faith requirement described in Paragraph 4(a) of the Policy.

(vi) Facts in support of these contentions are set forth in paragraph 4 of this Decision.

(vii) As a remedy, Complainants request that all of the domain names be immediately transferred to Yahoo!.

The Response

Respondents have filed no response and are in default under Sections 5 and 14 of the Rules.

 

6. Discussion and Findings

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

(1) The domain name in issue is identical or confusingly similar to the Complainantsí trademarks and

(2) Respondents have no rights or legitimate interests in respect of the name, and

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

Identical or Confusingly Similar Domain Names

Complainants have proved that Respondentsí Domain Names are identical or confusingly similar to trademarks in which Complainants have rights.

(1) The trademarks and websites of YAHOO!, Yahooligans! and GeoCities

- are well and favorably known worldwide,

- are associated with goods and services offered over the internet

- are regularly seen and seen by millions of people

- are valuable property and famous.

(2) Fourteen of the Domain Names fully incorporate YAHOO!ís valuable and famous trademark YAHOO! or a misspelling of the YAHOO! mark within the second-level domain name under the top level .COM, and are confusingly similar to Complainantís YAHOO! mark.

(3) Twelve of the Domain Names consist of a typographical misspellings of YAHOOLIGANS! within the second-level domain name under the top level .COM, and are confusingly similar to Yahoo!ís YAHOOLIGANS! mark.

(4) One of the Domain Names fully incorporates GeoCitiesí valuable and famous trademark GEOCITIES within the second-level domain name under the top level .COM, and is confusingly similar to GeoCitiesí GEOCITIES mark.

(5) Significant numbers of internet users who are familiar with the terms YAHOO!, Yahooligans!, and GeoCities are likely to regard Respondents Domain names as related to, affiliated with, or endorsed by Yahoo! or GeoCities.

(6) Respondentsí webforwarding activities are likely to mislead internet users into believing that products and services offered by Respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered.

(7) Respondents activities have in fact caused confusion.

(8) Confusing similarity depends on similarity of mark and terms, similarity of products and services, similarity of distribution channels, similarity of users, etc. Respondents have intentionally tried to benefit from all of these similarities. Respondents Domain Names are confusingly similar.

Respondentsí Rights or Legitimate Interests in the Domain Names

Paragraph 4.c of the Policy sets out the circumstances which if proved not to exist by Complainant demonstrate that Respondents have no rights or legitimate interests in the domain names for purpose of Paragraph 4(a)(ii) of the Policy. The evidence presented demonstrates that Respondents do not meet any of the criteria.

(1) Respondents are not using and have not used or are not demonstrating and have not demonstrated an intent to use the Domain Names in connection with a bonafide offering of goods and services. The evidence indicates that any offering of goods or services by Respondents is not bonafide but is instead a bad faith effort to trade upon and take advantage of Complainantsí trademarks, reputation and valuable interests.

(2) Respondents are not and have not been commonly known by the Domain Names. The evidence indicates that all of the Domain Names are registered by the same person, Respondent John Zuccarini using fictitious registration names such as Cupcakes, Cupcake City, Cupcake Confidential, Cupcake-Party and Cupcake Parade. There is no evidence that any of the Respondents have been commonly known by the Domain Names.

(3) Respondents are not making legitimate non commercial or fair use of the Domain Names, without intending to mislead and divert customers or to tarnish Complainants marks for commercial gain. The overwhelming evidence is that Respondents were in fact intending to mislead and divert customers and to tarnish the Complainantsí marks for commercial gain.

In summary, Complainants have proved that Respondents have no rights or legitimate interests in respect of the Domain Names. Although the Panel has no doubt on this score, section 14(e) of the Policy provides that in the event of default "in the absence of exceptional circumstances", the Panel "shall draw such inferences therefrom as it considers appropriate". Here there are no exceptional circumstances and the Panel draws the inference that Respondents have no rights or legitimate interests in respect of the Domain Names, confirming what the evidence clearly demonstrates.

Domain Names Registered and Used in Bad Faith

Complainant has proved that the Domain Names have been registered and are being used in bad faith as required by paragraph 4 of the Policy. The evidence overwhelmingly demonstrates that:

(1) Respondentsí registration and use of the Domain Names is part of a pattern of registering domain names that have incorporated othersí trademarks and famous names, section 4(b)(ii) of the Policy

(2) Respondents use the Domain Names to intentionally attract, for commercial gain, internet users to their websites by creating a likelihood of confusion with Complainantsí marks as to the source, sponsorship, affiliation and endorsement of Respondentsí websites, advertisements and services offered on those sites, section 4(b)(iv) of the policy.

(3) Respondentsí registration and use of the Domain Names was primarily for the purpose of disrupting the business of competitors, section 4(b)(iii)

(4) There is no plausible explanation for Respondentsí registration of the Domain Names other than to trade on the goodwill of Complainants and their marks and name.

Appropriate Remedy

Pursuant to Section 12 of the Policy, Yahoo! asks the Panel to compel Registrants to produce the full list of domain names they have registered incorporating and/or misspelling the YAHOO!, YAHOOLIGANS!, and GEOCITIES marks. The Panel has no authority to grant this request since under Section 4(i) of the Policy the Panel is limited to requiring cancellation of a domain name or the transfer of the domain name registration to the complainant. Here the proper remedy is to request that all the Domain Names be transferred to Yahoo!.

 

7. Decision

In light of the foregoing, the Panel decides that;

(1) The Domain Names registered by Respondents and at issue here are confusingly similar to Complainants marks,

(2) Respondents have no rights or legitimate interests in respect of the Domain Names at issue, and

(3) The Domain Names at issue have been registered and are being used in bad faith by Respondents.

Accordingly the Panel requests that the Registration of the 27 Domain Names set forth in paragraph 2 of this Decision be transferred to Yahoo!.

 

 


 

David Wagoner
Sole Panelist

Dated: October 2, 2000


Footnotes:

* Numbers in [ ] are paragraphs of the Complaint.