WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Yahoo! Inc. v. Yahoo-Asian Company Limited.

Case No. D2001-0051

 

1. The Parties

The complainant is Yahoo! Inc. of 3420 Central Expressway, Santa Clara, California 95051, United States of America. The respondent is Yahoo-Asian Company Limited., of Chao Fa Thani 9/83 Chao Fa Rd., Chalong 83000, Phuket, Thailand.

 

2. The Domain Name(s) and Registrar(s)

The domain names in dispute are

"yahooasian.com"

"yahooasian.net"

"yahoo-asian.com"

"yahoo-asian.net" and

"yahoo-asian.org".

The registrar in each case is Tucows Inc.

 

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The complaint was received by the Center by email on January 10, 2001 and in hardcopy on January 15, 2001. Receipt was acknowledged by the Center on January 12, 2001. On January 15, 2001 registration details were sought from the registrar and on January 19 the registrar confirmed that a copy of the complaint had been sent to the registrar in accordance with Supplemental Rule 4(b); the disputed domain names are currently registered in the name of the respondent; that Amr Nour is the administrative, technical and billing contact; that the record was created on May 15, 2001; the Policy applies by virtue of section 7 of the registration agreement and that the names are on hold pending the outcome of this dispute.

On January 23, 2001 the Center satisfied itself that the complainant had complied with all formal requirements of the Rules, including payment of the prescribed fee, and that day formally notified the respondent by post/courier and email of the complaint and of the commencement of this administrative proceeding and sent copies to the complainant, the registrar and ICANN.

The date of commencement of the proceeding was accordingly January 23, 2001. The last day specified in the notice for the filing of a Response was February 11, 2001. The respondent filed a response by letter dated January 30, 2001, which the Center received on February 5, 2001 and acknowledged on February 6, 2001.

On February 14, 2001 the Center appointed Alan L Limbury to serve as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On February 14, 2001 the Center transmitted the case file to the panel and notified the parties of the projected decision date of February 28, 2001.

The language of the proceeding was English.

The panel is satisfied that the complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Centerís assessment concerning the complaintís compliance with the formal requirements; the complaint was properly notified to the respondent in accordance with paragraph 2(a) of the Rules; the response was filed within the time required by the Rules and the administrative panel was properly constituted.

 

4. Factual Background

The complainant has used the name "YAHOO!" since 1994. The complainant currently has a market capitalization of approximately U.S. $17 billion and is a global Internet communications, media, and commerce company offering a network of searching, directory, information, communication, shopping services and other online services and features to millions of Internet users daily.

The complainant carried the advertisements of more than 3,500 companies during 1999. Its income, which is primarily derived from the sale of advertising and co-branding or sponsorship agreements with other companies, increased from $US1,666,000 in 1995 to $US588,608,000 in 1999.

The number of visits to the YAHOO! website are tens of millions every month. As of June 30, 2000, Yahoo! had over 150 million unique registered users worldwide, i.e., users who register with Yahoo! in order to participate in Yahoo!ís registered member services, including email, chat rooms, shopping, auctions, classifieds, clubs, calendars, message boards, and more.

In addition to the services offered at the complainantís main site located at the domain name "yahoo.com", the complainant operates many additional sites under the YAHOO! mark and using YAHOO-formative trademarks and domain names, including 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") and Sweden (YAHOO.SE). There are also 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").

The complainant also offers a wide variety of services using the YAHOO! mark together with a descriptive name of its services, including YAHOO! Mail, YAHOO! Chat, YAHOO! Messenger, YAHOO! Finance, YAHOO! Auctions, YAHOO! Photos, YAHOO! Address Book, YAHOO! Calendar, YAHOO! Bill Pay, and YAHOO! Store.

The complainant is the owner of the following United States trademark registrations:-

  • Registration No. 2,040,222 for the mark YAHOO!, issued February 25, 1997, in International Classes 9,16, 35 and 42.

  • Registration No. 2,040,691 for the mark YAHOO! (stylized), issued February 25, 1997, in International Class 42.

  • Registration No. 2,076,457 for the mark YAHOO!, issued July 1, 1997, in International Class 16.

  • Registration No. 2,159,115 for the mark YAHOO!, issued May 19, 1998, in International Class 38.

  • Registration No. 2,187,292 for the mark YAHOO!, issued September 8, 1998, in International Class 42.

  • Registration No. 2,243,909 for the mark YAHOO!, issued May 4, 1999, in International Class 25.

  • Registration No. 2,243,823 for the mark YAHOO!, issued May 4, 1999, covering credit card services in International Class 36.

  • Registration No. 2,273,128 for the mark YAHOO!, issued August 24, 1999, in International Classes 9, 21 and 35.

  • Registration No. 2,403,227 for the mark YAHOO!, issued November 14, 2000, in International Classes 9, 35, 38, 39, and 42.

    The complainant also owns the domain name "yahoo.com", which was registered with Network Solutions, Inc. on January 18, 1995 and has been used to identify the YAHOO! website since then.

    The respondent was registered under the Thai civil and commercial code as a juristic person in the form of a limited company on April 26, 2000. Mr. Amr Nour is one of two directors and is the founding shareholder who applied for registration of the company. The company has 40 objects extending over a wide range of commercial activities. It may be bound by the signature of one director with the company seal.

    On September 11, 2000 the respondent registered the domain name "yahooasian.co.th".

    The disputed domain names were registered on the following dates:

  • "yahoo-asian.com" on December 28, 1999

  • "yahoo-asian.net" and "yahoo-asian.org" on January 3, 2000

  • "yahooasian.com" on May 15, 2000

  • "yahooasian.net" on June 27, 2000.

    As previously mentioned, all the disputed domain names are currently registered in the name of the respondent.

    As of January 3, 2001 the domain names "yahoo-asian.com", "yahoo-asian.net" and "yahoo-asian.org" connected to the respondentís "yahoo-asian.co.th" website, featuring a variety of services and information including a website directory, classified advertisements, email services, web hosting services, search engine services and weather.

    As of January 3, 2001, the domain names "yahooasian.com" and "yahooasian.net " connected to websites bearing the mark YAHOOASIAN (featuring information regarding diving in Phuket, Thailand) which, in turn, connected to another website offering free email services using the "yahooasian.net" domain name and enabling users to obtain free email addresses which include the word YAHOO.

     

    5. Partiesí Contentions

    A. Complainant

    By virtue of the arbitrary nature and hence the inherent strength of the YAHOO! mark as applied to Yahoo!ís vast array of web-based 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 the complainantís extensive use, promotion, and registration of its YAHOO! mark, the YAHOO! mark and "yahoo.com" domain name have become famous. The United States District Court for the Eastern District of Virginia has specifically held that the YAHOO! mark is famous: see Yahoo! Inc. v. Buffalo Wu, CA-00-00178-A.

    Fifteen decisions under the Policy involving the YAHOO! mark have been issued by WIPO Panels, all in the complainantís favor. The Panelists in at least nine of these cases expressly found the YAHOO! mark to be famous: see Yahoo! Inc. v. David Ashby, (D2000-0241); Yahoo! Inc. v. Eitan Zviely, et al., (D2000-0273); Yahoo! Inc. v. DomainCollection, (D2000-0476); Yahoo! Inc. v. Jorge O. Kirovsky (D2000-0428) (finding that the "YAHOO! mark is not only fanciful but also an international well-known mark constituting one of the most famous marks in the on-line world today"); Yahoo! Inc. v. Cupcake Patrol & John Zuccarini (D2000-0928); Yahoo! Inc. & GeoCities v. Cupcakes, et al (D2000-0777); Yahoo! Inc. v. M&A Enterprises (D2000-0748); Yahoo! Inc. v. Microbiz, Inc (D2000-1050); Yahoo! Inc. v. David Murray (D2000-1013).

    See also Yahoo! Inc. v. Casino Yahoo, Inc. & Jon Maranda (D2000-0660); Yahoo! Inc. & GeoCities v. Data Art Corp, et al (D2000-0587); Yahoo! Inc. v. Roger Campanera Renom (D2000-1012); Yahoo! Inc. v. Wing Hung Trading Company (D2000-1137); Yahoo! Inc v. Somsak Sooksripanich, et al (D2000-1461) and Yahoo! Inc. v. Syrynx, Inc. and Hugh Hamilton (D2000-1675). [These last two were decided after the filing of the complaint in this proceeding].

    The disputed domain names fully incorporate the complainantís valuable and famous trademark YAHOO! within the second-level domain name under the top levels .COM, .NET and .ORG and are confusingly similar to the complainantís YAHOO! Marks

    The respondent does not have rights or a legitimate interest in the disputed domain names by virtue of the fact that the complainantís YAHOO! mark is famous and the respondentís use of the mark is unauthorized.

    The respondentís registration and use of the disputed domain names meet the bad faith requirement described in paragraph 4(a) of the Policy.

    B. Respondent

    We have been in the travel and specifically diving travel industry for years and we are successfully operating and maintaining numerous websites on line. Last year, we created an independent company, legally registered in Thailand and approved by the Thai governmental company registration office.

    The new company is registered officially under the name of Yahoo Asian Co. Ltd.

    As stipulated by the local law, we took the registration name of http://yahooasian.co.th for internet website and we also bought the names of "http://yahooasian.com" as well as "http://yahooasian.net", "http://yahoo-asian.com" , http://yahoo-asian.net , "http://yahoo-asian.org". We legally own these sites.

    As such, we created our own logo and banners to promote the directory, which will focus on tourism and travel in Asia.

    We are not using, and will never use any logo or trademarks of Yahoo! Inc. When we gave the Thai government the proposed name of Yahoo Asian Co. Ltd, we never entered any litigious debate about ethical considerations and trademark dispute concerning the name of the company, which was granted to us with the greatest facility. Therefore, we would like to know why, if the simple name of "Yahoo" is protected, the lawyer in charge of protecting Yahoo! Inc. interests in Thailand never acted in making company names registration bearing "Yahoo" impossible or even unlawful? The answer is simple: he canít do it!

    We understand that the logo "Yahoo!" with the "!" is a Yahoo! Inc. trademark and it is clear to us that we have never used it or will use it of course, but we also understand that the word "yahoo" as an interjection could be used by any person in the world without fearing a lawsuit from the Internet giant.

    We read the file send to us via mail by the Yahoo! Inc. attorney office and we were interested to notice that the previous cases involving the Yahoo! trademark have been based in the United States, where obviously the defendants couldnít register a company to support and defend their doing, as it is the case for us in Thailand.

     

    6. Discussion and Findings

    Substantive issues

    To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:

    i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

    ii) the respondent has no rights or legitimate interests in respect of the domain name; and

    iii) the disputed domain name has been registered and is being used in bad faith.

    Identity or confusing similarity

    The disputed domain names are not identical to the trademark YAHOO!, in which the complainant undoubtedly has rights, nor does the complainant so submit. The issue in this case is whether the domain names are confusingly similar to the trademark.

    The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is confined to a consideration of the disputed domain name and the trademark: AltaVista Company v. S.M.A., Inc., (D2000-0927); Gateway, Inc. v. Pixelera.com, Inc. (formerly Gateway Media Productions, Inc.) (D2000-0109).

    In Microsoft Corporation v. Microsof.com aka Tarek Ahmed (WIPO case D2000-0548) contributing factors to the likelihood of confusion were held to be the visual similarity between the domain name and the complainantís mark and the mark being strong and immediately recognizable.

    Here, the trademark YAHOO! is strong, immediately recognizable and famous. Each of the disputed domain names incorporates the essence of the complainantís famous mark, ie. the whole of it except the exclamation mark. In the minds of millions of Internet users, the addition of the words "ASIAN" (with or without the hyphen) and either ".COM", ".NET" or ".ORG" do nothing to detract from and indeed are likely to reinforce the strong association between the word YAHOO (being virtually identical to YAHOO!) and the Complainant.

    The complainant has proved that each of the disputed domain names is confusingly similar to its YAHOO! mark.

    Illegitimacy

    Given the fame of the YAHOO! mark, the fact that the respondent offers services on the Internet where the complainantís fame originated and the similarity between the respondentís services and some of those of the complainant, the Panel finds that the person who registered the disputed domain names must have known at that time of the complainantís mark YAHOO!.

    It is not clear who was the initial registrant of the domain names "yahoo-asian.com", "yahoo-asian.net" and "yahoo-asian.org", because the respondent was not incorporated until after those names were registered. It appears the respondent acquired those names after incorporation and it registered the names "yahooasian.com" and "yahooasian.net" shortly after it was incorporated.

    The respondent relies upon the lawfulness of its incorporation in Thailand under its corporate name and says it registered YAHOOASIAN.CO.TH "as stipulated by the local law". That domain name is not the subject of this proceeding, nor is the ".TH" ccTLD covered by the Policy. Any requirement of Thai law that that domain name be registered by the respondent is irrelevant to this proceeding. The respondent does not assert that Thai law required its registration or acquisition of the domain names in dispute here.

    Paragraph 4(c) (ii) of the Policy enables a respondent to demonstrate its legitimate interest in a domain name by showing that it has been commonly known by the domain name, even if it has acquired no trademark or service mark rights. The respondent points to its lawful incorporation under its corporate name, prior to the registration of two of the disputed domain names, and to its acquisition of the three others after incorporation.

    However lawful that incorporation may have been (as to which the panel is not in a position to express an opinion), it is beyond credulity that the respondentís corporate name was chosen in the absence of knowledge of the complainantís famous trademark. The respondentís statement that in other cases involving the YAHOO! trademark "obviously the defendants couldnít register a company to support and defend their doing, as it is the case for us in Thailand" reveals those responsible for the incorporation of the respondent as having chosen its corporate name as a way of supporting and defending the registration and acquisition of the disputed domain names. Under these circumstances, in the context of the Policy, the establishment of the respondent was a sham and paragraph 4(c) (ii) of the Policy cannot apply.

    The Panel concludes that the respondentís use of the disputed domain names was intended misleadingly to divert Internet users from the complainant to the respondent and that, although the services it offers on its website are genuine services, its use of the disputed domain name is not legitimate.

    The complainant has established that the respondent has no rights or legitimate interest in the disputed domain name.

    Bad faith registration and use

    In SportSoft Golf, Inc. v. Hale Irwinís Golfersí Passport (Case FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trade mark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (Case FA94737); Canada Inc. v. Sandro Ursino (Case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (Case FA95037).

    There is no plausible explanation for the respondentís registration of the disputed domain names other than to benefit from the goodwill of Yahoo! and its famous YAHOO! mark. See Telstra Corp. Ltd. v. Nuclear Marshmallows (WIPO Case No. D2000- 0003) and Cellular One Group v. Paul Brien (WIPO Case No. D2000-0028.

    The panel finds that the disputed domain names were registered in bad faith.

    Intentional diversion of trade in such circumstances is evidence of both bad faith registration and use: Policy paragraph 4 (b)(iv). See The Channel Tunnel Group Ltd. v. Powell (D2000-0038) and Shirmax Retail Ltd./D¢ etaillants Shirmax Lt¢ ee v. CES Marketing Group Inc.( AF-0104) as elaborated in Passion Group Inc.v. Usearch, Inc. (AF-0250). Given the fame of the complainantís mark and the knowledge of it that the respondent and those behind the respondent must have had when registering the disputed domain names, the Panel finds the respondent must have anticipated and intended to benefit from the very confusion that was likely to arise.

    The complainant has proved bad faith registration and use.

     

    7. Decision

    Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the panel directs that the domain names "yahooasian.com", "yahooasian.net" , "yahoo-asian.com", "yahoo-asian.net" and "yahoo-asian.org" be transferred to the complainant.

     


     

    Alan L Limbury
    Sole Panelist

    February 28, 2001

    Sydney, Australia