WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. v. Yahoosexy.com, Yahoo-sexy.com, Yahoosexy.net, Yahousexy.com and Benjamin Benhamou
Case No. D2001-1188
1. The Parties
The Complainant is Yahoo! Inc., a Delaware corporation with its principal place of business at 701, First Avenue, Sunnyvale, California 94089, United States of America, represented by David M. Kelly, Esq., Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
The Respondents are :
(i) Benjamin Benhamou with his address at 2 Rue Jacques Kable, 94130, Nogent sur Marne, France (hereinafter referred to as ‘Respondent under (i)’).
(ii) Yahousexy.com with an address at Nogent Sur Marne, France.
(iii) Yahoo-sexy.com with an address at Nogent Sur Marne, France.
(iv) Yahoosexy.com with an address at Natanya, Israel.
(v) Yahoosexy.net with an address at Natanya, Israel.
From the evidence submitted (in particular the ‘Whois’ records attached as exhibit 1 to the complaint), the Panel concludes that the aforementioned Respondent under (i) is actually operating under the fictitious names Yahoosexy.com and Yahoosexy.net, with an address at Natanya, Israel as well as under the fictitious names Yahousexy.com and Yahoo-sexy.com, with an address at Nogent Sur Marne, France.
From the evidence submitted it is clear to the Panel that the same person has been registering the domain names at stake using different fictitious names and therefore holds that it is appropriate to proceed in a single complaint against multiple registrant names. The Panel finds support for this holding in Adobe Systems Incorporated v / Domain OZ, WIPO Case N° D2000-0057; Yahoo! Inc. and GeoCities v/ Data Art Corp., et al., WIPO Case N° D2000-0587 and Yahoo! Inc. v/ Somsak Sooksripanich et al., WIPO Case N° D2000-1461.
2. The Domain Names and Registrar
The disputed domain names are <yahoosexy.com>, <yahoo-sexy.com>, <yahoosexy.net>, <yahoo-sexy.net> and <yahousexy.com>.
The Registrar is GANDI.
3. Procedural History and Preliminary Ruling on the Language of the Procedure
3.1 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, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on September 28, 2001, and in hardcopy on October 2, 2001.
The Complaint was acknowledged received by the Center on October 2, 2001. By e-mail of October 2, 2001, the Respondent under (i) solicited the proceedings to be dealt with in French.
On October 4, 2001, registration details were sought from the Registrar. On October 9, 2001, the Registrar confirmed that the disputed domain names are registered in the name of the Respondents and at the addresses mentioned above. The Registrar further confirmed that :
1. The Uniform Domain Name Dispute Resolution Policy applies to the domain names at stake.
2. The domain names at stake are active but locked.
3. It is not possible to determine, for technical reasons, the GANDI website being bilingual, whether the language of the registration agreement for the disputed domain names is French or English
By e-mail of October 9, 2001, the Center informed the Respondent under (i) that, due to the impossibility to determine the language of the registration agreement, it could not require Complainant to provide a French translation of the Complaint. The Center nevertheless accepted the Respondent to file his response in French. The Center further held that it would be left to the discretion of the Panel appointed in this case to determine the language of the procedure, of the decision, as well as to request from the parties any translation the Panel might consider necessary.
On October 10, 2001, the Center satisfied itself that the Complainant complied with all formal requirements (including payment of the prescribed fee) and that same day formally dispatched copies of the complaint by post / courier (with enclosures) to the Respondents at the addresses as recorded with the Registrar and by e-mail (without attachments). The Center also sent copies of the material by the same methods to the Respondents’ administrative, billing and technical contacts at the addresses recorded by the Registrar and included with the material dispatched to the Respondents and to those contacts a letter dated October 10, 2001 containing notification of the commencement of this administrative proceeding, with copies of the complaint with attachments to the Registrar and, without attachments, to the Complainant and to ICANN. A French copy of the aforementioned letter containing the notification of complaint and the commencement of administrative proceeding was sent to the Respondents, the administrative and billing contact, the technical contact and to the Registrar, the Complainant and to ICANN.
By e-mail dated October 16, 2001, the Complainant informed the Center that GANDI’s registration agreement, located at <http://www.gandi.net/contract.en.txt> is in English and that the Complainant was not able to locate the French version of Gandi’s registration agreement on its website, <http://www.gandi.net>. The Complainant accordingly sustained that the Complaint was properly submitted in English, and that pursuant to the Rules the language of the UDRP proceeding should be English. By email of the same date the Center informed the Complainant that the French version of the Gandi registration agreement is available at <http://www.gandi.net/contract.en.txt>.
By e-mail and fax message of October 24, 2001, the Complainant requested for a suspension of the proceedings, to allow the parties to settle the dispute with the transfer of the domain names at stake to the Complainant.
On October 25, 2001, the Center confirmed that the administrative proceeding was suspended until November 23, 2001. On November 21, 2001, the Complainant requested for an additional suspension of the proceeding to allow the parties to settle the dispute. On November 23, 2001, the Center confirmed that the administrative proceeding was suspended until December 27, 2001.
On January 4, 2002, the Complainant requested the Center to proceed with appointing a Panel. By e-mail of January 7, 2002, the Center notified the reinstitution of proceedings and set Respondents’ new deadline to submit their response on January 13, 2002. By e-mail of January 7, 2002, the Respondent under (i) replied that he wanted to transfer the domain names at stake to the Complainant but that he didn’t know how to do this technically. On January 14, 2002, the Center acknowledged receipt of the Respondents’ response and informed the Respondents that it would proceed to the Panel appointment unless the Complainant would request a new suspension of proceedings. By e-mail of January 31, 2002, the Complainant informed the Center that the Respondent under (i) had not complied with the Registrar’s transfer instructions, and that the domain names at stake had not been transferred to the Complainant. The Complainant accordingly requested the Center to re-institute the UDRP proceeding and to proceed with appointing a Panel.
The Complainant elected to have the case decided by an administrative Panel consisting of a single member and the Center appointed Yves Van Couter on February 6, 2002, after having received the Panel’s statement of acceptance and declaration of impartiality and independence on February 5, 2002.
On February 6, 2002, the Center transmitted the case file to the Panel and notified the parties of the projected decision date of February 20, 2002.
3.2 Preliminary Ruling on the Language of the Procedure
Pursuant to article 11 (a) the language of the administrative proceeding is the language of the registration agreement, subject to the authority of the Panel however to determine otherwise, having regard to the circumstances of the administrative proceeding.
Having regard to the circumstances of the administrative proceeding at hand, the Panel determines that the language of the administrative proceeding shall be English. Its decision is more in particular supported by the fact that :
1. it is not possible to determine, for technical reasons, the website of the Registrar being bilingual, whether the language of the registration agreement for the disputed domain names is French or English.
2- it appears from the evidence submitted and in particular from the e-mail exchange between the Complainant and the Respondent that the latter has a sufficient command of the English language.
3. the Respondent has furthermore been given the ability by the Center to file his response in French.
4. the Panel has a good command of both languages, English and French.
5. from the evidence submitted it appears that the Respondent took on many occasions the engagement to transfer the domain names at stake but, without justified reason, never completed the transfer procedure required by the Registrar, thus wasting time and resources of the Center and of the Complainant.
The Panel therefore determines that the language of the administrative proceeding shall be English and shall not order that any documents submitted in languages other than English be translated into English.
The Panel finds that the Center has adhered to the Policy and the Rules in administering this case.
The Panel’s decision is due by February 20, 2002.
4. Factual Background
Having carefully examined the evidence submitted, the Panel finds the following facts to be established:
- The Complainant, Yahoo!Inc is a very well known global internet communications, media, and commerce company that offers a branded network of comprehensive searching, directory, information, communication, and shopping services.
- The Complainant is the owner of the trademark and service mark Yahoo!, registered in the US patent and trademark office pursuant to 9 registrations, copies of which appear at exhibit 7 to the Complaint :
YAHOO! - Reg. N° 2,040,222 - Feb. 25, 1997
YAHOO! (stylized) - Reg. N° 2,040,691 - Feb. 25, 1997
YAHOO! - Reg. N° 2,076,457 - July 1, 1997
YAHOO! - Reg. N° 2,159,115 - May 19, 1998
YAHOO! - Reg. N° 2,187,292 - Sept. 8, 1998
YAHOO! - Reg. N° 2,243,909 - May 4, 1999
YAHOO! - Reg. N° 2,243,823 - May 4, 1999
YAHOO! - Reg. N° 2,273,128 - Aug. 24, 1999
YAHOO! - Reg. N° 2,403,227 - Nov. 14, 2000
- The foregoing trademark and service mark registrations relate among others to computer software for various searching and retrieving purposes, books, promoting goods and services via advertisement on electronic sites, computer services, magazines, e-mail services etc...
- The domain name <yahoosexy.com> was registered by Respondents on April 4, 2001; the domain name <yahoo-sexy.com> was registered by Respondents on April 30, 2001; the domain name <yahoosexy.net> was registered by Respondents on April 5, 2001; the domain name <yahoo-sexy.net> was registered by Respondents on April 30, 2001; and the domain name <yahousexy.com> was registered by Respondents on April 30, 2001.
- Hence, the Complainant’s aforementioned trademarks predate the registrations of the domain names by the Respondents.
- The Panel has found 20 UDRP decisions involving the YAHOO trademark on the WIPO Arbitration and Mediation Center website at http://www.arbiter.wipo.int/domains/decisions all of which have required transfer of the involved domain names to the Complainant and a vast majority of which have expressly found the Yahoo! trademark to be a notorious trademark. This finding is further supported by the evidence submitted by the Complainant with annex 5 to the Complaint.
- It is not contested that the Respondents are not and have never been a licensee of Complainant and they are not and have never been authorised by Complainant to use the Yahoo trademarks.
- On May 11, 2001, the Complainants inhouse senior corporate counsel sent a formal letter of demand to the Respondents requesting to "(1) deactivate the "yahoosexy.com" web site; (2) transfer to the Yahoo! domain names "yahoosexy.com", and any other domain names owned by you or any other person or company within your control that are likely to cause confusion with respect to the YAHOO! Trademark and trade name, or dilute its distinctiveness; and (3) permanently refrain from all use of the term "yahoo" or any other variation thereof that is likely to cause confusion with respect to our YAHOO! Trademark and trade name, or dilute its distinctiveness. Once we have your written assurances that you will transfer the domain names, Yahoo! Will provide you with Registrant Name change Agreements to expedite the transfer." (Exhibit 11 to the Complaint)
- At that time the domain name Yahoosexy.com linked to a website entitled <yahoosexy.com> featuring explicit pornographic material (Exhibit 11).
- Respondent under (i) responded on May 11, 2001, agreeing to cease the use of the domain name <yahoosexy.com>.
- On May 15, 2002, the Complainant however found that <yahoosexy.com> was still active and requested that Respondents deactivate the site and transfer the domain name to the Complainant.
- The Respondent under (i) replied requesting a one-month period to transfer the domain name. The Complainant agreed to a 30-day transition period but requested that the site containing pornographic material be deactivated immediately.
- On May 24, 2001, Respondent under (i) informed the Complainant that he began redirecting visitors from <yahoosexy.com> to <yahousexy.com> (Exhibit 12 to the Complaint).
- On July 23, 2001, Complainant’s corporate counsel replied to Respondent under (i) that the two websites had virtually equivalent domain names which sound identical and requested Respondent under (i) to cease and desist all use of its famous Yahoo trademark.
- Respondent under (i) replied contesting that <yahousexy.com> would infringe the Yahoo! trademarks. Again Respondent under (i) promised to transfer the <yahoosexy.com> domain name within one-month time (see Exhibit 13).
- Upon further investigation the Complainant apparently learned that the Respondents actually registered the five domain names at stake all incorporating the Complainants Yahoo! trademark or virtually equivalent signs sounding identical.
- Not having been able to obtain the voluntary transfer of the domain names at stake from the Respondents, the Complainant filed the present Complaint on October 2, 2001.
- From the information obtained from the Registrar (GANDI) it appears that the domain names concerned have been locked as from October 1, 2001, but are still registered under the name of the Respondents (e-mail of October 9, 2001, issued by the Registrar). Therefore their current status is registered by the Respondents, active but locked.
5. Parties’ Contentions
The Complainant requests the Panel to issue a decision that the domain names <yahoosexy.com>, <yahoo-sexy.com>, <yahoosexy.net>, <yahoo-sexy.net> and <yahousexy.com> be transferred to the Complainant .The Complainant invokes the following legal grounds as a basis for the requested relief:
Identity or confusing similarity
The Complainant asserts that the domain names contain or are confusingly similar to the famous YAHOO! trademark, trade name, and <yahoo.com> domain name and that the Respondents thus trade on the goodwill of the famous YAHOO! trademarks and provide misleading and false impressions of affiliation and/or sponsorship by Complainant (Complaint, § 44 on p. 11)
The Complainant contends that pursuant to section 4 (c) of the UDRP :
(i) 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 bona fide offering of goods or services; (ii) Respondents are not and have never been commonly known by the domain Names; and (iii) Respondents are not making legitimate noncommercial or fair use of the Domain Names, without intending to mislead and divert consumers or to tarnish Complainant’s YAHOO! mark for commercial gain. (Complaint § 51 on page 12)
The complainant further contends that the Respondents are not and have never been a Licensee of Complainant and that they have never been otherwise authorized by Complainant to use the YAHOO trademarks (Complaint, § 32 on page 7)
The Complainant alleges that the domain names were registered and used in bad faith, thereby pointing out that the registration in bad faith results from several elements among which :
1. the uniqueness and fame of the YAHOO! trademark
2. the registration and use of the domain names in connection with a website offering pornography thus intentionally attracting for commercial gain, internet users to its website by creating a likelihood of confusion with the YAHOO trademarks as to the source, sponsorship, affiliation and endorsement of Respondents website. (Complaint § 47, p. 11)
B. The Respondent
None of the contentions put forward by the Complainant have been contested by;
- the Respondents.
The only response made by the Respondents was that the only thing they wish;
- was to render the domain names to the Complainant but that they didn’t know,
- how to do this technically.
6. Discussion and Findings
Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
To qualify for 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.
From the Response filed by the Respondents via Respondent under (i), the Panel concludes that the Respondents do not deny the facts which the Complainant asserts, nor the conclusions which the Complainants asserts can be drawn from those facts.
Identity or confusing similarity
Essential or virtual identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (WIPO Case No. D2000-0802) and Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102).
The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is usually confined to a consideration of the disputed domain name and the trademark: AltaVista Company v. S.M.A., Inc. (WIPO Case No. D2000-0927); Gateway, Inc. v. Pixelera.com, Inc (formerly Gateway Media Productions, Inc.) (WIPO Case No. D2000-0109); America Online Inc. v. Anson Chan (WIPO Case No. D2001-0004); Cimcities, LLC v. John Zuccarini d/b/a Cupcake Patrol (WIPO Case No. D2001-0491) and Playboy Enterprises International, Inc. v. Federico Concas, a.k.a John Smith, a.k.a. Orf3vsa (WIPO Case No. D2001-0745).
In the case at hand each disputed domain name incorporates, as its most prominent feature, the whole of the Complainants famous trademark YAHOO (or the virtually identical sign YAHOU) together with the descriptive word ‘SEXY’ which does nothing to detract from the immediate association with the Complainant aroused in the public mind by the word ‘YAHOO’.
From the established facts the Panel furthermore concludes that the YAHOO trademark is widely and favorably known among millions of internet users, in connection with a wide variety of services and goods. Such results in the YAHOO! trademark having a very strong distinctive power. The given distinctive power of the YAHOO trademark is even enforced by the fact that the Complainant owns numerous domain names including the term ‘YAHOO’ relating to various cities or countries.
Therefore, taking into account the fact that each domain name in issue incorporates the term YAHOO, or a nearly identical variant of YAHOO, and taking into account the very high distinctive character of the trade mark at stake, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered trademark YAHOO.
No challenge has been leveled with respect to the Complainants contentions as to;
1) the Respondents’ use of the domain names was and is not bona fide,
2) the Respondents are not and have not been commonly known by any of the domain names in issue, and
3) the Respondents are not making legitimate use of the domain names at stake without intending to mislead and divert internet users from the Complainant and to tarnish the Complainant’s trademarks for commercial gain.
4) the Respondents are not and have never been a Licensee of Complainant and that they have never been otherwise authorized by Complainant to use the YAHOO! trademarks.
No challenge has furthermore been leveled with respect to :
1) the validity of any of the Complainants trademarks or service marks,
2) the Complainants rights in those marks with respect to the services and goods covered,
3) the notoriety and goodwill associated with those trademarks and ,
4) any contention made by the Complainant as to the promotion of the trademarks, use of the trademarks, and total sales of services and goods under these trademarks.
The Panel therefore concludes that the Respondents have no right or legitimate interest in respect of the domain names at stake.
Bad faith registration and use
A finding of bad faith may be made where the Respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name: SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport (NAF Case No. FA0094956). Likewise Marriott International, Inc. v. John Marriot (NAF Case No. FA0094737); 163972 Canada Inc. v. Sandro Ursino (DeC Case No. AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF Case No. FA0095037).
Given the international renown of the YAHOO! trademark, the Panel finds that the Respondents must have known of the YAHOO! mark before they registered the domain names at stake.
Taking into account the renown of the YAHOO! trademarks and the fact that there was and is no need for the Respondents to use <yahoosexy.com>, <yahoo-sexy.com>, <yahoosexy.net>, <yahoo-sexy.net> and <yahousexy.com>, terms that have no meaning or significance except as an attempt to attract for financial gain, internet users to the Respondents’ websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondents’ websites or of a product or service on the Respondents websites’ or linked locations (see also CCA Industries, Inc., v. Bobby R. Dailey, WIPO Case N° D2000-0148 and World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case N° D2000-0256).
The Panel therefore concludes that the Respondents registered and use the domain names at stake in bad faith.
Pursuant to paragraphs 4 (i) of the Policy and 15 of the Rules, the Panel directs that the domain names <yahoosexy.com>, <yahoo-sexy.com>, <yahoosexy.net>, <yahoo-sexy.net> and <yahousexy.com> be transferred from the Respondents to the Complainant.
Yves Van Couter
Dated: February 20, 2002