WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Yahoo! Inc. v. Yahoo Computer Services

Case No. DPH2001-0001

 

1. The Parties

The Complainant in this administrative proceeding is Yahoo! Inc., a Delaware corporation with its principal place of business at 3420 Central Expressway, Santa Clara, California 95051, U.S.A. The Respondent is Yahoo Computer Services, with a place of business at 101 Zodiac St., Palm Village, Makati, Philippines. Yahoo Computer Services is a business name registered by Imaginet International Inc. with the Department of Trade and Industry, Republic of the Philippines on February 25, 1988. (Exhibit 2, Respondent).

 

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

The domain names are "yahoo.com.ph" and "yahoo.ph". The domain names were registered by Respondent with DotPhone, Inc. on May 9, 1999 and October 21, 1999, respectively.

 

3. Procedural History

On January 19, 2001, the WIPO Arbitration and Mediation Center ("the Center") received from the Complainant by e-mail a complaint for a decision in accordance with the dotPHone, Inc Uniform Policy for Domain Name Dispute Resolution ("the Policy"). The Center received a hard copy of the Complaint on January 22, 2001. On January 24, 2001, the Center forwarded an Acknowledgement of Complaint to the Complainant. On January 25, 2001, the Center forwarded a Request for Registrarís Verification to DotPhone. On January 26, 2001, DotPhone confirmed that the domain names "yahoo.com.ph" and "yahoo.ph" are registered under DotPhone and were acquired by Yahoo Computer Services on May 9, 1999 and October 21, 1999 respectively. The domain names are currently connected to active websites. The Center completed its Administrative Compliance Check on January 26, 2001, and ascertained that the Complaint was filed in compliance with the requirements of the dotPHone, Inc. Policy, Rules and the Supplemental Rules and that payment had been properly made to the Center.

On January 26, 2001, the Center forwarded a Notification of Complaint to the Respondent by e-mail and courier. The Center advised the Respondent that the Administrative Proceeding was commenced on January 26, 2001, and that a response was due by February 14, 2001. The Complainant in this proceeding elected for an Administrative Panel consisting of three panelists. A Response was received and an Acknowledgement of Respondent's Response was forwarded to the parties on February 13, 2001.

A three member Administrative Panel was appointed consisting of Geert Glas, David Tatham and the Presiding Panelist Ross Carson. The case file was transmitted to the three panelists on March 1, 2001, and the date of March 15, 2001, was set as the due date for the decision.

 

4. Factual Background

Complainant Yahoo! is a global Internet communications, media, and commerce company that delivers a branded network of comprehensive searching, directory, information, communication, shopping services and other online activities and features to millions of Internet users daily. Yahoo!ís services include web directory and search services, travel-related services, Internet access, e-mail, chat, online games, sweepstakes and other contests and numerous other services. Yahooís web directory was developed in early 1994 and the site was named YAHOO! in June 1994. The main YAHOO! site can be accessed at the URL "http:/www.yahoo.com". At the time of filing the Complaint Yahoo! had a market capitalization of approximately U.S. $15 billion. In September 2000 the number of "page views" on the YAHOO! website averaged 780 million per day. As of January 1, 2001, Yahoo! had over 233 million unique registered users, i.e. users who register with Yahoo! in order to participate in Yahooís registered member services, including games, shopping, auctions, classifieds, e-mail, clubs, calendars, message boards, chat rooms, and more.

Yahoo! also has sites that are specific to particular countries or regions, such as "yahoo.com.tw", "yahoo.com.hk", "yahoo.co.jp". Complainant does not currently have a site directed solely to the Philippines. However Complainant submits that there are numerous categories in the main YAHOO! directory containing information about the Philippines. A printout from the YAHOO! directory showing the various Philippines categories is attached as Exhibit 4. Complainant submits that Philippine Internet users have been extensively using Yahooís network of websites for years. As of January 3, 2001, Yahoo! had over 3,286,700 registered users who identified the Philippines as their country of residence. Complainant has provided statistics (pages 6-8 of Complaint) to illustrate the extent of and increase in the number of registered Yahoo! users from the Philippines over the years 1995 to 2000.

Complainant submits that by virtue of the nature and inherent strength of the YAHOO! mark as applied to Yahoo!ís array of web-based services; the millions of visitors to the YAHOO! site from third-party websites; and Yahoo!ís extensive use, promotion and registration of its YAHOO! mark, the YAHOO! trademark 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! trademark is famous. (Yahoo! Inc. v Buffalo Wu, CA-00-00178-A, memorandum decision at p. 8, copy attached as Exhibit 8 to the Complaint).

Complainant owns a large number of U.S. trademark registrations for the YAHOO! mark as successor in interest to Yahoo! Inc., a California corporation. (See Exhibit 9 to the Complaint) registered between 1997 and 2000. Complainant also has six pending trademark applications in the Philippines filed variously between July 1996 and February 1999. (See Exhibit 10 to the Complaint.)

More than thirteen UDRP decisions involving the YAHOO! mark have been issued by WIPO Panels, all in Yahooís favor. The Panelists in at least nine of these cases expressly found the YAHOO! mark to be famous. The Complainant provides a list of the cases, which can be accessed on the WIPO Arbitration and Mediation Center website. Included in these cases is Case No. D2000-1050 involving the domain names "yahooflorida.com" and "yahoousa.com" and D2000-1137 involving the domain names "newyahoo.com" and "yahoo-usa.com", in which the panelists ordered transfer of the domain names to Yahoo.

Yahoo has prevailed in legal actions filed in Israel against an infringer using the YAHOO-ISRAEL trademark and the domain name yahoo.co.il for computer related services; in India against a party using the YAHOOINDIA! trademark and the domain name "yahooindia.com" to identify an online search and directory service; in Mexico against a company that had registered the domain name "yahoo.com.mx"; in Australia against a company that had registered and was using the domain name "yahoo.net.au" for an online search and directory called Yahoo Internet; in Argentina against a party that registered the domain names "yahooemail.com.ar", "yahoofree.com.ar" and "miyahoo.com.ar", and in Uruguay against a party using the domain name "yahoo.com.uy" for a website featuring products and information about animals. Copies of these decisions are attached as Exhibit 8 to the Complaint.

Respondent registered the domain names "yahoo.com.ph" and "yahoo.ph" on May 9, 1999, and October 21, 1999, respectively.

In April 1999, Complainant discovered that Respondent operated a website which offers computer hardware and software and computer consulting, development and support services, including web development services under the name YAHOO COMPUTER SERVICES. Yahoo!ís Philippine counsel sent a demand letter to Respondent objecting to Respondentís unauthorized use of the YAHOO! mark. A response was received on July 15, 1999 advising that Respondent was in the process of seeking legal advice. Respondent stated that Yahoo Computer Services is a legally registered name with the Department of Trade and Industry, Republic of the Philippines. Yahoo!ís counsel sent a second demand letter to Respondent on September 3, 1999 and received no response. (Exhibit 11 to Complaint)

On September 8, 1999 Yahoo! discovered that Respondent owned the domain name "yahoo.com.ph" and used the domain name to identify a website bearing the mark YAHOO COMPUTER SERVICES and offering computer-related services and software. (Exhibit 12 to Complaint). Yahoo!ís counsel sent a third demand letter to Respondent on October 28, 1999 and received no response. (Exhibit 13).

In May 2000 Yahoo! discovered that Respondent also owned the domain name "yahoo.ph". As of January 3, 2001, the domain names in dispute both connect to a website bearing the title "Imaginet International, Inc." and featuring links to various other websites including "YCS Ė a division of Imaginet International, Inc." linking to Respondentís YAHOO COMPUTER SERVICES website and also to "YCS.NET Ė Guide to the Philippine Islands" and "Other Yahooís".

 

5. Partiesí Contentions

A. Complainant contends that

a) The disputed domain names fully incorporate Complainantís valuable and famous trademark YAHOO! within the second-level domain names ".ph" and ".com.ph", and are confusingly similar to Complainantís YAHOO! Marks.

b) Respondent does not have rights or a legitimate interest in the domain names by virtue of the fact that Complainantís YAHOO! mark is famous, and Respondentís use of the mark is unauthorized.

c) Respondentís registration and use of the domain names meet the bad faith requirement described in Paragraph 4(a) of the Uniform Dispute Resolution Policy.

B. Respondent

Respondent denies the allegations in the Complaint.

Respondent contends that the disputed domain names do not contain the YAHOO! mark and that the logo and site layouts employed on Respondentís websites are neither identical or confusingly similar to Complainantís trade or services marks.

Respondent contends that it has a right and legitimate interest in the domain names "yahoo.com.ph" and "yahoo.ph" in the Philippines by virtue of the fact that Yahoo Computer Services is a legally registered business name in the Philippines. The Certificate of Registration of Business Name is attached as Exhibit 2 to Response.

Respondent contends that its registration and use of the domain names does not meet the bad faith requirement described in paragraph 4(a) of the Policy.

Respondent advises that it is a software development and systems integration company, which provides network, intranet and Internet services covering e-mail, file storage and retrieval, web server hosing and directory services. Respondent submits that the services that it offers are so different from Complainantís services that the public would not be confused.

Respondent advises that it has three pending "trademark applications in the Philippines filed in 1999, two of which include, inter alia, the word YAHOO, and all of which are subsequent to the Philippines trademark applications of Complainant." (Exhibit 1 to the Response).

Respondent submits financial information showing that its main income is from the sale of the services of qualified staff to individual projects and the re-sale of hardware and software resulting from those projects. Respondent submits that its income has only risen by 1.7% since owning the domain names whereas Complainantís revenues have risen by 88.6%. Respondent contends that there is no dilution in value of the Complainantís mark or any confusing similarity arising by the Respondentís holding of the domain names.

Respondent submits that it is a small company and that it had 1004 hits on the websites operated under its four domain names "www.ycs.com.ph", "www.ycs.ph", "www.yahoo.com.ph" and "www.yahoo.ph" in the month of January 2001. Respondent submits that any "reasonable Internet user" in the Philippines seeking the Complainantís site is using the "yahoo.com" domain name of the Complainant and not the domain names of the Respondent and there is no confusing among Internet users or the general public between Respondentís domain names and Complainantís YAHOO! mark.

Respondent submits that its business name Yahoo Computer Services is a legally registered business name of Imaginet International Inc. Respondent submits that the domain names "yahoo.com.ph" and "yahoo.ph" are both legally registered domain names owned by the Respondent and incorporate the "yahoo" element of Respondentís legally registered business name, "Yahoo Computer Services".

Respondent submits that following Complainantís legal letter giving Respondent five days to change its registered name, Respondent amended its website by disclaiming any relationship or affiliation with the Complainant and provided a list of "Other Yahoos" which includes links to the Complainantís sites and other sites or registered companies using the word "yahoo".

Respondent contends that any other party having rights in the name would have registered the domain names in dispute prior to Respondentís registration of the domain names.

Respondent submits that it not aware of a Philippine operation of the Complainant and that Complainant does not have a Philippine website.

Respondent submits that its domain names have always been pointed directly at the Yahoo Computer Services website which is a point of contact for customers wishing to purchase Respondentís goods and services. Respondent bank accounts, purchase orders and invoices are in the name of Yahoo Computer Services. Respondent submits that it is making legitimate fair use of the domain names without intent for commercial gain to misleadingly divert customers from the Complainant.

 

6. Discussion and Findings

The Panel has considered the evidence presented. It is clear that the Complainant has substantial trademark rights in the mark YAHOO!, and that the domain names in dispute are confusingly similar to the Complainantís marks. The domain names in dispute, "yahoo.ph" and "yahoo.com.ph" incorporate the Complainantís distinctive term YAHOO. The only thing that prevents the domain name yahoo.ph from being identical to Complainantís mark is the exclamation mark. Each of the two domain names is confusingly similar to the Complainantís trademarks.

The Panel agrees with the Complainant that the Respondent does not have any legitimate rights of interests in the domain names. Respondentís alleged rights are based on a Certificate of Registration of Business Name and registration of the domain names. There is no evidence that registration of a business name with the Department of Trade and Industry provides the registrant with any exclusive rights with respect to the business name. The registration of the domain names likewise did not provide the Respondent with an exclusive right to the use of the domain names. Respondentís registration and use of its domain names incorporating part of Respondentís tradename were subsequent to Complainantís trademarks having become well known in the Philippine Islands. The Respondent has no rights or legitimate interest in the domain names in dispute.

Lastly, the Panel determines there is clearly bad faith. It is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain names yahoo.ph and "yahoo.com.ph". Telstra Corporation Limited v Nuclear Marshmallows Case No. D2000-0003, paragraph 7.6. It is inconceivable that the Respondent could have been unaware of the Complainantís name and trademark when Respondent registered the domain names. The fact that Respondent previously registered the business name Yahoo Computer Services incorporating the distinctive word Yahoo before registering the domain names in dispute has no bearing on the case. The domain names have each been registered and are each being used in bad faith based on evidence and grounds set forth in paragraphs 56 to 59 of the Complaint, namely that the Respondent registered the domain names to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainantís YAHOO! mark as to the source, sponsorship, affiliation and endorsement of Respondentís website.

 

7. Decision

In view of the above, the Panel grants the Complainantís request for transfer to it of the domain names "yahoo.ph" and "yahoo.com.ph".

 


 

Ross Carson
Presiding Panelist

David Tatham
Panelist

Geert Glas
Panelist

Date: March 21, 2001