WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Yahoo! Inc. v. Net Games, Inc.

Case No. D2002-0304

 

1. The Parties

The Complainant in this administrative proceeding is Yahoo! a Delaware corporation with its principal place of business at 701 First Avenue, Sunnyvale, California 94089., United States of America.

The Respondent in this administrative proceeding is Net Games, Inc., with a postal mailing address listed as 36 Barracks Street, Belize City, Belize. Ido Raviv is listed as the Administrative, Technical, and Billing Contacts.

 

2. The Domain Name and Registrar

The disputed domain name is <yahoops.com>.

The Registrar of the domain name is Network Solutions, Inc.

 

3. Procedural History

This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("the Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of dispute pursuant to the Policy and the Rules.

The Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") on March 28, 2002 by email and on April 3, 2002 by hardcopy. On April 10, 2002, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. The Respondent filed its Response with the Center on April 30, 2002 by email and on May 3, 2002 by hardcopy. The Respondent objected to the Complainantís Supplemental Submission on May 4, 2002 and the Center acknowledged receipt of the Complainantís Supplemental Submission on May 6, 2002.

The Administrative Panel consisting of three members was appointed on May 28, 2002 by the Center.

After considering the Respondentís objection, the Administrative Panel gave to the Respondent an opportunity to reply to the Complainantís Supplemental Submission. The Respondent did so.

An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.

The Administrative Panel has considered all material delivered by the parties.

 

4. Factual Background

The following information is derived from the Complaint.

The Complainant 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.

It is the owner of the service marks and trademarks YAHOO! and YAHOO! (stylized), as well as the trade name YAHOO! and the domain name <yahoo.com> (the "YAHOO! Marks"). "Yahoo!" is an arbitrary term as applied to the Complainantís services and products. Since at least as early as 1996, the Complainant actively has advertised the YAHOO! brand through advertising on television and radio, in publications and on signage, both in the United States and internationally. The advertising has reached millions of people around the world.

The Complainantís services include both local and international web directory and search services, online games, people searches, astrology and horoscopes, clubs, greetings, corporate network software and services, travel-related services, internet access, e-mail, chat, sweepstakes and other contests, stock quotes, insurance quotes, tax information and filing services, small business advice and services, business and financial information and services, loan quotes, real estate and mortgage information and quotes, movie reviews, news, weather, sports, yellow pages, maps, auctions, online shopping, classified advertising, audio and video streaming, and web store hosting and management. In addition to its many online services, The Complainant uses the YAHOO! trademark on a wide variety of products including clothing, books, magazines, housewares, and computer accessories.

The main YAHOO! site can be accessed at the http://www.yahoo.com. The YAHOO! website is one of the leading Internet websites worldwide in terms of traffic, advertising, household and business user reach.

The YAHOO! mark is one of the most recognized brands in the world. The Complainantís global web network includes 25 world properties, with offices in Europe, Asia Pacific, Latin America, Canada, and the United States.

In addition to the variety of services offered at the Complainantís main site located at the domain name <yahoo.com>, it operates many additional sites under the YAHOO! mark and using YAHOO-formative trademarks and domain names.

The Complainant has sites that are specific to particular countries or regions, such as Spain <yahoo.es>, Mexico <yahoo.com.mx>, Argentina <yahoo.com.ar>, France <yahoo.fr>, Asia <asia.yahoo.com>, China <yahoo.com.cn>, Taiwan <yahoo.com.tw>, Hong Kong <yahoo.com.hk>, Japan <yahoo.co.jp>, Singapore <yahoo.com.sg>, Canada <yahoo.ca>, Korea <yahoo.co.kr>, Australia and New Zealand <yahoo.com.au>, Denmark <yahoo.dk>, Germany <yahoo.de>, Norway <yahoo.no>, Sweden <yahoo.se>, Brazil <yahoo.com.br>, Italy <yahoo.it>, United Kingdom and Ireland <yahoo.co.uk>, and India <yahoo.co.in>. It also has sites directed to particular U.S. cities, including Miami <miami.yahoo.com>, New York City <nyc.yahoo.com>, Washington, D.C. <dc.yahoo.com>, Atlanta <atlanta.yahoo.com>, Boston <boston.yahoo.com>, Los Angeles <la.yahoo.com>, Seattle <seattle.yahoo.com> and others.

The Complainant operates other sites specific to particular topics or population groups, such as the YAHOO! en Español site which is directed to Spanish speakers around the world <espanol.yahoo.com>, the YAHOO! en Català site which is directed to Catalan speakers around the world <ct.yahoo.com>, the YAHOO! Chinese site which is directed to Chinese speakers around the world <chinese.yahoo.com> and the YAHOOLIGANS! site which is specifically targeted to children aged 7-12 <yahooligans.com>.

Since its inception, the Complainantís website has been recognized with numerous industry awards, including the "Best of the Internet" and "Outstanding Service" awards from Internet World in April 1995, Global Network Navigatorís "Best of the Net" for Internet Navigation award in December 1995, 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" award from Forbes magazine. More recent awards include the 2000 "Hall of Fame" award from Search Engine Watch, the "Peopleís Voice" award in the Broadband category from the 2001 Webby Awards, and the 2001 Webby Award in the Finance category. The YAHOO! website has also been consistently included by PC Magazine in its list of Top 100 websites.

The Complainant began as a web directory and search engine. Its web directory was developed in early 1994 by the companyís founders, David Filo ("Filo") and Chihyuan "Jerry" Yang ("Yang"), while they were graduate students at Stanford University. Filo and Yang started by "surfing the Web" to find interesting sites and maintaining a list of those sites. They then created software to categorize the websites and link them with hierarchies in a directory. They also created software to enable users to search the directory. In March 1994, the directory of websites was made available by Filo and Yang on the Internet free of charge.

The availability of The Complainantís directory and search services enabled Internet users, even non-technical ones, to find information relevant for their purposes out of the vast amount of content on the Web. The Complainantís web directory and search services allow users quickly to locate information on the Internet by typing in a word or words relating to the subject matter of interest to the user. This made the Complainantís website wildly popular with Internet users. Shortly after the site was launched, the overwhelming success of the Complainantís site led its founders to take a leave of absence from Stanford University to concentrate on running the website and raising capital to run the business.

The Complainantís Initial Public Offering of stock was in April 1996. Since then, its revenues have grown significantly: US $1,666,000 in 1995; US $23,793,000 in 1996; US $84,108,000 in 1997; US $245,100,000 in 1998; US $588,608,000 in 1999; US $1,110,178,000 in 2000 and US $717,422,000 in 2001.

Most of the Complainantís current Internet services are offered to the public free of charge and the majority of its income is derived from the sale of advertising, marketing and co-branding or sponsorship agreements with other companies. The Complainant also receives revenues from certain electronic-commerce transactions originating from the its site, including YAHOO! Shopping, YAHOO! Auctions, and YAHOO! Travel.

Much of the advertising sold by the Complainant consists of banner advertisements that appear on the top of directory pages within the Complainantís 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, the Complainant also sells merchandising units, sponsorships and promotions. It also sends targeted direct e-mail advertisements to users of its e-mail services, chat room services and other registered Yahoo! users.

The Complainant served 3,795 advertisers and merchants during the fourth quarter of 2001. Its clients include 31 of the Fortune 50, and 52 of the Fortune 100 advertisers. Among the companies that have advertised their products or services on the Complainantís site are Apple, Colgate-Palmolive, Disney, The Gap, Hilton Hotels, Honda, IBM, Lego, Microsoft, Procter & Gamble, Seagrams, Sony, Swatch, Target Stores, Toshiba and Visa.

The Complainant also licenses the YAHOO! mark for use on merchandise such as clothing, hats, computer equipment, toy cars, watches, writing instruments, posters, watches, clocks, duffel bags, baseballs, the "Yahoo! Internet Life" magazine, and much more. In 2001, the Complainantís worldwide licensing revenues were approximately US $1.5 million.

The number of visits to the Complainantís website has increased dramatically each year since its inception. During September 1998, for example, the site averaged 144 million "page views" per day. During September 2000 it was an average of 780 million page views per day. During December 2001, the site averaged over 1.32 billion page views per day. A "page view" is defined as one electronic page of information displayed in response to a user request. One visitor to the site can represent more than one page view. This translates into hundreds of millions of discrete visits to the Complainantís site every quarter.

The Complainantís global audience grew to 219 million unique users during December 2001. A record 86 million active registered member logged onto their personalized YAHOO! accounts during December 2001 (e.g., to participate in the Complainantís registered member services, including shopping, auctions, classifieds, e-mail, clubs, calendars, message boards, chat rooms and more).

According to a report from the market research firm Jupiter Media Metrix, the Complainantís network of properties was ranked number three in the "Global Top 50 Web and Digital Media Properties At Home" for the month of November 2001. In February 2002, Nielsen//NetRatings ranked the Complainantís network of properties number two with more than 59 million unique users and a global reach of 56% of home users in the United States and ranked the Complainant number three among Top Web Advertisers in the United States, having served more than 1.75 billion advertisement impressions for the companyís products and services that month.

In July 2001, Interbrand, one of the worldís leading brand marketing and consulting firms, published its annual report which ranks the worldís most valuable brands. This survey ranks the Complainantís mark number 59, with a value of nearly US $4.4 billion.

The Complainantís mark is unique and not diluted. The Complainantís 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 Complainantís mark is famous. See Yahoo! Inc. v. Buffalo Wu, CA-00-00178-A (memorandum decision at p. 8)

Twenty-two UDRP decisions involving the Complainantís mark have been issued by WIPO Panels, all of which have required the transfer of all involved domain names to the Complainant. The Panels in at least fifteen of these cases expressly found the Complainantís mark to be famous. See Yahoo! Inc. v. David Ashby, WIPO Case No. D2000-0241, (June 14, 2000) <yahooventures.com>; Yahoo! Inc. v. Eitan Zviely, et al., WIPO Case No. D2000-0273, (June 14, 2000) (thirty-seven YAHOO-formative domain names); Yahoo! Inc. v. DomainCollection, WIPO Case No. D2000-0476, (July 21, 2000) <campyahoo.com>; Yahoo! Inc. v. Jorge O. Kirovsky, WIPO Case No. D2000-0428, (August 9, 2000) (holding 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" and ordering transfer of four domains); Yahoo! Inc. v. Cupcake Patrol & John Zuccarini, WIPO Case No. D2000-0928, (September 29, 2000) (twenty-three domain names); Yahoo! Inc. & GeoCities v. Cupcakes, et al., WIPO Case No. D2000-0777, (October 2, 2000) (twenty-seven domain names); Yahoo! Inc. v. M&A Enterprises, WIPO Case No. D2000-0748 (October 23, 2000) <visayahoo.com>; Yahoo! Inc. v. Microbiz, Inc., WIPO Case No. D2000-1050, (November 7, 2000) <yahooflorida.com> and <yahoousa.com>; Yahoo! Inc. v. David Murray, WIPO Case No. D2000-1013, (November 17, 2000) <yawho.com>; Yahoo! Inc. v. Somsak Sooksripanich, et al., WIPO Case No. D2000-1461, (January 29, 2001) (twenty-two domain names); Yahoo! Inc. v. Internet Entertainment Group, WIPO Case No. D2000-1595, (February 1, 2001) <yahomo.com>; Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051, (February 28, 2001) (five domain names); Yahoo! Inc. v. Logicland Corporation, WIPO Case No. DVE2001-0001, (May 15, 2001) <yahoo.com.ve>; Yahoo! Inc. v. CPIC NET, MIC & Syed Hussain, WIPO Case No. D2001-0195, (May 8, 2001) (ten domain names); Yahoo! Inc. v. Yahoosexy.com et al, WIPO Case No. D2001-1188 (February 20, 2002) (five domain names); See also Yahoo! Inc. v. Casino Yahoo, Inc. & Jon Maranda, WIPO D2000-0660, (August 24, 2000) <casinoyahoo.com>; Yahoo! Inc. & GeoCities v. Data Art Corp., et al., WIPO Case No. D2000-0587 (August 10, 2000) (thirty-six domain names); Yahoo! Inc. v. Roger Campanera Renom, WIPO Case No. D2000-1012, (November 10, 2000) <geocities-yahoo.com>; Yahoo! Inc. v. Wing Hung Trading Co., WIPO Case No. D2000-1137, (November 30, 2000) <newyahoo.com and yahoo-usa.com>; Yahoo! Inc. v. Syrnx, Inc. and Hugh Hamilton WIPO D2000-1675, (January 30, 2001) <yahoobroadcast.com> and <yahoolinux.com>; Yahoo! Inc. v. Silicon City and Osama Al-Ayoub, WIPO Case No. D2000-1711, (February 13, 2001) <yahoo-1.com>; Yahoo! Inc. v. Yahoo Computer Services, WIPO Case No. DPH2001-0001, (March 21, 2001) <yahoo.com.ph> and <yahoo.ph>.

The Complainant is the owner of the following federal trademark registrations, as well as many others in the United States and throughout the world:

a. 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;

b. 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;

c. 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;

d. 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;

e. 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;

f. 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;

g. 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;

h. 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;

i. Registration No. 2,403,227 for the mark YAHOO!, filed August 13, 1998, issued November 14, 2000, 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;

j. telecommunications services, namely, providing telephone communications via computer networks; electronic transmission of data, images, and documents via computer terminals and networks; providing online facilities for real-time interaction with other computer users concerning topics of general interest and for playing games; 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; 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 some of these registrations issued in the name of Yahoo! Inc. (a California corporation), they are now owned by the Complainant (a Delaware corporation) by virtue of the merger of the California corporation into the Delaware corporation on May 18, 1999.

The Complainant also owns the domain name <yahoo.com>. The <yahoo.com> domain name was registered on January 18, 1995, and has been used to identify the Complainantís website since on or about that date.

Having been used by the Complainant in connection with its Internet-based business, and having been widely promoted and advertised among members of the general consuming public, the YAHOO! Marks have become valuable property of the Complainant. The Marks enjoy fame as a result of favorable public acceptance and recognition worldwide.

The Complainantís trademark rights in the mark YAHOO! and variations thereof, based on its trademark filings and on its common law rights acquired through the use of the YAHOO! mark, trade name, and domain name, predate the registration by Respondent of the subject domain name on March 13, 2002.

The Respondent uses the subject domain name for a gambling website that offers gambling on a variety of sports, including basketball, hockey, tennis, and boxing. Respondent also has advertised on the website to which the subject domain name resolves by sending unsolicited marketing emails, e.g. spam.

The Complainant provides extensive sports-related information and services on a wide variety of sports, including all of the sports identified on the Respondentís website.

On March 20, 2002, the Complainant, through its counsel, sent to the Respondent a cease-and-desist letter. As of the date of the initiation of this proceeding, the Respondent has not replied to the Complainantís demands that it transfer the subject domain name to the Complainant and cancel the website to which it resolves.

The Respondent is not using, has not used, is not demonstrating and has not demonstrated an intent to use the subject domain name in connection with a bona fide offering of goods or services.

The Respondent is not and has not been known commonly by the subject domain name.

The following information is derived from the Response.

The Respondent used the subject domain name for many months with no objection from the Complainant. The Respondent acquired the subject domain name from Eyescream Interactive, Inc. Even before this acquisition was recorded in the registrarís records, the Respondent began using the subject domain name approximately in connection with the operation of an active website based in Belize City, Belize.

The website to which the subject domain name resolves offers sports betting services related to the sport of basketball. The Respondent neither offers nor promotes searching, directory, information, communication, or shopping services of the type offered by the Complainant.

The Respondent is aware of no actual confusion by Internet users between the parties and their services. Specifically, the Respondent has received no misdirected e-mails, phone calls, other inquiries from Internet users mistakenly believing the Net Games and its website are offered, authorized, sponsored or are otherwise connected, associated or affiliated with Complainant.

The word "yahoo", is used in common parlance. There are a number of U.S. registrations using the word or a variation of it. They include:

- YA-HOO (Reg. No. 2,059,071 for retail store and catalog services in the field of gourmet foods);

- YAHOO (Reg. No. 1,846,672 for human propelled watercraft; namely kayaks and canoes);

- YA-HOO (Reg. No. 1,536,595 for cakes);

- YAHOOTIE (Reg. No. 1,936,760 for self-service laundromats (sic) installed in mobile trailers);

- U.S. state trademark registrations for YAHOO YOGURT (New Mexico Reg. No. NM009781 for the sale and service of yogurt); and

- YAHOO JUICE (California Reg. No. 49530 for a provider of smoothies, fresh juices and health snacks).

Several active websites also are associated with domain names incorporating "yahoo

- <www.yahoo-x.com> (website provide a listing, review and rating of thousands of porn sites:

- <www.yahoohelper.com> (website offering website administration assistance as well as various links to information pages, FAQís, tutorials and references);

- <www.yahoobites.com> (website devoted to individuals who want to post complaints against Complainant because of its enforcement of adult content-related restrictions);

- <www.y-a-h-o-o.com> (web hosting provider offering technical support and domain administration services);

No language or graphics on and nothing in the design of the Respondentís website mimics the Complainantís website or alludes to any connection with the Complainant.

The subject domain name is a unique play on words, combining the common expression "yahoo" with a popular, universal term for basketball, "hoops", or a slang term for yes, "ya," with the slang term "hoops."

The Respondent is using the subject domain name in connection with a legitimate on-line gaming website and had been doing so for at many months prior to the initiation of this proceeding or challenge by the Complainant.

The Respondent has been using the subject domain name in connection with the offering of its sports betting services since at least September 2001 Ė seven months prior to any notice of the Complainantís dispute with the Respondentís use of the subject domain name. The Respondent was not aware of the Complainantís March 20, 2002 letter until after the initiation of this proceeding.

The Respondent has expended considerable time and money developing its sports wagering website. Specifically, it invested numerous hours and significant sums in developing the sports betting site associated with the subject domain name. The Respondent hired a top graphic designer from Israel. It also retained three computer programmers to ensure that the website was active prior to the start of the National Basketball Association season in fall 2001. The Respondent has invested more than $250,000 in advertising and marketing the website under to which the subject domain name resolves.

The Respondent is commonly known as "yahoops" in the circles in which it operates.

The following information is derived from the Complainantís Additional Submission.

Registration Nos. 2,059,071 and 1,536,595 for the mark YA-HOO, to which the Respondent referred, are not owned by third parties, but are owned by the Complainant through an assignment recorded on December 3, 1996 at the USPTO.

The deadline to file a declaration of use to maintain Registration No. 1,936,760 for the mark YAHOOTIE was November 21, 2001. According to the USPTOís website the declaration of use has not been filed by the trademark owner. If it were not filed by May 21, 2002, the end of the six-month grace period, the registration would be cancelled.

After the Complaint was filed in this proceeding, the Intellectual Property Office of Belize issued Registration No. 383/TM/2002 for the mark YAHOO! in Belize to the Complainant. The effective date of the Complainantís Belize registration is February 19, 2002, prior to the March 13, 2002 date on which Respondent registered the subject domain name. The Complainant filed its Belize trademark application on February 4, 2002. Its Belize registration for the YAHOO! mark covers goods and services in International Classes 9, 16, 25, 28, 30, 35, 38, 41, and 42. The Class 41 services include "entertainment services," and the Class 42 services cover "computer services and online computer services."

The following information is derived from the Respondentís Reply to the Complainantís Additional Submission.

The U.S. Registration Nos. 2,059,071 and 1,536,595 for the mark "YA-HOO", initially were registered to Miss King's Kitchens, Inc. Miss Kingís Kitchenís, originally secured those registrations based on its use of those them. The Complainant asserts that it obtained the registrations by assignment, but it does not offer an explanation of the circumstances under which it obtained those registrations.

As to Registration No.1,936,760 for the mark YAHOOTIE, registered to Ronald and Barbara Smith (the "Smiths"), the Complainant states that a declaration of use was due on or before May 21, 2002 to maintain that registration. At this date, it is impossible for anyone to determine whether or not such a filing was made. The U.S. Patent & Trademark Office has a policy of waiting at least 3 months following the date upon which such a filing is due before declaring a registration expired.

The Respondentís effective control and actual use of the subject domain name predates the Complainantís filing of its mark in Belize. The Complainant says that it applied to register its mark in Belize on February 4, 2002 and that Belize issued the registration on an unspecified date after the Complaint in this proceeding was filed. The Respondent began use of the subject domain name many months earlier.

 

5. Partiesí Contentions

A. Complainant

The Complainant relies on its registrations and use of the mark "yahoo" and says that the subject domain name is confusingly similar. It asserts:

"The Domain Name is identical to Yahoo!ís mark except for the addition of two non-distinguishing letters, Ďpí and Ďs,í to the end of the YAHOO! mark. Because the Domain Name fully incorporates the YAHOO! mark, and because the pronunciation of Ďyahoopsí is virtually identical to the pronunciation of Ďyahoo,í Internet users could easily confuse the two names."

In response to the Respondent's contention that others have used the word "yahoo", the Complainant notes that it is the assignee of two domain names and that another registration may expire.

The Complainant contends that the Respondent has no legitimate interest in the subject domain name because it is not known commonly by that name and because it is capitalizing on the Complainantís good name and reputation to attract customers to a gambling site. In addition, the Complainant points to the notoriety of its mark and asserts that the Respondent must have know of the Complainantís rights before it began to use the subject domain name.

Bad faith is said to be evidenced by the fact that the Respondent clearly knew of the Complainantís rights when it registered the subject domain name. It is asserted that customers will be confused because the Complainant provides sports information. The Respondent will profit from the confusion. That is, the subject domain name intentionally is being used to gain profit at the expense of the Complainantís goodwill and reputation. This is opportunistic bad faith.

By registering the subject domain Name with actual knowledge of the Complainantís YAHOO! mark and name, the Respondent acted in bad faith by breaching its registration contract with VerSign because it falsely represented that its registration of the subject domain name did not infringe the rights of any third party.

Incorporation of the word "yahoo" in the subject domain name has no legitimate purpose. It has no value other than to trade on the Complainantís goodwill and reputation.

B. Respondent

The Respondent denies that the subject domain name is confusingly similar to the Complainantís mark and asserts that it "Öis aware of no actual confusion by Internet users between the parties and their services." It also states that although there are similarities between the subject domain name and the Complainantís mark, they do not rise to the level of being confusingly similar. In support of this proposition the Respondent says that "Öa finding of confusing similarity must be based on a number of factors, including the strength of the trademark ownerís mark, the degree of the similarity between the marks, the proximity of the partiesí products, evidence of actual confusion, and respondentís good faith in adopting its mark, among othersÖ."

The Respondent contends that it has a legitimate interests in the subject domain name and asserts that the Complainant is attempting to obtain exclusive use over the word "yahoo", which is used in common parlance. In support of this contention, the Complainant refers to a number of domain names and websites that use the word or a variation of it. Answering the Complainant's assertion that it is the assignee of two domain names and that one may expire, the Respondent says that the important point is that the word "yahoo" was used by others, not its present status.

It also says that it uses the subject domain name for its gambling business and that users are not confused or mislead by its website. This is said to be a bona fide offering of services, which is legal under the law of Belize.

In addition, the Respondent notes that it was using the subject domain name for many months before becoming aware of the Complainant's concern and that it has expended considerable money and effort developing its website, gambling business.

It also denies the Complainant's assertion that it is not identified with the subject domain name and states that in the environment in which it operates it is known as "yahoops".

Denying bad faith, the Respondent says that the subject domain name is " a clever pun on two common words" and is not an attempt to confuse consumers. It says that it did not acquire the subject domain to sell it and denies sending spam as alleged by the Complainant.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;

(ii) the Respondent has no legitimate interest in respect of the domain name;

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

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;

(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;

(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on it or a location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

The parties refer to a number of previous domain name dispute and domestic court decisions. While these are neither controlling nor binding on this Administrative Panel, often reference to them is of assistance.

The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Respondent asserts that there is no evidence of actual confusion between it and the Complainant and states that: "The complete absence of any actual confusion between Complainantís YAHOO! mark and Respondentís Domain Name is, perhaps, the strongest evidence that there is no confusing similarity between the partiesí names."

This is not the test.

The question is whether the subject domain name itself is confusingly similar and the standard is objective. A complainant is not obliged to establish actual confusion. The inquiry is whether the subject domain name is similar to the Complainantís mark and, if it were, whether it would be confusingly so. The absence of any actual confusion may indicate that the domain name is not confusingly similar, but it is neither strong nor compelling evidence.

It is clear that the Complainant has rights to the word "yahoo". It has used the word for many years and has many trade marks incorporating it.

The subject domain name is similar. It differs only by the addition of the letters "ps" and .com, the latter being of no consequence. Considering the notoriety of the Complainant's mark and the fact that its primary use is on the internet, the subject domain name is confusing. Objectively, a reader would be likely to believe that the subject domain name is related to the Complainant and its mark.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

B. Respondentís Legitimate Interest

The Respondent has answered a number of assertions made by the Complainant, but of concern is the notoriety of the Complainant's mark and the possible benefit that it confers on the Respondent.

Although, the Respondent asserts that "yahoops" is a play on words or a clever pun, it did not create the term. The previous owner of the subject domain name clearly must have been aware of the Complainant's mark. It is a reasonable inference that the subject domain name was created with the Complainantís mark in mind.

Benefiting from an existing mark and reputation does not necessarily lead to a finding that the user of a domain name that is confusingly similar to another's mark, has no legitimate interest in the domain name. In this case, the Respondent is using the subject domain name for a legal business purpose and has spent time and money to develop that use. It did so for many months before objection was taken by the Complainant and the business clearly is distinguishable from the Complainant's business.

In the circumstances of this case, whether the Respondent's use offends the Complainant's intellectual property rights is not a matter for determination by this Administrative Panel. On the information available in this proceeding, it cannot be said that the Respondent does not have a legitimate interest in the subject domain name.

The majority of the Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

C. Bad Faith

The Complainant's case on bad faith is based mainly on the information it provides in support of the other two requirements it must satisfy.

In addition, it says that bad faith is exhibited by the fact that the Respondent violated its registration agreement because it had to represent that the registration did not violate the rights of another. This begs the question. It would lead to the proposition that the conclusion that a domain name is identical or confusingly similar to a complainant's mark means that the registration of the domain name was in bad faith. The Administrative Panel rejects this proposition. It is consonant neither with logic nor with the requirement that a complainant establish each component of its domain name complaint.

At best, the Complainant's bad faith claim rests on the fact that the Respondent likely is benefiting from the notoriety of the Complainant's name and mark. In the context of the information provided to the Administrative Panel in this case, that is not enough.

The majority of the Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

 

7. Decision

Based on the information presented to it and on its findings, the majority of the Administrative Panel concludes that the Complainant has not established its claim. It is dismissed.


Edward C. Chiasson, Q.C. G.
Presiding Panelist

Gervaise Davis III
Panelist

Dated: June 21, 2002

 


Dissenting opinion

The minority would hold that by adopting a famous and fanciful mark and domain name, such as the Complainantís, in its entirety, as a part of the Respondentís domain name, the Respondent is precluded, ab initio, from the ability to establish a legitimate interest in respect of that domain name.

The minority would hold that the adoption and registration of a domain name by the Respondent coupled with a statement to the registrar that such registration does not infringe the rights of any third party, when the domain name sought to be registered includes in its entirety the famous and well known domain name of the Complainant was the presentation of a knowingly false statement to the registrar, which constituted a bad faith registration. Use of the Respondentís domain name under these circumstances is a bad faith use.

The minority would have concluded that the Complainant had established its claim and would have directed that the subject domain name be transferred to it.

 


Terrell C. Birch
Dissenting Panelist

Dated: June 21, 2002