WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Yahoo! Inc. v.

Finance Ya Hoo a/k/a Victor Lashenko, Polanski a/k/a Victor Lashenko, Private a/k/a Andrey Vasiliev, Private a/k/a Alex Vorot. Games RU a/k/a Solncev Michail, Greetings Co. a/k/a Uevgeniy Sleptcov, and Victor Majevski a/k/a Marec Polanski

Case No. D2002-0694

 

1. The Parties

The Complainant is Yahoo! Inc.

The Respondent is: Finance Ya Hoo a/k/a Victor Lashenko, Polanski a/k/a Victor Lashenko, Private a/k/a Andrey Vasiliev, Private a/k/a Alex Vorot. Games RU a/k/a Solncev Michail, Greetings Co. a/k/a Uevgeniy Sleptcov, and Victor Majevski a/k/a Marec Polanski.

 

2. The Domain Names and Registrars

The domain names: Registrars:

<financeyahoo.com>- Bulkregister.com, Inc;
<gamesyahoo.com>- same as above ;
<greetingsyahoo.com>- same as above ;
<playyahoo.com>- same as above ;
<yahooauction.com>- same as above ;
<yahoolians.com>- same as above ;
<yahoohomepage.com>- same as above ;
<wwwyahoochat.com>- same as above .

 

3. Procedural History

1. On July 22/25/29, 2002, Complaint was submitted.

2. On July 24, 2002, Acknowledgement of Receipt of Complaint was sent by the Center.

3. On July 24, 2002, the Centerís Registrar Verification was received from the Registrar.

4. On July 30, 2002, Formal Compliance Review was done by the Center.

5. On July 30, 2002, Notification of Complaint and Commencement of Administrative Proceeding was sent to all related parties by the Center.

6. The Panel acknowledges that the Complainant has complied with the formal requirements pursuant to paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules").

7. On August 26, 2002, the Respondent(s) failed to file a response and was given notification of such default.

8. The Statement of Acceptance and Declaration of Impartiality was submitted by the Panelist. The date originally scheduled for the issuance of the Panelís decision was extended to September 20, 2002.

 

4. Factual Background

The 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! is the owner of the service marks and trademarks YAHOO!, as well as the trade name YAHOO! and the domain names <yahoo.com> and <yahooligans.com>. The Complainant has provided representative examples of its registrations from the U.S. Patent and Trademark Office in its supportive written materials submitted to the Panel.

 

5. Partiesí Contentions

A. Complainant :

The Complainant states, inter alia:

(Paragraph 6): Although the Rules provide that a Complaint may relate to more than one domain name as long as the domain names are registered by the same domain-name holder, in situations such as this one where it is clear that the same person is registering domain names using different fictitious names, it is appropriate to proceed in a single Complaint against multiple registrant names.

(Paragraph 7): The entities called Private and Polanski, and the individuals named Marec Polanski, Victor Majevski, Andrey Vasiliev, Victor Lashenko, Uevgeniy Sleptcov, Solncev Michail, and Alex Vorot are one in the same.

(Paragraph 8): Numerous attempts by WIPO, the National Arbitration Forum, and/or the Complainant to contact those individuals were unsuccessful.

(Paragraph 9): Mr. Vorot offered to sell the disputed domain names to Geoffrey, Inc., which indicates he still had ownership of and control over those names.

(Paragraph 10): Mr. Vorot also operates under the name Solncev Michail, who is the administrative and technical contact for the domain name <gamesyahoo.com>.

(Paragraph 17): This dispute is properly within the scope of the Uniform Domain Name Dispute Resolution Policy, approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 (the "Policy"), because the registration agreement for the Domain Names incorporates the Policy.

(Paragraph 18): This dispute is subject to mandatory administrative proceeding as provided for in Section 4(a) of the Policy because:

a.fully incorporates and is confusingly similar to Complainantís famous and federally registered trademark YAHOO!;

b. the domain name <yahoolians.com> is confusingly similar to Complainantís famous and federally registered trademark YAHOOLIGANS!;

c. because each contains and trades on the goodwill of Complainantís YAHOO!. Respondent(s) is not and has never been otherwise authorized by Complainant to use the YAHOO! And YAHOOLIGANS! marks.;

d. respondent(s)ís registration and use of the Domain Names meet the bad faith requirement described in Paragraph 4(a) of the POLICY.

(Paragraph 41): Respondent(s) is attempting to poach Internet users who, in attempting to reach Complainantís websites located at the URLs "www.finance.yahoo.com", "www.games","www.yahoo.com", "www.greetings.yahoo.com", and "www.play.yahoo.com", mistakenly omit the first segment of the domain name and period.

(Paragraph 42): Respondent(s) uses the domain name <financeyahoo.com> to redirect Internet users to a finance-related web directory located at the URL "http://www/ownbox.com/treasure/finance1.htm" and for a popup advertisement for an online casino. When Internet users attempt to exit the "ownbox.com" website, a second browser window opens to a search engine website located at "http://clickhere.gito.com".

(Paragraph 43): Respondent(s) uses the domain name <gamesyahoo.com> to redirect Internet users to a casino website and to subject Internet users to a barrage of popup advertisements and browser windows relating to casinos.

(Paragraph 44): Respondent(s) uses the domain name <playyahoo.com> to redirect Internet users to a casino website. When Internet users attempt to exit that website, two additional browser windows open to another casino website.

(Paragraph 45): Respondent(s) uses the domain name <greetingsyahoo.com> for a popup advertisement for an online casino and to redirect Internet users to a web directory located at the URL "http://www.ownbox.com/treasure/greeting-cards.htm", which is shown as such on the screen but is indicated on the printout to be "http://www/clickhere.gito.com". When Internet users attempt to exit the "ownbox.com" website, a second browser window opens to a greeting card website, "PassionUp.com".

(Paragraph 46): Respondent(s) uses the domain name <yahooauction.com> for the same casino popup ad and to redirect Internet users to the same "ownbox.com" website, except in this case the URL is "http://www.ownbox.com/treasure/shop.htm" and the second browser opens to a competing search engine website, "Dig for Gold".

(paragraph 47): Respondent(s) uses the domain names <yahoohomepage.com>, <wwwyahoochat.com>, and <yahoolians.com> for the same casino popup ad and "ownbox.com" web directory. The domain names <yahoohomepage.com> and <wwwyahoochat.com> redirect to the URL "http://www/ownbox.com/treasure/search.html", and the domain name <yahoolians.com> redirects to the URL "http://www.ownbox.com/treasure/toys.html". The domain names <yahoohomepage.com> and <wwwyahoochat.com> are also associated with a second browser that opens to a competing search engine website, "Dig for Gold".

(Paragraph 48): Respondent(s)ís registration and use of the Domain Names are designed to cause confusion and to deceive consumers into mistakenly believing that Respondent(s) and its activities are offered, authorized, or sponsored by Complainant; or are otherwise connected, associated, or affiliated with Complainant. Furthermore, Respondent(s) intended to profit, and in fact likely profited, from its use the Domain Names to generate popup advertisements and to redirect Internet users to its affiliated search engine and casino websites.

(Paragraph 49): Because the Domain Names are comprised of Complainantís famous YAHOO! mark and/or YAHOOLIGANS! mark, Internet users searching for Complainantís websites and who instead arrive at Respondent(s)ís affiliated websites are likely to be misled into believing that Complainant sponsors or endorses Respondent(s)ís affiliated websites and/or the products and services advertised on those websites.

(Paragraph 50): Respondent(s)ís misappropriation of the Domain Names has injured and will continue to irreparably injure the reputation and hard-earned goodwill of Complainant and its YAHOO! And YAHOOLIGANS! marks. If Respondent(s) is allowed to retain ownership of the infringing Domain Names, Internet users will continue to be confused and deceived; Respondent(s) will continue to profit from Complainantís YAHOO! and YAHOOLIGANS! marks; and Complainantís partnerships and reputation will be harmed.

(Paragraph 51): Pursuant to Section 4(c) of the Policy: (i) Respondent(s) is not using and has not used or is not demonstrating and has not demonstrated an intent to use the Domain Names in connection with a bona fide offering of goods or services; (ii) Respondent(s) is not and has not been commonly known by the Domain Names; and (iii) Respondent(s) is not making legitimate noncommercial or fair use of the Domain Names, without intending to mislead and divert consumers or to tarnish Complainantís YAHOO! and YAHOOLIGANS! mark for commercial gain.

(Paragraph 52): Respondent(s)ís registration and use of the Domain Names meet the bad faith element set forth in Section 4(b)(iv) of the Policy. Respondent(s) uses the Domain Names to intentionally attract, for commercial gain, Internet users to its affiliated websites by creating a likelihood of confusion with Complainantís famous YAHOO! And YAHOOLIGANS! marks as to the source, sponsorship, affiliation and endorsement of Respondent(s)ís affiliated websites and/or the goods and services offered on those websites. In addition, Respondent(s) uses the Domain Names for popup advertisements, for which Respondent(s) undoubtedly receives commissions.

(Paragraph 53): Respondent(s)ís registration and use of the Domain Names meet the bad faith element set for the in Section 4(b)(iii) of the Policy because Respondent(s) is disrupting Complainantís business.

(Paragraph 54): Respondent(s)ís registration and use of the Domain Names meet the bad faith element set forth in Section 4(b)(ii) of the Policy. Respondent(s)ís registration of the eight Domain Names that are the subject of this Complain in and of itself constitutes a pattern of registering trademark-related domain names in bad faith. Further, as shown in Paragraph 7, Respondent(s)ís use of trademark-related domain names has been the subject of at least 40 adverse UDRP decisions.

(Paragraph 55): Respondent(s)ís activities clearly constitute "typosquatting", namely, the misspelling or punctuation/letter omission of anotherís name in order to divert Internet traffic via Internet usersí typographical errors. Typosquatting has been consistently found to be in bad faith both under the UDRP and U.S. law.

(Paragraph 56): By registering the Domain Name with actual knowledge of Complainantís YAHOO! , marks and name, Respondent(s) acted in bad faith by breaching its registration contract with BulkRegister.com because it falsely represented that its registration of the Domain Names did not infringe the rights of any third party.

B.Respondents:

The Respondent(s) has not filed any submissions to the Panel.

 

6. Discussion and Findings

The Complainant has methodically met the procedural requirements under the Rules. The Panel concurs with the Complainantís submission that the instant case is one where it is appropriate to proceed in a single complaint against multiple registrant names (See Abode Systems Incorporated v. Domain Oz, WIPO Case No. D2000-0057).The Panel also notes that there has been numerous attempts (though none successful) to contact the Respondent(s) by WIPO, the National Arbitration Forum and the Complainant.

The fact that there is no counter submission by the Respondent(s), leads the Panel to conclude that the Complainant should be given the benefit of any doubt regarding the issues. Indeed, as stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy Antiques, WIPO Case No. D2000-0004:

"Respondent failure to present any such evidence or to deny complainant allegations allows an inference that the evidence would not have been favorable to Respondent."

The Respondentís default entitles the Panel to infer that it has no evidence to rebut the assertions of the Complainant. It enables the Panel to proceed to make a finding in favor of the Complainant.

Nevertheless, paragraph 4(a) of the Policy envisages that for the Complaint to succeed, the Complainant must establish that:

i) the Respondent Domain Name is identical or confusingly similar to a trademark 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 Respondent Domain Name has been registered and is being used in bad faith.

The panel in Cortefiel, S.A. v. Miguel Garcia Quintas, WIPO Case No. D2000-0140, notes that under the Policy, even if the respondent is in default, "the complainant must prove that each of these three elements are present".

In the Panelís judgement the Complainant has put forward a strong and compelling case and has met the three-part test threshold set out in Paragraph 4(a) of the Policy.

Paragraph 4(a)(i) -- Confusing Similarity with a Mark in which Complainant Has Rights

As to 4(a)(i) Even aside from the evidence of significant trademark holdings enumerated by the Complainant in its submission, the Panel supports the Complainantís argument that the very nature of the Yahoo name (i.e. its arbitrary nature) makes it unlikely that the Respondent(s) had not realized that its names could be other than confusingly similar to those of the Complainant. Adaptive Molecular Tech., Inc. v. Woodward, WIPO Case No. D2000-0006, holds that a domain name is "undoubtedly" confusingly similar because it incorporated the "primary, distinctive element of both of Complainant's trademarks."

Paragraph 4(a)(ii) -- Legitimate Interest

As to 4(a)(ii), under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the disputed Domain Names by showing:

i) its use of, or demonstrable preparations to use, the said Domain Names or a name corresponding to the said Domain Names in connection with a bona fide offering of goods or services before any notice to him of the dispute; or

ii) he (as an individual, business, or other organization) has been commonly known by the said Domain Names, even if he has acquired no trademark or service mark rights; or

iii) he is making a legitimate noncommercial or fair use of the said Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has presented no evidence in this regard. There is nothing to suggest a legitimate noncommercial or fair use of the Domain Names by the Respondent. Neither is there any evidence for any of the other two foregoing requirements.

Paragraph 4(a)(iii) -- Bad Faith

As to 4(a)(iii), the Complainantís allegations, as set out in Paragraphs 42 to 47 accompanied by the declarations as set out in Exhibits 21 to 26 can not help but propel one to the conclusion that the Respondent(s)ís registration and use of the Domain Names are designed to cause confusion and to deceive consumers into mistakenly believing that the Respondent(s) and its activities are offered, authorized, or sponsored by Complainant; or are otherwise connected, associated, or affiliated with Complainant.

The Panel concurs with the Complainants argument that the Respondent(s)ís registration and use of the Domain Names meet the bad faith element set forth in paragraph 4(a) of the Policy. It finds that the Respondent(s) uses the Domain Names to intentionally attract, for commercial gain, Internet users to its affiliated websites by creating a likelihood of confusion with Complainantís YAHOO! And YAHOOLIGANS! marks as to the source, sponsorship, affiliation and endorsement of Respondent(s)ís affiliated websites and/or the goods and services offered on those websites.

 

7. Decision

Pursuant to the Rules, paragraph 15 and as stated above, the Panel is of the view that the Complainant has met the three threshold tests as set out in Paragraph 4(a) of the Policy. Having reviewed all the submission submitted and carefully considered the evidence provided the Panel is of the view that the Complainantís requested relief should be granted and directs that the domain names <financeyahoo.com>, <gamesyahoo.com>, <greetingsyahoo.com>, <playyahoo.com>, <yahooauction.com>, <yahoolians.com>, <yahoohomepage.com>, and <wwwyahoochat.com> be transferred to it.

 


 

Haig Oghigian
Sole Panelist

Dated: September 20, 2002