World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yahoo! Inc. v. Scott Mcvey

Case No. D2011-1486

1. The Parties

The Complainant is Yahoo! Inc. of Sunnyvale, California, United States of America, represented by Keats McFarland & Wilson, LLP, United States of America.

The Respondent is Scott Mcvey of Buderim, Queensland, Australia.

2. The Domain Names and Registrar

The disputed domain names <aflyahoo7.com>, <yahoo7afl.com>, <googlesexyahoo.com>, <googleyahooebay.com>, are registered with Aust Domains International Pty Ltd dba Aust Domains, Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2011. On September 5, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 13, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2011. On September 19, 2011, the Respondent sent a short email communication to the Center. However, the Respondent did not submit any response by the specified due date.

The Center appointed James Bridgeman as the sole panelist in this matter on November 1, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is the owner of the YAHOO! web browser and provides searching, directory, information, communication, shopping, electronic commerce, and other online services.

The Complainant is the owner of the service mark and trademark YAHOO!, the trade name YAHOO! and the domain name <yahoo.com>.

The Complainant owns numerous trademark registrations for the YAHOO! mark around the world, including but not limited to federal trademark registrations in the United States, including the following representative examples:

a. Registration No. 2,403,227, first used in June 1994, filed on August 13, 1998, issued on November 14, 2000, covering telecommunications services, online computer services for a wide range of general interest information, online advertising and retail services, transportation services, and computer software in International Classes 9, 35, 38, 39, and 42.

b. Registration No. 2,040,222, first used on June 1, 1994, filed on January 24, 1996, issued on February 25, 1997, covering online computer services including creating indexes of information and providing online reference materials, software, books, and advertising services in International Classes 9, 16, 35, and 42.

c. Registration No. 2,187,292, first used on September 22, 1997, filed on February 28, 1997, issued on September 8, 1998, covering online computer services in International Class 35.

d. Registration No. 2,040,691, first used on January 2, 1996, filed on April 24, 1996, issued on February 25, 1997, covering online computer services including creating indexes of information and providing online reference materials in International Class 42.

Printouts of these registrations from the United States Patent and Trademark Office’s online database are attached as an annex to the Complaint.

The Complainant has established a “YAHOO!7” joint venture in Australia with Seven, one of Australia’s leading media companies providing online, mobile and IPTV businesses of both companies in Australia.

The disputed domain names <aflyahoo7.com> and <yahoo7afl.com> were registered on April 29, 2011, and the disputed domain names <googleyahooebay.com> and <googlesexyahoo.com> were registered on May 31, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant relies on the rights acquired by the above registrations and use of the YAHOO! trademark. The Complainant submits that it has continuously used the YAHOO! mark in commerce since 1994, and the Complainant’s YAHOO! mark has become one of the most recognized brands in the world. The Complainant has furnished evidence of the global reputation that it has established for its Internet browser and related services provided at the website to which its <yahoo.com> domain name resolves.

The Complainant submits that in addition to the variety of services offered at the Complainant’s main website, the Complainant and its partners, licencees and related companies operate many additional websites and provide addition services under the YAHOO! mark and using YAHOO-formative trademarks and domain names. The Complainant offers and has offered for many years a wide variety of services using the YAHOO! mark together with a descriptive name of its services including, for example, YAHOO! Mail, YAHOO! Messenger, YAHOO! Entertainment, YAHOO! Toolbar, YAHOO! Games, YAHOO! Finance, YAHOO! Movies, YAHOO! Music, YAHOO! News, YAHOO! Sports, YAHOO! Weather. The services are provided through websites specific to particular countries, regions, and/or languages. Representative printouts from such websites have been provided as an annex to the Complaint.

The Complainant has established business relationships and sponsorship arrangements with third parties. Of particular relevance to the present proceedings the Complainant established “YAHOO!7” joint venture in Australia with Seven, one of Australia’s leading media companies providing online, mobile and IPTV businesses of both companies in Australia. A printout from Seven’s company profile webpage detailing this joint venture has been furnished as an annex to the Complaint.

Additionally, many of the Complainant’s current online products and services are offered to the public free of charge, with the Complainant’s income being primarily derived from the sale of advertising and co-branding or sponsorship agreements with other companies. Much of the advertising consists of advertisements that appear on web pages throughout the Complainant’s YAHOO! website. The Complainant also sells sponsorships, promotions, and a wide array of other marketing services to its clients. The Complainant serves advertisements for thousands of companies each year, and its advertising clients have included a majority of the “Fortune 100” largest advertisers. The Complainant also receives revenues from an array of electronic commerce transactions originating from the YAHOO! site, including YAHOO! Shopping and YAHOO! Travel, as well as certain premium services offered to Internet users, such as website hosting and more.

Addressing the strength of its rights in the YAHOO! trademark, the Complainant submits that over ninety (90) UDRP decisions involving YAHOO!’s marks have been issued in the Complainant’s favor, and the panels in at least thirty-eight (38) such cases expressly found the YAHOO! Mark to be famous. A list of these decisions is attached as an annex to the Complaint.

The Complainant submits that each of the disputed domain names is confusingly similar to the Complainant’s YAHOO! service mark. The Complainant argues that the disputed domain names incorporate the entirety of the Complainant’s mark.

The Complainant submits that the disputed domain names are likely to confuse consumers as to its connection with the Complainant.

The Complainant argues that the disputed domain names include the entirety of the Complainant’s mark and numerous courts and prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark. See e.g., YAHOO! Inc. v. Blue Q Ltd., et al., WIPO Case No. D2011-0702 (finding <yahoopage.com> confusingly similar to Complainant’s YAHOO! mark); YAHOO! Inc. v. Junlong Zheng c/o OnlineNIC, NAF Claim No. FA 1142567 (finding <YAHOOtrips.com> confusingly similar to Complainant’s YAHOO! mark); YAHOO! Inc. et al., v. Alex Vorot et al., NAF Claim No. FA 159547 (finding the <yahoocalendar.com> and <yahoocars.com>, among others, confusingly similar to Complainant’s YAHOO! mark); and YAHOO! Inc. et al. v. Chan, NAF Claim No. FA 162050 (finding <yahoogallery.com> and <yahootunnel.com>, among others, confusingly similar to the Complainant’s YAHOO! mark).

The Complainant further argues that YAHOO! is an arbitrary, distinctive, strong and famous trademark. The Complainant submits that the distinctive and arbitrary nature of the Complainant’s YAHOO! mark supports the argument that it is highly unlikely that the Respondent could believe that the disputed domain names would not be confusingly similar to the Complainant’s YAHOO! mark. In this regard the Complainant refers to the decisions of the panels in YAHOO! Inc. v. Finance Ya Hoo a/k/a Victor Lashenko et al., WIPO Case No. D2002-0694 (citing the arbitrary nature of the YAHOO! mark contributing to a likelihood of confusion with domain names incorporating the “YAHOO” name and another generic term); YAHOO! Inc. v. Blue Q Ltd., et al., WIPO Case No. D2011-0702 (“bearing in mind the arbitrary, distinctive and well-known nature of the [YAHOO!] mark in this case… it would indeed be difficult for the Respondent to establish that he has rights or legitimate interests in the disputed domain name which contains the mark YAHOO.”)

The Complainant submits that the disputed domain names merely add a generic or descriptive term or a third party trade mark to it’s internationally famous trademark and are therefore confusingly similar to the Complainant’s mark. The Complainant submits that <aflyahoo7.com> and <yahoo7afl.com> are comprised of the Complainant’s mark and the generic or descriptive term “7” with the Australian Football League’s mark AFL; <googleyahooebay.com> is comprised of the Complainant’s mark and Google Inc.’s mark GOOGLE and eBay Inc.’s mark EBAY; the disputed domain name <googlesexyahoo.com> is comprised of the Complainant’s mark, Google Inc.’s mark GOOGLE in combination with the descriptive or generic term “sex”. The Complainant argues that the combining the Complainant’s mark with a third party’s trademark generic or descriptive term amount to minor differences that render the disputed domain name confusingly similar to Complainant’s mark.

The Complainant submits that panels established under the Policy, have consistently held that the addition of a generic or descriptive term is not sufficient to distinguish a domain name from a complainant’s mark, and many such panels have held that such additional elements relating to a complainant’s business actually increase the likelihood of confusion and association between a domain name holder and the trademark owner. See, e.g., YAHOO! Inc. v. Blue Q Ltd., et al., WIPO Case No. D2011-0702 (finding the domain name <yahoopage.com> confusingly similar to Complainant’s YAHOO! mark and noting that “with the wholesale incorporation of the YAHOO sign (which is the primary word element in the Complainant’s YAHOO! mark), the addition of the descriptive word ‘page’ does not at all serve to remove the confusing similarity with the Complainant’s mark, all the more in the context of webpages or websites”); YAHOO! Inc. v. Junlong Zheng c/o OnlineNIC, NAF Claim No. FA 1142567 (finding <yahootrips.com> confusingly similar to the complainant’s YAHOO! mark because the term “trips” describes the aspect of Complainant’s business that includes providing tools and information for Internet users planning business or recreational trips); Bridgestone Corporation v. Horoshiy, WIPO Case No. D2004-0795 (finding the domain name <bridgestonegolf com> confusingly similar to the complainant’s BRIDGESTONE mark and holding the conjunction of complainant’s mark with the nondistinctive term “golf’ increases “the likelihood of confusion, since [c]omplainant actually uses the subject mark in connection with golf, and has done so for quite some time.”); YAHOO! Inc. et al. v. Chan, NAF Claim No. FA 162050 (finding the domain names <yahoogallery.com>, <yahooimages.com>, <yahooresume.com>, and <yahootunnel.com>, among others, confusingly similar to the complainant’s YAHOO! mark and noting that “[R]espondent’s additions to Complainants’ marks, with either generic words, strings or letters or numbers, geographic names or other misspelled words do not alter the fact that Complainants’ famous marks [including YAHOO!] are the principal feature of each of these confusingly similar domain names.”).

The Complainant argues that the combinations of it’s trademark and the third party marks in the disputed domain names in the present proceeding create the impression that the disputed domain names are related to the Complainant. In this regard the Complainant refers to the decision in E. & J. Gallo Winery v. Oak Inv. Group, WIPO Case No. D2000-1213.

The Complainant further argues that panels established under the Policy have also consistently found that a respondent’s inclusion of the third party’s trademark in its domain name does not eliminate the visual impression that the disputed domain name is associated with the Complainant’s trademark. See Hoffman-LaRoche AG v. Bob, WIPO Case No. D2006-0751; Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793; Hofmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793.

The Complainant submits that the omission of the exclamation mark “!” is irrelevant in respect of making the comparison between its mark and the disputed domain names. The Complainant submits that exclamation marks are not permitted in Internet domain names. The Complainant’s main website is available at the address “www.yahoo.com” which does not contain an exclamation point.

Moreover, the dominant portion of the Complainant’s mark is “YAHOO”, so the disputed domain names would be confusingly similar even if exclamation points were permissible. Furthermore, the Complainant submits that punctuation such as exclamation marks is routinely discounted by panels when conducting analysis of confusing similarity. See, e.g., YAHOO! Inc. v. Blue Q Ltd., et al., WIPO Case No. D2011-0702 (in deciding to transfer the domain name <yahoopage.com> to the complainant, the panel noted that “the omission of the exclamation mark is irrelevant in this context”); YAHOO! Inc. v. Syed Hussaini, NAF Claim No. FA 1222425 (“Complainant’s YAHOO! mark, cannot be registered under the current DNS system in its entirety since the exclamation point character is not valid in domain names. The absence of the exclamation point (!) regarding the at-issue domain name is thus of no consequence.”); and YAHOO! Inc. v. Ratnayake, NAF Claim No. FA 1142577 (“Because exclamation points are not a permitted character in domain names, the disputed domain names do not include the exclamation point found in Complainant’s mark. The absence of this punctuation, however, does not change the analysis under Policy ¶ 4(a)(i).”).

Based on the Complainant’s clear rights to the YAHOO! mark and the public’s overwhelming association of the Complainant’s mark with the Complainant, the registration and use of the disputed domain names are likely to cause consumer confusion and initial interest confusion. The Complainant argues that it follows that the disputed domain names are confusingly similar to the Complainant’s mark.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant argues that the name associated with the Respondent, “Scott McVey”, does not incorporate or bear any similarity to the Complainant’s mark and nothing in the WhoIs information or the record demonstrates that the Respondent is commonly known by the disputed domain names.

The Complainant has not authorized the Respondent to use its YAHOO! mark. In this regard the Complainant cites and relies on the decision in YAHOO! Inc. v. Junlong Zheng c/o OnlineNIC, NAF Claim No. FA 1142567 (holding respondent has no rights or legitimate interests pursuant to paragraph 4(c)(ii) of the Policy because there is no evidence in the record or WhoIs information indicating respondent is commonly known by the disputed domain name and because complainant did not authorize respondent to use its YAHOO! mark); YAHOO! Inc. v. John Morgan, NAF Claim No. FA 1195421 (“there is no inference of any express or implied authority or license on behalf of [r]espondent to use Complainant’s YAHOO! mark in any fashion. The Panel therefore finds that [r]espondent is not commonly known by the disputed domain names, and as such lacks rights and legitimate interests under Policy ¶ 4(c)(ii).”).

The Complainant further submits that given the international fame of the Complainant’s YAHOO! mark, the Respondent could not be known by the disputed domain names. See, e.g., YAHOO! Inc. and GeoCities v. Eitan Zviely a/k/a comYAHOO.com, et al., NAF Claim No. FA 162060 (“The worldwide fame of Complainant’s marks permit a finding that anyone other than Complainant could [not] be commonly known as YAHOO!...” and that the respondent could therefore not have shown that it was commonly known by any of the disputed domain names).

The Complainant alleges moreover that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names without intent of commercial gain to misleadingly divert consumers pursuant to paragraph 4(c)(iii) of the Policy, but the Respondent was previously monetizing the disputed domain names by placing pay-per-click or sponsored listing advertisements on the webpages to which the disputed domain names resolves. The Complainant has furnished a copy of printouts of the web pages to which the disputed domain names resolves. The Complainant argues that many UDRP decisions have held that registrants that monetize domain names using sponsored listing advertisements have not made a bona fide offering of goods or services giving rise to rights or legitimate interests in a disputed domain name. See Zynga Game Network Inc. v. Emil Boc, WIPO Case No. D2009-1535; Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584.

Furthermore the Complainant submits that when challenged, the Respondent offered to sell the disputed domain names to the Complainant on numerous occasions for USD5,000 each.

The Complainant argues that the use of the disputed domain names comprising the Complainant’s mark proves the Respondent’s intention to divert consumers. The Complainant further argues that the Respondent registered the disputed domain names with the Complainant’s mark in mind and with the intention of diverting to his current or future websites Internet traffic intended for the Complainant. The Complainant submits that such use is neither legitimate nor fair. See YAHOO! Inc. v. Blue Q Ltd. et al., WIPO Case No. D2011-0702 (“Respondent could not but have known of the Complainant’s rights in the mark YAHOO! when it registered the disputed domain name [YAHOOpage.com].”)

The Complainant asserts that it’s trademark rights in its YAHOO! mark and variations thereof predate the Respondent’s registration of the disputed domain names. The Complainant first made use of it’s YAHOO! mark in 1994 and asks this Panel to note that the Respondent did not register the disputed domain names until 2011.

The Complainant submits that the Respondent was well aware of the valuable goodwill and reputation represented by the Complainant’s mark; the Complainant’s YAHOO! mark is recognized and relied upon by online consumers throughout the world to identify and distinguish the Complainant’s website and services from the goods and services of others. See YAHOO! Inc. v. Blue Q Ltd. et al., WIPO Case No. D2011-0702.

The Complainant submits that it is hardly coincidental, the date that the disputed domain names <aflyahoo7.com> and <yahoo7afl.com> were each registered on the day after the Complainant’s joint venture YAHOO!7 published an article online regarding the USD1.25 billion deal reached between The AFL, Channel 7 and Foxtel regarding TV rights for the Australian Football League’s matches from 2012 to 2016. The Complainant has furnished a printout of said article as an annex to the Complaint. The Complainant submits that it follows that the disputed domain names <aflyahoo7.com> and <yahoo7afl.com> were registered in bad faith.

The Complainant furthermore argues that the Respondent undoubtedly registered the disputed domain names in bad faith with actual knowledge of the Complainant’s rights in its YAHOO! mark because the Complainant’s mark is internationally famous, and is registered globally. As such, the Respondent’s subsequent registration of the disputed domain names is sufficient to satisfy the bad faith requirement. See Charleston Alexander Jewelers, Inc. v. Virtual Sky, NAF Claim No. FA0504000452231 (“Registration of a domain name that is confusingly similar to another’s mark despite actual or constructive knowledge of the mark holder’s superior rights is tantamount to bad faith registration and use”).

The Complainant also argues that the Respondent clearly knew that the inclusion of the YAHOO! mark in the disputed domain names would serve to draw Internet traffic to the website at the disputed domain names, capitalizing upon the fame of the Complainant’s YAHOO! Mark. The Complainant submits that the registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the Policy. See, e.g., YAHOO! Inc. v. Yuan Zhe Quan, NAF Claim No. FA 117877 (respondent’s registration of the domain names with knowledge of complainant’s rights was in bad faith because “the YAHOO! mark has developed into one of the most famous marks associated with the Internet by way of the mark’s use on the highly popular <YAHOO.com> website.”); YAHOO! Inc. v. Denis Jalbert, NAF Claim No. FA 166020 (holding respondent registered the disputed domain names including <yahhoowebcam.com> and <yahhoowebcams.com> in bad faith with knowledge of complainant’s rights in its YAHOO! mark by virtue of complainant’s registration of its mark in Canada, where respondent is located, and in the United States).

Arguing that the Respondent has registered and is using the disputed domain names in bad faith, the Complainant submits that on or about June 17, 2011, the Complainant sent via electronic mail a letter informing the Respondent of the Complainant’s trademark rights in the YAHOO! mark and requested transfer of the disputed domain names. Later that day, the Respondent sent via electronic mail, a response stating that “If YAHOO inc wants the domain names listed they are available for sale at $5000 each.”

On or about June 28, 2011, the Complainant’s counsel, sent via electronic mail, a letter informing the Respondent of the Complainant’s trademark rights in the YAHOO! mark and requested transfer of the disputed domain names. Later that day, the Respondent sent via electronic mail a response stating that “these domain names will be developed into full web sites. [T]hey will prominently display that they are not licensed dealers of YAHOO products but resellers of varied products and services. [H]owever if YAHOO inc wants these domains they can be purchased for AUS $5000 each. [P]recedents have been set regarding the use of a trade marked word or term within a domain name. [I]t is completely legal.”

On or about June 29, 2011, the Complainant’s counsel sent via electronic mail a response letter to the Respondent indicating that “an offer to sell the domain name to YAHOO! for $1200 constituted bad faith under ICANN’s UDRP policy” which is far less that Respondent’s demand of $5000 per domain. In support of this statement, the Complainant’s representative attached a recent decision issued in YAHOO! Inc. v. Blue Q Ltd., et al., WIPO Case No. D2011-0702, in which the panelist ordered the transfer of the domain YAHOOpage.com to YAHOO! and a copy of search results showing that over similar decisions in favor of YAHOO! have been issued under the ICANN policy. In addition, the Complainant’s representative stated that “YAHOO! will offer to pay your registration costs only for these 4 domain names. If you do not accept this offer, and immediately remove all content from the sites at the domain names referenced above, YAHOO! will have no choice but to proceed with an ICANN complaint against you. Of course, if it does so, it will not reimburse any registration costs.”

Later on June 29, 2011, the Respondent sent via electronic mail a response indicating that “[w]e have at no time ever approached YAHOO to buy our domains, we have only ever said that if YAHOO wants our domains they are available for sale at this point in time. However we have plans to develop these sites in the near future and have not nor ever will engage in bad faith activity. We will remove the domains from being parked but will not give them away, as mentioned in previous correspondence our domains will be legally used so they will not infringe on a trade mark holder.”

On or about July 1, 2011, the Respondent responded to another electronic mail from the Complainant’s counsel and stated “[w]e have not ever nor ever will demand money from a possible trade mark holder after they approach us for any reason. [W]e have only mentioned that the domains are available for sale for $5000 each and not to try reverse hijacking or scaring us with big legal letters. [T]hey have been listed for sale since their acquisition date. [S]ome we may sell prior to development if the rite offer comes along, the fact that we mentioned they were for sale does not constitute bad faith. If YAHOO wants the domains they can buy them like anybody else and stop trying to use their size to bully the little fellas out of what is rightfully theirs. We have not registered these domains for bad faith purposes. [A]s you now owning a domain name that contains a trade marked term or word within it is completely legal. [I]t is how that domain name is used that will determine infringements or not. [W]e have removed the domains from being parked and they are waiting to be developed. [T]hank you for your concern about what the sites will contain, but we can not give that info away as you will appreciate the speed and unlimited ways that cyber space presents opportunities to those who have there eyes open or a bit of imagination and creativity.”

Less than one hour later, the Respondent sent via electronic mail a second response indicating that “[i]t has just come to my attention that YAHOO may be trying to acquire these domains especially the ones that incorporate the AFL initials because the seven network and the Australian football league have recently made a big deal with each other in which YAHOO is a partner. [M]y use for the domains will have massive benefits for the AFL fan and will only benefit YAHOO and the seven network all rights and necessary licences will be in place before our launch of any sites. [A]ll combinations of the domains were registered for our future protection of the future site.”

The Complainant has furnished copies of emails as evidence of said exchange of correspondence in an annex to the Complaint.

The Complainant submits that even after being informed by the Complainant’s counsel of Complainant’ rights to the YAHOO! marks, the Respondent refused to transfer the disputed domain names for a reasonable sum that would cover his registration fees.

Rather, the Respondent said he would transfer the disputed domain names for AUD 5,000 each.

Furthermore, the Complainant alleges that the Respondent registered the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names for valuable consideration in excess of the Respondent’s out-of-pocket costs and with the intent to block the Complainant from using the disputed domain names, which constitutes evidence of bad faith. In particular, the Respondent stated that the disputed domain names “have been listed for sale since their acquisition date. Some we may sell prior to development if the rite offer comes along… If YAHOO wants the domain names they can buy them like anybody else…” The Respondent further indicated that “it has just come to my attention that YAHOO may be trying to acquire these domains especially the ones that incorporate the AFL initials because the seven network and the Australian football league have recently made a big deal with each other in which YAHOO is a partner. [M]y use for the domains will have massive benefits for the AFL fan and will only benefit YAHOO and the seven network .all rights and necessary licences will be in place before our launch of any sites. [A]ll combinations of the domains were registered for our future protection of the future site.”

The Complainant submits that based on the circumstances enumerated above, it is clear that the Respondent registered and is using the disputed domain names in bad faith and in violation of the Policy. The Complainant submits that pursuant to the Anticybersquatting Consumers Protection Act (“ACPA”), codified at 15 U.S.C. 1125(d)(B)(VIII), and paragraphs 4(a)(iii) and 4(b)(ii) of the Policy, the Respondent’s conduct constitutes bad faith cybersquatting. See Porsche Cars North Am., Inc. v. Spencer, 2000 US. Dist. LEXIS 7060, *8 (E.D. Cal. 2000); Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000) (bad faith found where registrant did not have trademark rights in the infringing domain when registered); Shields v. Zuccarini, 254 F.3d 476, 485 (3rd Cir. 2001); E. & J. Gallo Winery v. Oak Inv. Group, WIPO Case No. D2000-1213 (“The offering for sale of a domain name, even to a third party, supports bad faith”).

In conclusion, the Complainant argues that while some cases under the UDRP procedure have allowed for the transfer of a domain name that include the Complainant’s trademark and a trademark of a third party where the Complainant had presented evidence of the consent of third party trademark owners with a potential interest in the transferred domain name, see, inter alia, Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793; and YAHOO, Inc. v. M&A Enterprise, WIPO Case No. D2000-0748, other cases have awarded transfer of such domain names to the Complainant without such evidence and noted that neither the Policy nor the Rules expressly require such consent. See, e.g., Hoffman-LaRoche AG v. Bob, WIPO Case No. D2006-0751. Regardless of whether the Complainant has the consent of the owner of the third party trademarks included in the disputed domain names the Respondent was not authorized to use the Complainant’s YAHOO! mark. Therefore, at the very least, the disputed domain names containing third party trademarks should be removed from the Respondent’s control.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its application paragraph 4(a) of the Policy places on the Complainant the onus of proving that:-

(i) the domain name in dispute 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 said domain name; and

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

A. Identical or Confusingly Similar

While the Policy itself does not provide any guidance as to how a panel may determine confusing similairty for the purposes of paragraph 4(1)(a). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 provides the following answer to the question: “What is the test for identity or confusing similarity, and can the content of a website be relevant in determining this?”

“The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms [regarding the latter see further paragraph 1.3 below] typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. While each case must be judged on its own merits, circumstances in which a trademark may not be recognizable as such within a domain name may include where the relied-upon mark corresponds to a common term or phrase, itself contained or subsumed within another common term or phrase in the domain name (e.g. trademark HEAT within domain name theatre.com).

However: Some panels have additionally required that, for a domain name to be regarded as confusingly similar to the complainant's trademark, there must be a risk that Internet users may actually believe there to be a real connection between the domain name and the complainant and/or its goods and services. Such panels would typically assess this risk having regard to such factors as the overall impression created by the domain name, the distinguishing value (if any) of any terms, letters or numbers in the domain name additional to the relied-upon mark, and whether an Internet user unfamiliar with any meaning of the disputed domain name seeking the complainant's goods or services on the world wide web would necessarily comprehend such distinguishing value vis-à-vis the relevant mark.

The applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark. The content of a website (whether it is similar to or different from the business of a trademark holder) would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP, although such content may be regarded as highly relevant to assessment of intent to create confusion (e.g., within a relevant market or language group) under subsequent UDRP elements (i.e., rights or legitimate interests and bad faith).”

The principles applied by panelists, including those who require that the Complainant should establish a risk that Internet users actually believe there to be a real connection between the disputed domain name and the complainant, it’s goods and services are therefore:

the relevant trademark would generally need to be recognizable as such within the domain name;

the addition of common, dictionary, descriptive, or negative terms are typically regarded as insufficient to prevent threshold Internet user confusion;

the test typically involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name;

each case must be judged on its own merits;

circumstances in which a trademark may not be recognizable as such within a domain name may include where the relied-upon mark corresponds to a common term or phrase, itself contained or subsumed within another common term or phrase in the domain name (e.g., trademark HEAT within domain name <theatre.com>);

there must be a risk that Internet users may actually believe there to be a real connection between the domain name and the complainant and/or its goods and services having regard to such factors as the overall impression created by the domain name, the distinguishing value (if any) of any terms, letters or numbers in the domain name additional to the relied-upon mark, and whether an Internet user unfamiliar with any meaning of the disputed domain name seeking the complainant's goods or services on the world wide web would necessarily comprehend such distinguishing value vis-à-vis the relevant mark.;

the applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark;

the content of a website (whether it is similar to or different from the business of a trademark holder) would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP.

Disregarding the applicable top-level domain suffix “.com” and the website content and applying a straightforward visual and aural comparison of the trademark with the alphanumeric string in the domain name, judging each of the disputed domain names on its own merits in the present Complaint, this Panel finds that the relevant trademark YAHOO! is recognizable as such within each disputed domain names, albeit without the exclamation mark “!”. The exclamation mark is not relevant for any aural comparison.

Furthermore in no instance is the Complainant’s trademark contained or subsumed within another common term or phrase within the domain name.

The disputed domain names <aflyahoo7.com> and <yahoo7afl.com> are each composed of a combination of the word “Yahoo” with the addition of the number “7” which is the numeric representation of the name of the Complainant’s joint-venture partner Seven together with the acronym “AFL” of the Australian Football League with which both the Complainant and Seven had made a contract that was announced immediately prior to the registration of the disputed domain names

The disputed domain name <googlesexyahoo.com> is a combination of the domain name of the competing Internet browser Google, the common dictionary word “sex” and the mark YAHOO, whereas the disputed domain name <googleyahooebay.com> is a combination of three well known Internet based businesses viz. the Complainant’s YAHOO mark, Google and eBay.

The central question is whether these recognisable combinations of well known trademarks are sufficient to prevent threshold Internet user confusion?

The Complainant has referred to a number of cases involving the combination of a complainant’s trademark and a third party trade mark.

In Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793, the panel stated:

“The disputed domain name <viagra-nascar.com> directly incorporates Complainant’s mark as its lead term, and adds a hyphen and the trademark and service mark of a third party (as well as the gTLD ‘.com’). The addition of the third party mark does not eliminate the visual impression that the disputed domain name is associated with Complainant’s trademark. Moreover, in light of Complainant’s use of its mark in connection with the third party mark for its own advertising purposes, the combination of the two marks would convey to Internet users familiar with Complainant’s advertising an expected association. In the circumstances of this proceeding, the addition of a hyphen and ‘.com’ do not serve to alleviate potential Internet user confusion between the disputed domain name and Complainant’s mark. Based on the overall visual impression and expected Internet user association, the Panel determines that the disputed domain name is confusingly similar to Complainant’s ‘VIAGRA’ mark.”

In Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793 the panel found that the domain name in dispute was identical or confusingly similar to Roche’s XENICAL mark and held:

“The issue is not whether confusion is likely in the trademark sense (that is, confusion as to source based on the domain name and its use in connection with a website), but rather, whether the domain name, standing alone, is sufficiently similar to the trademark to justify moving on to the other elements of a claim for cybersquatting.Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774. The challenged domain name includes the term “Xenical”, which is identical to the complainant’s mark.

The Respondent’s inclusion of other third party trademarks in its domain name does not change this result. UDRP panels have consistently found a likelihood of confusion under these circumstances. G.D. Searle & Co. v. Entertainment Hosting Services, Inc. NAF Claim No. FA0204000110783. (Challenged domain name <viagra-propecia-xenical-celebrex-claritin-prescriptions.com> likely to be confused with complainant’s CELEBREX mark); Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142. (Respondent’s domain name <chevron-Texaco.com> was likely to be confused with Complainant’s mark CHEVRON). The Chase Manhattan Corporation and Robert Fleming Holdings Limited v. Paul Jones, WIPO Case No. D2000-0731 (Challenged domain name <chase-flemming.com> likely to confused with co-complainants’ marks CHASE and FLEMMING). See also, Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793 (Challenged <pfizer-nascar.com> likely to be confused with Complainant’s PFIZER mark; the addition of the third party mark does not eliminate the visual impression that the disputed domain name is associated with Complainant’s trademark; Nascar consented to transfer).

In F. Hoffmann-La Roche AG v. Bob, WIPO Case No. D2006-0751 the panel noted that:

“UDRP panels have consistently found that the Respondent’s inclusion of the third party’s trademark in its domain name does not eliminate the visual impression that the disputed domain name is associated with the Complainant’s trademark. See to this effect, inter alia, Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793 and Hofmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793.”

In each case the respective panellist directed transfer of the domain names in dispute to the complainant notwithstanding that the domain name incorporated third party trademarks.

In the view of this Panel, most Internet users are familiar not only with the Complainant’s YAHOO! mark and browser but also with the competing Google browser and the Internet services provided by eBAY. In the view of this Panel each of these marks are sufficiently well known internationally that the Panel may take judicial notice of each of them for the purposes of these administrative proceedings.

The question is therefore would an Internet user conclude that because the disputed domain names incorporate or entirely consist of a combination of these well known trademarks there is no connection with the Complainant?

In the view of this Panel there is a risk that some Internet users are likely to conclude that there is a connection between each of the disputed domain names and the Complainant.

This Panel finds on the balance of probabilities that in selecting the disputed domain names, the registrant sought and intended in each case to create an impression of association between the disputed domain name and the Complainant or the Complainant’s business. The most probable intention was to ensnare Internet users seeking the services of GOOGLE, eBAY and/or the Complainant. The registrant’s probable intention in selecting and registering the disputed domain names can infer a confusing similarity with the Complainant’s YAHOO! mark and the GOOGLE and EBAY service marks also.

The Complainant is entitled to succeed in the first element of the test in paragraph 4 of the Policy.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. Each of the disputed domain names incorporates the word “Yahoo” which is almost identical to the Complainant’s well known mark YAHOO! and the Respondent has not been authorized to use the Complainant’s mark, the Respondent is not known by the domain names and neither is he putting the disputed domain names to any legitimate noncommercial use.

In such circumstances it is well established under the Policy that the burden of production shifts to the Respondent to establish that he has rights or legitimate interests in the disputed domain names. In this proceeding, the Respondent has failed or neglected to furnish a Reply or otherwise provide any evidence of any rights or legitimate interests he might have in the disputed domain names. Furthermore the record contains no evidence or indication of any rights or legitimate interests that the Respondent may have in the disputed domain names.

In the circumstances this Panel finds that the Respondent has failed to discharge the burden of production and the Complainant is entitled to succeed in the second element of the test in paragraph 4 of the Policy also.

C. Registered and Used in Bad Faith

This Panel finds on the balance of probabilities that the disputed domain names were each registered in bad faith. On the evidence the disputed domain names were selected and registered to take predatory advantage of the Complainant’s YAHOO! trademark and the goodwill of third party trademark owners Google, Seven and the Australian Football League (AFL). It is improbable that the disputed domain names were selected for any other purpose.

This Panel finds also that the disputed domain names are being used in bad faith. When approached by counsel for the Complainant who gave details of the Complainant’s rights in the YAHOO! trademark and requested transfer of the disputed domain names, the Respondent requested payment of AUD5,000.00 for each of the registrations.

On the balance of probabilities therefore by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the Complainant’s YAHOO! mark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location as prohibited by paragraph 4(b)(iv) of the Policy.

Furthermore, on the evidence adduced by the Complainant that the Respondent demanded AUD 5,000.00 for each of the disputed domain names, and in the absence of any Response or other explanation from the Respondent, this Panel finds on the balance of probabilities the Respondent registered or acquired each of the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names to the Complainant who is the owner of the YAHOO! trademark or to an associate or a competitor of the Complainant, or to the owner of the GOOGLE, EBAY or AFL marks for valuable consideration in excess of his documented out-of-pocket costs directly related to the disputed domain names.

In the circumstances the Complainant has succeeded in each of the three elements in the test in paragraph 4 of the Policy and is entitled to succeed in this Complaint.

Finally, it should be mentioned for the sake of completeness, that in directing the relief sought in the Complaint, this Panel is following the approach taken in each of the abovementioned cases Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793; Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793; F. Hoffmann-La Roche AG v. Bob, WIPO Case No. D2006-0751 in which the respective panel directed transfer of the domain names in dispute to the complainant notwithstanding that the subject domain name incorporated third party trademarks. The Policy does not have any provision as such for joinder of third parties who may have an interest in a disputed domain name and the present decision issued on an expedited basis under the Policy would naturally not bind any court that may subsequently be called upon to consider any third party trade mark interests in any of the disputed domain names in this particular Policy proceeding, should it ever come to that.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <aflyahoo7.com>, <googlesexyahoo.com>, <googleyahooebay.com>, <yahoo7afl.com> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Dated: November 15, 2010

 

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