WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. v. Nicolas Morrow
Case No. D2011-1487
1. The Parties
Complainant is Yahoo! Inc. of Sunnyvale, California, United States of America, represented by Keats McFarland & Wilson, LLP, United States of America.
Respondent is Nicolas Morrow of Tacoma, Washington, United States of America.
2. The Domain Names and Registrar
The disputed domain names <nastyflickr.com> and <nudeflickr.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, 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 6, 2011, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Registrar also confirmed that the Disputed Domain Names have been locked by the Registrar pending a decision in these proceedings.
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 Respondent of the Complaint, and the proceedings commenced on September 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2011. Respondent failed to submit any response. Accordingly, the Center notified Respondent’s default on October 3, 2011.
The Center appointed James H. Grossman as the sole panelist in this matter on October 13, 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
Complainant is a leading global Internet brand and communications, commerce, and media company. It offers a branded network of searching, directory, information, communication, shopping, electronic commerce, and other online services, including the photo sharing service, Flickr. Complainant is the owner of the service mark and trademark YAHOO!, the trade name YAHOO!, and the domain name <yahoo.com>. Complainant acquired the Flickr photo-sharing and management business in 2005 from a Canadian based company. Complainant operates a photo-sharing website under the FLICKR trademark owned by Complainant which has been registered in countries around the world. For example, its trademark in the United State of America:
U.S. Registration No. 3,455,275 for the FLICKR mark, first used on February 28, 2004, filed on May 10, 2005, issued on June 24, 2008, covering goods and services in International Classes 9 (computer software for use in connection with photographs); 38 (communication services and online services including services relating to photographs); 39 (electronic storage of digital content including photographs); 40 ( digital enhancement of photographs; alteration and/or retouching of photographic images); and 41 (online journals, namely, blogs concerning topics of general interest to the blogger; photography services; providing information in the field of photography).
In the European Community Complainant owns rights to Community Trademark No. 004715397 for the FLICKR trademark, filed on October 31, 2005, issued on April 24, 2007 covering categories similar to those listed in the U.S. Registration.
Complainant also owns the domain names <flickr.com > and <flicker.com>. The domain name <flickr.com> was registered in November 2003 and acquired by Complainant with the FLICKR business.
Respondent registered the Disputed Domain Names on the following dates: <nastyflickr.com > on January 23, 2008 and <nudeflickr.com> on February 7, 2008. It should be noted that the registration for <nastyflickr.com> expires on January 23, 2012 and <nudeflickr.com> expires on February 7, 2012.
5. Parties’ Contentions
Complainant states that its FLICKR trademark dates back to its filing with the United States Patent and Trademark Office (“USPTO”) in 2005, as shown above in the Factual Background, thus predating Respondent’s registration of the Disputed Domain Names in 2008. By 2008 the Flickr website had become widely known and used around the world. The Disputed Domain Names each include the entirety of Complainant’s FLICKR trademark which courts and prior UDRP panels have found to be sufficient to establish that the domain name in dispute is confusingly similar to the complainant’s domain name. Also, in this regard, Complainant sets forth in Annex U to its Complaint a copy of the style and colors of one of the Disputed Domain Names using the familiar color coordination (blue “FLICK” and red “R” --adding “NUDE” in red) as commonly used by Complainant with its FLICKR trademark. This is strong evidence of the intentional confusion created by the Respondent’s actual use of the Disputed Domain Names.
Complainant argues that Respondent has no rights or legitimate interests in the Disputed Domain Names and has registered them in bad faith. Respondent’s use, according to Complainant, has been to feature pornographic images which link an Internet user to other pornographic, commercial websites when clicked on. This diversion of Complainant’s domain names to a pornographic site for financial gain constitutes what prior panels have held to be a bad faith use.
Complainant states that it was ranked as the “most trusted technology company in the world” by the Edelman Trust Barometer in 2010. In May, 2011 comScore Media Metrix, a publicly traded global company involved in digital business analytics, ranked Flickr as the number one photo service in the world, attracting 75.1 million unique visitors globally.
On August 4, 2011, the six billionth photo was uploaded to the Flickr website. The Flickr website has won awards, including many Webby awards from the tech community. Accordingly, Complainant makes its case that the FLICKR mark has had significant commercial success around the world through extensive usage of its photographic services which in turn is part of the larger YAHOO! worldwide image with its own extensive commercial strength. According to Complainant, the distinctive nature and inherent strength of Complainant’s own trademark and that of its FLICKR mark should be protected from such blatant abuses as Respondent’s wrongful use of the FLICKR name.
In May and June, 2011 Complainant’s counsel emailed Respondent on a number of occasions informing him of Complainant’s trademark rights in the FLICKR trademark and requesting transfer to Complainant of the Disputed Domain Names. Copies of such correspondence were provided to the Panel. Complainant states in its Complaint that Respondent did not respond to any of the communications from counsel for Complainant and that this as well should be considered in the Panel’s consideration of bad faith by Respondent.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed on its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
i. The Disputed Domain Names are identical or confusing similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests with respect to the Disputed Domain Names; and
iii. The Disputed Domain Names have been registered and are being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Because Respondent has defaulted by failing to timely file a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)) and certain factual conclusions may be drawn on the basis of Complainant’s undisputed representations (id paragraph 15 (a)). The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. Vertical Solutions Mgmt., Inc. v. webnetmarketing, inc., NAF Claim No. FA 95095.
A. Identical or Confusingly Similar
The Panel is of the view that there is little doubt as to the broad based international awareness of the YAHOO! and FLICKR trademarks. The Panel agrees with the Complainant’s argument that the registration of the FLICKR trademark with the USPTO and other governmental trademark authorities around the world together with the fact that the Disputed Domain Names include the entirety of the FLICKR trademark is sufficient to establish a strong prima facie case that these Disputed Domain Names are identical or confusingly similar to the Complainant’s trademark (FLICKR). See Yahoo! Inc. v. Value Domain c/o Value-Domain Com and Digirock, Inc., NAF Claim No. FA 0905001260975. Further, the Disputed Domain Names simply add generic or descriptive terms (“nasty”, or “nude”) to the original FLICKR trademark and prior panels have determined such generic or descriptive additions are considered confusingly similar with such a trademark. V &S Vin and Sprit AB v. Corrine Ducos, WIPO Case No. D2003-0301 (“the juxtaposition of the [Complainant’s trademark ABSOLUT] and the word BABES to create the Domain Name <absolutbabes.com> for a site that advertised pornographic goods and services] indicates that the Respondent sought to create an impression of association with the Complainant.”
It could be argued that adding something as different as “nasty” and/or “nude” to a trademark like FLICKR would or perhaps should alert an Internet user that this site was not from the same source as the Domain Name FLICKR. However, such an argument would be unlikely of success in view of the commercial and image success of the FLICKR trademark and the fact that the trademark is still the dominant or the principal component of each of the Disputed Domain Names (since there was no response from Respondent this point is only raised for purpose of a full understanding of the issue).
Accordingly, the Panel finds that the Disputed Domain Names are identical or confusingly similar to Complainant’s trademark FLICKR.
B. Rights or Legitimate Interests
Respondent is apparently an individual with no known affiliation whatsoever with the internationally well known FLICKR trademark. Complainant confirmed that it has not given Respondent any license or any other express or implied right to use the FLICKR trademark. It is more than unlikely that Respondent would not have been aware of the FLICKR trademark, especially in view of the unusual spelling of “Flickr” rather than the English spelling of “Flicker”. See similar issues raised in V &S Vin and Sprit AB v. Corrine Ducos, supra (finding that the respondent has no rights or legitimate interests in the disputed domain name <absolutbabes.com> and that it was registered and used in bad faith, noting that “it is very unlikely that the Respondent would not have been aware of the ABSOLUT trademark when registering the Domain Name. This is evidenced by the fact that the Respondent registered domain names comprising ABSOLUT as opposed to ABSOLUTE OR ABSOLUTO, being the correct English and Spanish spellings of the word, respectively.”)
Also, Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names. In this instance, Respondent is simply passing off the Disputed Domain Names as being connected to one of the world’s most well known Internet names (YAHOO!) as well as it’s well known photographic business (Flickr) in order to send Internet users to a pornographic site(s) which likely provided Respondent with income through a pay-per-click or other format.
While the overall burden of proof rests with Complainant, prior panels have agreed that this could require a complainant to prove a negative, requiring complainant to provide information primarily within the knowledge of the respondent. Therefore a complainant is required only to make a prima facie case that a respondent lacks rights or legitimate interests. In this case, the Panel accepts that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Names. Accordingly, the burden of rebuttal is transferred to Respondent. Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455. Since Respondent has failed to respond to the Complaint, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy and accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Names.
C. Registered and Used in Bad Faith
It is difficult not to agree with Complainant that Respondent has simply taken unfair advantage of the goodwill and reputation associated with the FLICKR trademark owned by Complainant. There is little doubt that Respondent had constructive notice of the already well known trademark owned by Complainant when Respondent filed for registration of the Disputed Domain Names in 2010. Champion Broadcasting System Inc. v. Nokta Internet Technologies, WIPO Case No. D2006-0128 (“Respondent’s constructive knowledge of Complainant’s rights in the mark WUNR [FLICKR] and the use of a confusing similar domain name is indicative evidence of bad faith”. See also Ebay Inc. v. SGR Enterprises, WIPO Case No. D2001-0259. In its use of the Disputed Domain Names, Respondent has as its goal to divert Internet viewers, motivated by commercial gain (either directly through pay-per-click payments from the end site to Respondent or at the very least gathering information on FLICR’s photo users) and, together with the confusingly similar Disputed Domain Names, created a bad faith registration and use. This is only compounded by the diversion of the trademark to a pornographic site. Six Continents Hotels, Inc .v. Seweryn Nowak, WIPO Case. No. D2003-0022 (“It is commonly understood, under WIPO case law, that, whatever the motivation of Respondent, the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”) Such use for pornographic material can no doubt harm the goodwill and reputation of Complainant in that Internet users will believe that this site is owned by Complainant. See V &S Vin and Sprit AB v. Corrine Ducos, supra (“the use of the Domain Name <absolutbabes.com> to address a website offering pornographic products and services tarnishes the ABSOLUT trademark, and this is evidence of bad faith”). At least such diversion to a pornographic site creates a prima facie case of bad faith. MatchNet PLC v. MAC Trading, WIPO Case No. D2000-0205. It is a reasonable assumption for this Panel to believe that Respondent was profiting from this diversion. Finally, there is also prior WIPO case decision stating that the failure of Respondent to respond to the various communications sent by Complainant’s counsel in May and June, 2011, as described above, is evidence of bad faith. V &S Vin & Spirit AB v. Oliver Garcia, WIPO Case No. D2002-1081.
For all of the above reasons, the Panel finds that Complainant has satisfied paragraph 4 (a) iii of the Policy.
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 <nastyflickr.com> and <nudeflickr.com> be transferred to the Complainant.
James H. Grossman
Dated: October 20, 2011