WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. v. Wing Hung Trading Company
Case No. D2000-1137
1. The Parties
The Complainant in this administrative proceeding is Yahoo! Inc., a Delaware corporation with its principal place of business at 3420 Central Expressway, Santa Clara, California 95051, U.S.A. The Respondent is Wing Hung Trading Company, with a street address at 230 Grand StreetA1, New York, New York 10013, U.S.A.
2. The Domain Name and Registrar
The domain names in dispute are as follows: "newyahoo.com" and "yahoo-usa.com". The domain names were registered by Respondent with Network Solutions, Inc. (NSI) on August 3, 1998 and July 17, 1998, respectively.
3. Procedural Background
On August 28, 2000, the WIPO Arbitration and Mediation Center received from Complainant via e-mail a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
The Complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.
The instant Administrative Proceeding was commenced on October 8, 2000.
Respondent did not file a Response, and a "Notification of Respondent Default," dated October 30, 2000, was forwarded by WIPO to Respondent.
The decision of the Panel was due to WIPO on or before November 30, 2000.
4. Factual Background
Complainant Yahoo! is a global Internet communications, media, and commerce company that offers a branded network of comprehensive searching, directory, information, communication, and shopping services to millions of Internet users daily. Yahoo!'s services include web directory and search services. The YAHOO! web directory was developed in early 1994.
The YAHOO! website is one of the leading Internet web guides in terms of traffic, advertising, and household and business user reach and is one of the most recognized brands associated with the Internet. Indeed, the YAHOO! brand has been ranked as the most valuable brand associated with the Internet (see Complaint, Exhibit 6), and the YAHOO! mark has been held "famous" by at least one court. See Yahoo! Inc. v. Buffalo Wu, CA-00-00178-A. See Complaint, Exhibit 7.
In addition to the variety of services offered at Yahoo!'s main site located at the domain name "yahoo.com", Yahoo! operates many additional sites under the YAHOO! mark and using YAHOO-formative marks and domain names. Complainant also has sites that are specific to particular countries or regions and operates other sites specific to particular topics or population groups, such as the YAHOO! Chinese site, which is directed to Chinese speakers around the world. The Chinese characters for YAHOO! appear directly below the YAHOO! name. See Complaint, Exhibit 4.
Complainant owns (as successor in interest to Yahoo! Inc., a California corporation (see Complaint, Exhibit 9)) a host of U.S. trademark registrations for the YAHOO! mark. See Complaint, Exhibit 9.
As noted above, Respondent registered the "newyahoo.com" and "yahoo-usa.com" domain names with NSI on August 3, 1998 and July 17, 1998, respectively. See Complaint, Exhibit 1. Yahoo! learned of Respondent's activities with respect to the "newyahoo.com" website on or about March 16, 1999. The "newyahoo.com" domain name connects to a website which prominently features the name "wrusa.com" and the Chinese lettering for the the word Yahoo!. See Complaint, Exhibit 11. Respondent's "wrusa.com" website provides a wide range of web services, including searching, directory, and general information services.
Yahoo!'s in-house trademark counsel sent a "cease and desist" letter to Respondent about the "newyahoo.com" website and domain name on August 25, 1999. See Complaint, Exhibit 12. Complainant was told that the site had been deactivated and was for sale for an unspecified sum. Complainant later learned, however, that the "newyahoo.com" site had been reactivated. While Complainant was told the site would be deactivated, the site remains active.
Yahoo! became aware of the "yahoo-usa.com" domain name on April 2, 2000, when conducting a search for domain names owned by Respondent. Yahoo! is not aware of any active website having been located at this domain name.
In addition to the domain names in dispute, Respondent has also registered the domain name "newexcite.com", the name of another well-known Internet search website preceded by the term "new."
5. Parties' Contentions
Complainant contends that the disputed domain names fully incorporate its valuable and famous YAHOO! trademark and are confusingly similar thereto. It further argues that Respondent has no rights or legitimate interests in the domain names given that: (1) Respondent is not using and has not used the domain names in connection with a bona fide offering of goods and services; (2) Respondent is not and has not been commonly known by the domain names; and (3) Respondent is not making legitimate noncommercial or fair use of the domain names.
With respect to the issue of "bad faith" registration and use, Complainant asserts that: (1) Respondent used the "newyahoo.com" domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Yahoo's YAHOO! mark as to the source, sponsorship, affiliation and endorsement of Respondent's website and of the services offered at the site; (2) Respondent's registration and use of the "newyahoo.com" domain name was primarily for the purpose of disrupting the business of a competitor; (3) Respondent registered the "newyahoo.com" domain name primarily to sell, rent or otherwise transfer the domain name for valuable consideration in excess of its out-of-pocket expenses; and (4) Respondent has engaged in a pattern of registering domain names that incorporate others' trademarks.
6. Discussion and Findings
The Panel has carefully weighed the evidence presented and determines that Complainant has met the requirements set forth in ¶4.a. of the Policy.
There is no question that the domain names in dispute are confusingly similar to a mark in which Complainant has rights. The domain names incorporate the distinctive term YAHOO. The fact that the domain names do not include the "!' symbol and include the descriptive terms "new" and "usa" is legally insignificant. Based on Complainant's ownership of U.S. trademark registrations for the YAHOO! mark and its use thereof, the Panel determines that Complainant has rights in the mark.
The Panel also agrees with Complainant that Respondent has no rights or legitimate interests in the domain names in issue. The evidence establishes that Respondent does not use either domain name in connection with the bona fide offering of goods or services. As noted above, Respondent's "newyahoo.com" domain name connects to another website (i.e., "wrusa.com"), at which services are offered. No services are offered under the "newyahoo.com" domain name. The same is true with respect to the "yahoo-usa.com" domain name.
Finally, the Panel finds that Respondent registered and uses the domain names in bad faith. The Panel determines that Respondent uses the "newyahoo.com" domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Yahoo's YAHOO! mark as to the source, sponsorship, affiliation and endorsement of Respondent's website.
The evidence, the Panel rules, also establishes that Respondent registered the domain name "newyahoo.com" primarily for the purpose of disrupting the business of a competitor, that Respondent registered the "newyahoo.com" domain name primarily for the purpose of selling it to Complainant for consideration in excess of documented out-of-pocket costs directly related to the domain name, and that Respondent registered the disputed domain names to prevent Complainant from using the YAHOO! mark in corresponding domain names and has engaged in a pattern of such conduct.
In view of the above, the Panel GRANTS Complainant's request for transfer to it of the domain names "newyahoo.com" and "yahoo-usa.com".
Jeffrey M. Samuels
Dated: November 30, 2000