WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. v. CPIC NET and Syed Hussain
Case No. D2001-0195
1. The Parties
Complainant is Yahoo! Inc. ("Complainant" or "Yahoo"), a Delaware corporation with its principal place of business at 3420 Central Expressway, Santa Clara, California 95051 USA.
Respondents are CPIC NET and Syed Hussain ("Respondent" or "CPIC") located at 15 15th Street, Closter, New Jersey 07624 USA.
2. The Domain Name(s) and Registrar(s)
The following domain names at issue are listed below and are registered with Network Solutions, Inc. (the "NSI") located at 505 Huntmar Park Drive, Herndon, Virginia, 20170 USA:
These domain names are collectively referred to as the "NSI Domain Names."
The following domain names at issue are listed below and are registered with BulkRegister.com ("BulkRegister") at 7 East Baltimore Street, Baltimore, Maryland 21202 USA:
These domain names are collectively referred to as the "BulkRegister Domain Names."
3. Procedural History
On February 6, 2001, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant. The Complainant paid the required fee.
On February 21, 2001, after the Center sent a Request for Verification to NSI and to BulkRegister.com requesting verification of registration data, the registrars confirmed, inter alia, that they are the registrars of the domain names at issue and that the NSI Domain Names and the BulkRegister Domain Names are registered in the Respondent's name.
The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On February 26, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On March 20, 2001, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.
On April 18, 2001, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.
4. Factual Background
Complainant 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 the owner of the following United States trademark registrations:
Registration No. 2,040,222 for the mark Yahoo!
issued February 25, 1997.
Registration No. 2,040,691 for the mark Yahoo!
Stylized) issued February 25, 1997.
Registration No. 2,076,457 for the mark Yahoo!
issued July 1, 1997.
Registration No. 2,159115 for the mark Yahoo!
issued May 19, 1998.
Registration No. 2,187,292 for the mark Yahoo!
issued September 8, 1998.
Registration No. 2,243,909 for the mark Yahoo!
issued May 4, 1999.
Registration No. 2,273,128 for the mark Yahoo!
issued August 24, 1999.
Registration No. 2,403,227 for the mark Yahoo!
issued November 14, 2000.
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’s services include web directory and search services, travel-related service, Internet access, email, chat, online games, 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. The main Yahoo website can be accessed at <www.yahoo.com>.
Yahoo began as a web directory and search engine. Yahoo’s web directory was developed in early 1994 by the company’s 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 and, thereafter, by creating 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 websites were made available by Filo and Yang on the Internet free of charge.
Yahoo’s web directory initially called "Jerry and David’s Guide to the World Wide Web." A short time later, in June 1994, the name was changed to "Yahoo!" Shortly thereafter, the overwhelming success of the Yahoo site led it founders to take a leave of absence from Stanford University and to concentrate on setting up a business and raising capital to run the business. Yahoo’s Initial Public Offering of stock was in April 1996. Yahoo currently has a market capitalization of approximately US$15 billion.
Yahoo’s directory and search services enable Internet users, even non-technical ones, to find information relevant for their purposes out of the vast amount of content on the Web. The Yahoo web directory and search services allow users to quickly locate information on the Internet by typing in a word or words relating to the subject matter of interest to the user.
Yahoo also sells advertising and promotions on its site. Much of the advertising consists of banner advertisements that appear on the top of directory pages within the Yahoo website. A "hypertext link" is embedded in each banner advertisement, which allows the user to click on the banner and instantaneously access the advertiser’s own website to obtain additional information or to purchase products or services. In addition to banner advertisements, Yahoo also sell merchandising units, sponsorships and promotions (including on line sweepstakes and other contests), and also sends targeted direct email advertisement to registered users who have opted to receive such email.
Yahoo carried the advertisements of more that 3,700 companies during 2000. Among the companies that have advertised their products or services on the Yahoo site are Apple, Colgate-Palmolive, Disney, The Gap, Honda, IBM, Lego, Microsoft, Procter & Gamble, Sony, Swatch, Toshiba, and Visa.
Nearly all of Yahoo’s current Internet services are offered to the public free of charge, its income being primarily derived from the sale of advertising and co-branding or sponsorship agreements with other companies. Yahoo also receives revenues from certain electronic commerce transactions originating from the Yahoo site, including Yahoo Travel. Yahoo also sells merchandise bearing the Yahoo mark such as "Official Strategy Guides" for popular online games such as poker and blackjack, Yahoo! Internet Life magazines, computer equipment, toy cars, watches, writing instruments, clothing, hats, posters, clocks, duffel bags, baseballs and much more. Yahoo’s revenues have increased since it started accepting advertising in August 1995. Revenues were US $1.6 million in 1995; US $23.8 million in 1996; US $84.1 million in 1997; US $245.1 million in 1998; US $588.6 million in 1999; and US $1.1 billion in 2000.
The Yahoo website has become incredibly popular, with traffic on Internet users to the site increasing rapidly. The Yahoo site has emerged as one of the leading Internet web guides in terms of traffic, advertising, household and business user reach, and is one of the most recognized brands associated with the Internet. It has also been ranked number one among websites in numerous categories including Regional/Local Content, Travel, Shopping, Finance, the Arts, Entertainment, Health and Fitness, News and Politics. The Yahoo Marks are unique and not diluted.
Since its inception, the Yahoo website has been recognized with numerous industry awards, including the 1998 "Entrepreneurial Company of the Year" award from Harvard Business School, the "Best of the Net ’97" award from Internet World magazine, and the 1998 "ASAP - Number One Internet Services and Content" from Forbes magazine.
The number of visits to the Yahoo website has increased dramatically each year since Yahoo’s inception. During September 1998, for example, the Yahoo site averaged 144 million "page views" per day, and during September 2000 traffic grew to an average of 780 million page view 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 that one page view. This translates into hundreds of millions of discrete visits to the Yahoo site every quarter. According to a December 2000 report from the Web market research firm Media Metrix, the Yahoo network of properties has ranked number two in the "Top 50 Digital Media/Web Properties At Home & At Work Combined in the United States" for the month of November 2000.
Moreover, as of January 1, 2001, Yahoo had over 233 million unique registered users, i.e., users who registered with Yahoo in order to participate in Yahoo’s registered member services, including games, shopping, auctions, classifieds, email, clubs calendars, message boards, chat rooms and more.
In addition to the variety of services offered at Yahoo’s main site located at <www.yahoo.com>, Yahoo operates many additional sites under the Yahoo Marks and using Yahoo-formative trademarks and domain names. Yahoo has sites that are specific to particular countries or regions.
Yahoo announced on November 9, 2000, that it signed an agreement to acquire Kimo (<www.kimo.com.tw>), the top-ranked website in Taiwan according to an October 2000 study released by AC Nielsen, that provides online consumers with comprehensive search capabilities, localized content, and community and personalized services, including email, clubs and chat. For the third quarter of 2000, Kimo reported an average of 25 million page views per day and four million registered members, Kimo provides comprehensive search capabilities, localized content, community and personalized services across one of the most advanced technology platforms in the Taiwan Internet industry, including a sophisticated Chinese language search engine, an advanced email system, and a real time stock quote delivery system.
Yahoo 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 (<chinese.yahoo.com>), the Yahoo en Espanol site which is directed to Spanish speakers around the world (<espanol.yahoo.com>) and the Yahooligans site which is specifically designed for children aged 7-12 (<yahooligans.com>).
Yahoo also offers a wide variety of services using the Yahoo Marks together with a descriptive name of its services, including but not limited to Yahoo! Shopping, Yahoo! Travel, Yahoo! Chat, Yahoo! Small Business, Yahoo! Messenger, Yahoo! Finance, Yahoo! Auctions, Yahoo! Photos, Yahoo! Address Book, Yahoo! Calendar, Yahoo! Bill Pay and Yahoo! Store.
In July 2000, one of the word’s leading brand marketing and consulting firms – Interbrand – published its annual report which ranks the world’s most valuable brands. Yahoo moved from number 53 in 1999, valued at nearly US $1.8 billion, to number 38 with a value of US $6.3 billion. The Yahoo brand surpassed AOL as the most valuable brand associated with the Internet.
By virtue of the arbitrary nature and hence the inherent strength of the Yahoo Marks as applied to Yahoo’s vast array of web-based services; the millions of visitors to the Yahoo network of websites everyday; the millions of links to the Yahoo site from third-party website; and Yahoo’s extensive use, promotion, and registration of its Yahoo Marks, the Yahoo Marks and the <yahoo.com> domain name have become famous. The United States District Court for the Eastern District of Virginia has specifically held that the Yahoo Marks are famous. See, Yahoo! Inc. v. Buffalo Wu, CA 00-00178-A.
Moreover, fifteen ICANN decisions involving the Yahoo Marks have been issued by WIPO Panels, all in Yahoo’s favor. The panelists in at least nine of these cases expressly found the Yahoo Marks to be famous.
5. Parties’ Contentions
A. Complainant contends that it has numerous registrations relating to the Yahoo Marks. Complainant further contends that the NSI Domain Names and the BulkRegister Domain Names are identical with and confusingly similar to the Yahoo Marks pursuant to the Policy paragraph 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interest in the NSI Domain Names and the BulkRegister Domain Names pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the NSI Domain Names and the BulkRegister Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
B. Respondent failed to contest Complainant’s assertion that it has numerous registrations relating to the Yahoo Marks or that the NSI Domain Names and the BulkRegister Domain Names are identical with and confusingly similar to the Yahoo Marks.
Respondent failed to contest Complainant’s assertion that Respondent has no rights or legitimate interest in the NSI Domain Names and the BulkRegister Domain Names.
Respondent failed to contest Complainant’s assertion that Respondent registered and used the NSI Domain Names and the BulkRegister Domain Names in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
Prove Up of Elements.
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
ii) that the Respondent has no legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith.
Enforceable Trademark Rights
Registered Trademark (Prima Facie).
Complainant contends that it has numerous registrations relating to the Yahoo
Marks and that its trademark registrations are valid and subsisting and serve
as prima facie evidence of its ownership and the validity of the ENCARTA
mark. 15 U.S.C. § 1115. Complainant further alleges that its registrations are
incontestable and conclusive evidence of its ownership of the mark and exclusive
right to use the mark in connection with the stated goods. 15 U.S.C. §§ 1065
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., ICANN Case No. D2000-0047. It is the Panel's belief that Respondent has not met its burden.
Respondent has not contested the assertions by Complainant that it has valid registrations relating to the Yahoo Marks. Therefore, the Sole Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights in the Yahoo Marks.
Complainant further contends that the NSI Domain Names and the BulkRegister Domain Names are confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i).
Respondent has not contested the assertions by Complaint that the NSI Domain Names and the BulkRegister Domain Names are confusingly similar to the trademark.
The Sole Panelist notes that the entirety of the phrase "yahoo" is included in both the NSI Domain Names and the BulkRegister Domain Names.
Non-Distinctive or Descriptive Material (Generally).
Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).
Here, Respondent’s NSI Domain Names and BulkRegister Domain Names are confusingly similar to the Yahoo Marks because they incorporate the "yahoo" phrase in its entirety.
Adaptive Molecular Tech., Inc. v. Woodward, WIPO Case No. D2000-0006 (February 28, 2000) (finding that a domain name was "undoubtedly" confusingly similar because it incorporated the "primary, distinctive element of both of Complainant's trademarks.") Moreover, in determining the similarity of two marks, points of similarity are weighed more heavily than points of difference. See, GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000); Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054-55 (9th Cir. 1999).
Association With Complainant (Misleading).
In addition, the NSI Domain Names and the Bulk Register Domain Names are confusingly similar in that the offending domain name is misleading. The NSI Domain Names and the Bulk Register Domain Names suggest an association with or relationship to Complainant, which does not exist and, if used by parties other than Complainant, will cause confusion in the marketplace. See Nike, Inc., WIPO Case No. D2000-0167, id.
Complainant's mark and its services are famous. Complainant has been using "yahoo" since June 1994. The enormous volume of traffic on Complainant's site is evidence of the fame of Complainant's mark. Accordingly, Complainant's Yahoo Marks are well known and foremost in the minds of consumers. Addition of the names of other websites such as "kimo" and "ebay" to the phrase "yahoo" does not adequately distinguish Respondent’s registrations from the Yahoo Marks. Persons familiar with the Yahoo Marks are likely to conclude that the NSI Domain Names and the BulkRegister Domain Names are simply an extension of Complainant's business. Persons encountering Respondent's site will be mislead into believing Complainant is beginning another business, which could be detrimental to Complainant. In view of the fame of Complainant's marks and the lack of distinctiveness afforded by the addition of the names of other websites unrelated to Respondent is misleading.
Therefore, the Sole Panelist finds that the NSI Domain Names and the BulkRegister Domain Names are confusingly similar to the Yahoo Marks pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest
Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Respondent has no relationship with or permission from Complainant for the use of the Yahoo Marks.
The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the NSI Domain Names or the BulkRegister Domain Names:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The file contains no evidence that the use of the NSI Domain Names and the BulkRegister Domain Names meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c).
Respondent has offered no evidence that the use of the Domain Names meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c).
Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the NSI Domain Names or the BulkRegister Domain Names pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the NSI Domain Names and the Bulk Register Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product
Complainant alleges that the registration of the NSI Domain Name <yahookimo.com> was made by Respondent at the same time Yahoo issued a press release regarding its acquisition of its Taiwanese subsidiary Kimo.
Complainant further alleges that the registration of the NSI Domain Names <yahoocabs.com> and <yahoocab.com> corresponded to the Yahoo press release regarding the launch of Yahoo-branded Internet cabs in New York City.
Complainant further alleges that the registration of the BulkRegister Domain Names coincided with reports of a rumor of a possible merger between eBay and Yahoo.
Complainant alleges that Respondent registered the NSI Domain Names and the BulkRegister Domain Names with prior knowledge of the famous Yahoo Marks.
On January 9, 2001, Yahoo’s in-house counsel senior trademark counsel, Laura Covington, attempted to contact Respondent. Ms Covington left a voice message for Respondent Hussain at the phone number listed in the WHOIS record regarding Respondent’s use of the domain name <yahookimo.com>. On January 10, 2001, Mr. Hussain returned Ms Covington’s call and discussed the use of the domain name <yahookimo.com>. On the same day, Mr. Hussain left a voice message for Ms. Covington in which he advised her that he was open to consider a "reasonable offer" in exchange for the transfer of <yahookimo.com>. On January 12, 2001, Ms. Covington left Mr. Hussain a voice message in which she informed him that Yahoo would not pay any fees beyond registration and transfer costs and that Mr. Hussain’s action infringed the Yahoo Marks. On January 16, 2001, Ms Covington emailed Mr. Hussain reiterating Yahoo’s position. Mr. Hussain did not respond to the email.
Respondent has been found to have breached the Policy on numerous previous occasions in reported ICANN cases. In one of those cases, Time Warner, Inc. and EMI Group plc v. CPIC NET, WIPO Case No. D2000-0433, the Panel found that Respondent had registered several domain names after announcement of the merger between Time Warner and EMI. Specifically, the Panel found that:
It was with knowledge of Time Warner and EMI’s rights in their individual marks and new joint marks, and with the specific intent to trade off of those rights, that CPIC NET registered the Domain Names. The merger between Time Warner and EMI was reported in the United States on January 22, 2000, two days before it was announced by the companies. It is during that interval that Mr. Hussain systematically registered different combinations of the two companies’ marks in an attempt to exploit the expected use of these famous marks in a combined form.
Purpose of Selling 4(b)(i).
Complainant alleges that the Respondent has offered to sell the NSI Domain Name <yahookimo.com> for an amount greater than its out-of-pocket costs. This allegation is uncontested by Respondent.
Therefore, the Sole Panelist finds that Complainant has shown the necessary elements of bad faith under the Policy paragraph 4(b)(i).
Prevent Owner’s Use With Pattern 4(b)(ii).
Complainant alleges that the Respondent has registered the NSI Domain Names and the BulkRegister Domain Names in order to prevent the Complainant from reflecting the trademark in the corresponding Domain Names. The numerous findings of bad faith by Respondent and specifically Respondent’s attempt to trade off the Time Warner/EMI merger constitute a pattern of such activities.
Therefore, the Sole Panelist additionally finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(ii).
Based upon this evidence, the Sole Panelist finds that Complainant has shown sufficient facts to support a finding that Complainant has demonstrated the existence of the criteria in the Policy paragraphs 4(b)(i) and (ii) and that Respondent registered and used the NSI Domain Names and the BulkRegister Domain Names in bad faith pursuant to the Policy paragraph 4(a)(iii).
The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
Inaction or Lack of Use.
One such factor is that Respondent has made no use of the NSI Domain Names or the BulkRegister Domain Names. Complainant alleges that Respondent has not developed any active website in relation to any of the NSI Domain Names and BulkRegister Domain Names. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000).
Telstra it was established that registration together with "inaction" and other facts can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.
To quote a prior Panel decision, "[B]ecause Respondent is contributing no value-added to the Internet -- it is merely attempting to exploit a general rule of registration -- the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it." Educational Testing Service v. TOEFL, ICANN Case No. D2000-0044.
See also, Leland Stanford Junior Univ. v. Zedlar Transcription & Translation, FA 0006000094970 (NAF July 11, 2000); Revlon Consumer Prods. Corp. v. Yosef, D2000-0468 (WIPO July 27, 2000) (citing cases where panel found inaction constitutes bad faith).
In World Wrestling Federation Entertainment Inc (WWFE) v. Rooij, WIPO Case No. D2000-0290 (June 20, 2000) the Panel made a finding of bad faith based on the fact that the domain name website had not been developed, stating "the concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concepts." Id. at 10.15. See also, Mondich v. Brown, WIPO Case No. D2000-0004 (February 16, 2000) (bad faith evidenced by "failure for a substantial period of time to make good faith use of the domain name for [respondent's] business"); Casual Corner Group, Inc. v. Neil Young, No. FA0007000095112 (NAF August 7, 2000); Emory Healthcare, Inc. v. Gulf South Limited, No. FA 0005000094892 (NAF July 5, 2000).
Actual or Constructive Knowledge
A second factor found to support a finding of bad faith is Respondent’s knowledge of the Yahoo Marks when Respondent registered the NSI Domain Names and the BulkRegister Domain Names. Respondent had actual and constructive notice of the Yahoo Marks, because of the inescapable presence of Yahoo on the Internet and as a trademark search on the date of the registration of the NSI Domain Names and the BulkRegister Domain Names would have revealed the Yahoo Marks. Actual or constructive knowledge of the Complainant’s rights in the Trademarks is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO April 18, 2000); Document Technologies v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000) (Respondent’s knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith).
See, e.g., CCA Industries v. Dailey (bikinizone.com), WIPO Administrative Panel Decision in Case No. D2000-0148 (constructive notice found where domain name confusingly similar to complainant’s mark and mark registered prior to respondent’s domain name); Young Genius Software AB v. MWD (younggenius.com), WIPO Administrative Panel Decision in Case No. D2000-0591 (constructive notice found where complainant had trademark registration in Sweden and domain name registration under the .se top-level domain name prior to respondent’s domain name registration); The Channel Tunnel Group Ltd. v. Powell, WIPO Case No. D2000-0038 (March 17, 2000) (Respondent's awareness of complainant's mark when he registering the domain name at issue supported an inference of bad faith).
Failure to Respond to Requests to Transfer
A third factor is Respondent’s refusal to voluntarily transfer a contested domain name. During January 2001, Complainant’s in-house counsel and Respondent exchanged communications in which Complainant clearly stated it position that use of the NSI Domain Name <yahookimo.com> was infringing. Respondent never responded to Complainant’s final offer, thus refusing to transfer the <yahookimo.com> Domain Name. Failure to respond to a complainant’s efforts to make contact provides "strong support for a determination of ‘bad faith’ registration and use." Encyclopaedia Britannica v. Zuccarini, D2000-0330 (WIPO June 7, 2000).
Respondent has ignored Complainant’s request to transfer ownership of the Domain Name. Failure to positively respond to a complainant’s efforts to make contact provides "strong support for a determination of ‘bad faith’ registration and use." Encyclopaedia Britannica v. Zuccarini, D2000-0330 (WIPO June 7, 2000).
Course of Conduct
A fourth such factor is a course of conduct by Respondent suggesting bad faith. The Sole Panelist has previously determined that Respondent has engaged in a pattern of registrations for mergers of well-known companies. Such a pattern constitutes a course of conduct, which supports a finding of bad faith.
Use of Entire Mark Without Plausible Good Faith Use
A fifth factor is the use of Complainant’s entire mark in the Domain Name, thus making it difficult to infer a legitimate use of the contested domain names by Respondent. In Cellular One Group v. Paul Brien, D2000-0028 (WIPO March 10, 2000), Complainant filed a WIPO complaint against the Registrant of domain name <cellularonechina.com>. The WIPO panel agreed with Complainant that the Registrant unlawfully registered an identical or confusingly similar domain name in bad faith. Moreover, the Panel inferred bad faith use of <cellularonechina.com>, because the domain name included Complainant’s entire trademark. In light of Cellular One’s trademark registrations and applications, "it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name." See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ¶ 7.
The NSI Domain Names and the BulkRegister Domain Names use the entirety of the phrase "yahoo". No plausible explanation exists as to why Respondent selected the name "yahoo" as part of the NSI Domain Names and the BulkRegister Domain Names other than to trade on the goodwill of Yahoo. Despite contact by Yahoo’s counsel, Respondent has never provided any information to contradict the conclusion that Respondent registered the NSI Domain Names and the BulkRegister Domain Names in order to benefit from the well-known Yahoo Marks.
Respondent has failed to come forward with any facts to contradict the assertions of Complainant.
The evidence establishes: (i) inaction by Respondent in the use the NSI Domain Names and the BulkRegister Domain Names to post any content on the Internet or for any other legitimate purpose; (ii) actual and constructive knowledge by Respondent of Complainant’s rights in the Yahoo Marks upon the registration of the NSI Domain Names and the BulkRegister Domain Names; (iii) Respondent’s failure to positively respond to Complainant’s request for transfer; (iv) a course of conduct by Respondent to take advantage of mergers between well-know companies, and (v) the use of Complainant’s entire mark creating an absence of any plausible use of the NSI Domain Names or the BulkRegister Domain Names that would constitute good faith.
Based upon this evidence, the Sole Panelist finds that Complainant has shown sufficient facts based upon the nonexclusive factors to be considered in addition to the criteria of the Policy paragraph 4(b) to support a finding that the NSI Domain Names and the BulkRegister Domain Names were registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).
The Sole Panelist concludes (a) that the NSI Domain Names and the BulkRegister Domain Names are confusingly similar to Complainant’s registrations of the Yahoo Marks, (b) that Respondent has no rights or legitimate interest in the NSI Domain Names or the BulkRegister Domain Names and (c) that Respondent registered and used the NSI Domain Names and the BulkRegister Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the NSI Domain Names and the BulkRegister Domain Names be transferred to Yahoo, Inc.
Yahoo, Inc. has not shown that it has any rights in the phrase "ebay." Therefore, the Sole Panelist transfers the BulkRegister Domain Names without prejudice to any rights, which might be asserted by eBay, Inc.
Richard W. Page
Dated: May 8, 2001