WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. v. Domain Vault, Domain Vault LLC
Case No. D2014-1830
1. The Parties
The Complainant is Yahoo! Inc. of Sunnyvale, California, United States of America, represented by Katten Muchin Rosenman LLP, United States.
The Respondent is Domain Vault, Domain Vault LLC, of Dallas, Texas, United States.
2. The Domain Name and Registrar
The disputed domain name <tvyahooligans.com> (the "Disputed Domain Name") is registered with Name.com LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 20, 2014. On October 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 22, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 22, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 27, 2014.
The Center verified that the Complaint together with the amended 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 October 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 25, 2014.
On December 2, 2014, the Center received a communication from the Respondent's counsel, requesting that the Center withdraw the default and provide twenty days from that date for the Respondent to submit a response due to the Center's apparent violation of the Rules with respect to notification of the proceeding. On December 8, 2014, the Center received a communication from the Complainant's counsel, opposing said request. On December 8, 2014, the Center replied to the parties, stating that the default would not be withdrawn and no additional time would be provided to the Respondent since the Center complied with its responsibility regarding notification as established in the Rules, notably that actual notice had unquestionably been achieved (Rule 2(a)since a response was received by the Complainant.
The Center appointed Lynda M. Braun as the sole panelist in this matter on December 11, 2014. 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.
The language of the proceeding is English.
4. Factual Background
The Complainant, together with its consolidated subsidiaries, is a global technology company that provides a wide array of products and services, many of them personalized - including search, content, and communications tools, on computers, mobile devices, tablets, and televisions. The Complainant is the owner of the service mark and trademark YAHOO! (the "YAHOO! Mark"). The Complainant owns the YAHOO! Mark for many types of services in numerous International Classes in the United States, including computer, online, television, telecommunications, entertainment and education services. The Complainant is also the owner of the YAHOO! Mark in many countries throughout the world.
The Complainant operates many websites, such as its official website <yahoo.com> in the United States, as well as its numerous international websites, including sites in over 45 languages and in 60 countries, regions, and territories. In continuous use since 1994, the YAHOO! Mark has long been one of the most recognized brands in the world.
The Complainant registered the <yahooligans.com> domain name on January 26, 1996, and shortly thereafter offered a public web portal under the trademark YAHOOLIGANS! (the "YAHOOLIGANS! Mark"1, which, together with the YAHOO! Mark, constitute the "YAHOO! Marks"), which provided age appropriate online educational and entertainment content for children and was a popular website. In 2004, the Complainant officially partnered with DIC Entertainment to launch a cross-programming initiative called "Yahooligans! TV", providing online users access to DIC's animated children programs.
On July 7, 2004, the Respondent registered the Disputed Domain Name. The Respondent's registration occurred long after the Complainant began using its YAHOO! Marks, long after the Complainant's YAHOO! Mark became famous worldwide, long after the Complainant registered its YAHOO! Marks in the United States and worldwide, long after the Complainant registered the <yahoo.com> and <yahooligans.com> domain names, and long after the Complainant began operating its Yahooligans! websites and services. The Respondent's registration coincided with the Complainant's official launch of its Yahooligans! TV programming.
The website to which the Disputed Domain Name resolved, had, from at least as early as January 19, 2006, to as late as October 6, 2013, displayed various websites with commercial links to and advertisements for children's and/or multimedia-related goods and services, including commercial links to some of the Complainant's competitors. The Panel opines that the Respondent has collected referral fees for these links on a pay-per-click basis, which occurs when Internet users click on these links and the Respondent receives revenue from the listed advertisements.
On November 21, 2013, the Complainant contacted Respondent by email, demanding the transfer of the Disputed Domain Name. On November 25, 2013, the Complainant received a "Notice of Receivership" letter from Joshua Cox, an individual purporting to represent the registrant of the Disputed Domain Name. Mr. Cox claimed that control of the Disputed Domain Name had been transferred to a court-appointed receiver, that the receiver was required to preserve the value of receivership assets, and that a court-ordered stay prevented any suit involving receivership assets. Mr. Cox's letter alleged that the registrant was Novo Point, LLC, and attached certain documents, none of which named or referred specifically to the Respondent, the Disputed Domain Name, or the Registrar, nor did they offer a good faith reason for the Respondent to have registered the Disputed Domain Name.
On February 25, 2014, the Complainant responded to Mr. Cox, reiterating the Complainant's demands. Mr. Cox did not respond to the February 25, 2014 correspondence, nor did he respond to correspondence subsequently sent by the Complainant on March 10, 2014.
5. Parties' Contentions
The following are the Complainant's contentions:
- The Disputed Domain Name is confusingly similar to the Complainant's trademarks.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Name 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 Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the YAHOO! Marks based on longstanding use and fame. The Disputed Domain Name <tvyahooligans.com> consists of the YAHOO! Marks followed by the descriptive words "tv" and "hooligans", and followed by the generic Top-Level Domain ("gTLD") ".com".
The Panel finds that the Disputed Domain Name <tvyahooligans.com> is nearly identical, or if not identical, is confusingly similar to the Complainant's YAHOO! and YAHOOLIGANS! Marks. The word "tv" in the Disputed Domain Name is descriptive as a common abbreviation for "television" and indicates that the website provides television and entertainment services.
It is well established that the addition of a descriptive or generic word to a mark does not avoid confusing similarity to a complainant's trademark. See Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 (the panel found confusing similarity where the word "shop" was added to the trademark of the complainant in the disputed domain name); PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks). This is especially true where, as in the present case, the descriptive or generic word "tv" is associated with the Complainant and its services. See, e.g., Amazon.com Inc., Amazon Technologies, Inc., Goodreads, Inc. v. Shi Lei aka shilei, WIPO Case No. D2014-1093 (finding the addition of an indistinctive element like "tv" to Complainant's AMAZON mark was insufficient to distinguish the disputed domain name <amazontv.co> from the complainant's mark); Samsung Electronics Co., Ltd v. Kutchery Road, WIPO Case No. D2008-1436 ("The mere addition of the suffix "tv" was not sufficient to distinguish the domain name from the Complainant's trademark. This is all the more so because the Complainant is in the TV manufacturing business.".
Further, the Disputed Domain Name is confusingly similar to the Complainant's famous and registered YAHOO! Marks because it contains the marks in their entirety, save for the exclamation point, which cannot be represented in a domain name. A domain name is "nearly identical or confusingly similar to a complainant's mark when it fully incorporate[s] said mark." See PepsiCo. Inc. v. PEPSI SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No.D2003-0696.
Further, although the Disputed Domain Name does not contain an exclamation mark, this is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks cannot on their own avoid a finding of confusing similarity. First, exclamation points are not permitted in domain names. Indeed, the Complainant's official website does not now contain an exclamation point. Moreover, the dominant portion of the YAHOO! Marks and the Disputed Domain Name is "yahoo", so the Disputed Domain Name would be confusingly similar even if exclamation points were permissible. Prior UDRP decisions have consistently held that punctuation such as the exclamation point in the Complainant's mark is irrelevant to a confusing similarity analysis. See, e.g., Yahoo! Inc. v. wangwei, gaohaolvshishiwusuo/shaoxiaogen, wang tian, ni maiwo, fangjincheng, WIPO Case No. D2014-0714 ("The Panel accepts that the omission of the exclamation point in the Disputed Domain Names is inconsequential when comparing it with the trademark YAHOO!. Firstly, the exclamation point is an invalid character in domain names and cannot be used as part of a domain name. Secondly, the most striking and prominent feature of the trademark YAHOO! is the word YAHOO which has been incorporated entirely in the Disputed Domain Names. Thirdly, the Panel's view is echoed by many previous decisions on the same point regarding the trademark YAHOO!. (e.g., Yahoo! Inc v. Scott McVey, WIPO Case No. D2011-1486; Yahoo! Inc v. Jesper Hansen, WIPO Case No. D2011-2227; Yahoo! Inc v. Blue Q Ltd, et al, WIPO Case No. D2011-0702).").
Finally, the addition of a gTLD such as ".com" in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Once a complainant establishes that a respondent's domain name is identical or confusingly similar to complainant's mark, and that the complainant has made a prima facie case of lack of rights or legitimate interests, the burden shifts to the respondent to establish some rights or legitimate interests in respect of the domain name.
There is no evidence in the record that the Respondent is in any way associated with the Complainant, that the Respondent has any authority, license or permission to use the YAHOO! Marks, or that the Respondent is commonly known by the Disputed Domain Name. Rather, the Respondent is improperly using the Disputed Domain Name to offer commercial services without permission or authorization for its own commercial gain.. The Panel infers that the Respondent was using the Disputed Domain Name to divert consumers searching for the Complainant's website to its own website by capitalizing on the fame and goodwill of the Complainant. This use does not constitute a legitimate interest in a domain name.
Furthermore, by not submitting a response, the Respondent has failed to invoke any other circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds rights or legitimate interests in the Disputed Domain Name. See Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323. See also Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563 (the respondent's default is further evidence to conclude that it had no rights or legitimate interests in the domain name).
In addition, the Respondent's registration and use of the Disputed Domain Name to host a parking page with various websites that have commercial links to third-party advertisements for children's and/or multimedia-related goods and services, including commercial links to some of the Complainant's competitors as well as the Complainant's own website, does not constitute a bona fide offering of goods or services or noncommercial fair use under paragraphs 4(c)(i) and 4(c)(iii) of the Policy. 2 See F. Hoffmann-La Roche AG v. Dean Gagnon, WIPO Case No. D2007-1009 ("The use of a domain name comprising a third party's renown trademark to redirect to a search engine consisting of third parties' links, most probably for profit purposes, cannot be considered a use in connection with a bona fide offering of goods and services."); Blue Cross and Blue Shield Association v. John Kraus, d/b/a MrINTER.NET, WIPO Case No. D2004-0756 ("Prior decisions under the Policy leave little doubt that a registrant cannot have a right or a legitimate interest in using a domain name that is confusingly similar to registered trademarks or service marks in order to compete with the marks' owner") (citing cases).
Finally, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods or services.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith because the Respondent was attempting to attract, for commercial gain, Internet users to the Respondent's website by creating confusion with the Complainant's YAHOO! Marks as to the source, sponsorship, affiliation or endorsement of the Respondent's website. The Respondent's registration and use of the Disputed Domain Name indicate that such registration and use was done for the specific purpose of trading on the name and reputation of the Complainant and its YAHOO! Marks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 ("[t]he only plausible explanation for Respondent's actions appears to be an intentional effort to trade upon the fame of Complainant's name and mark for commercial gain" and "[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law.").
Second, the Respondent's action of registering the Disputed Domain Name and using it to direct Internet traffic to its website evidences a clear intent to disrupt the Complainant's business, deceive customers and trade off the Complainant's goodwill by creating an unauthorized association between the Respondent and the Complainant's YAHOO! Marks. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. Since the website to which the Disputed Domain Name resolved had been set up to provide links on a pay-per-click basis, this is further evidence of bad faith. See St. Baldrick's Foundation Inc. v. Web Advertising, Corp., WIPO Case No. D2007-0707 ("Prior panel decisions have consistently recognized that the registration of domain names which are then used to operate 'click-through' sites, can be considered to be evidence of bad faith."). Whether the revenue generated through the pay-per-click links accrued directly to Respondent or to the Registrar, or to both, is immaterial. See Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912. Such conduct confirms that the Respondent registered and used the Disputed Domain Name in bad faith.
Third, the Respondent's registration of the Disputed Domain Name after the Complainant began to use and widely promote its YAHOO! Marks is evidence that the Disputed Domain Name was registered in bad faith. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant's trademark).
Fourth, Mr. Cox's correspondence is further evidence of the Respondent's bad faith registration and use of the Disputed Domain Name. Other UDRP panels have decided disputes in which Mr. Cox similarly claimed that the domain name at issue was involved in a receivership proceeding and in each one, the named respondent submitted no response, and the panel ordered transfer of the domain name. See, e.g., Amica Mutual Insurance Company v. Texas International Property Associates, URDMC LLC, WIPO Case No. D2010-2144; Judah Smith v. Whois Privacy Services Pty. Ltd. / URDMC LLC, WIPO Case No. D2011-0397; Barclays Bank PLC v. Quantec, LLC / Novo Point, LLC, WIPO Case No. D2012-2083; J Barbour & Sons LTD v. Whois Privacy Services Pty Ltd. / Quantec, LLC. Novo Point, LLC, WIPO Case No. D2013-0283.
Finally, due to the fame and extensive use of the YAHOO! Marks, it is inconceivable that the Respondent did not have knowledge of the Complainant and its YAHOO! Marks. Registration of a domain name with knowledge of the trademark owner's rights has been found to constitute bad faith under the Policy. See Yahoo! Inc. v. Yahoosexy.com, Yahoo-sexy.com, Yahoosexy.net, Yahousexy.com and Benjamin Benhamou, WIPO Case No. D2001-1188 ("Given the international renown of the YAHOO! trademark, the Panel finds that the Respondents must have known of the YAHOO! mark before they registered the domain names at stake."); Yahoo! Inc. v. wangwei, gaohaolvshishiwusuo/shaoxiaogen, wang tian, ni maiwo, fangjincheng, WIPO Case No. D2014-0714 ("It is inconceivable that the Respondents were unaware of the trademark YAHOO! when the Respondents registered the Disputed Domain Names").
Thus, this Panel finds that the Respondent's conduct constitutes registration and use of the Disputed Domain Name in bad faith. Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
The Panel notes that the Complainant failed to explain in the Complaint why it delayed in contacting the Respondent until 2013, when the Disputed Domain Name was registered in 2004. Nevertheless, the Panel concludes that delay in filing the Complaint does not prevent the Complainant from being able to succeed under the Policy where the Complainant can establish a case on the merits under the requisite three elements. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.10 ("Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services"); Alimak Hek, Inc. v. Richard Wheat, WIPO Case No. D2011-1344; Progman Consulting Oy v. Whois Watchdog, WIPO Case No. D2010-1393 ("It is by now well established that trademark doctrines of laches or estoppel have not been incorporated into the Policy"); The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (same).
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 Name, <tvyahooligans.com>, be transferred to the Complainant.
Lynda M. Braun
Date: December 18, 2014
1 The YAHOOLIGANS! Mark has since been cancelled in the United States, although in this Panel's opinion, it does not alter the analysis in this Decision.
2 The way in which many of these services operate is that the domain parking service operators obtain "click through revenue" when Internet users click on the sponsored links on the displayed page. Many of these services will then provide the domain name registrant with part of that "click-through" revenue.