WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yahoo! Inc. v. Feiji Gao

Case No. D2013-0521

1. The Parties

Complainant is Yahoo! Inc. of California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.

Respondent is Feiji Gao of Shandong, China.

2. The Domain Name and Registrar

The disputed domain name <answer-yahoo.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2013. On March 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 18, 2013, 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 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 March 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 12, 2013. Respondent filed an informal email communication on April 12, 2013 communicating its intention to settle this dispute. The proceedings were suspended on April 16, 2013. After an exchange of communications between the parties, Complainant expressed its intention to reinstitute the proceedings on May 7, 2013. The proceedings recommenced on May 8, 2013.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on May 14, 2013. 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 global Internet communications, commerce and media company based in California, United States.

Complainant has submitted evidence that it is the registered owner of numerous trademarks relating to the designation “Yahoo!”, including the following:

- Word mark YAHOO!, United States Patent and Trademark Office (“USPTO”), Registration Number: 2,403,227, Registration Date: November 14, 2000; Status: Active;

- Word mark YAHOO!, USPTO, Registration Number: 2,040,222, Registration Date: February 25, 1997; Status: Active;

- Word/design mark YAHOO!, China Patent & Trademark Office, Registration Number: 7853678, Registration Date: September 14, 2011; Status: Active;

- Word/design mark YAHOO!, China Patent & Trademark Office, Registration Number: 7853677, Registration Date: March 14, 2011; Status: Active.

Complainant, furthermore, has evidenced to operate its main website at “www.yahoo.com”, but besides to run also a number of additional websites under the YAHOO! trademark and using YAHOO-formative trademarks and domain names, e.g. “www.answers.yahoo.com”.

The disputed domain name <answer-yahoo.com> was registered on August 14, 2012. It redirects to the website at “www.answer-yahoo.com” which at some point before the filing of this Complaint provided for sponsored listings or pay-per-click advertisements.

As demonstrated by intensive e-mail correspondence between Complainant and Respondent from September through December 2012, Respondent refused to transfer the disputed domain name to Complainant, unless he was reimbursed by the payment of a lump sum in the range of USD 600 to USD 6,000.

Complainant requests that the disputed domain name be transferred to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant alleges that its website at “www.yahoo.com” is one of the most trafficked Internet destinations world-wide and that its YAHOO! trademark has been in continuous use since 1994 and has meanwhile become a famous name protected in most countries around the world.

Complainant asserts that the disputed domain name is confusingly similar to Complainant’s YAHOO! trademark, because (1) the disputed domain name incorporates Complainant’s YAHOO! trademark in nature in its entirety, which is not only famous but distinctive and arbitrary, (2) the disputed domain name merely adds a generic or descriptive term “answer” to Complainant’s famous YAHOO! trademark and (3) the omission of the exclamation point from the disputed domain name is irrelevant since the exclamation point is neither permitted in a domain name nor is it relevant for any oral comparison.

Complainant further suggests that Respondent has no rights or legitimate interests in respect of the disputed domain name, because (1) the name associated with Respondent does not incorporate nor does it bear any similarity to Complainant’s YAHOO! trademark, which in turn is internationally famous so that Respondent could not be known by the disputed domain name and (2) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but rather intended to profit financially from it by placing sponsored listings or pay-per-click advertisements on the website connected thereto.

Finally, Complainant claims that the disputed domain name was registered and is being used in bad faith since (1) given the world-wide fame of Complainant’s YAHOO! trademark, Respondent undoubtedly registered the disputed domain name with actual knowledge of that trademark and Complainant’s rights therein, (2) Respondent is profiting directly from the disputed domain name by collecting pay-per-click fees and (3) Respondent obviously wanted to transfer the disputed domain name to Complainant for a lump sum between USD 600 and USD 6,000, thus registered the disputed domain name primarily for the purpose of selling it to Complainant being the owner of the YAHOO! trademark.

B. Respondent

Respondent did not submit a formal response to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain name <answer-yahoo.com> is confusingly similar to the YAHOO! trademark in which Complainant has shown to have rights.

The disputed domain name incorporates the YAHOO! trademark in its entirety. Moreover, it has been held in numerous UDRP decisions and has meanwhile become a consensus view among panelists (see WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of a generic or descriptive term, such as “answer”, is not capable to dispel the confusing similarity arising from the incorporation of Complainant’s YAHOO! trademark into the disputed domain name. The Panel also recognizes that exclamation marks are neither permitted in domain names nor are they orally recognizable so that the absence of the exclamation mark in the disputed domain name is not in contrast to such finding (see also Yahoo! Inc. vs. Yang Zhi, WIPO Case No. D2013-0522; Yahoo! Inc. vs. Blue Q Ltd., Romain Barissat, WIPO Case No. D2011-0702).

Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.

B. Rights or Legitimate Interests

The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently neither has made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent made a legitimate, noncommercial or fair use without intent for commercial gain.

Respondent has not disputed Complainant’s allegation that its YAHOO! trademark, being in continuous use since 1994, has meanwhile become a famous trademark world-wide.

Complainant has produced evidence that at some point before the filing of the Complaint, the disputed domain name redirected to a website at “www.answer-yahoo.com”, displaying various sponsored listings or pay-per-click advertisements.

Moreover, Complainant has also evidenced that its YAHOO! trademark has been ranked for many years among the top global brands world-wide as reported by various recognized international brand records. Therefore, for the purpose of these proceedings, the Panel takes the view that Complainant’s YAHOO! trademark may be considered a famous trademark (a finding which is in line with a number of UDRP panels in recent parallel proceedings, such as e.g.: Yahoo! Inc. v. Jasper Hansen, WIPO Case No. D2011-2227; Yahoo! Inc. v. Blue Q Ltd., Romain Barissat, WIPO Case No. D2011-0702). The Panel, accordingly, takes the view that Respondent obviously registered and made use of the disputed domain name with Complainant’s distinctive and well-known YAHOO! trademark in mind, a finding which is even reinforced by Respondent’s adding of a general term “answer” to the YAHOO! trademark in the disputed domain name, which comes very close to the designation under which Complainant runs its own additional website “www.answers.yahoo.com”.

Also, Respondent itself has made no contentions whatsoever as to why he needed to rely on the term “Yahoo”, but merely stated that he would not be willing to transfer the disputed domain name upon Complainant unless he was reimbursed by the payment of a lump sum in the range of USD 600 to USD 6,000, because Respondent apparently produced monthly revenues with the disputed domain name of about USD 500.

Against this background, it goes without saying that Respondent, whose name is apparently in no way connected to the designation “Yahoo”, neither made use of the disputed domain name in connection with a bona fide offering of goods or services nor in connection with a noncommercial or fair use of the latter without intent for commercial gain.

Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on March 21, 2013.

Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)ii) and thus the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.

The Panel takes the view that the redirection of the disputed domain name, which is confusingly similar to Complainant’s famous YAHOO! trademark, to a typical pay-per-click website without Complainant’s permission to do so is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant’s YAHOO! trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or a product thereon. Such circumstances shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)iv) of the Policy.

Moreover, as evidenced by the parties’ pre-procedural e-mail communication, Respondent requested a payment of no less than USD 600 up to an amount of USD 6,000 for a transfer of the disputed domain name, which – in the light of the world-wide reputation and fame of Complainant’s YAHOO! trademark – is likely to lead to the conclusion that Respondent registered the disputed domain name primarily for the purpose of selling it to Complainant being the owner of the YAHOO! trademark for valuable consideration in excess of Respondent’s out-of-pocket costs; these circumstances, which have by no means been disputed by Respondent, again shall be evidence of registration and use of the disputed domain name in bad faith (see paragraph 4(b)(i) of the Policy).

Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.

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 name <answer-yahoo.com> be transferred to Complainant.

Stephanie G. Hartung
Sole Panelist
Date: May 27, 2013