Yahoo! Inc. v. Umbeke Membe d/b/a Deleting Domain
Claim Number: FA0802001153487
Complainant is Yahoo! Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <mtyahoo.com>, <persianyahoo.com>, <sbcyahoobrowser.com>, and <yahooigins.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On February 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 20, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@mtyahoo.com, postmaster@persianyahoo.com, postmaster@sbcyahoobrowser.com, and postmaster@yahooigins.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mtyahoo.com>, <persianyahoo.com>, <sbcyahoobrowser.com>, and <yahooigins.com> domain names are confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or legitimate interests in the <mtyahoo.com>, <persianyahoo.com>, <sbcyahoobrowser.com>, and <yahooigins.com> domain names.
3. Respondent registered and used the <mtyahoo.com>, <persianyahoo.com>, <sbcyahoobrowser.com>, and <yahooigins.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc., is a global Internet
communications, media, and commerce company that operates
a network of comprehensive searching, directory, information, communication,
shopping services and other online activities.
Complainant registered the YAHOO! mark with the
United States Patent and Trademark Office (“USPTO”) on
Respondent registered the <mtyahoo.com> domain name on
Paragraph 15(a) of the Rules instructs this Panel to "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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has registered the YAHOO! mark with the USPTO, and has therefore established rights to the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The <mtyahoo.com>, <persianyahoo.com>,
<yahooigins.com>, and <sbcyahoobrowser.com> domain names are
confusingly similar to Complainant’s YAHOO! mark because all four disputed
domain names combine the YAHOO! mark with generic terms or additional
letters. The exclusion of the
exclamation point does not distinguish the disputed domain names from the
YAHOO! mark because registered domain names cannot contain exclamation points. In
addition, all registered domain names are required to have a top-level domain;
therefore, the inclusion of the generic top-level domain (“gTLD”) “.com” does
not sufficiently distinguish the disputed domain names from Complainant’s
mark. Regarding the <persianyahoo.com>
and <sbcyahoobrowser.com> domain names, previous panels have
held that the inclusion of a generic term does not distinguish a disputed
domain name from a registered mark for the purposes of confusing similarity
under Policy ¶ 4(a)(i). Regarding the <mtyahoo.com>
and <yahooigins.com> domain names, the inclusion of prefix “mt” and the
suffix “igins” do not sufficiently distinguish the disputed domain name from
the YAHOO! mark which remains the dominant element of the disputed domain names. Therefore, the Panel concludes that the <mtyahoo.com>,
<persianyahoo.com>, and <sbcyahoobrowser.com> domain
names are confusingly similar to Complainant’s YAHOO! mark under Policy ¶
4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level
domain (gTLD) name ‘.com’ is . . . without legal
significance since use of a gTLD is required of domain name registrants . . .
."); see also Gurney’s Inn Resort & Spa Ltd. v.
Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and
spaces between words are not significant in determining the similarity of a
domain name and a mark because punctuation and spaces are not reproducible in a
domain name.”); see also Arthur Guinness Son & Co. (
The
Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Pursuant to Policy ¶ 4(a)(ii),
Complainant has the initial burden of showing that Respondent has neither
rights nor legitimate interests in the disputed domain names. Complainant has made this assertion, and thus
established a prima facie case under
Policy ¶ 4(a)(ii).
The burden then shifts to Respondent to demonstrate that it does have
rights or legitimate interests in the <mtyahoo.com>, <persianyahoo.com>,
<sbcyahoobrowser.com>, and <yahooigins.com> domain
names. See Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO
Respondent has failed to respond to the Complaint. The panel in Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO
The WHOIS information does not indicate that Respondent is
commonly known by the disputed domain names.
Furthermore, Complainant has not authorized Respondent to use the YAHOO!
mark.
Therefore, Respondent is not commonly known by the disputed domain names
under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Respondent is using the <persianyahoo.com> domain name to host an adult-oriented pay-per-click website. Previous panels have held that use of a disputed domain name that is confusingly similar does not demonstrate rights or legitimate interests. In Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002), the panel held that the use of a disputed domain name that was confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent.” The Panel here concludes that Respondent’s use of the <persianyahoo.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
Regarding the <mtyahoo.com> and <sbcyahoobrowser.com>
domain names, Respondent is operating commercial pay-per-click websites
that offer Internet search services in direct competition with Complainant’s
business. The Panel finds that such
competing use is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i),
or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Yahoo! Inc. v. Web Master,
FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s
use of a confusingly similar domain name to operate a pay-per-click search
engine, in competition with the complainant, was not a bona fide
offering of goods or services); see also Coryn Group, Inc. v. Media
Insight, FA 198959 (Nat. Arb. Forum Dec.
5, 2003) (finding that the respondent was not using the domain names for a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use because the respondent used the names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks).
Finally, the <yahooigins.com>
domain name does not currently resolve to an active website. In TMP Int’l,
Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Previous panels have found that use of a disputed domain name that is confusingly similar to host an adult-oriented website evidences registration and use in bad faith. Therefore, the Panel finds that Respondent’s use of the <persianyahoo.com> domain name to host an adult-oriented website demonstrates registration and use in bad faith under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”).
Respondent is using the <mtyahoo.com> and <sbcyahoobrowser.com>
domain names to operate a website that offers an Internet search service
directly competing with Complainant’s business.
Respondent is commercially benefiting from the goodwill associated with
the YAHOO! mark, and such use is capable of creating confusion as to
Complainant’s source, sponsorship, affiliation, or endorsement of the websites
that resolve from the disputed domain names.
The Panel concludes that Respondent’s use of the <mtyahoo.com>
and <sbcyahoobrowser.com> domain names evidences bad faith
registration and use under Policy ¶ 4(b)(iv).
See Identigene, Inc. v. Genetest Labs.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use
of the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that the
complainant is the source of or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang,
D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv)
where the respondent registered a domain name confusingly similar to the
complainant’s mark and the domain name was used to host a commercial website
that offered similar services offered by the complainant under its mark).
Respondent’s use of the <mtyahoo.com> and <sbcyahoobrowser.com>
domain names also demonstrates registration and use in bad faith under Policy ¶
4(b)(iii) because Respondent’s use is capable of disrupting Complainant’s
business. See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
Respondent is not actively using the <yahooigins.com> domain name. The panel in DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO
Finally, Respondent has previously been the respondent in at
least one other UDRP decision in which the panel ordered transfer of the
disputed domain name to the complainant in that case. See AOL LLC v. Umbeke Membe, FA 1093926 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mtyahoo.com>, <persianyahoo.com>, <sbcyahoobrowser.com>, and <yahooigins.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 10, 2008
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