Yahoo! Inc. v. Web Master a/k/a MedGo
Claim Number: FA0210000127717
PARTIES
Complainant
is Yahoo! Inc., Sunnyvale, CA
(“Complainant”) represented by David
Kelly, of Finnegan Henderson Farabow
Garrett & Dunner L.L.P..
Respondent is Web Master a/k/a MedGo, Encino, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <yahgo.com>,
registered with Go Daddy Software.
PANEL
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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 9, 2002; the Forum received a hard copy of the
Complaint on October 10, 2002.
On
October 10, 2002, Go Daddy Software confirmed by e-mail to the Forum that the
domain name <yahgo.com> is
registered with Go Daddy Software and that the Respondent is the current
registrant of the name. Go Daddy
Software has verified that Respondent is bound by the Go Daddy Software
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On
October 10, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 30, 2002 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@yahgo.com by e-mail.
A
timely Response was received and determined to be complete on October 29, 2002.
Complainant’s
additional submissions were received on November 4, 2002. Respondent’s
additional submissions were received on November 11, 2002.
On November 15, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Tyrus R.
Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is a Delaware corporation with its principal place of business at Sunnyvale,
California.
Complainant
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.
Complainant
is the owner of the service mark and trademark YAHOO!, as well as the trade
name YAHOO! and the domain name <yahoo.com> (the “YAHOO! Marks”). The YAHOO! mark has been in use since at
least as early as June 1994, and is one of the most recognized brands in the
world. In 2002, Interbrand ranked the
YAHOO! Mark within the top 100 brands worldwide, with a value of nearly US $3.8
billion. Complainant’s revenues in 2001 were $717,422,000.00.
By
virtue of the arbitrary nature and hence the inherent strength of the YAHOO!
mark as applied to Complainant’s vast array of web-based services; the millions
of visitors to the YAHOO! network of websites every day; the millions of links
to the YAHOO! site from third-party websites; and Complainant’s extensive use,
promotion, and registration of its YAHOO! mark, the YAHOO! mark and
<yahoo.com> domain name have become famous.
Complainant’s
trademark rights in the mark YAHOO! and variations thereof, based on its
trademark filings and on its common law rights acquired through the use of the
mark, long predate Respondent’s September 24, 2001, registration of the Domain
Name <yahgo.com>.
Respondent
misappropriated Complainant’s goodwill when it registered the domain name <yahgo.com>,
which is confusingly similar to Complainant’s famous YAHOO! Marks.
The
Domain Name is a typographical misspelling of the YAHOO! mark, as it differs
from the term YAHOO by only one letter.
This is typosquatting.
Given
the fame of the YAHOO! Marks and the fact that Respondent is using the Domain
Name for a competing search engine website, there is no question that
Respondent knew of Complainant’s rights in the YAHOO! Marks when it registered
the Domain Name.
Respondent’s
registration and use of the Domain Name are likely to confuse Internet users
into mistakenly believing that Respondent and its search engine services are
offered, authorized, or sponsored by Complainant. Respondent intended to profit, and may have in fact made a
profit, from its use of the Domain Name for a commercial website.
On
September 17, 2002, Complainant’s counsel sent an e-mail to Respondent
regarding its registration and use of the infringing Domain Name. A series of e-mail correspondence then
occurred between the parties concluding with an offer by Complainant to pay
$500.00 to Respondent for transfer of the Domain Name registration, which was
rejected by Respondent.
Because
Respondent’s registration and use of the Domain Name trade on Complainant’s
goodwill and infringe on Complainant’s rights in its famous YAHOO! Marks,
Respondent’s use of the Domain Name to direct Internet traffic to a directly
competing, commercial website cannot constitute a bona fide use of the Domain
Name pursuant to Policy ¶ 4(c)(i).
Respondent
is not and has not been commonly known by the Domain Name.
Respondent
is not making legitimate noncommercial or fair use of the Domain Name, without
intending to mislead and divert consumers or to tarnish Complainant’s YAHOO!
marks for commercial gains.
Respondent’s
registration and use of the Domain Name meet the bad faith element set forth in
Policy ¶ 4(b)(iv). Specifically,
Respondent used the Domain Name to intentionally divert, for commercial gain,
Internet users to its directly competing search engine website by creating a
likelihood of confusion with Complainant and its YAHOO! Marks as to the source,
sponsorship, affiliation, and endorsement of Respondent’s <yahgo.com>
website.
Respondent’s
registration and use of the Domain Name meets the bad faith element set forth
in Policy ¶ 4(b)(iii), because Respondent is unfairly competing with
Complainant and disrupting Complainant’s business.
Respondent’s
use and registration of the Domain Name meet the bad faith element of
Policy
¶ 4(b)(i), because Respondent registered the Domain Name primarily
to
sell, rent, or otherwise transfer its rights for valuable consideration in
excess of Respondent’s documented out-of-pocket expenses.
Respondent’s
activities clearly constitute “typosquatting” in bad faith.
No
justification, excuse, or plausible explanation exists for Respondent’s
unauthorized registration of the Domain Name because it has no value apart from
Complainant’s famous YAHOO! Marks other than to trade on Complainant’s
goodwill.
B.
Respondent
Yahgo
was formed in September of 2001, and operates as a pay-per-click engine and
Real Estate Photography service.
On
September 22, 2001 Respondent noticed the pay-per-click search engine <seekle.com>
for sale at <eBay.com>.
Respondent contacted seller that day that later agreed to program a
similar site for Respondent, when the bid amount had become more than
Respondent wanted to pay for <seekle.com>.
On
September 24, 2001, Respondent, following the model of <seekle.com> used
DirectNic’s name finding program to find an available name that had six or
fewer letters and containing one of the major search-related action words,
those being “go”, “find” and “seek” in the farthest-left or farthest-right
position of the domain name. The
program returned results that indicated “yahGo.com” was available. Respondent proceeded to register the domain
name on September 24, 2001, two day after contacting the owner of
<seekle.com> expressing an interest in obtaining a search engine.
Yahgo
has been in continuous operation from its inception, has 13,000 members
virtually all of which became members prior to September 1, 2002, well before
any notion that YAHOO! was going to file a domain name dispute against
Respondent.
Regarding
paragraph 4(c), section “i” of the Policy, evidence is presented that the Yahgo
site has been used in conjunction with a bona-fide real estate photography
service well prior to the filing of the Complaint by Complainant.
The
pronunciation of “Yahgo” has been extremely clear from the first day of Yahgo
going online. Even our logo
incorporates the pronunciation. It
seems impractical that any person would confuse the pronunciation of “Yahgo”
with “Yahoo.”
Yahgo
has never been offered for sale to any person, corporation, or entity. Complainant made first intention to offer
money for the sale of Yahgo. There is
no evidence that Respondent registered <yahgo.com> domain name for
the purpose of selling its rights to Complainant.
There
has never been an attempt to “pass off” the Yahgo site as being in any way
associated with YAHOO!. There is not
now, nor has there ever been, anything remotely similar to the brandings,
coloring, graphics, logos, etc. between the two sites.
In
regard to the charge of Respondent engaging in “typo-piracy”, there is a
statistically insignificant chance of accidentally typing “yahgo” instead of
“yahoo”, and would not qualify as a common error or spelling mistake in their
Internet search. A double error would
have to occur.
On
October 10, 2002 YAHOO! announced its new “Web Match” method of search. It combines searching capabilities of both
YAHOO! and Google. These two companies
may want <yagho.com> as a domain name to display these merged
results.
Google
has imposed penalties against the Yahgo site as Respondent noticed a
significant loss in Page Rank to a “four” out of “ten” for the front page, and
a Page Rank of “0” to nearly all of the interior pages. It is not inconceivable to believe that the
value of the Yagho site was intentionally devalued, in the hopes of a cheap
acquisition. Respondent renewed <yahgo.com>
on September 15, 2002. Respondent
promptly received the initial letter from Complainant on September 17,
2002. It is the opinion of Respondent
that Complainant was waiting to see if the name would not be renewed, after
being devalued as described, so that they might scoop it up; when they realized
that the domain name was indeed renewed, they immediately initiated contact
with Respondent, attempting tactics that would eventually lead to an eventual
hoped-for victory in a domain name dispute proceeding. This constitutes reverse domain name
hijacking.
C.
Additional Submissions
Complainant’s
Additional Submission
Respondent
claims that he selected the domain name <yahgo.com> by entering
the words “go”, “find”, and “seek” into DirectNic’s name finding program. Respondent’s Response leads the Panel to
believe that DirectNic suggested the <yahgo.com> domain name to
Respondent. Not only does Respondent
fail to directly state that DirectNic came up with the <yahgo.com>
name, Respondent’s contention is not supported by any documentary
evidence. Complainant conducted
searches on DirectNic on October 30, 2002, using the same search words as
Respondent contends that it used, but “yahgo” was not returned even though
<yahgo.net>, <yahgo.org>, <yahgo.us> were available. Respondent assertions are not believable.
Complainant
refutes Respondent’s contentions that the domain name and trademark are not
confusingly similar.
Respondent’s
claim that he has a legitimate interest in the domain name because the website
has been operational for approximately one year, that he has invested in the
website, and has added a disclaimer to his website, does not establish a legitimate
interest since Respondent’s infringing use for a period of time does not excuse
or justify Respondent’s infringement.
Respondent’s
Additional Submission.
Respondent
contends that it and Complainant are not competitors because their methods of
operation are not identical.
Respondent
contends that its real estate photography services do not compete with
Complainant’s offerings of real estate for sale.
Respondent
refutes Complainant’s contentions regarding its search on DirectNic. Respondent contends that the search did turn
up <yahgo.com> and if Complainant’s search did not, then
Complainant did not use the right tool or used it incorrectly.
Respondent
contends that placing a disclaimer to its website prior to receiving notice
that there was a case filed against Respondent, is evidence of good faith.
Respondent
has not, and does not admit that the domain name in question is confusingly
similar, or directly competes with YAHOO!, or that Respondent acted improperly
with knowledge of Complainant’s rights.
FINDINGS
1. Complainant is a global Internet
communications company, located in California, offering numerous services to
Internet users through its main site located at <yahoo.com>. The website
is one of the leading Internet websites worldwide utilized by millions of users
every day.
2. Complainant is the owner of the service
mark and trademark YAHOO!, as well of the trade name YAHOO!. The numerous registrations for YAHOO!, were
granted by the United States Patent and Trademark Office in the years 1997,
1998, 1999 and 2000.
3. By virtue of the arbitrary nature the
strength of the YAHOO! mark,
Complainant’s promotion and utilization of the mark, the United States Patent
and Trademark Office registrations, and the extensive use of <yahoo.com>
on the Internet, YAHOO has become a famous mark.
4. Respondent is Web Master a/k/a MedGo
located in Encino, California. This
appears to be a name used in business by M. Van Owen, who refers to himself as
the Respondent in the Response.
5. Respondent registered the domain name
<yahgo.com> on September 24, 2001.
6. Respondent renewed the domain name
registration on September 15, 2002.
7. At some date after September 24, 2001,
Respondent began operating a “pay-per-click” search engine covering a number of
subjects including “business”, “careers”, “computers”, “electronics”,
“entertainment”, “family”, “finance”, “health”, “home”, “music”, “shopping”,
“sports”, “toys” and “travel” as well as “Yahgo real estate services”.
8. On September 17, 2002, Complainant’s
counsel sent an e-mail to Respondent stating that Respondent’s domain name
infringed upon Complainant’s marks.
9. A series of e-mails followed between
Complainant’s counsel and M. Van Owen for Respondent wherein the parties
discussed the merits of their positions that resulted in an offer of $500.00 on
part of Complainant as consideration for the transfer of the domain name
registration to Complainant; the offer was refused by Respondent. Complainant initiated the offer. No inference of bad faith is to be made
against Respondent on account of his inquiry in an e-mail as to how much
Complainant would offer for the domain name transfer.
10. The domain name <yahgo.com>
is confusingly similar to Complainant’s trademark, YAHOO!.
11. Complainant has rights in the word,
YAHOO!.
12. Respondent does not have rights or
legitimate interests in the domain name <yahgo.com>.
13. Respondent registered and used the domain
name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
Complainant has rights in the trademark
and service mark, YAHOO!, due to the registrations with the United States
Patent and Trademark Office. As a
general rule, Panels have found that when a complainant shows a registered
trademark under United States law, this alone constitutes sufficient rights to
satisfy the requirements of Policy ¶ 4(a)(i). See Aetna Inc. v. Jacoby
Partners 1999-2, L.L.C., FA 125816 (Nat. Arb. Forum Nov. 22, 2002).
Complainant contends that registration of
the domain name <yahgo.com> constitutes “typosquatting” as defined
in Yahoo! Inc. and GeoCities v. Data Art Corp. et al., D2000-0587 (WIPO
Aug. 10, 2000) which found that when a domain name consists of typographical
error variations and misspellings of the claimant’s trademark, this amounts to
“typosquatting”, a practice that has been condemned and been found to be
confusingly similar to the marks which they mimic.
“The misspelling of words in another’s
mark does not create a distinct mark.” See Google, Inc. v. Abercrombie 1, FA
101579 (Nat. Arb. Forum Dec. 10, 2001). That case determined that
<googld.com> was confusingly similar to complainant’s GOOGLE mark
“because it has merely replaced the “e” in Google with a “d”. The case cited Victoria’s Secret et al.
v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) finding that
misspelling words and adding letters on to words does not create a distinct
mark but is nevertheless confusingly similar with the complainant’s marks. The
same is true of deleting one letter or adding a letter to a trademark. See Universal
City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept 5, 2000); Reuters
Ltd. v. Global Net, D2000-0441 (WIPO July 13, 2000).
This case involves the domain name <yahgo.com>
to be compared with the trademark, YAHOO! and YAHOO. The only difference between the two is the substitution of the
letter “g” in the domain name for the letter “o” in the trademark. The Panel
finds little difference in this factual situation and the one decided in Google,
Inc. v. Abercrombie.
The Panel notes that prior Panels have
found “yahpoo.com”, “yahop.com”, “yahjoo.com”, and “yaghoo” to be confusingly
similar to YAHOO. See Yahoo! Inc. v. Eitan Zviely, D2000-0273 (WIPO June
14, 2000); and “yaoho.com”, “iahoo.com” “yafoo.com” and “yanoo.com” to be
confusingly similar to YAHOO. See Yahoo! Inc. v. Data Art Corp., D2000-0587
(WIPO Aug. 10, 2000). Respondent
contends that these authorities ought not be considered in this proceeding
because in each of them there were multiple domain name listings and clear
evidence of abuse not present in this case.
There is some justification in Respondent’s position. Respondent only
registered one domain name, he contends, and should be treated differently than
Respondents such as Zviely and Zuccarini.
But in the case of Yahoo! Inc. v. David Murray, D2000-1013 (WIPO
Nov. 17, 2000) the respondent registered only one domain name. It was <yawho.com>. The Panel found that <yawho.com> was
confusingly similar to YAHOO. The only
difference is the one letter substitution.
Respondent contends that <yahgo.com> is not pronounced the
same as YAHOO, and thus the domain name and trademark are not confusingly
similar. The Panel is not persuaded
this contention justifies Respondent’s position that the domain name is not
confusingly similar to the trademark.
The Panel finds that based upon the facts
of this proceeding and the authorities examined, that Complainant has satisfied
the requirements of Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant shows that it has never
authorized or licensed Respondent to use Complainant’s registered marks. Neither Complainant nor Respondent contends
that Respondent has any registered trademarks or service marks of any
kind. Complainant contends that it has exclusive
rights to use its registered marks. See Am. Online v. Tencent Communications
Corp. FA93668 (Nat. Arb. Forum Mar. 21, 2000). As a result of Complainant’s showing, and Respondent’s apparent
lack of rights and legitimate interests in the domain name, the burden must
shift to Respondent to demonstrate Respondent’s rights and legitimate interests
in the domain name. See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Respondent may demonstrate its rights and
legitimate interests in the domain name by any of the methods set out in Policy
paragraph 4(c).
Respondent cannot prevail under Policy ¶
4(c)(iii) because Respondent operates the site at <yahgo.com> for
commercial purposes.
Respondent cannot prevail under Policy ¶
4(c)(ii) since Respondent says that it discovered the existence and availability
of <yahgo.com> on September 24, 2001 as a result of a DirectNic
search and registered the domain name the same day. Respondent could not have been commonly known by the domain name
prior to registration.
Respondent’s sole contention is that before
any notice to it of the dispute, Respondent’s use, or demonstrable preparations
to use, the domain name in connection with a bona fide offering of goods or
services occurred. If proved,
Respondent will prevail. See Policy ¶ 4(c)(i).
On this
point, Respondent states in the Response as follows: “Addresses Section 4(a)
ii; Section 4(c) i & Section 4(c) ii”…“Yahgo has been in continuous
operation from its inception, and is not and has not been set up to direct to
pornographic sites, etc. It has over
1300 members virtually all of which became members prior to September 1, 2002,
well before any notion that YAHOO! was going to file a WIPO claim against the
Respondent…Furthermore, regarding paragraph 4(c), section “i” of the Policy,
evidence is presented that the Yahgo site has been used in conjunction with a
bona-fide real estate photography service, well prior to the filing of a
complaint by Complainant. The evidence
clearly establishes that Respondent does use the Yahgo.com domain name in
connection with the bona fide offering of services.”
Complainant responds to this contention
by arguing that no bona fide offering of goods or services can be found when
the use is an infringement of another’s trademark. Complainant cites to Madonna Ciccone p/k/a Madonna v. Dan
Parisi and “Madonna.com”, D2000-0847 (WIPO May 28, 2001) which held that
“use which intentionally trades on the fame of another can not constitute a
‘bona fide’ offering of goods and services.
To conclude otherwise would mean that a Respondent could rely on
intentional infringement to demonstrate a legitimate interest, an
interpretation that is obviously contrary to the intent of the Policy.”
There is no dispute that Respondent
operated the site at <yahgo.com> for about a year before being
contacted by Complainant with a notice of infringement. Complainant states that it was not aware of
the website until shortly prior to its e-mail to Respondent. This delay makes no difference, Complainant
contends, because at all times during the one year period of operation of the
website, it was an infringing use which makes it improper from its
inception. This could only be true if
the use of the domain name is an “intentional infringement”.
Respondent contends that it had no intent
to infringe upon Complainant’s marks.
The domain name was chosen, according to Respondent by use of the
DirectNic name finding program.
Respondent says it was seeking a name with six or fewer letters and
containing one of the major search-related action words, those being “go”,
“find”, and “seek” in the farthest left or farthest-right position of the
domain name. This search returned
“yahGo.com” as available, according to Respondent. This random choice had nothing to do with YAHOO!, Respondent
contends. Complainant doubts that
Respondent’s explanation is credible.
Complainant conducted a similar search using the DirectNic name
searching program using the same words as Respondent says it used. Complainant’s search produced a lengthy
computer-generated list of available domain names, but did not include the
character string “yah”, let alone the name “yahgo”, in any of the suggested
domain names even though “yagho.net”, “yahgo.us” and other yagho names were, in
fact, available. Respondent goes on to
state that even if Respondent received <yahgo.com> as a result, it
would not excuse Respondent’s infringement.
Respondent did not submit copies of its
search under the DirectNic program, or copies of a new search which produced
<yahgo.com> by use of the same search terms. For Respondent to prove its contentions as
to rights and legitimate interests, it must produce “concrete evidence” not
“mere personal assertions”. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) wherein its
was stated as follows: “Where a complainant has asserted that the respondent
has no rights or legitimate interests in respect of the domain name, it is
incumbent upon the respondent to come forward with concrete evidence rebutting
this assertion. This information is
uniquely within the knowledge and control of the respondent. Failure of a respondent to come forward with
such evidence is tantamount to admitting the truth of complainant’s assertions
in this regard.” Even if Respondent’s
assertion that it received the domain name in response to a name search is
true, this does not resolve the issue of whether Respondent knew that the
domain name was an “intentional infringement” of the YAHOO mark during the use
of the site.
Respondent did submit “concrete evidence”
in the nature of a DirectNic name search in Supplemental Exhibit 6 of the
Additional Submission using the search word “go”. All of the results began with “go” and nothing was returned which
related in any way with the domain name <yahgo.com>. Respondent’s purpose in submitting the
document is not explained, but it fails to support Respondent’s position in any
manner helpful to Respondent’s case.
Respondent, being a Webmaster, certainly
knew of YAHOO!. It must have recognized
that <yahgo.com> would likely be confused with YAHOO and possibly
constitute an infringement of Complainant’s mark. Respondent’s mere personal assertion that he thought it did not
infringe upon YAHOO is not the kind of evidence that will prove a lack of
“intentional infringement” as appears to be present in this dispute. The Panel finds, based upon the facts
presented in this dispute proceeding, along with the proper inferences to be
drawn from the facts, that Respondent’s use of <yahgo.com> from
the date of inception to present constitutes an intentional infringement of
Complainant’s mark, YAHOO, and as such does not represent a “bona fide”
offering of goods and services under Policy ¶ 4(c)(i) under URDP precedent. See
Yahoo! Inc. v. Microbiz, Inc. D2000-1050 (WIPO Nov. 7, 2000); Chanel,
Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001).
Complainant has satisfied the
requirements of Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant bears the burden of proof on
this issue. Complainant may present
evidence of bad faith under any of the methods set out in Policy paragraph
4(b).
First, Complainant contends that
Respondent registered the domain name primarily for the purpose of selling,
renting or otherwise transferring the registration for a valuable consideration
in excess of Respondent’s documented out-of-pocket costs. The facts are as follows. A series of e-mails were exchanged between
the parties. Complainant initiated an
offer to pay Respondent a sum of money to transfer the domain name. Respondent responded to this offer by asking
how much Complainant was prepared to pay.
Complainant stated that it would pay $500.00. Respondent refused this offer.
Respondent argues that it was cleverly trapped into talking about costs
for transfer. The Panel is sympathetic
to Respondent’s position. The Panel
does not view this factual situation as one upon which a finding under Policy ¶
4(b)(i) can fairly be made in behalf of Complainant. See Open sys. Computing
AS v. Alessandri, D2000-1393 (WIPO Dec.11, 2000).
Complainant next contends that Respondent
used the domain name to intentionally divert, for commercial gain, Internet
users to its directly competing search engine website by creating a likelihood
of confusion with Complainant and its YAHOO marks as to source, sponsorship,
affiliation, and endorsement of Respondent’s <yahgo.com> website
and the search services offered at its website.
Both Complainant and Respondent operate
search engines on the Internet.
Complainant’s search engine is much larger and more developed than that
of Respondent, but each search category listed on the <yahgo.com>
website is also listed on the <yahoo.com> website. Though Respondent contends that the search
engine sites are not alike because one is a “pay-per-click” search engine and
the other is not. That in no way
changes the fact that both are search engines catering to Internet users for
commercial purposes. It would be difficult to conclude that the search engines
are not directly competing for Internet users.
By use of <yahgo.com> to operate its search engine, a name
that infringes upon Complainant’s mark, Respondent is found to have created
circumstances indicating that Respondent, by using the domain name, has
intentionally attempted to attract, for commercial gain, Internet users to
Respondent’s website by creating a likelihood of confusion with Complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of the website
or of a product or service on the website as proscribed in Policy ¶
4(b)(iv). See Yahoo! Inc. v. David
Murray, D2000-1013 (WIPO Nov. 17, 2000) where it was stated, “The
Respondent has registered a domain name that is contrived, yet visually and
phonetically similar to the Complainant’s trademark. Absent some explanation by the Respondent, the Panel can think of
no reason why the Respondent would choose a domain name so similar to the
Complainant’s mark to a site which offers services similar to the Complainant,
except to attract customers to Respondent’s site though potential confusion.”
On the issue of whether Respondent
initially registered the domain name in bad faith, Complainant contends that
Respondent had actual knowledge of Complainant’s YAHOO! marks when Respondent
registered <yahgo.com>.
Complainant cites Yahoo! Inc. v. Kelvin Pham, FA 109699 (Nat.
Arb. Forum May 21, 2002) which found “Because of the famous and distinctive
nature of Complainant’s YAHOO mark, [the respondent] is thought to have been on
notice of the existence of Complainant’s mark at the time Respondent registered
the infringing [domain name].” As
stated earlier, Respondent, because of its status as webmaster and one who
commenced an effort to start a search engine operation on the Internet, is
found to have actual knowledge of YAHOO.
Under such circumstances the famous and common notoriety of
Complainant’s marks permits the inference of bad faith registration. See
Victoria’s Secret v. Hardin, FA 96694 (Nat. Arb. Forum Mar. 31, 2001); Samsonite
Corp. v. Colony Holdings, FA 94313 (Nat. Arb. Forum Apr. 17, 2000); Exxon
Mobil Corp. v. Stephen Nurwono, FA 112532 (Nat. Arb. Forum June 20, 2002).
The Panel concludes that Complainant has
proved the elements necessary to prevail under Policy ¶ 4(a)(iii).
It is the decision of the Panel that the
domain name, <yahgo.com>, now registered to Respondent, Web Master
a/k/a Medgo, be TRANSFERRED to Complainant, YAHOO! Inc.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 27, 2002
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