Yahoo! Inc. v. Manage Technical a/k/a
Administration Local
Claim
Number: FA0402000238649
Complainant is Yahoo! Inc. (“Complainant”), represented
by David Kelly of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., 1300 I Street, NW, Washington, DC
20005-3315. Respondent is Manage Technical a/k/a Administration Local (“Respondent”), PO Box 33180, Sheung Wan, HK 00000, Hong Kong.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <yahooauto.com>, registered with Neteka,
Inc. d/b/a Namesbeyond.com.
The
undersigned certifies that she acted independently and impartially and that to
the best of her knowledge she has no known conflict in serving as Panelist in
this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically February 20, 2004; the Forum received a hard copy of the
Complaint February 23, 2004.
On
February 23, 2004, Neteka, Inc. d/b/a Namesbeyond.com confirmed by e-mail to
the Forum that the domain name <yahooauto.com> is registered with Neteka,
Inc. d/b/a Namesbeyond.com and that Respondent is the current registrant of the
name. Neteka, Inc. d/b/a Namesbeyond.com verified that Respondent is bound by
the Neteka, Inc. d/b/a Namesbeyond.com registration agreement and thereby has
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
February 27, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 18, 2004 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@yahooauto.com by e-mail.
Having
received no Response from Respondent, using the same contact details and methods
as were used for the Commencement Notification, the Forum transmitted to the
parties a Notification of Respondent Default.
On
March 25, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum 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 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent,
<yahooauto.com>, is confusingly similar to Complainant’s YAHOO!
mark.
2. Respondent has no rights to or legitimate
interests in the <yahooauto.com> domain name.
3. Respondent registered and used the <yahooauto.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
widely recognized global Internet communications, media, and commerce
company. Complainant delivers a branded
network of comprehensive searching and directory services, as well as other
online activities that have attracted hundreds of millions of Internet users
since 1994. Complainant’s global web
network includes 25 world properties with offices in Europe, Asia Pacific,
Latin America, Canada, and the U.S.
Complainant
operates its business under the YAHOO! mark.
Complainant owns numerous registrations for the YAHOO! mark, which were
filed and successfully registered with the United States Patent and Trademark
Office (“USPTO”), including registration numbers 2403227 (registered Nov. 14,
2000), 2040222 (registered Feb. 25, 1997), and 2273128 (registered Aug. 24,
1999).
Complainant has
used the YAHOO! mark continuously in international commerce since 1994. Since then, the YAHOO! mark has become one
of the most recognized brands in the world, with a value of nearly U.S. $3.9
billion, according to Interbrand.
The services
that Complainant offers under the YAHOO! mark are vast and include both local
and international web directory and search services covering an equally vast
array of subjects. One such subject
relates to automobiles, which is located at <autos.yahoo.com>.
Respondent
registered the disputed domain name <yahooauto.com> April 30,
2003. Respondent uses the domain name
to host an automobile-related web directory website provided by Dark Blue
Affiliate Network, an online marketing company.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
established with extrinsic proof in this proceeding that it has rights in the
YAHOO! mark as a result of its numerous registrations with the USPTO and by
Complainant’s continuous use of the mark in international commerce since at
least as early as 1994. See Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that the 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 also
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”).
Under the Policy,
the incorporation of a third-party’s registered trademark in a domain name,
combined with a generic or descriptive term, fails to eliminate the confusing
similarity between a name and mark. In
this case, Respondent incorporated Complainant’s YAHOO! mark in the disputed
domain name <yahooauto.com> and has merely added the term
“auto.” See Am. Online, Inc. v.
Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003)
(finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the terms
“traffic school,” “defensive driving,” and “driver improvement,” did not add
any distinctive features capable of overcoming a claim of confusing
similarity); see also Pfizer, Inc. v. Suger, D2002-0187
(WIPO Apr. 24, 2002) (finding that because the subject domain name incorporated
the VIAGRA mark in its entirety, and deviated only by the addition of the word
“bomb,” the domain name was rendered confusingly similar to Complainant’s
mark); see also Westfield Corp.,
Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the
<westfieldshopping.com> domain name confusingly similar because the
WESTFIELD mark was the dominant element).
Thus, the
disputed domain name is confusingly similar to Complainant’s YAHOO! mark under
Policy ¶ 4(a)(i).
Respondent has
not provided the Panel with a Response.
Therefore, the Panel construes such a failure as an implicit admission
that Respondent lacks rights to or legitimate interests in the domain containing
in its entirety Complainant’s protected mark. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
(finding no rights or legitimate interests where Respondent fails to respond); see
also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names).
The Panel finds
no evidence in the record to show that Respondent was authorized by Complainant
to use the YAHOO! mark in the disputed domain name and the record permits the
inference that Respondent is not commonly known by Complainant’s protected mark
or the domain name pursuant to Policy ¶ 4(c)(ii). Thus, Respondent’s use if not a bona fide offering of goods or
services envisioned by the Policy. See
State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept.
27, 2000) (“[The] unauthorized providing of information and services under a
mark owned by a third party cannot be said to be the bona fide offering of
goods or services.”); see also Telstra
Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that
Respondent lacked rights and legitimate interests in the domain name because
Respondent was not authorized by Complainant to use its trademarks and the mark
was distinct in its nature, such that one would not legitimately choose it
unless seeking to create an impression of an association with Complainant); see
also Gallup Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent
does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail").
Under the
Policy, a domain name that is confusingly similar to a third-party’s registered
mark and that is used to host content relating to the services provided under
the third-party’s mark does not confer rights or legitimate interests in the
name to a Respondent. Here, Respondent
has used the domain name to host an automobile-related web directory website,
which is a service offered by Complainant under the YAHOO! mark. Such use not only is not a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i), it is not a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v.
Hong, D2000-1633 (WIPO Jan. 18, 2001) ("[Using] Complainant’s entire
mark in infringing domain names makes it difficult to infer a legitimate
use."); see also Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D. Mass. 2002) (finding that, because
Respondent's sole purpose in selecting the domain names was to cause confusion
with Complainant's website and marks, its use of the names was not in
connection with the offering of goods or services or any other fair use); see
also Am. Online, Inc. v.
Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding that use of Complainant’s mark “as a portal to suck surfers into a
site sponsored by Respondent hardly seems legitimate”); see also Yahoo! Inc.
v. Microbiz, Inc., D2000-1050 (WIPO Nov. 7, 2000) (“[U]se that
intentionally trades on another can not constitute a ‘bona fide’ offering of
goods or services.”).
Complainant
established that Respondent lacks rights to and legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii).
It is well
established that when a domain name registrant incorporates a well-known
registered mark in a domain name for the purpose of creating Internet-user
confusion as to the sponsorship of the name and then uses it for commercial
gain, the registrant has registered and used the name in bad faith pursuant to
Policy ¶ 4(b)(iv). In this case, Respondent incorporated the famous YAHOO! mark
in the disputed domain name and used the name to provide the same type of
directory services offered by Complainant, as well as the same
automobile-related content that Complainant provides at
<autos.yahoo.com>. See Perot
Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding
bad faith where the domain name in question is obviously connected with
Complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding
that Respondent intentionally attempted to attract Internet users to his
website for commercial gain by creating a likelihood of confusion with
Complainant’s mark and offering the same services as Complainant via his
website); see also Scholastic Inc.
v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001)
(finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the
domain name at issue to resolve to a website offering similar services as
Complainant into the same market).
Additionally,
the Panel finds that Respondent actually knew or had constructive notice of
Complainant’s rights in the YAHOO! Mark.
Complainant’s YAHOO! mark is well-known worldwide and Respondent
provided used it to provide the same type of service and content provided by
Complainant under the YAHOO! mark. See Yahoo!
Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of
the YAHOO! mark negated any plausible explanation for Respondent’s registration
of the <yahooventures.com> domain name); see also Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”); see also
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir.
2002) (“Where an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse.”).
Moreover,
Respondent did not provide the Panel with any good faith basis for registering
and using the disputed domain name. See CBS Broad., Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000) (finding bad faith where Respondent failed to
provide evidence to controvert Complainant's allegation that Respondent
registered the name in bad faith and any future use of the name would only
cause confusion with Complainant’s mark); see also Kraft Foods v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that
Respondent [chose] to register a well known mark to which he has no connections
or rights indicates that he was in bad faith when registering the domain name
at issue.”); see also Albrecht v. Natale, FA 95465 (Nat. Arb.
Forum Sept. 16, 2000) (finding bad faith registration and use where Respondent
registered a domain name incorporating Complainant’s mark and Respondent failed
to show circumstances in which such a registration could be done in good
faith).
Therefore,
Complainant has established that Respondent registered and used the disputed
domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <yahooauto.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 8, 2004
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