Yahoo! Inc. v. James Fato d/b/a 458
Online
Claim
Number: FA0406000286410
Complainant is Yahoo! Inc. (“Complainant”),
represented by David M. Kelly, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 1300 I Street NW, Washington, DC
20005. Respondent is James Fato d/b/a 458 Online
(“Respondent”), P.O. Box 35, Olney, MD 20830-0035.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <fuckyahoo.com>, registered with Go
Daddy Software, Inc. a/k/a GoDaddy.com.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 14, 2004; the Forum received a hard copy of the
Complaint on June 15, 2004.
On
June 15, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain name <fuckyahoo.com> is registered with Go Daddy
Software, Inc. a/k/a GoDaddy.com and that Respondent is the current registrant
of the name. Go Daddy Software, Inc. a/k/a GoDaddy.com has verified that
Respondent is bound by the Go Daddy Software, Inc. a/k/a GoDaddy.com 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
June 16, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 6, 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@fuckyahoo.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
July 13, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Louis E.Condon as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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. Respondent’s <fuckyahoo.com>
domain name is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent does not have any rights or
legitimate interests in the <fuckyahoo.com> domain name.
3. Respondent registered and used the <fuckyahoo.com>
domain name 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 delivers a branded network of comprehensive searching, directory,
information, communication, and shopping services and other online activities
and features to millions of Internet users daily.
Complainant has
continuously used the YAHOO! mark since as early as 1994. Complainant is the owner of the service mark
and trademark YAHOO!, as well as the trade name YAHOO! and the domain name
<yahoo.com>. Complainant holds
numerous trademark registrations with the United States Patent and Trademark
Office for the YAHOO! mark (Reg. No. 2,040,222, issued February 25, 1997, Reg.
No. 2,564,976, issued April 30, 2002, Reg. No. 2,187,292, issued September 8,
1998, Reg. No. 2,403,227, issued November 14, 2000, Reg. No. 2,040,691, issued
February 25, 1997).
Respondent
registered the <fuckyahoo.com> domain name February 8, 2004. Respondent is using the domain name to
direct users to a pornographic website offering Internet search services, web
directory services and shopping services focusing exclusively on adult
entertainment. Specifically,
Respondent’s website is a commercial website that advertises products for sale
ad commercial search listings for which Respondent is presumably paid each time
a user clicks on a listing.
Respondent’s website also displays banner advertisements, for which
Respondent receives commissions.
Respondent’s website has directly copied numerous features of
Complainant’s YAHOO! website, including the font colors, styles, graphics and
logo.
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.
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
acquired rights to the YAHOO! mark through registration with the USPTO and use
in commerce. See Men’s Warehouse,
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.”); see also Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that
Panel decisions have held that 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).
First address
the fact that the domain name omits the exclamation point from Complainant's
mark and use citations. Then in the next para use language similar to
below.
Respondent’s
omission of an exclamation point from the <fuckyahoo.com> domain
name is of no consequence because the omission of punctuation is not
significant in the determination of a disputed domain name’s similarity to a
mark. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb.
Forum Apr. 24, 2000) (finding that punctuation is not significant in
determining the similarity of a domain name and mark); see also Chernow Communications Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact that a name is identical to a
mark")
The registration
of a domain name that contains another's mark with the addition of the word
"fuck" was recently addressed in Am. Online, Inc. v. Vercetti,
FA 244091 (Nat. Arb. Forum Apr. 23, 2004).
“The
domain name simply adds the word “fuck” to Complainant’s mark. Generally, a domain name that consists of a
mark and a generic word does not significantly distinguish itself from the
mark. However, “fuck” may be analogous
to “sucks”: it may be a word that
connotes greater distinction. In fact,
the only case to examine the word “fuck” and its bearing on similarity used an
anaolgy to the words “sucks” for its analysis.
See Koninklijke Phillips Elecs. V. Snelling Domains Best,
D2002-1041 (WIPO Dec. 16, 2002) (finding the <fuckphilips.com>domain name
to be confusingly similar to Complainant’s PHILLIPS mark).
Courts
and UDRP Panels have addressed the issue of appending the term “-sucks” to
another’s trademark. See Lucent
Technologies, Inc. v. Lucentsucks.com, 95 F.Supp.2d 528 (E.D. Va.
2000) (<lucentsucks.com>); see also Bally Total Fitness v. Faber, 29
F.Supp.2d 1161 (C.D. Cal. 1998) (<ballysucks.com>); see also Wal-mart
Stores, Inc. v. Walsucks and Walmart Puerto Rico, D2000-0477 (WIPO July 20,
2000) (<walmartsucks.com>); see also Cabela’s Inc. v. Cupcake Patrol,
FA 95080 (Nat. Arb. Frum Aug. 29, 2000) (<cabelassucks.com>); see also
Lockheed Martin Corp. v. Parisi, D2000-1015 (WIPO Jan. 26, 2001)
(<lockheedmartinsucks.com> and <lockheedsucks.com>). In Lockheed, a majority of the Panel
held: “Both common sense and a reading of the plain language of the Policy
support the view that a domain name combining a trademark with the words
“sucks” or language clearly indicating that the domain name is not affiliated
with the trademark owner cannot be considered confusingly similar to the
trademark” Id; accord, Talk Radio Network v. Fotuard, FA 155181 (Nat.
Arb. Forum June 24, 2003).
However,
in Cabela’s, the Panel determined that “-sucks” domain names are not
“immune from scrutiny as being confusingly simlar to trademarks to which they
are appended.” See Cabela’s Inc. v.
Cupcake Patrol, FA 95080 (Nat. Arb. Forum August 2000) construed in
Infospace, Inc. v. Sunwave Communications, FA 198015 (Nat. Arb. Forum Nov.
10, 2003); see e.g., Infospace, Inc. v. Sunwave Communications, FA
198015 (Nat. Arb. Forum Nov. 10, 2003); Wachovia Corp. v. Flanders, D2003-0596
(WIPO Sept. 19, 2003); Savin Corp. v. savinsucks.com, FA 103982 (Nat.
Arb. Forum Mar. 5, 2002).
In
claims where Respondent has not responded, Panels have accepted Complainants’
assertions of confusing similarity under the Policy. See Quilogy, Inc. v. Ruddick, FA 134653 (Nat. Arb. Forum
Jan. 9, 2003); see also Diners Club Int’l v. SPS, FA 149414 (Nat. Arb.
Forum April 21, 2003). The test in
Policy ¶ 4(a)(i) has a low threshold of proof.
See Desktop Media, Inc. v. Desktop Media, Inc., FA 96815 (Nat.
Arb. Forum Apr. 12, 2001) (“[F]or the limited purposes of the domain name dispute
resolution process[,] a low threshold of proof is all that is required to meet
the first element…”). All that
Complainant need demonstrate is that its mark is included in the domain name. See Nikon, Inc. and Nikon Corp. v.
Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing
similarity under the Policy is decided upon the inclusion of a trademark in the
domain name rather than upon the likelihood of confusion test under U.S.
trademark law); see also Magnum Piering, Inc. v. Mudjackers & Wilson,
D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the
Policy is decided upon the inclusion of a trademark in the domain name rather
than upon the likelihood of confusion test under U.S. trademark law). Thus, since Respondent’s domain name wholly
incorporates Complainant’s AOL mark and merely adds the word “fuck,” the Panel
finds that the domain name is confusingly similar to Complainant’s mark for
purposes of Policy 4(a)(i).”
The Panel
follows the same reasoning as discussed above and finds that Respondent's <fuckyahoo.com>
domain name is confusingly similar to Complainant's YAHOO! mark.
Therefore, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
established that it has rights to and legitimate interests in its mark and has
alleged that Respondent has no such rights or legitimate interests in the
domain name that contains in its entirety the Complainant’s mark. Due to Respondent’s failure to respond to
the Complaint, the Panel will assume that Respondent lacks rights and
legitimate interests in the disputed domain name. In fact, once Complainant makes a prima facie case in
support of its allegations, the burden shifts to Respondent to show that it
does have such rights to or legitimate interests pursuant to Policy ¶
4(a)(ii). See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where
Complainant has asserted that Respondent has no rights or legitimate interests
with respect to the domain name it is incumbent on Respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to Respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); 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).
Moreover, where
Complainant makes the prima facie showing and Respondent does not
respond, the Panel may accept all reasonable allegations and inferences in the
Complaint as true. See 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.”); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that Respondent’s failure to respond allows all reasonable inferences of fact
in the allegations of Complainant to be deemed true); see also Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a Response, Respondent has failed to invoke any circumstances
which could demonstrate any rights or legitimate interests in the domain name).
Complainant
alleges that Respondent is using the disputed domain name to promote
pornography. Using Complainant’s mark
to promote pornography is neither a bona fide offering of goods or services,
pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the
domain name, pursuant to Policy ¶ 4(c)(iii).
See Isleorth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb.
Forum Sept. 27, 2002) (finding that Respondent’s use of its domain name, to
link unsuspecting Internet traffic to an adult oriented website, containing
pornography, did not constitute a connection with a bona fide offering of goods
or services or a noncommercial or fair use); see also Microsoft Corp. v.
Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of
Complainant’s mark to “define the location of Respondent’s website on the
Internet” and to host a pornographic website was not a legitimate noncommercial
or fair use of the domain name).
Moreover,
Respondent offered no evidence and no proof in the record suggests that
Respondent is commonly known by the <fuckyahoo.com> domain
name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interests where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also Broadcom Corp. v.
Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no
rights or legitimate interests because Respondent is not commonly known by the
disputed domain name or using the domain name in connection with a legitimate
or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered a domain name that contains in its entirety Complainant’s
well-known mark and did so for Respondent’s commercial gain, as is evidenced by
Respondent’s direct appropriation of numerous features of Complainant’s YAHOO
mark including the font color and style.
Respondent’s domain name diverts Internet users who seek Complainant’s
YAHOO mark to Respondent’s commercial website through the use of a domain name
that is confusingly similar to Complainant’s mark. Furthermore, Respondent is unfairly benefiting from the goodwill
associated with Complainant’s YAHOO mark.
Respondent’s practice of diversion, motivated by commercial gain,
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Corp. v. Out Island Props.,
Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince
the disputed domain names contain entire versions of Complainant’s marks and
are used for something completely unrelated to their descriptive quality, a
consumer searching for Complainant would become confused as to Complainant’s
affiliation with the resulting search engine website” in holding that the
domain names were registered and used in bad faith pursuant to Policy ¶
4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA
123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and
used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because
Respondent was using the confusingly similar domain name to attract Internet
users to its commercial website).
Respondent is
using the disputed domain name to peddle pornography. Appropriating someone else’s mark within a domain name to promote
pornography is bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Six Continents
Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“whatever 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”); see also Ty Inc. v, O.Z. Names,
D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking
the domain names in question to graphic, adult-oriented websites is evidence of
bad faith).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <fuckyahoo.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
July 26, 2004