Yahoo! Inc. v. Gianluca Deiana d/b/a
Ayhooo Inc
Claim Number: FA0410000339579
PARTIES
Complainant
is Yahoo! Inc. (“Complainant”), represented
by David Kelly, of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, 1300 I Street NW, Washington, DC
20005. Respondent is Gianluca Deiana d/b/a Ayhooo Inc (“Respondent”),
106 West 28 Street, New York, NY 10001.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <ayhooo.com>,
<ayhooo.net >, <ayhooo.org>,
<ayhoooindia.com>, <ayhoookids.com>,
<ayhooorealty.com>, <ayhooorealty.net>,
<ayhoooshopping.com>, <ayhooo-uk.com>,
and <searchayhooo.com>, registered with Go Daddy Software.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Judge Irving H. Perluss
(Retired) is the
Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
7, 2004; the National Arbitration Forum received a hard copy of the Complaint
on October 8, 2004.
On
October 7, 2004, Go Daddy Software confirmed by e-mail to the National
Arbitration Forum that the domain names <ayhooo.com>,
<ayhooo.net >, <ayhooo.org>,
<ayhoooindia.com>, <ayhoookids.com>,
<ayhooorealty.com>, <ayhooorealty.net>,
<ayhoooshopping.com>, <ayhooo-uk.com>,
and <searchayhooo.com> are 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 8, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of October 28,
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@ayhooo.com, postmaster@ayhooo.net,
postmaster@ayhooo.org, postmaster@ayhoooindia.com, postmaster@ayhoookids.com,
postmaster@ayhooorealty.com, postmaster@ayhooorealty.net,
postmaster@ayhoooshopping.com, postmaster@ayhooo-uk.com, and
postmaster@searchayhooo.com by e-mail.
A
timely Response was received and determined to be complete on October 28, 2004.
An
additional submission by Complainant was timely received on November 3, 2004.
On November 9,
2004, pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed Judge Irving H. Perluss (Retired)
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. Complainant,
Yahoo!, 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
hundreds of millions of Internet Users.
Yahoo! has continuously used the mark YAHOO! in a stylized logo format
since at least as early as January 1996.
2. Complainant
is the owner of the service mark and trademark YAHOO!, as well as the trade
name YAHOO! and the domain name <yahoo.com>. In use since 1994, the YAHOO! mark has become one of the most
recognized brands in the world, with a value of nearly US $3.9 billion
according to Interbrand.
3. Complainant
offers a wide variety of services using the YAHOO! mark together with a
descriptive name of its services. These
services include YAHOO! Search, YAHOO! Shopping, YAHOO! Real Estate, YAHOO!
Messenger, YAHOO! Groups, YAHOO! Auctions, YAHOO! Maps, YAHOO! Chat, YAHOO!
Personals, YAHOO! Games, YAHOO! Sports, YAHOO! Movies, YAHOO! Weather, YAHOO!
Address Book, YAHOO! Bill Pay, and YAHOO! Store.
4. In
addition to the main YAHOO! site located at <yahoo.com>, Complainant
operates numerous sites specific to particular countries or regions around the
world including for example, Yahoo! Italia, Yahoo! UK & Ireland, and Yahoo!
India. The Yahoo! Italia website,
targeted to Internet users in Italy where Respondent was previously located,
was launched on April 22, 1998, and has been available since that time.
5. Fifty-two
UDRP decisions involving the YAHOO! mark have been issued in Yahoo!’s favor,
and the Panelists in at least twenty-four of these cases expressly found the
YAHOO! mark to be famous.
6. Complainant
has numerous registrations of its mark on the Principal Register of the United
State Patent and Trademark Office, including registration numbers 2,040,222
(issued Feb. 25, 1997 for directory and search engine services), 2,564,976
(issued Apr. 30, 2002 for electronic commerce services), 2,187,292 (issued
Sept. 8, 1998 for an online buyer’s guide to the goods and services of others),
2,403,227 (issued Nov. 14, 2000 for online retail and mail order services in
the field of general merchandise), and 2,040,691 (stylized, issued Feb.25, 1997 for director and search engine
services). Complainant also has
registered the YAHOO! mark with other legitimate governmental authorities such
as the European Community.
7. 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
those marks, long predate Respondent’s registration of the domain names.
8. Respondent
has used and is currently using the domain name <ayhooo.com> for
directly competing search engine and web directory websites in Italian and
English languages under the name “Ayhooo.”
9. Respondent
currently uses the domain name <ayhooo.net> to redirect Internet
users to its <ayhooo.com> website. Respondent has previously used the domain name <ayhooo.net>
for directly competing search engine and web directory websites in Italian and
English under the names Ayhooo! Italia and Ayhooo.
10. Respondent
has used the domain name <searchayhooo.com> for its directly
competing search engine and web directory website, and currently uses it to
display a “coming back soon” notice.
11. Respondent
has used the domain name <ayhoookids.com> for its directly
competing search engine and web directory websites under the names Ayhooo
Kids!!! and Ayhooo Kids.
12. Respondent
has used the domain name <ayhoooshopping.com> for its directly
competing search engine and web directory websites under the name
“Ayhooo.” Respondent’s <ayhoooshopping.com>
website currently displays the “Ayhooo” logo and a “coming back soon” notice.
13. Respondent
has used the domain name <ayhooo-uk.com> for its website offering
directly competing search engine services.
14. Respondent
uses the domain name <ayhoooindia.com> for a GoDaddy.com registrar
placeholder page advertising GoDaddy.com’s registration services.
15. Respondent
does not appear to be currently using the domain names <ayhoookids.com>,
<ayhoooshopping.com>, and <ayhooo-uk.com> for
websites, and does not appear to have used the domain names <ayhooo.org>,
<ayhooorealty.com>, and <ayhooorealty.net> for
websites.
16. Each
of the disputed domain names is confusingly similar to Complainant’s famous
YAHOO! mark because each domain name is comprised of the following: a
misspelling (“ayhooo”) of the YAHOOO! mark; a misspelling (“ayhooo”) of the
YAHOO! mark combined with a generic term (“kids,” “realty,” “shopping” or
“search); or a misspelling (“ayhooo”) of the YAHOO! mark combined with a
geographic term (“India” or “UK”). The
term “ayhooo” is virtually identical to Complainant’s YAHOO! mark. Respondent simply reserved the letters “Y”
and “A” in the YAHOO! mark and added an extra “o” at the end.
17. Further,
the disputed domain names <ayhooindia.com>, <ayhooorealty.com>,
<ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>,
and <searchayhooo.com> are virtually identical to the names of
some of Complainant’s websites, namely, YAHOO!
18. Respondent’s
registration and use of the disputed domain names trade on Complainant’s
goodwill and infringe Complainant’s rights in its YAHOO! mark, Respondent’s use
of the domain name to direct Internet traffic to a directly competing website cannot
constitute a bona fide use of the disputed domain names pursuant to Policy ¶
4(c)(i).
19. Respondent
is not and has not been commonly known by the disputed domain names prior to
its registration of the domain names.
Respondent’s use of the name “Ayhooo” in no way demonstrates any
legitimate interest of Respondent in the domain names. Respondent cannot justify its
misappropriation of Yahoo!’s famous YAHOO! trademark in a domain name simply by
also using the domain name as part of a trade name or business name.
20. Respondent
is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed
domain names to prevent Complainant from reflecting its YAHOO! mark in the
corresponding domain names. Complainant
argues that Respondent’s registration of a total of ten domain names that are
subject to this dispute constitutes a pattern of registering the
trademark-related domain names in bad faith.
21. Respondent
is in violation of Policy ¶ 4(b)(iii) because Respondent is unfairly competing
with Yahoo! and disrupting Yahoo!’s business by using and/or intending to use
the disputed domain names for directly competing, commercial websites.
22. Respondent
is in violation of Policy ¶ 4(b)(iv) because Respondent uses, has used, and/or
intends to use the disputed domain names to intentionally attract, for
commercial gain, Internet users by creating a likelihood of confusion with
Yahoo! and its famous YAHOO! mark as to the source, sponsorship, affiliation,
or endorsement of Respondent’s directly competing, commercial websites.
23. Respondent’s
passive holding of the unused disputed domain names is evidence of bad faith
registration and use because those domain names are confusingly similar to the
famous YAHOO! mark, and because there is no foreseeable use of the domain names
that could be done in good faith.
24. Because
of the fame of Complainant’s YAHOO! mark, and the fact that Respondent has used
some of the disputed domain names for directly competing websites, it is
apparent that Respondent had notice of Complainant’s rights in the YAHOO! mark
prior to registering the domain names.
B.
Respondent
1. The
disputed domain names are not confusingly similar to Complainant’s YAHOO! mark
because the domain names do not incorporate Complainant’s mark. Rather, the domain names contain the name
“Ayhooo,” which means “let’s go” in Sardinian and is a common phrase in the
country of Sardinia, the country of origin for the owner of Respondent’s
company. In addition, many of the names
are further distinguished from Complainant’s mark by adding other terms to the
“Ayhooo” name.
2. Respondent
is using the disputed domain names in connection with its Internet
directory. Such use is 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).
3. Respondent’s
intent in registering and using the disputed domain names was to create an
Internet directory and not to create more opportunities for people to be
tricked into being directed to Respondent’s website. Thus, there was no bad faith registration and use.
4. Respondent
holds the registration for the AYHOO mark (Reg. No. CA2001C000124) filed in
Italy in 2001.
5. The
combinations of a logo with a general category name are not the exclusive
property of Complainant. Many
directories of this type use these same combinations. The authority that Complainant relies on clearly allows the use
of Yahoo. See Yahoo! Inc. v. Peter Carrington, FA 184899 (Nat. Arb. Forum Oct. 20,
2003).
C.
Additional Submission by Complainant
1. Respondent
incorrectly claims to hold the Italian Trademark (Reg. No. CA2001C000124) for
the AYHOOO mark and design. Respondent
holds a pending Italian application.
Respondent’s trademark application does not establish any legitimate
interest in the disputed domain names.
2. Complainant’s
rights in the YAHOO! mark are valid and in full force and effect in both Italy
and the United States. Yahoo!’s rights
in the YAHOO! mark, based on Yahoo!’s trademark registration in the European
Community (which covers Italy), the United States, and numerous other
countries, and on its use of YAHOO! as a trademark and trade name, were
established years before Respondent began registering the domain names
beginning in May 2000.
3. Confusing
similarity is demonstrated by comparing the domain name to the trademark at
issue in appearance, pronunciation, or meaning and that is the case here.
4. Each
of the disputed domain names is similar in appearance to the YAHOO! mark because
“ayhooo” is an obvious misspelling of the YAHOO! mark. Moreover, the domain names are similar in
pronunciation to the YAHOO! mark, because the first syllable “ay” is merely a
reversal of “ya” and the second syllable “hooo” and “hoo” are identical in pronunciation
and appearance. Finally, the overall
impression left by the term “ayhooo” for a search engine is that it is merely a
slight variation of Complainant’s YAHOO! mark.
5. Respondent
asserts that he selected the term “ayhooo” for his domain names because it
“means ‘let’s go’ in Sardinian” and the spelling Ayhooo was chosen because it
was deemed closest to the word’s pronunciation for English speakers. Respondent’s website also claims that
“ayhooo” means “‘AIO’ (roughly translated an exuberant LET’S GO!)” Respondent’s explanation for his
registration of the domain names, however, does not have credibility. Respondent does not use the term “AIO” or
the term “Let’s go” to identify his websites, although he could have registered
the AIO-formative domain names instead of AYHOOO-formative domain names. In addition, Respondent’s use of the domain
names has been primarily for websites in English and targeted toward English
speakers who would not recognize “ayhooo” as a variant spelling of the Sardinian
word AIO.
6. Respondent’s
assertion that he was not intending to “trick” or confuse Internet uses does
not demonstrate any rights in the domain names.
7. Respondent’s
use and/or intended use of the domain names for competing Internet search and
web directory services and other Internet portal-related services is not a bona
fide use under the UDRP.
8. Complainant’s
YAHOO! mark has become famous in Italy and globally for Internet search
services and web directory services before Respondent decided to offer Internet
search services, web directory services, and other competing services, and
Respondent has done nothing to refute the fact. Respondent’s contention that it registered and used the domain
names not because of the fame of Yahoo!’s mark YAHOO! but because of the
Sardinian term “AIO” has absolutely credibility.
9. Respondent
lists a number of websites that allegedly use domain names or logos similar to
the YAHOO! logo. The existence of other
infringers, however, does not excuse Respondent’s bad faith use and
registration of the domain names.
FINDINGS AND DETERMINATIONS
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.
It is found and determined that the
disputed domain names <ayhooo.com>, <ayhooo.net>,
<ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>,
<ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>,
<ayhooo-ik.com>, and <searchayhooo.com> are
confusingly similar to Complainant’s YAHOO! mark because each domain name
incorporates a misspelled version of Complainant’s mark, specifically “ayhooo,”
and in some cases simply adds a geographic or generic term to the mark, such as
“India,” “kids,” “realty,” “shopping,” “uk,” and “search.”
The decision in Yahoo! Inc. and HotJobs.com
Ltd. v. Yomtobian FA 154591
(Nat. Arb. Forum May 30, 2003), inter
alia, is directly on point, wherein the domain name <ahoo.com> was
ordered to be transferred to Complainant.
See also Yahoo! Inc. v. Jalbert,
FA 166020 (Nat. Arb. Forum Aug. 26, 2003).
It further is found and determined that
the addition of generic terms to a common misspelling of Complainant’s mark is
sufficient to establish that such domain names are confusingly similar to
Complainant’s mark. See Yahoo! Inc. v. Vorot, FA 159547
(Nat. Arb. Forum July 16, 2003) (finding the domain names <yhoomail.com>,
<yhoochat.com>, and <yahhogames.com>, among others, confusingly
similar to Complainant’s YAHOO! mark); see
also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding
the domain name <yasexhoo.com> confusingly similar to Complainant’s
YAHOO! mark).
The contention of Respondent that the
selection of the term “ayhooo” for the disputed domain names was chosen because
it “means ‘let’s go’ in Sardinian” and “the spelling Ayhooo was chosen because
it was deemed closest to the word’s pronunciation for English speakers” is
without merit as is Respondent’s website where it is stated “‘AIO’ (roughly
translated to an exuberant LET’S GO!).”
Thus, the Panel in Yahoo! Inc. v. Kirovsky D2000-0428 (WIPO Aug. 9, 2000)
rejected a similar contention that the disputed domain names at issue were
based on a foreign language word.
Respondent there alleged that he registered the domain names
<yahoofree.com>, <yahoofree.net>, <yahoochat.net>, and
<yahooemail.net> based on his claim that the term “YAHOO” means “beast”
in Spanish. The Panel rejected the
Respondent’s claim as unjustifiably coincidental and further noted “it is
inconsistent for the [r]espondent to rely on an alleged Spanish meaning for the
word YAHOO when the domain names registered by him also just happen to
prominently feature foreign English
words such as ‘EMAIL’ and ‘CHAT’ which, in turn, constitute services for
which the complainant is known amongst internet users.” See
also Yahoo! Inc. et al. v. Yomtobian
(NAF FA 154591) (holding Respondent’s registration of the domain name ahoo.com
among others and use of the disputed domain names for directly competing
websites constituted bad faith despite Respondent’s claim that “ahoo” is the
Persian word for “deer”); Yahoo! Inc. v. Wooyoun Cho, FA 146934
(Nat. Arb. Forum Apr. 16, 2003) (holding Respondent’s registration and use of
the domain name <yahooplus.com> for a directly competing website in
Korean constituted bad faith despite Respondent’s claim that he registered the
domain name because of the dictionary meaning of the term “yah-hu”).
The decision in Yahoo! Inc. v. Carrington, FA 184899 (Nat. Arb. Forum Oct. 20,
2003), cited by Respondent is not helpful to him. This is because, the Panelist after finding forty-one domain
names confusingly similar, dismissed, without prejudice, the Complaint with
respect to seven names because the names were not registered by the Respondent
therein.
The Panelist said the following:
In
the interest of administrative efficiency, and pursuant to the directive of
ICANN Rules 10(c) (requiring that the administrative proceeding take place with
‘due expedition’) and 10(e) (requiring the Panel to resolve consolidation
requests), the Panel hereby dismisses, without prejudice, Complainant’s claim
as to all domain names not registered by Peter Carrington. Accordingly, relief is DENIED as to the <byahoo.com>, <mailyahooo.com>, <mailyhaoo.com>,
<yahoomusic.com>, <fantasyyahoo.com>, <yahoohotjob.com>,
and <yahoogreating.com>
domain names.
Yahoo! Inc. v.
Carrington, FA 184899, at 7
(Nat. Arb. Forum Oct. 20, 2003).
Complainant has established the required
first prong of the Policy.
It is found and determined that
Respondent is not using the disputed domain names in connection with 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). This is because Respondent registered and
used the domain names to trade on the goodwill that Complainant has developed
in its famous YAHOO! mark. See U.S.
Fran. Sys., Inc. v. Howell,
FA 152457 (Nat. Arb. Forum May 6, 2003).
It is also found and determined that
Respondent is not, and has not, been commonly known by the disputed domain
names pursuant to Policy ¶ 4(c)(ii). See 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”); see also Comagnie de Saint Gobain v. Com-Union Corp., D2000-0020
(WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent
was not commonly known by the mark and never applied for a license or
permission from Complainant to use the trademarked name).
Complainant has established the required
second prong of the Policy.
It is found and determined that
Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered
the disputed domain names to prevent Complainant from reflecting its YAHOO!
mark in the corresponding domain names.
The registration of the ten disputed domain names herein constitutes a
pattern of registering trademark-related domain names in bad faith. See YAHOO! INC. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001)
(finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent’s
registration of two domain names incorporating Complainant’s YAHOO! mark); see also Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000)
(finding that, where Respondent registered many domain names, held them
hostage, and prevented the owners from using them, the behavior constituted bad
faith).
It is also found and determined that
Respondent is in violation of Policy ¶ 4(b)(iii) because Respondent is unfairly
competing with Yahoo! and disrupting Yahoo!’s business by using and/or
intending to use the domain names for directly competing, commercial
websites. See S. Exposure v. S. Exposure,
Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business); see also Puckett v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business
from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii));
see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant’s mark to divert
Internet users to a competitor’s website.
It is a reasonable inference that Respondent’s purpose of registration
and use was to either disrupt or create confusion for Complainant’s business in
bad faith pursuant to Policy ¶¶ 4(b)(iii) & (iv).”).
Further, it is found and determined that
Respondent is in violation of Policy ¶ 4(b)(iv) because Respondent uses, has
used, and/or intends to use the domain names to intentionally attract, for
commercial gain, Internet users by creating a likelihood of confusion with
Yahoo! and its famous YAHOO! mark as to the source, sponsorship, affiliation,
or endorsement of Respondent’s directly competing, commercial websites. See
Perot Sys. Corp. v. Pero.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. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding bad faith where Respondent registered and used an infringing
domain name to attract users to a website sponsored by Respondent); see also Gardens Alive, Inc. v. D&S Linx,
FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the
<my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii)
and (iv) because Respondent is using a domain that is confusingly similar to
the MYSEASONS mark for commercial benefit by diverting Internet users to the
<thumbgreen.com> website, which sells competing goods and services.”); see also Am. Univ. v. Cook,
FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain
name that incorporates another’s mark with the intent to deceive Internet users
in regard to the source or affiliation of the domain name is evidence of bad
faith.”); see also TM Acquisition Corp. v. Warren, FA
204147 (Nat. Arb. Forum Dec. 8, 2003) (finding that Internet users would be
confused as to the source of Respondent’s website that offered links to third
party websites in competition with Complainant because users “are likely to use
search engines to find Complainant’s website,” and would presumably be unaware
of the actual source of Respondent’s website); see also Hancock Fabrics, Inc.
v. Active Advantage, Inc.,
FA 204111 (Nat. Arb. Forum Dec. 4, 2003) (finding that Respondent created a
likelihood of confusion as to the source of its website because it registered a
domain name confusingly similar to Complainant’s mark and used it to redirect
Internet traffic to a completely unrelated website).
Finally, it is found and determined that
because of the fame of Complainant’s YAHOO! mark, and because Respondent has
used some of the disputed domain names for directly competing websites, it is
obvious that Respondent had actual notice of Complainant’s rights in the YAHOO!
mark prior to registering the disputed domain names. Thus, it is found and determined that Respondent registered and
used the disputed domain names in bad faith pursuant to Policy ¶
4(a)(iii). 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) (“[T]here 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.”).
Respondent’s argument that there are
numerous unchallenged domain names similar to Complainant’s names is without
merit.
In LowerMyBills, Inc. v. Lox Invs., FA 323756 (Nat. Arb. Forum Oct. 22,
2004), the Panel said the following:
Respondent’s
argument that he is being singled out because there are many similar domain
names that are available is without merit.
It is not relevant. See MGM-Pathe Communications v. Pink Panther
Patrol (S.D.N.Y. 1991) 774 F.Supp. 869, 873 (‘. . .the Patrol contends that
another registered trademark for the words “pink panther” exists, and at least
15 other establishments, including a bar and a liquor store, use the Pink
Panther name. These arguments are
unavailing. . . . The fact that there are other establishments that use the
name Pink Panther does not contradict the harm suffered by MGM from the
Patrol’s use of the mark.’).
LowerMyBills, Inc. v. Lox Invs., FA 323756, at 7 (Nat. Arb. Forum Oct. 22,
2004).
Complainant has established the third required prong of the
Policy.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ayhooo.com>, <ayhooo.net >,
<ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>,
<ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>,
<ayhooo-uk.com>, and <searchayhooo.com> domain names
be TRANSFERRED from Respondent to Complainant.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated: November 22, 2004
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