Yahoo! Inc. v. Craig Butler
Claim Number: FA0607000744444
PARTIES
Complainant is Yahoo! Inc. (“Complainant”), represented by David M. Kelly, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., 901 New York Avenue NW, Washington, DC 20001-4413. Respondent is Craig Butler (“Respondent”), 16004 Mariners Dr., Huntington Beach, CA 92649.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yahooanswers.com>
and <yahooanswers.info>,
registered with Go Daddy
Software, Inc., and <yahooanswer.com>, <yahooanswers.net> and <yahooanswer.net>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide. These domain names are hereinafter referred
to as the “Domain Names.”
PANEL
The undersigned, Christopher Gibson, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 6, 2006; the National Arbitration Forum received a hard
copy of the Complaint on July 7, 2006.
On July 6, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <yahooanswers.com>
and <yahooanswers.info> domain names are registered with Go Daddy
Software, Inc. and that the Respondent is the current registrant of the
names. Go Daddy Software, Inc. has
verified that Respondent is bound by the Go Daddy Software, Inc. 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 July 7, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide
confirmed by e-mail to the National Arbitration Forum that the <yahooanswer.com>,
<yahooanswers.net> and <yahooanswer.net> domain names are registered with Melbourne
It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current
registrant of the names. Melbourne It,
Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by
the Melbourne It, Ltd. d/b/a Internet Names Worldwide registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with the Policy.
On July 10, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 31, 2006 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@yahooanswers.com,
postmaster@yahooanswer.com, postmaster@yahooanswers.info, postmaster@yahooanswers.net,
postmaster@yahooanswer.net by e-mail.
A timely Response from the Respondent was received and determined to be
complete on July 26, 2006.
A timely Additional Submission from the Complainant was received on
July 31, 2006, and was accompanied by the appropriate fee.
On August 2, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, and with the
Respondent’s agreement to a single-member Panel noted in its Additional
Submission, the National Arbitration Forum appointed Christopher Gibson as
Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant’s contentions are summarized below.
The Complainant has set out statements and supporting evidence to demonstrate the strong reputation, goodwill and distinctiveness in its well-known and famous YAHOO! and YAHOO marks, and highlights that it has actively enforced its trademark rights over the years, including by filing other UDRP cases involving other domain names allegedly infringing the YAHOO! trademark.
Yahoo!
owns trademark registrations and applications for the YAHOO and YAHOO! marks (hereinafter
referred to as the “Trademark” or YAHOO! mark) in
more than 90 countries, including the following examples:
a.
U.S. Registration No.
2,040,222, first used June 1, 1994, filed January 24, 1996, issued February 25,
1997, covering goods and services in International Classes 16, 35, and 42,
including directory and search engine services.
b.
U.S. Registration No.
2,187,292, first used September 22, 1997, filed February 28, 1997, issued
September 8, 1998, covering services in International Class 35, including an
online buyer’s guide to the goods and services of others;
c.
U.S. Registration No. 2,159,115, first used October 1997, filed
August 13, 1997, issued May 19, 1998, covering services in International Class
38, including electronic mail services; and
d.
U.S. Registration No.
2,403,227, dates of first use occurring June 1994 through March 16, 1998, filed
August 13, 1997, issued November 14, 2000, covering goods and services in
International Classes 9, 35, 38, 39 and 42, including computer software for
providing multiple-user access to computer networks and for use in creating and
designing websites, online retail and mail order services, directory services
to help locate people, places, organizations, phone numbers, home pages and
electronic mail addresses, online facilities for real-time interaction with other
computer users concerning topics of general interest and for playing games, and
online reservations and bookings for lodging and transportation.
The Complainant contends that
confusing similarity exists between Complainant's Trademark and the Domain
Names. In particular, Complainant
contends that the Domain Names are confusingly
similar to Complainant’s YAHOO! mark because each is comprised of Complainant’s
mark and a generic term, “answers” or “answer”.
The Complainant also contends that the Respondent has no legitimate interests in the Domain Names. Complainant alleges that Respondent is not and has not been commonly known by the Domain Names. The WHOIS information lists “Craig Butler” as the registrant of the Domain Names and there is no evidence in the record suggesting that Respondent is commonly known by the Domain Names. The crux of the Complainant’s contention in this regard is that, because Respondent’s registration and use of the Domain Names constitutes a deliberate attempt to trade on the reputation and fame in Complainant’s famous YAHOO! mark, this does not qualify as a bona fide use of the Domain Names under Section 4(c)(i) of the UDRP.
The Complainant has raised multiple allegations that the Domain Names were registered and are being used in bad faith, including:
(i)
Respondent’s registration and use meet the bad faith element in Section
4(b)(iv) of the UDRP because Respondent uses and/or intends to use the Domain
Names to intentionally attract, for commercial gain, Internet users by creating
a likelihood of confusion with Complainant and its Trademark as to the source,
sponsorship, affiliation, and endorsement of Respondent, Respondent’s websites,
and the goods and services offered and advertised on those websites. The Complainant has provided evidence of
confusion in support of this contention.
(ii) Respondent’s registration and use of the Domain Names meet the bad faith element in Section 4(b)(ii) of the UDRP. In particular, Respondent’s registration of the five Domain Names in and of itself constitutes a pattern of registering trademark-related domain names in bad faith. The Complainant has provided evidence that the Respondent has registered other domain names which incorporate the trademarks of other Internet-based companies such as AOL and Google.
(iii) Respondent’s use and registration of the Domain Names meet the bad faith element of Section 4(b)(i) of the UDRP because Respondent registered the Domain Names primarily to sell, rent, or otherwise transfer them for valuable consideration in excess of his documented out-of-pocket expenses. In particular, the Complainant has provided evidence that the Respondent specifically offered to sell the Domain Names directly to Complainant for $54,000. The Respondent does not deny this but has instead offered a response.
(iv) Respondent acted in bad faith because, as a customer of Yahoo!, he had actual knowledge of Complainant’s rights in its YAHOO! mark when he registered the Domain Names. Further, Respondent admitted in his posting on a third-party bulletin board that he registered the Domain Names because they incorporate Complainant’s YAHOO! mark and capitalize on Yahoo!’s goodwill.
(v) Respondent’s registration and use of the domain names <YAHOOANSWERS.INFO>, <YAHOOANSWERS.NET>, and <YAHOOANSWER.NET> for “parking” websites is in bad faith because the Domain Names incorporate Complainant’s famous YAHOO! mark in entirety and there is no conceivable use of the Domain Name by Respondent that would be legitimate given his allegedly infringing activities to date.
B. Respondent
Respondent has raised a number of points in support of his registration
and use of the Domain Names, which are summarized (and in some places
paraphrased) below:
(i) Yahoo! has had many years to purchase the Domain Names and has only
become interested now that the on-line “answers” business is receiving
increased attention from the press and becoming profitable. The Yahoo! answers site was launched eight
months after the Respondent’s own web site and it seems that the right time to
have confronted this dispute should have been earlier, during the period when
Yahoo! was developing their site.
However, since that time the Respondent has invested money and time in
building his own sites.
(ii) Respondent registered the Domain Names through a Yahoo! site and
they were reviewed and then activated by Yahoo! “I have a right to these names as these names were purchased from
Yahoo! Inc and Yahoo! Inc accepted my money for this transaction, they reviewed
the domain names before releasing the[m] for my use.” Respondent also indicates that Yahoo! could have written a
program excluding any sequence of letters – presumably including “yahoo” – from
being sold on their domain name sales site. “The[ir] lack of planning doesn’t entitle
them anything.”
(iii) “Yahoo” is also an expression or term, describing a joy of
discovery as in finding something – something like an answer. The term “yahoo” was also used in the Old
West for excitement (e.g., a cowboy riding a horse might scream yahoo!). The Respondent points out that Yahoo! owns
only the mark, not the word.
(iv) Regarding the price of $54,000 which Respondent indicated for sale
of the Domain Names, the Respondent contends “My price is cheap and more than
fair.” The price was fair because the
Respondent’s web sites associated with the Domain Names “are a source of
income.” Respondent explained how he
calculated this price: (1) income from answering questions to date is $200 per
month, (2) Google’s AdSense sends Respondent another $40 per month, and (3)
this total ($240) was then multiplied by 12 months and 30 years to obtain
$54,000.
C. Additional Submissions
Complainant submitted an Additional Submission, in which it contends that “[n]othing in Respondent’s Response changes the showing made by Yahoo! in its Complaint that clearly entitles Yahoo! to relief.” In brief, the Complainant has noted the following additional points:
(i) Respondent has failed to deny many of the allegations made in the Complaint;
(ii)
Yahoo!, like all other domain name registrars, does not
prescreen or filter domain name applications for registration;
(iii)
Instead, it was Respondent’s responsibility, when he
registered the Domain Names, to warrant that to the best of his knowledge and
belief, neither the registration or use of the Domain Names infringed the legal
rights of any third party;
(iv)
Respondent ignored his obligations under Yahoo!’s
contractual Terms. In particular,
Respondent was not authorized to register or use domain names incorporating
Complainant’s YAHOO! mark;
(v)
Respondent’s use of the Domain Names does not pre-date
Yahoo!’s rights in its Trademark;
(vi)
Respondent’s investment of time and money in the Domain
Names does not convert Respondent’s alleged infringement into a legitimate
right to the Domain Names;
(vii)
Respondent’s suggestion that it chose the word “yahoo”
for its ordinary dictionary meaning is not credible; and
(viii)
Respondent registered the Domain Names in bad faith
knowledge of Yahoo!’s Trademark rights and then offered to sell the Domain
Names for $54,000, a substantial profit in excess of the out-of-pocket expenses
relating to the registration of the Domain Names.
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.
The Panel finds that Complainant’s trademark registrations, as well as the YAHOO! mark’s widespread and international use since 1994, amply demonstrate its rights in the YAHOO! mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). The Panel also finds that Complainant’s Trademark rights in its YAHOO! mark, and variations thereof, predate Respondent’s registration of the Domain Names.
The Panel also finds that the mere addition
of a common term such as “answer” or “answers” to Complainant’s YAHOO! mark
(and the omission of the exclamation point), are insufficient to differentiate
the Domain Names from the Complainant’s well-known and distinctive Trademark
under Policy ¶ 4(a)(i). The Panel
therefore finds that the Domain Names are confusingly similar to Complainant’s
YAHOO! mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc.,
D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating
the complainant’s entire EXPERIAN mark and merely adding the term “credit” were
confusingly similar to the complainant’s mark); see also Yahoo! Inc. v. Manage Technical, FA 238649 (Nat.
Arb. Forum Apr. 8, 2004) (finding the domain name <yahooauto.com>
confusingly similar to Complainant's YAHOO! mark because "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."); see also Yahoo! Inc.
v. Whois Privacy Protection Service, Inc., FA 412705 (Nat. Arb. Forum Mar.
17, 2005) ("[R]espondent’s <yahoomusic.com> domain name is
confusingly similar to Complainant’s YAHOO! mark. [R]espondent’s domain name incorporates Complainant’s mark in its
entirety with the exception of the exclamation point in Complainant’s mark and
the addition of the generic term ‘music’ and the generic top-level domain
‘.com.’ Such minor alterations are insufficient
to negate a finding of confusing similarity pursuant to Policy 4(a)(i).").
The Panel is reminded that Complainant must
first make a prima facie case that
Respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it
does have rights or legitimate interests.
As discussed above, the Respondent is not
commonly known by the Domain Names, nor has the Complainant authorized Respondent
to use its well-known Trademark.
Furthermore, Complainant has asserted that the Domain Names resolve to a
website offering a fee-based informational advice service and displaying
pay-per-click ads provided via Google’s AdSense advertising program. As an initial matter, given that the
Respondent selected Domain Names which have no connection to himself and which
combine Complainant’s well-known Trademark with common generic terms, in what
would appear to be an effort to take advantage of the reputation and goodwill
in Complainant’s Trademark, these basic points would appear to indicate that
Respondent does not have any rights or legitimate interests in the Domain Names
pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone
Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or
legitimate interests because the respondent is not commonly known by the
disputed domain name or using the domain name in connection with a legitimate
or fair use); see also Yahoo! Inc. v. Microbiz, Inc.,
D2000-1050 (WIPO Nov. 16, 2000) (finding that respondent’s use of
YAHOO!-formative domain names for a commercial website was not bona fide
because “use that intentionally trades on another can not constitute a ‘bona
fide’ offering of goods or services.”); see also Yahoo! Inc. v. WWW Enterprise et al., FA 535381
(Nat. Arb. Forum Sept. 28, 2005) (finding no legitimate interest in the domain
names <auctionyahoo.net>, <blogyahoo.com>, <localyahoo.net>,
and <yahoovacationsstore.com>, among others, because "[R]espondent
is using the confusingly similar domain names to operate websites that feature
links to various third-party commercial websites, through which [r]espondent
presumably earns referral fees. The Panel
finds that such diversionary use of the confusingly similar domain names is not
a use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii).").
The Panel considers that the Respondent,
perhaps like other registrants who register domain names comprised at least in
part of a well-known trademark, is confused as to the nature of the rights
conferred through registration of the domain name. The Panel will therefore address the several points raised by the
Respondent in defense of its registration and use of the Domain Names.
First, the Respondent asserts that Yahoo! has
had many years to purchase these Domain Names and became interested in them
only recently when the on-line “answers” business increased in popularity. The Respondent, meanwhile, has invested
money and time in developing his own web site using the Domain Names. The problem with this argument is that it
seeks to have the Panel ignore the well-known trademark rights which Yahoo! has
already acquired and developed at great cost since 1994, particularly in the
on-line commercial sphere. The
Respondent’s argument also ignores the fundamental fact that he did not choose
domain names which were unique, self-standing and independent of any
third-party trademark rights – for example, as of the date of this decision the
following domain names, which bear some relation to the registrant’s last name
and his putative on-line answers business, are available: <craigbutler.info>,
<butleranswers.com> and <butleranswers.info>. Choosing these domain names would have
required that the Respondent invest time and money to develop some goodwill and
reputation in his chosen business name and the associated domain names, and
perhaps register appropriate trademark rights to secure them. Instead, however, he chose the Domain Names
which, due to their confusing similarity with the Complainant’s Trademark,
opportunistically take advantage of the Complainant’s goodwill and
reputation. The Respondent’s use
to-date under these circumstances does not constitute a bona fide use of the Domain Names
pursuant to Section 4(c)(i) of the UDRP.
Second, the Respondent has asserted that he registered the Domain Names
through a Yahoo! site and that they were reviewed and then activated by Yahoo!
before releasing them for his use.
Here, the Panel agrees with the Complainant’s position stated in its
Additional Submission. Complainant has
confirmed that, acting as a domain name registrar, it does not prescreen or filter domain name applications for potential
infringements. Further, as the
Ninth Circuit Court of Appeals noted in Lockheed Martin Corp. v. Network
Solutions Inc., 985 F. Supp. 949 (C.D. Cal. 1997), aff’d, 194 F.3d
980 (9th Cir. 1999), a domain name registrar such as NSI had no affirmative
duty to monitor and screen domain names for potential infringement as they were
being registered. Instead, it is
well-understood (and a common term required in registration contracts for
ICANN-accredited domain name registrars) that the responsibility is on the
domain name registrant to warrant that, to the best of registrant's knowledge
and belief, neither its registration of a domain name nor the manner in which
it is used, infringes the legal rights of a third party.
Third, the Respondent in his response apparently contends that he
selected the term “yahoo” as part of his domain name for its common dictionary
meaning. However, the evidence
including his posting on a third-party blog supports the view that this claim
is not credible, and that instead he was well-aware of the Complainant’s
well-known YAHOO! mark at the time he registered the Domain Names. See
Yahoo! Inc. v. Silicon City, D2000-1711 (WIPO Feb. 19, 2001) (“The
[R]espondent has submitted a reference from Merriam-Webster’s Collegiate
Dictionary as to the meaning of the word ‘yahoo’ and by implication the
Respondent offers the [defense] that the word is of ordinary meaning and
available for use. The view of the
Administrative Panel is that the word ‘yahoo’ has lately acquired a stronger
meaning as the trademark of Yahoo! Inc., than as a dictionary word.”).
Finally, the Respondent has argued that the
price of $54,000 for sale of the Domain Names is “cheap and more than
fair.” However, whatever basis the
Respondent relies upon to justify this figure as supposedly reasonable, his
argument presupposes that he has some right or legitimate interest in the
Domain Names in the first place. The
Panel concludes he does not. The Panel
concludes that the Respondent’s use of the Domain Names which are confusingly
similar to the Complainant’s well-known trademark, to offer a fee-based
informational advice service for its own commercial gain, does not constitute a
bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See
Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb.
Forum Sept. 26, 2003) (“Respondent's registration and use of the
<gayaol.com> domain name with the intent to divert Internet users to
Respondent's website suggests that Respondent has no rights to or legitimate
interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii)).
In light of the above discussion and
findings, the Panel does not need to draw out further this decision. Panel finds that the Respondent was
well-aware of the Complainant’s YAHOO! mark at the time of registration and is
taking advantage of the confusing similarity between the Domain Names and
Complainant’s YAHOO! mark in order to profit from the goodwill associated with
the mark, which is indicative of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see also Yahoo! Inc. v. Manage Technical, FA 238649 (Nat. Arb. Forum Apr. 8,
2004) (holding respondent’s use of the domain name <yahooauto.com> for a
commercial website constituted bad faith because "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)."); see also Yahoo! Inc. v. Chinayahoo.com a/k/a Kevin Kevin,
FA 236538 (Nat. Arb. Forum Mar. 23, 2004) ("[R]espondent’s domain name
[chinayahoo.com] redirects Internet users who intend to search under
Complainant’s famous [YAHOO!] mark to a website sponsored by [r]espondent
through the use of a confusingly similar domain name. Respondent’s commercial
use of a domain name confusingly similar to Complainant’s mark evidences
registration and use in bad faith pursuant to ¶ 4(b)(iv)."); see also Yahoo! Inc. v. Kelvin Pham, FA 109699 (Nat. Arb. Forum May
21, 2002) (“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 [r]espondent registered the
infringing [domain name yahoonail.com].”).
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 <yahooanswers.com>,
<yahooanswer.com>, <yahooanswers.info>,
<yahooanswers.net> and <yahooanswer.net> domain names be
TRANSFERRED from Respondent to Complainant.
Christopher Gibson, Panelist
Dated: August 17, 2006
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum