Yahoo! Inc. v. ShowMeMyMoney.com LLC
Claim Number: FA0907001272876
Complainant is Yahoo!
Inc. (“Complainant”), represented by David
M. Kelly of Finnegan, Henderson, Farabow, Garrett &
Dunner L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwyahoocom.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has 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 electronically July 9, 2009; the National Arbitration Forum received a hard copy of the Complaint July 10, 2009.
On July 9, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwyahoocom.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. 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 July 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 3, 2009, 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@wwwyahoocom.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 6, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 that Respondent registered, <wwwyahoocom.com>, is confusingly similar to Complainant’s YAHOO! mark.
2. Respondent has no rights to or legitimate interests in the <wwwyahoocom.com> domain name.
3. Respondent registered and used the <wwwyahoocom.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc., is a well-known Internet communications, media, and commerce company. Complainant provides news, chats, sports, stock quotes, maps, and more to Internet users. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the YAHOO! mark (Reg. No. 2,040,222 issued February 25, 1997).
Respondent registered the <wwwyahoocom.com> domain name October 24, 2002. The disputed domain name resolves to a website displaying sponsored advertisement links that further resolve to various third-party commercial websites, including one of Complainant’s YAHOO! websites.
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."
Given 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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 registered its YAHOO! mark with the USPTO. The Panel finds that this registration establishes Complainant’s rights in the YAHOO! mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Inertia 3D, FA 1118154 (Nat. Arb. Forum Jan. 18, 2008) (“Complainant asserts rights in the mark through its registration of the mark with the United States Patent and Trademark Office. This registration sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s disputed domain name contains Complainant’s YAHOO! mark with the only alterations being the omission of the exclamation point, the addition of the prefix “www,” the addition of the suffix “com,” along with the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s use of the distinctive portion of Complainant’s YAHOO! mark, with the additional generic prefixes or suffixes, does not distinguish the <wwwyahoocom.com> domain name and it is confusingly similar to Complainant’s YAHOO! mark. Therefore, the Panel finds that Respondent’s <wwwyahoocom.com> domain name is confusingly similar to Complainant’s YAHOO! mark under Policy ¶ 4(a)(i). 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 Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters “www” are not distinct in the “Internet world” and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark); see also Dell Inc. v. Steve Kerry d/b/a North West Enterprise Inc., FA 705267 (Nat. Arb. Forum June 21, 2006) (“[T]he Panel finds that the addition of generic top level domain names “.com” and “.net” in various places of the domain name does not negate the confusingly similar aspects of the disputed domain names under Policy ¶ 4(a)(i).”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the <wwwyahoocom.com> domain name under Policy ¶ 4(a)(ii). The Panel finds that Complainant has successfully alleged a sufficient prima facie case supporting its assertions and that the burden of proof shifts to Respondent to show that it does have such rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”).
Here, Respondent failed to respond to the allegations against it and the Panel may presume that Complainant’s contentions in the Complaint are true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). However, this Panel examines the record to determine whether Respondent has any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The disputed domain name resolves to a website featuring click-through links, which further resolve to various third-party websites, including those of Complainant. The Panel presumes that Respondent is likely profiting from such use through the generation of click-through fees. Therefore, the Panel concludes that such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or (iii), respectively. See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant’s products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Moreover, Complainant contends that Respondent is not commonly known by the <wwwyahoocom.com> domain name. The WHOIS information lists the registrant as “ShowMeMyMoney.com LLC.” This information suggests that Respondent is not commonly known by the disputed domain name. The WHOIS information, together with the lack of evidence in the record to the contrary, establish that Respondent is not commonly known by the <wwwyahoocom.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that Respondent acted in bad faith in registering and using the <wwwyahoocom.com> domain name, pursuant to Policy ¶ 4(b)(iv), because Respondent intentionally attempts to attract Internet users for financial gain to its domain name by creating a likelihood of confusion with Complainant and its YAHOO! mark. Additionally, Complainant notes, the disputed domain name’s resolving website contains click-through links that further resolve to various third-party websites. The Panel presumes that Respondent profits from such use through the receipt of click-through fees.
Therefore, the Panel finds that Respondent engaged in bad faith registration and use of the disputed domain name 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
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 <wwwyahoocom.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 19, 2009.
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