[Indexed as: Yahoo! v. Jorge O. Kirovsky]
[Indexed as: YAHOOEMAIL.NET & al.]
WIPO Arbitration & Mediation Center
Administrative Panel Decision
Case No.: D2000-0428
Commenced: 20 July, 2000
Judgment: 9 August, 2000
Presiding Panelist: Wolter W. Bettink
Domain name - Domain Name Dispute Resolution Policy - U.S. federal trademarks - Identical - Confusingly similar - Mislead and divert consumers - Tarnish trademark for commercial gain - Likelihood of confusion - Rights or legitimate interests - Legitimate non-commercial use or fair use of domain name - Bona fide offering of goods and services - Bad faith use - Bad faith registration.
Complainant, owner of nine U.S. federal trademarks for the nameYAHOO!, is well-known worldwide for its variety of web and internet services. Respondent registered the domain names yahooemail.net, yahoofree.com, yahoofree.net, yahoochat.net and yahoo.com.uy and uses them as links to its website on pets and veterinary services. Respondent has also registered the domain names yahoochat.cl, yahoofree.cl and miyahoo.cl as well as the trademark YAHOO in Uruguay to establish his business named yahoo S.R.L..
Held, Domain Names Transferred to Complainant.
Complainant`s trademark is known world-wide. It is clear that the domain names yahooemail.net, yahoofree.net, yahoofree.com and yahoochat.net are confusingly similar to Complainant`s trademark and any association with the YAHOO! mark will lead to confusion in consumers` mind. Moreover, "email" and "chat" are so closely associated with YAHOO!s business that the combination with YAHOO! cannot be but confusing.
There is no evidence to establish that Respondent has any rights or legitimate interests in the said domain names. Not only did Respondent register the Yahoo! mark in Uruguay after receiving notice of the complaint, he also failed to provide any proof of a bona fide offering of goods and services. Thus, there is no legitimate non-commercial use of the domain names.
Respondent has also demonstrated bad faith use and registration of
said domain names. After receiving notification of the complaint,
Respondent registered several other domain names and trademarks associated
with the word yahoo in other countries where he claims not to have any
business. The Panel is satisfied that Respondent has thus intentionally
attempted to create confusion by attracting users to its website through
the use of the domain names. This was substantiated by the hundreds
of emails received by Respondent and which were intended for Complainant.
Respondent's explanation of coincidentally registering a series of almost
identical domain names is not convincing. Complainant has provided
evidence to demonstrate that the word YAHOO has no known meaning in the
Spanish language in Uruguay. It is inconsistent for the Respondent
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".
In sum, the Panel believes that the pre-emption and interception
of a famous and well-known foreign mark by simply registering it first
as a domain name in the local jurisdiction , should not be sanctioned or
seen to be sanctioned in the interest of preserving the integrity of the
global trading system of the new economy.
Policies referred to:
Uniform Domain Name Dispute Resolution Policy: par. 4(a), 4(b) and 4(c)
Cases referred to:
Yahoo! Inc. v. Akash Arora & ANR, High Court of Delhi, February 19, 1999
Panel Decisions referred to:
Yahoo! Inc. v. David Ashby, ICANN D2000-0241 (WIPO).
Yahoo! Inc. v. Eitan Zviely et al., ICANN D2000-0273 (WIPO).
Bettink, Gabay, Mostert, Panelists:-
Procedural History
A complaint was submitted with the World Intellectual Property Organization,
Arbitration and Mediation Center (The "WIPO Center") on May 12, 2000 ("the
Complaint"). The WIPO Center sent an Acknowledgement of Receipt to the
Complainant on May 17, 2000.On May 17, 2000, a Request for Register Verification
was transmitted to the Registrar. On May 19, 2000, the Registrar confirmed
by e-mail that the domain names "yahooemail.net", "yahoofree.net", "yahoofree.com"
and "yahoochat.net" are registered with the Registrar and that the Respondent
is the current registrant of those domain names.
On May 23, 2000, a Notification of Complaint and Commencement of Administrative
Proceedings (the "Commencement Notification") was transmitted by email
to the Respondent setting a deadline by which the Respondent could make
a response to the Complaint.
On June 9, 2000, Respondent submitted to the WIPO Center its response
("the Response"). Respondent's response identifies himself as respondent
and as the person to whom communications should be sent, confirms that
Respondent is the owner of the domain names "yahoomail.net", "yahoofree.net",
"yahoofree.com", "yahoochat.net" and agrees that the dispute is decided
by three members of the approved list of panellists ("the Panel").
On June 23, 2000, Complainant submitted to the WIPO Center a Supplemental
Submission ("the Supplement"). On June 28, 2000, Respondent submitted to
the WIPO Center a Response to the Supplement ("the Second Response"). The
Panel accepted these documents on [July 27, 2000].
On July 20, 2000, the WIPO Center sent a Notification of Appointment
of Administrative and Projected Decision Date to the parties, in which
Wolter Wefers Bettink, Mayer Gabay and Frederick Mostert were appointed
as the Panel. The Panel finds that the Panel was properly constituted and
appointed in accordance with the Rules and Supplemental Rules.
Factual Background
On the basis of the documents submitted by the parties the following
facts can be established as agreed between the parties or insufficiently
disputed.
The Complainant is the owner of nine US federal trademarks for the
trademark YAHOO! (also stylized). The first was issued on February 25,
1997, and the last on August 24, 1999. The trademarks are registered for
goods and services in the international classes 9 (computer software and
networks, 16 (books regarding computer networks), 35 (promoting goods on
an electronic site) and 42 (computer services).
Complainant began its web directory in early 1994 and now offers a
wide variety of services using the YAHOO! Trademark, also in combination
with a descriptive name of its services, such as YAHOO!Mail and YAHOO!Chat.
Complainant offers various, popular websites under the YAHOO! trademark.
For example, it offers free e-mail services at the YAHOO!Mail portion of
its YAHOO! website. Complainant offers sites specific to particular countries,
such as YAHOO.COM.FR and YAHOO.COM.UK, or directed to particular cities.
Complainant also offers sites specific to particular population groups,
such as ESPANOL.YAHOO.COM, directed to Spanish speakers around the world.
In most parts of the world YAHOO! is a well-known mark, by virtue of
the millions of visitors to the YAHOO! network every day worldwide. Complainant
currently has a market capitalization value of approximately U.S.$70 billion.
Complainant has 45,000 registered users in Uruguay, the country of
domicile of Respondent. According to figures for April 1999, Uruguay had
90,000 Internet users. Yahoo! is therefore known by most part of the Uruguays
population that is a Internet user. This is supported by evidence of the
number of page views of Yahoo! Websites from .uy addresses, which exceeded
4 million per month in May 2000.
Respondent registered the domain names "yahoomail.net" and "yahoofree.com"
on March 8, 2000. It registered the domain names "yahoofree.net" and "yahoochat.net"
on March 26, 2000. On February 15, 2000, Respondent had already registered
the domain name "yahoo.com.uy". Respondent has linked the Domain Names
to its Spanish language website on pets under the yahoo.com.uy domain name.
After the Complaint was submitted, Respondent registered the domain
names "yahoochat.cl", "yahoofree.cl" and "miyahoo.cl". These also connect
to the website offered under the domain name "yahoo.com.uy".
Also after the Complaint was submitted, Respondent on May 30, 2000,
registered the trademark "YAHOO" in Uruguay and on June 2, 2000, established
a business called "yahoo S.R.L".
Respondent has not offered any of the Domain Names for sale.
In June, hundreds of emails intended for Complainant have been received
at Respondents postmaster address at "yahoo.com.uy"
Applicable Rules
Paragraph 4(a) of the Policy directs that Complainant must prove each
of the following:
(i) the domain name in issue is identical or confusingly similar to
Complainant's trademark, and
(ii) Respondent has no rights or legitimate interest in respect of
the domain name, and
(iii) the domain name has been registered and is being used in bad
faith.
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances,
each of which, if proven, shall be evidence of the registration and use
of the domain name in bad faith for the purpose of paragraph 4(a)(iii)
above.
Paragraph 4(c) of the Policy sets out, by way of example, three circumstances,
each of which, if proven by Respondent, shall demonstrate Respondent's
rights or legitimate interest to the domain name for the purpose of paragraph
4(a)(ii) above.
Parties Contentions
A. Complainant
In the Complaint and its further Submission, Complainant states that
it uses the name Yahoo through its trademarks YAHOO!, mainly through websites
on the internet. Complainants trademark is famous, also in Uruguay.
The grounds for the Complaint are:
(1) the Domain Names "yahooemail.net", "yahoofree.net", "yahoofree.com"
and "yahoochat.net" are confusingly similar to Complainants trademark
YAHOO! in accordance with Article 4(a)(i) of the Policy;
(2) Respondent has no rights or legitimate interest in respect of the
Domain Names as provided in Article 4(a)(ii) in connection with Article
4(c) of the Policy. Respondent is not using and has not used or is not
demonstrating and has not demonstrated an intent to use the Domain Names
legitimately for providing goods and services in commerce. Respondent failed
to illustrate its claim that it is commonly known by the name "yahoo" in
Uruguay;
(3) the Domain Names "yahooemail.net", "yahoofree.net", "yahoofree.com"
and "yahoochat.net" were registered in bad faith as provided in article
4(a)(iii) in connection with article 4(b) of the Policy. Respondent has
registered the trademark "yahoo" in Uruguay and has set up the Uruguayan
company "Yahoo S.R.L", after the filing date of the Complaint. Furthermore,
Respondent has registered YAHOO-formative domain names in Chile and Mexico
subsequent to the filing date of the Complaint. Given the uniqueness and
fame of Complainants trademark YAHOO!, Respondent merely uses the Domain
Names with the intent to mislead and divert consumers or to tarnish Complainants
YAHOO! trademark for commercial gain.
Additionally, Complainant provides evidence of the fact that Uruguay
had 90,000 Internet users as of April 1999 (Exhibit 24) and of the substantial
traffic it receives from Uruguayan visitors.
In the Complaint, Complainant requests that Respondent transfers the
ownership of the domain names in issue to it.
B. Respondent
In his Response and Second Response, Respondent states that since 1995
he has a business engaged in the sale of veterinary products and services,
accessories and similar products. Respondent also states that he named
his business "YAHOO" because that is the name of a dog in Uruguay, and
it also is a word in Spanish meaning "beast". On February 22, 2000, he
registered the domain name "yahoo.com.uy" and subsequently the Domain Names.
Because of its prior use of the name "YAHOO", Respondent argues that he
has a legitimate interest in the Domain Names.
Respondent also states that Complainant's trademarks are not famous
in Uruguay, since of only 3,000,000 inhabitants less than 1% of the population
are internet users [figure does not match Yahoos figure above at 6A]
The trademark YAHOO! is therefore unknown for the greatest part of
the population. Respondent was unaware of Complainants trademark. Consequently,
it has not registered its Domain Names in bad faith.
Discussion and Findings
a) Identical or confusingly similar
The Domain Names "yahooemail.net", "yahoofree.net", "yahoofree.com"
and "yahoochat.net" are clearly confusingly similar to Complainant's trademark
YAHOO!.
Moreover, "email" and "chat" are so closely associated with YAHOO!s
business that the combination with YAHOO! cannot be but confusing.
b) Rights or legitimate interests
Article 4(c) of the Policy states circumstances which demonstrate a
Respondents right or legitimate interest to a domain name. The article
sets out by providing:
"Any of the following circumstances (¼¼) if found by
the Panel to be proved on its evaluation of all evidence presented, shall
demonstrate your rights or legitimate interest to a domain name (¼¼)".
Therefore, on the basis of this article, Respondent has the burden
of proof of its rights or legitimate interest in the Domain Names.
Respondent argues to have a legitimate interest given its use of the
domain name "yahoo.com.uy" for offering in good faith , products and
services, before receiving notice of the dispute (article 4(i) UDRP).
Respondent supports this by stating :
it has used the name "yahoo" since 1995 for a business engaged in the
sale of veterinary products and services, accessories and similar products;
the name was chosen because of it being the Spanish translation for
"beast";
its business is commonly known under that name in Uruguay;
in early 2000 Respondent decided to create a website to provide information
on his products and services;
on February 22, 2000, it registered the domain name "yahoo.com.uy"
for that purpose and thereafter the Domain Names;
all of these domain names were created in order to attract users
to its main site to provide them information on its veterinarian services
and products exclusively.
As evidence thereof, Respondent has provided the Panel with a copy
of the webpages of its website "yahoo.com.uy". According to the date at
the bottom of the document, it was printed on June 1, 2000.
The website is in Spanish. On the home page, the name "yahoo" is used
twice. Once, as part of a banner for Yahoofreemail and once as part of
a disclaimer, indicating that "yahoo" is a registered trademark. No mention
is made of Yahoo as the name of a shop for veterinarian products.
The website features information on pets. The menu on the home page
comprises of ten categories, each leading to a single webpage. Some pages
have photos of dogs; there is a picture of dog leashes and other accessories
; there are pages with information on Dog Training Schools, Veterinary
Doctors and dog food. On none of the webpages mention is made of a shop
for veterinary products and accessories, either under the name "yahoo",
or any other name.
Respondent has provided evidence in the form of prints of web pages
that each of the Domain Names leads to the website of Respondent under
yahoo.com.uy. The print date at the bottom of these documents is June 1,
2000.
As further evidence, Respondent has provided, inter alia:
a copy of its registration form for the domain name "yahoo.com.uy",
dated February 15, 2000;
an undated copy of an English translation of its Uruguay trademark
registration form of the word "yahoo";
an undated copy of its company registration form for a business under
the name Yahoo S.R.L.;
a copy of an English translation of a Limited Partnership agreement
for a company under the name Yahoo S.R.L, dated June 6, 2000. In article
17 it is stated that the company will start business on June 10, 2000.
From the above and from evidence provided by Complainant which is either
(1) not disputed or, (2) not disproved by any formal -evidence provided
by Respondent- it appears that:
1) "yahoo" is not a common word in the Spanish language for "beast";
2) the domain name "yahoo.com.uy" was registered on February 22, 2000;
3) The trademark "yahoo" has been registered in Uruguay on May 30,
2000, therefore after Respondent received notice of the Complaint on May
23;
4) The company registration was made on June 2, 2000, again after the
Complaint was notified to Respondent.
5) The Domain Names on May 3, 2000, led to websites "under construction",
whereas the website under "yahoofree.com" allowed for the creation of a
free email account which could be used to send emails.
From the above, it is clear that the facts submitted by Respondent
to demonstrate its rights or legitimate interests are not proven, but are
mere allegations unsupported by evidence. In particular, Respondent has
not provided evidence that it used the Domain Names in connection with
a bona fide offering of goods or services, prior to receiving the notice
to him of the dispute on May 23, 2000, because the print date of the relevant
web pages submitted by Respondent is June 1, 2000.
To the extent that the possibility to open a free email account on
the yahoofree.com website which was found and explored by Complainant
on May 3, 2000, therefore prior to filing the Complaint - could be considered
an offering of services, it is considered that this apparently was not
bona fide. This conclusion is drawn from the many unproven, disproven and
contradictory allegations of Respondent referred to above and the fact
that he applied for the company and trademark registrations on which he
relies as well as a number of other domain name registrations under the
.cl and .mx ccTLDs after the Complaint was notified to him.
From the facts referred to above it is also clear that Respondent has
not provided evidence that he was commonly known by the domain name (article
4(c)(ii) UDRP), nor that he was making a legitimate non-commercial or fair
use of the domain name without intent for commercial gain to misleadingly
divert consumers or to tarnish the trademark or service mark at issue (article
4(c)(iii) UDRP).
In conclusion, under the circumstances of this case, it should be held
that Respondent has no right or legitimate interest in the Domain Names
"yahooemail.net", "yahoofree.net", "yahoofree.com" and "yahoochat.net"
in accordance with Article 4(c) of the Policy.
c. Bad faith
Article 4(b) of the Policy states circumstances which are found to
be evidence of the registration and use of a domain name in bad faith.
Article 4(b) (iv) of the Policy determines that evidence of bad faith is
found if:
"by using the domain name, you have intentionally attempted to attract,
for commercial gain, Internet users to your website or other on-line location,
by creating a likelihood of confusion with the complainants mark as to
the source, sponsorship, affiliation, or endorsement of your website or
location or of a product or service on your website or location."
Complainant has submitted evidence that in its opinion proves Respondents
bad faith.
Complainant has used its trademark YAHOO since early 1994 and it has
become famous and well-known internationally. Complainants trademark
is also well-known within a substantial segment of the Internet sector
of the public in Uruguay. Respondent registered the Domain Names in the
beginning of this year. It is unlikely that Respondent was unaware of Complainants
trademark at that time.
This impression is reinforced by the fact that Respondent argues to
have consulted the website "www.nameprotect.com" before registration. The
main object of this website is to check a domain name for corresponding
trademarks.
Respondent has admitted that it checked that website for domain names
containing the word YAHOO. However, when it subsequently found some 200
domain names with that word, Respondent did not check the existence of
corresponding trademark registrations. As Complainant has submitted, the
first option on the "nameprotect" website is to check for corresponding
US federal trademark registration. If one fills out YAHOO and enters the
"search" command, a list appears which includes the nine trademark registrations
submitted by Complainant in this case.
On the basis of the above, it is likely that Respondent knew or should
have known of the existence of the trademark rights of Complainant.
This in itself is insufficient to conclude that the Domain Names were
registered and used in bad faith. There are, however, other circumstances
which make it likely not only that Respondent knew of Complainants trademarks,
but also that he used them to attract Internet users to his website for
commercial gain by creating a likelihood of confusion with Complainants
mark.
First, while Respondent professes to trade only in Uruguay, he has
also registered several domain names and trademarks containing the word
"yahoo" in Mexico and Chile.
Second, these registrations took place after the Complaint was notified
to him.
Third, Respondent has in fact provided direct evidence of confusion,
i.e. that Internet users are actually confused, since Respondent has received
hundreds of emails on its site "yahoo.com.uy" which were apparently intended
for Complainant. Although Respondent alleges that this was a consequence
of actions of Complainant, no evidence thereof has been provided..
In conclusion, The Panel finds that by having registered the Domain
Names, it should be held that Respondent has intentionally attempted to
attract, for commercial gain, users to its site, by creating confusion
with complainants well-known mark YAHOO!.
The Panel has, accordingly, based its conclusion that the Respondent
registered and used the domain names at issue in bad faith on Section 4(b)(iv)
of the UDRP. Nonetheless, it is important to note that Section 4(b) specifically
stipulates that: "...the following circumstances, in particular but without
limitation..." (emphasis added) shall be evidence of bad faith. The Panel
is, therefore, not limited to rely on these four circumstances enumerated
in Section 4(b). Additional circumstances from which bad faith can be inferred
are particularly relevant in the present case and will, therefore, in the
interest of thoroughness, be examined.
In accordance with the international legal principles relating to famous
and well-known marks, it has been recognized that bad faith will, more
often than not, be inferred from the circumstantial evidence, since intent
is a subjective state of mind 1. Circumstances on which tribunals have
tended to focus include such factors as to whether there is a close similarity
between the respective marks; whether the mark at issue is inherently distinctive
(being arbitrary, fanciful, coined or invented) or has acquired distinctiveness
(i.e. become famous or well-known); whether the mark was adopted by a defendant
as a foreign language word in the local jurisdiction, whether a defendant's
explanation of why it chose a mark that "coincidentally" is very similar
to a famous or well-known mark defies all credulity 2 and whether (in a
UDRP case) the Respondent filed a trademark after the Complainant had objected
to the domain name registration by Respondent 3. In weighing such circumstances,
a case-by-case approach is usually adopted since each case will depend
upon its own special circumstances. It is unlikely that the trier of fact
will find the presence or absence of any one factor to be determinative
but the overall picture that emerges from the totality of the evidence
may be dispositive.
In the present case, the Panel finds that the circumstances from which
bad faith on the part of the Respondent can be inferred are compelling.
The series of domain names registered by Respondent (YAHOOEMAIL.NET, YAHOOFREE.NET,
YAHOOFREE.COM and YAHOOCHAT.NET) are almost identical and certainly similar
to the Complainant's YAHOO! mark. In fact, the Complainant's YAHOO! mark
is not only fanciful but also an international well-known mark constituting
one of the most famous marks in the on-line world today (see the Panel's
decision above at 7c.; see also WIPO decisions Yahoo! Inc. v. David Ashby,
Case No. D2000-0241 and Yahoo! Inc. v. Eitan Zviely, et al., Case No. D2000-0273
and Yahoo! Inc. v. Akash Arora & ANR, High Court of Delhi, February
19, 1999). Respondent's explanation of coincidentally registering a series
of almost identical domain names is not convincing. If anything, Respondent's
own evidence tends to point in the opposite direction. Not only is there
no evidence to support the statement that a "dog" with the same name gave
Respondent the idea to adopt YAHOO as a name for his business and, accordingly,
his domain name, but the only evidence tendered by Respondent demonstrates
that his business and company under the name "Yahoo S.R.L." was, in fact,
only formally registered after the filing of the complaint. In addition,
as pointed out above, the Respondent applied for several other YAHOO formative
domain names and trademark applications after the Complainant filed this
case. Furthermore, the Complainant has provided evidence to demonstrate
that the word YAHOO has no known meaning in the Spanish language in Uruguay.
Consequently, the registration of the word YAHOO as a series of domain
names by Respondent in Uruguay in an almost identical format to a foreign
well-known mark requires the Respondent to explain such similarity to justify
the coincidence. A mere allegation unsupported by evidence, by Respondent
that the word YAHOO means "beast" in Spanish is not sufficient to explain
the coincidence. Moreover, it is inconsistent for the Respondent 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. Use of these domain
names also appears to be inconsistent with the fact that, according to
his own allegations, Respondent is only in the business of veterinarian
products and services. As set out above under 6B. Respondent's other arguments
and actions also contradict each other, such as the fact that his website
does not prominently depict the name YAHOO - allegedly Respondent's company's
name 4.
In the opinion of the Panel, all these coincidences do accumulate in
hoc casu. As Lord Denning once remarked: "the arm of coincidence may be
long but it does not reach to infinity". In sum, based on the overall evidentiary
circumstances, it is the view of the Panel that there are a sufficient
number of circumstances present from which to infer that the Respondent
registered and used the domain names in bad faith and intended to trade
upon the reputation of the Complainant's famous and well-known mark YAHOO!
to confirm the Panel's decision under the Section 4(b)(iv) on this issue.
In sum, the Panel believes that the pre-emption and interception of
a famous and well-known foreign mark by simply registering it first as
a domain name in the local jurisdiction , should not be sanctioned or seen
to be sanctioned in the interest of preserving the integrity of the global
trading system of the new economy 5.
8. Decision
In light of the foregoing, the Panel finds that the Domain Names "yahooemail.net",
"yahoofree.net", "yahoofree.com" and "yahoochat.net" are confusingly similar
to Complainants trademark YAHOO!, that Registrant has no legitimate interest
in respect of the Domain Names and that the Domain Names have been registered
and used in bad faith and consequently, the Panel decides that the Domain
Names be transferred to Complainant.
Domain Names Transferred