v.
Data Art Corp., Data Art Enterprises Inc.,
Stonbrook Investments, Global Net 2000 Inc., Powerclick Inc., and Yahoo Search Inc.
[Indexed as: Yahoo v. Data Art]
[Indexed as: AYHOO.COM ET. AL.]
WIPO Arbitration and Mediation Centre
Administrative Panel Decision
Case Number: D2000-0587
Commenced: 27 June, 2000
Judgement: 10 August, 2000
Panelist: M. Scott Donahey.
Domain name-Domain name resolution policy-Cybersquatting-Bad faith-Diversion of business-Identical-Confusingly similar-Rights and legitimate interests-Definition of right and legitimate interest-Specifics of responsibility of WIPO to give Respondent notice of proceedings-Consolidation provision of the Policy-Typosquattin-Error notifying message.
Complainant is the owner of the trademark and service mark YAHOO, having registered in February 1997. Complainant registered the domain name yahoo.com in January 1995. Since 1995 Complainant has become a well known presence on the web with US$588 of revenue in 1999. Respondent is the operator of a series of web sites that deal with sports and sports betting, car sales, financial quotes and other services. Respondent did not register any of the domain names at issue till July 1997. Complainant has made numerous requests for Respondent to transfer disputed domain names because of similarity of YAHOO and AYHOO. Respondent has declined saying that visitors to Respondent’s sites are notified that they have made a spelling mistake.
Held: Domain Name Transferred to Complainant.
Panel sees fit to consolidate all of Complainant’s claims before
a single administrative panel. The domain names at issue were all
registered on or behalf of a certain individual, and the addresses used
and the contacts designated by the parties are interlocking and identical.
Respondent is engaged in typosquatting, a practice in which domain names
that are registered have been found identical and confusingly similar to
the marks they mimic. Complainant has alleged and Respondent has
failed to deny that Respondent has no rights or legitimate interests to
the domain names in question. Respondent is trading on the value
of Complainant’s marks to attract users who misspell Complainant’s mark
when entering URL which includes complainant’s domain name. Respondent
is deriving commercial benefit from this practice, hence Respondent’s actions
constitute bad faith registration. The effectiveness of the notifying
message was rejected as Respondent has already succeeded in its purpose
of using the service mark to attract the user with a view to commercial
gain.
Policies referred to:
Uniform Domain Name Resolution Policy Adopted August 6, 1999
Rules for Uniform Domain Name Dispute Resolution Policy
Cases referred to:
Alcoholics Anonymous World Services Inc. v. Raymond. ICANN Case
No. D2000-007
Adobe Systems Incorporated v. Domain Oz. ICANN. Case No. D2000-0057
American Media Operations Inc. v. Erik Simmons. ICANN Case No. AF-0134
AOL v. Asian On-Line This Domain For Sale. ICANN Case No. FA 0040000094636
National Football Leauge Properties Inc. and Chargers Football Company v. Onesex Entertainment Co. aka. chargegirls.net ICANN Case No. D2000-0118.
Ronson plc. v. Unimetal Sanayaie ye Tic. A.S. ICANN Case No. D2000-0011
Yahoo! Inc. v. Zviely et al. ICANN Case. No. D2000-0273
1. The Parties
1.1 The Complainants are Yahoo! Inc., a corporation organized under
the laws of the State of Delaware, United States of America, having its
principal place of business at 3420 Central Expressway, Santa Clara, California,
United States of America, and GeoCities, a corporation organized and existing
under the laws of the State of Delaware, and is a wholly owned subsidiary
of complainant Yahoo! Inc. For ease of reference, the complainants will
be referred to, jointly and severally, as "Complainant."
1.2 The Respondents are:
1.2.1 Data Art Corp., a corporation organized and existing under the
laws of the State of New York, United States of America, having an address
at 475 Park Avenue South, New York, New York, United States of America.
Whois lists Data Art Corp.'s address as 6350 Laurel Canyon Blvd., Suite
300, North Hollywood, California, United States of America.
1.2.2 DataArt Enterprises Inc., an entity listed by Whois as having
the same North Hollywood, California address as that of Data Art Corp.
1.2.3 Powerclick, Inc., an entity listed by Whois as having the same
North Hollywood, California address as that of Data Art Corp.
1.2.4 Stonybrook Investments, an entity listed by Whois as having an
address at 18 Mopan St., Belize City, Belize.
1.2.5 Global Net 2000, Inc, an entity listed by Whois as having the
same Belize address as that of Stonybrook Investments.
1.2.6 Yahoo Search, Inc., an entity listed by Whois as having the same
Belize address as that of Stonybrook Investments.
1.3 The address listed for the Technical contact for many of the domain
names owned by respondents Global net 2000, Inc, Powerclick, Inc., DataArt
Enterprises, Inc., and Data Art Corp. is listed as 6530 Lural, Hollywood,
California, United States of America, a slight variation of the previously
identified North Hollywood address. According the United States Postal
Service Records, the Lural address does not exist.
1.4 The telephone information given by several of the respondents is
identical and is not an active telephone number.
1.5 The current Administrative Contact for all of the Domain Names
except one is John Dow, Stonybrook, 18 Mopan St., Belize City, Belize.
The one exception is for "geosities.com", and on that domain name John
Dow is listed as the Technical Contact.
1.6 Nearly all of the domain names link to the same content.
1.7 Complainant alleges that all of the domain names at issue were
registered by or on behalf of Yevgeny Goland, who is alleged to be the
president of Data Art Corp.
1.8 For ease of reference the respondents will be referred to, jointly
and severally, as "Respondent."
2. The Domain Name(s) and Registrar(s)
The domain names at issue are:
2.1 "ayhoo.com", registered August 1, 1997;
2.2 "chatyahoo.com", registered September 6, 1997;
2.3 "eeeyahoo.com", registered January 14, 2000;
2.4 "eocities.com", registered December 1, 1997;
2.5 "foreleven.com", registered November 16, 1997;
2.6 "gecities.com", registered September 5, 1997;
2.7 "geocitie.com", registered August 8, 1997;
2.8 "geocitiesyahoo.com", registered January 18, 2000;
2.9 "geocitis.com", registered November 29, 1997;
2.10 "geocties.com", registered November 29, 1997;
2.11 "geosities.com", registered August 13, 1997;
2.12 "gocities.com", registered October 6, 1999;
2.13 "goecities.com", registered August 18, 1997;
2.14 "iahoo.com", registered August 11, 1997;
2.15 "myahoo.com", registered September 6, 1997;
2.16 "myyahoo.com", registered August 12, 1997;
2.17 "our11.com", registered June 18, 1998;
2.18 "wwwchatyahoo.com", registered January 14, 2000;
2.19 "wwwfour11.com", registered March 25, 1998;
2.20 "wwwgeocities.com", registered August 15, 1997;
2.21 "wwwmyyahoo.com", registered January 13, 2000;
2.22 "yafoo.com", registered August 18, 1997;
2.23 "yahll.com", registered November 30, 1997;
2.24 "yahooguide.com", registered May 27, 1998;
2.25 "yahoonews.com", registered May 31, 1998;
2.26 "yahoosearch.com", registered September 25, 1998;
2.27 "yahomail.com", registered February 3, 1998;
2.28 "yahos.com", registered November 20, 1997;
2.29 "yahow.com", registered August 18, 1997;
2.30 "yahu.com", registered October 24, 1997;
2.31 "yahuu.com", registered July 28, 1998;
2.32 "yahwho.com", registered November 23, 1997;
2.33 "yahwoo.com", registered November 24, 1997;
2.34 "yanoo.com", registered November 30, 1997;
2.35 "yauoo.com", registered November 30, 1997;
2.36 "yyahoo.com", registered July 29, 1997.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual
Property Organization Arbitration and Mediation Center (the "WIPO Center")
on June 12, 2000, and the signed original together with four copies was
received on June 14, 2000. An Acknowledgment of Receipt was sent by the
WIPO Center to the Complainant, dated June 16, 2000.
3.2 On June 16, 2000, a Request for Registrar Verification was transmitted
to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1)
confirm that the domain names at in issue are registered with NSI; (2)
confirm that the person identified as the Respondent is the current registrant
of the domain name; (3) provide the full contact details (i.e., postal
address(es), telephone number(s), facsimile number(s), e-mail address(es))
available in the registrar’s Whois database for the registrant of the disputed
domain name, the technical contact, the administrative contact and the
billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution
Policy (the "Policy") is in effect; (5) indicate the current status of
the domain names.
3.3 On June 21, 2000, NSI confirmed by reply e-mail as follows:
3.3.1 That the domain names "ayhoo.com", "chatyahoo.com", "gecities.com",
"geociti e.com", "geosities.com", "goecities.com", "iahoo.com", "myahoo.com",
"myyahoo.com", "wwwgeocities.com", "yafoo.com", and "yahoe.com" are registered
with NSI, are currently in active status, that the Administrative and Billing
Contact is John Dow of Belize, and that the Respondent, Data Art Corp.
is the current registrant of the names.
3.3.2 That the domain names "eeeyahoo.com", "geocitiesyahoo.com", "wwwhcatyahoo.com",
and "wwwmyyahoo.com" are registered with NSI, that the domain names "geocitiesyahoo.com"
and "wwwmyyahoo.com" are currently in active status, that the domain names
"wwwchatyahoo.com" and "eeeyahoo.com" are currently on "Hold" status, and
that the Administrative, Technical, Billing, and Zone Contact is John Dow
of Belize, and that the respondent Stonybrook Investments, giving the same
address in Belize as that given by Mr. John Dow, is the registrant of the
names.
3.3.3 That the domain names "eocities.com", "foreleven.com", "geocitis.com",
"foreleven.com", "wwwfour11.com", "geocties.com", "our11.com", "yahll.com",
"yahooguide.com", "yahoonews.com", "yahomail.com", "yahos.com", "yahu.com",
"yahuu.com", "yahwho.com", "yahwoo.com", "yanoo.com", and "yauoo.com" are
registered with NSI, that all are currently in active status with the exception
of "wwwfour11.com", which is on "Hold" status, that the Administrative
and Billing Contact is John Dow of Belize, and that the respondent Global
Net 2000, Inc., giving the address of Stonybrook Investments, is the registrant
of the names.
3.3.4 That the domain name "gocities.com" is registered with NSI and
is in active status, that the Administrative and Billing Contact is John
Dow of Belize, and that the respondent Powerclick, Inc, is the Registrant
of the name.
3.4 The Registrar also confirmed that the Policy is in effect.
3.5 The WIPO Center determined that the Complaint satisfies the formal
requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution
Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain
Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has
independently determined and agrees with the assessment of the WIPO Center
that the Complaint is in formal compliance with the requirements of the
Uniform Domain Name Dispute Resolution Policy, adopted by the Internet
Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999
(the "Policy"), the Uniform Rules, and the Supplemental Rules. The required
fees for a sole Panelist were paid on time and in the required amount by
the Complainant.
3.6 No formal deficiencies having been recorded, on June 27, 2000, a
Notification of Complaint and Commencement of Administrative Proceeding
(the "Commencement Notification") was transmitted to the Respondent (with
copies to the Complainant, NSI and ICANN), setting a deadline of July 17,
2000, by which the Respondent could file a Response to the Complaint. The
Commencement Notification was transmitted to the Respondent by e-mail to
the e-mail addresses indicated in the Complaint and specified in NSI’s
confirmation. In addition, the complaint was sent by express courier to
the postal address given. Having reviewed the communications records in
the case file, the Administrative Panel finds that the WIPO Center has
discharged its responsibility under Paragraph 2(a) of the Uniform Rules
"to employ reasonably available means calculated to achieve actual notice
to Respondent."
3.7 On July 20, 2000, not having received any response, the WIPO Center
sent the parties a formal Notification of Respondent Default.
4. Factual Background
4.1 Complainant first registered the trademark and service mark YAHOO
in connection with computer software for searching and retrieving information
and related services with the United States Patent Office ("USPTO") on
February 27, 1997.
4.2 Complainant has also registered the mark MY YAHOO, the application
for which was filed August 29, 1996, and issued July 29, 1997. The mark
covers computer services, namely creating indexes of information, sites
and other resources available on computer networks for others; searching
and retrieving information, sites, and other resources available on computer
networks; providing an online link to news weather sports, current events,
and reference materials.
4.3 Complainant registered the domain name "yahoo.com" on January 18,
1995, and since has established a commanding and well-known presence on
the World Wide Web.
4.4 Complainant began as a web directory and search engine in 1994,
adopting the name "YAHOO!" in June of that year. Complainant derives revenues
from, among other sources, the advertising on its site. In 1999, Complainant
carried advertisements from more than 3,500 companies, including American
Express, Apple, Colgate-Palmolive, Disney, The Gap, Honda, IBM, Lego, Microsoft,
Procter & Gamble, Sony, and others.
4.5 In 1999, Complainant's revenues were in excess of US$588 million.
4.6 The price one can command for advertising placed on the World Wide
Web depends on "hits" and/or "page views." A "hit" is defined as a user
arriving at a given site. A "page view" is defined one electronic page
of information displayed in response to a user request. One "hit" or user
visit can result in more than one page view. Complainant's web site is
consistently listed as the first or second most popular sites on the World
Wide Web.
4.7 Complainant is the owner of the service mark FOUR11, for which
an application was filed May 17, 1995, and for which the United States
Patent and Trademark Office issued its registration on April 9, 1996.
4.8 Complainant also is the current registrant of the domain name "four11.com".
4.9 GeoCities, Complainant's wholly owned subsidiary, owns the U.S.
service mark GEOCITIES in connection with the dissemination of advertising
for others via online electronic communications network and related computer
services, including the creation and maintenance of web sites for others.
4.10 On December 15, 1995, GeoCities registered the domain name "geocities.com".
and Complainant has used the GeoCities mark, trade name and domain name
since 1995.
4.11 In March 2000 the web site at "geocities.com" registered over
1.7 billion page views, and the home page alone registered in excess of
50 million hits.
4.12 GeoCities sells advertising on its site, carrying advertisements
of 390 companies in the first half of 1999, including E-Trade, CDnow, Microsoft,
ABC, Disney, and others.
4.13 GeoCities revenues for 1998 were more than US$18 million. GeoCities
was acquired by Complainant in May 1999.
4.14 July 29, 1997 is the date on which Respondent first registered
any of the domain names at issue.
4.15 Four of Respondent's domain names do not resolve to an active
web site. The other thirty-two web sites link to various web sites offering
gambling, sports betting, sports news, services including web site creation
and hosting, Internet domain name services, real time financial quotes,
and new and used car listings.
4.16 At least two of the web sites to which the domain names at issue
resolve list the Belize addresses previously discussed in their Whois details.
4.17 Complainant has sent Respondent various letters requesting transfer
of the domain names at issue. Respondent, in the person of Yevgeny Goland
has declined to do so, stating that visitors are notified that they have
made a spelling mistake. And that Respondent is doing nothing wrong.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered as a domain
name a mark which are confusingly similar to the service marks registered
and used by Complainant, that Respondent has no rights or legitimate interests
in respect to the domain names at issue, and that Respondent has registered
and is using the domain name at issue in bad faith.
5.2 Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
6.1 The Panel is asked to determine that the domain names at issue
come within the "Consolidation" provision of the Policy. Policy,
4(f). That paragraph provides in pertinent part: "In the event of multiple
disputes between [a respondent] and a complainant, either [the respondent]
or the complainant may petition to consolidate the disputes before a single
Administrative Panel. . . . [The] Administrative Panel may consolidate
before it any or such disputes in its sole discretion, provided that the
disputes being consolidated are governed by this Policy or a later version
of this Policy."
6.2 The Panel notes that the Complainant has alleged that the domain
names at issued were all registered by or on behalf of a certain individual,
and that Respondent has not denied those allegations. Thus, the allegations
may be deemed admitted. Alcoholics Anonymous World Services, Inc. v. Raymond,
ICANN Case No. D2000-007; Ronson plc v. Unimetal Sanayai ve Tic.A.S., ICANN
Case No. D2000-0011. Moreover, Complainant has presented proof in the form
of Whois details, which have been confirmed by the Registrar, that the
addresses used and the Contacts designated are inter-linking and identical.
Adobe Systems Incorporated v. Domain Oz, ICANN Case No. D2000-0057.
6.3 Accordingly, the Panel exercises the broad discretion vested in
it by Paragraph 4(f) of the Policy to consolidate the claims concerning
the various domain names at issue.
6.4 Paragraph 15(a) of the Rules instructs the Panel as to the principles
the Panel is to use in determining the dispute: "A Panel shall 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."
6.5 Since both the Complainant and Respondent are domiciled in the United
States, and since United States’ courts have recent experience with similar
disputes, to the extent that it would assist the Panel in determining whether
the Complainant has met its burden as established by Paragraph 4(a) of
the Policy, the Panel shall look to rules and principles of law set out
in decisions of the courts of the United States.
6.6 Paragraph 4(a) of the Policy directs that the Complainant must
prove each of the following:
1) that the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant
has rights; and,
2) that the Respondent has no legitimate interests in respect of the
domain name; and,
3) the domain name has been registered and is being used in bad faith.
6.7 The domain names at issue include names which are identical or
confusingly similar to the service marks in which the Complainant has rights
(e.g., "yahoosearch.com", "yahoonews.com").
6.8 Moreover, the majority of the others consist of typographical error
variations and misspellings of the Claimant's trademarks (e.g., "yyahoo.com"
and "geosities.com").
6.9 Respondent is obviously engaging in "typosquatting," a practice
that has been condemned and been found to be confusingly similar to the
marks which they mimic. See, e.g., American Media Operations, Inc. v. Erik
Simons, ICANN Case No. AF-0134; AOL v. Asian On-Line This Domain For Sale,
ICANN Case No. FA 00040000094636. Yahoo! Inc. v. Zviely, et al, ICANN Case
No. D2000-0273.
6 10 Complainant has alleged and Respondent has failed to deny that
Respondent has no legitimate interests in respect of the domain name at
issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case
No. D2000-007; Bronson Plc v. Unimetal Sanayai ve Tic.A.S., WIPO Case No.
D2000-0011.
6.11 Respondent is trading on the value established by Complainant
in its marks to attract users who misspell or mistype Complainant's mark
when entering the URL, which includes Complainant's, domain name. Clearly,
Respondent is deriving economic benefit from this practice, either by attracting
users to Respondent's web site, where goods and services are offered, or
by the receipt of compensation from the owners of other web sites for delivering
users to those sites. This constitutes bad faith registration and use as
defined by 4(b)(iv) of the Policy: "[T]he following circumstances ?. shall
be evidence of the registration and use of a domain name in bad faith .
. . by using the domain name, you have intentionally attempted to attract,
for commercial gain, internet users to your web site or other on-line location,
by creating a likelihood of confusion with the complainant's mark as to
the source, sponsorship, affiliation, or endorsement of your web site or
location or a product or service on your web site or location."
6.12 While a user who arrives at the site may promptly conclude that
it is not what he or she was originally looking for, Respondent has already
succeeded in its purpose of using the service mark to attract the user
with a view to commercial gain. National Football League Properties, Inc.
and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net,
ICANN Case No. D2000-0118.
7. Decision
For all of the foregoing reasons, the Panel decides that the domain
names registered by Respondent are identical or confusingly similar to
the service marks in which the Complainant has rights, that the Respondent
has no rights or legitimate interests in respect of the domain names at
issue, and that the Respondent's domain names have been registered and
are being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of
the Policy, the Panel requires that the registration of the domain names
at issue, specifically identified at 2.1 through 2.36, supra, be
transferred to the Complainant.
M. Scott Donahey Panelist
Dated: August 7, 2000