Yahoo! Inc. v. DomainCollection
[Indexed as: Yahoo v. DomainCollection]
[INDEXED AS: CAMPYAHOO.COM]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No.: WIPO D2000-0476
Commenced: 5 June 2000
Judgement: 21 July 2000
Presiding Panelist: David W. Plant
Domain name Domain name dispute resolution Registered trademark Registered service mark Complainant owned domain name Use of domain name with other third-level domains Disputed domain name includes Complainants trademark Respondent failed to deny complaints Acceptance of Complainants averments as true - Confusingly similar Virtually identical Incorporation of registered mark No rights or legitimate interests No challenge by Respondent Bad faith registration and use Domain name not used Nonsensical address and contact information Inference of selling or trading on Complainants goodwill.
Complainant owned trademark and service mark YAHOO and operated a website using the domain YAHOO.COM. Complainant also uses its domain name with other third-level domains, including CAMP.YAHOO.COM. Respondent registered the domain name CAMPYAHOO.COM. Complainant asks for transfer of the domain name. Respondent failed to file a response, so Panel is prepared to accept Complainants averments as true.
Held, Name Transferred
The disputed domain name is virtually identical and confusingly similar
to Complainants CAMP YAHOO domain name. At minimum, the disputed domain
name is confusingly similar to Complainant's registered YAHOO! mark.
Respondent has no rights or legitimate interests in the disputed
domain name. Respondent failed to challenge the validity of Complainants
trademark or service mark, Yahoo!s rights in the YAHOO! Mark regarding
Complainants services and goods, global fame and goodwill associated with
Complainants mark, and facts averred by Complainant regarding promotion,
use, sales of services and goods under the marks.
The domain name in dispute was registered and used in bad faith.
The domain name was not being used at all by Respondent. Respondent
did not provide a real address or contact information. Also, inclusion
of the phrase FORSALELEASECOOPORANYIMAGINATIO in the contact information
infers that Respondent registered the domain with the primary purpose of
selling it or trading on Complainants goodwill.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Panel Decision referred to
--
Plant, Panelist: -
1. The Parties
Complainant is Yahoo! Inc., a Delaware corporation with its principal
place of business at 3420 Central Expressway, Santa Clara, California 95051,
U.S.A. (Yahoo!). Respondent identifies itself at "DomainCollection", with
no conventional postal address, but rather with the following:
"1, YNOTMAKEURSELFEASIEST2BEREMEMBERRED
"ADOFTVORRADIOTOODEARTOOSHORT
"NEEDSIMPLESTDOMAIN, RU 1937
"RU".
2. Domain Name and Registrar
The domain name in issue "CAMPYAHOO.COM". The registrar is Network
Solutions, Inc. (NSI).
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received Yahoo!s
complaint on May 22, 2000 by email, and on May 24, 2000 via hard copy.
The Center verified that the complaint satisfies the formal requirements
of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy),
the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules),
and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
(the Supplemental Rules). Yahoo! made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is
June 5, 2000.
The complaint identifies DomainCollection as Respondent and annexes
as Exhibit 1 NSIs 05/19/2000 WHOIS page setting out Administrative Contact,
Billing Contact, Technical Contact and Zone Contact for DomainCollection.
The complaint states that a copy of the complaint has been sent by international
certified mail, return receipt requested, to DomainCollection (paragraph
7).
On May 24, 2000, the Center transmitted via email to NSI a request
for registrar verification in connection with this case. On June 4, 2000,
NSI transmitted via email to the Center NSIs Verification Response, confirming
that the registrant is DomainCollection, the contact information in the
Exhibit 1 WHOIS page is correct, and "The domain name registration CAMPYAHOO.COM
is in Active status."
On May 24, 2000, the Center transmitted Acknowledgement [sic] of Receipt
of Complaint via email and facsimile to DomainCollection. On May 24, 2000,
the Center received an email from "MYINTERNET SUPPORT < [email protected]>."
"[email protected]" is listed by NSI as an email address for Domain
Collections Technical Contact and Zone Contact. The email requested the
Center to keep the sender "informed of the outcome" with respect to the
Acknowledgment of Receipt of Complaint transmitted by the Center earlier
that day.
On June 5, 2000, the Center transmitted Notification of Complaint and
Commencement of the Administrative Proceeding, together with a copy of
the Complaint, via email and facsimile to Domain Collection. The Center
advised that the response was due by June 24, 2000 and set out the consequences
of default (e.g. an Administrative Panel will be appointed "to review the
facts of the dispute and to decide the case").
On June 5, 2000, the Center received email advice that the Centers
June 5, 2000 email to "[email protected]" could not be delivered.
On June 13, 2000, Yahoo! advised the Center via email that the copy
of the complaint sent by Yahoo! to DomainCollection had been returned by
the US Postal Service "because Respondents address was incomprehensible."
The Center received no response to the complaint by June 24, 2000.
On June 26, 2000, Yahoo! advised the Center via email of two UDRP decisions
relating to Yahoo! decided pursuant to the Centers procedures.
On June 26, 2000, the Center transmitted Notification of Respondent
Default via email and facsimile to DomainCollection , advising inter alia
that the Center would appoint an Administrative Panel which "will decide
in its sole discretion whether to consider your Response (if submitted
later) in deciding the case."
On July 10, 2000, the Center advised the parties via email, and also
via fax to Domain Collection, that David W. Plant (USA) had been appointed
as the panelist in this proceeding, and absent exceptional circumstances,
the Administrative Panels decision is due July 23, 2000. Mr. Plant comprised
the Administrative Panel in the two earlier Yahoo! matters pending before
the Center.
Also, on July 10, 2000, the Center transmitted via email and fax to
DomainCollection a copy of Transmission of Case File to Administrative
Panel.
4. Factual Background; Parties Contentions
A. The Trademarks
The complaint (paragraph 29) is based on the trademark and service
mark "YAHOO!", registered in the U.S. Patent and Trademark Office pursuant
to eight registrations, copies of which appear at Exhibit 7 to the complaint,
viz.:
YAHOO! Reg. No. 2,042,222 Feb. 25, 1997
YAHOO! (stylized) Reg. No. 2,040,691 Feb. 25,1997.
YAHOO! Reg. No. 2,076,457 July 1, 1997
YAHOO! Reg. No. 2,159,115 May 19, 1998
YAHOO! Reg. No. 2,187,292 Sept. 8, 1998
YAHOO! Reg. No. 2,243,909 May 4, 1999
YAHOO! Reg. No. 2,243,823 May 4, 1999
YAHOO! Reg. No. 2,273,128 Aug. 24, 1999.
The complaint avers also (paragraph 29) that Yahoo! owns a pending
trademark application, copy of a status report for which appears at Exhibit
7.
The foregoing service mark and trademark registrations and the application
relate inter alia to computer software for various searching and retrieving
purposes, books, promoting goods and services via advertisement on electronic
sites, computer services, magazines, email services, posters, shirts, computer
software for use as a screen saver, housewares, demographic consultation
services, computer software for use in creating and designing web sites,
online retail and mail order services, telecommunications services, broadcasting
services, consulting re marketing online, making reservations and bookings,
and club services.
Yahoo! asserts also (paragraph 29, second occurrence) that it owns
the domain name YAHOO.COM, registered with NSI on January 18, 1995. Yahoo!
uses that domain name alone and "in combination with numerous third-level
domains, including camp.yahoo.com."
At paragraph 30, Yahoo! avers that its rights in its mark, trade name
and domain name pre-date DomainCollections registration of the domain
name in issue.
At paragraph 31, Yahoo! avers that its marks "enjoy unquestionable
fame as a result of favorable public acceptance and recognition worldwide."
B. The Complaint
At paragraph 6, Yahoo! avers:
"a. The disputed Domain Name fully incorporates Complainants valuable
and famous trademark YAHOO! within the second-level domain name under the
top level .COM, and fully incorporates Complainants CAMP YAHOO! mark as
well. Therefore, the disputed Domain Names [sic] are confusingly similar
to Complainants YAHOO! and CAMP YAHOO! marks 1.
"b. Respondent does not have rights or a legitimate interest in the
Domain Name by virtue of the fact that Yahoo!s YAHOO! mark is famous and
it prominently uses its CAMP YAHOO! mark, and Respondents use of Yahoo!s
marks is unauthorized.
"c. Respondents registration and use of the Domain Name meets the
bad faith requirement described in Paragraph 4(a) of the UDRP."
At paragraphs 11 - 26, Yahoo! describes its organization and its services.
Relevant here, Yahoo! avers (paragraph 12) it has created "a beginner-level
Internet education program, Camp Yahoo!." Yahoo! partners with non-profit
organizations and government agencies to provide program materials to serve
as a curriculum for beginner-level Internet training by "Camp Counsellors".
A copy of the CAMP YAHOO! home page is at Exhibit 4. Approximately 1000
requests for the program materials have been received.
Paragraphs 13 and 14 summarize Yahoo!s history. At paragraph 15, Yahoo!
describes its Internet directory and search services. At paragraphs 16
- 18, Yahoo! describes its role in carrying advertising and reports its
almost exponential growth in annual revenues.
Paragraphs 19 - 22 describe the popularity of the YAHOO! website, viz.:
it has been "ranked number one among websites in numerous categories" (paragraph
19), it has been recognized with "numerous industry awards" (paragraph
20), the number of visits to the YAHOO! website has increased dramatically
each year since Yahoo!s inception with hundreds of millions of visits
to the website each quarter (paragraph 21), and as of March 31, 2000 Yahoo!
had over 145 million unique registered users (paragraph 22).
Paragraphs 23 - 26 describe the large variety of Yahoo! websites using
"YAHOO!-formative trademaks and domain names," e.g. websites that are specific
to particular countries, regions and cities, to particular topics or population
groups, and to particular services. A printout from different sections
of the Yahoo! website appear at Exhibit 5.
Paragraph 27 sets out the basis for concluding that the YAHOO! mark
is famous.
At paragraph 28, Yahoo! avers DomainCollection is not and has never
been authorized to use "the YAHOO! or CAMP YAHOO! marks."
At paragraphs 32 - 37, Yahoo! describes DomainCollections allegedly
"infringing activities". The domain name in issue was registered with NSI
on February 14, 2000 (paragraph 32). The domain name has not been used
"in any manner since it was registered, other than as an item for sale
or lease" (paragraph 33). The domain name in issue incorporates Yahoo!s
famous mark and "yahoo.com" domain name, and is virtually identical to
Yahoo!s CAMP YAHOO! domain name ("camp.yahoo.com") and is thus confusingly
similar with the Yahoo! domain name (paragraph 34). DomainCollection "used
and/or intends to use the Domain Name to divert Internet users attempting
to reach YAHOO!s sites and to trade on the goodwill of the famous Yahoo!
marks and names" (paragraph 35). DomainCollection had actual knowledge
of Yahoo!s rights in its mark and domain name and registered the domain
name "in bad faith to take advantage of the tremendous reputation and goodwill
of the YAHOO! mark and name" (paragraph 36). DomainCollection "intentionally
and willfully misrepresented to NSI that the registration of the Domain
Name did not interfere with or infringe upon the rights of any third parties
and that the Domain Name was not being registered for any unlawful purpose."
(paragraph 37).
At paragraphs 38 - 42, Yahoo! describes DomainCollections allegedly
"bad faith" acts. DomainCollection "used and is using the Domain Name to
intentionally attract, for commercial gain, a buyer or lessee of the Domain
Name by creating a likelihood of confusion with Yahoo!s YAHOO! and/or
CAMP YAHOO! marks and domain names" in violation of the Section 4(b)(iv)
of the Policy (paragraph 38). As shown by DomainCollections "scant and
obfuscatory" address information, DomainCollection registered the domain
name primarily to sell, rent or otherwise transfer it for valuable consideration,
thus violating Section 4(b)(i) of the Policy (paragraph 39). DomainCollection
registered the domain name under an "obviously phony" name and provided
"obviously phony" contact information (paragraph 40). There is no plausible
explanation for DomainCollections registration other than to trade upon
the goodwill of Yahoo! and its famous and well-respected marks and names
(paragraph 41). Finally, DomainCollection satisfies none of the factors
set out in Section 4(c) of the Policy (paragraph 42).
In the final paragraph, Yahoo! requests that the domain name in issue
be transferred immediately to Yahoo!.
C. The Response
The Center has received no response from DomainCollection.
5. Discussion and Findings
Paragraph 4.a. of the Policy directs that Yahoo! must prove, with respect
to the domain name in issue, each of the following:
(i) The domain name in issue is identical or confusingly similar to
Yahoo!s trademark and service mark, and
(ii) Respondent has no rights or legitimate interests 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 four illustrative circumstances,
which for purposes of Paragraph 4(a)(iii) above shall be evidence of the
registration and use of a domain name in bad faith.
Paragraph 4.c. of the Policy sets out three illustrative circumstances
which, if proved by respondent, shall demonstrate respondents rights or
legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)
above.
A. Identity or Confusing Similarity
Yahoo! urges inter alia that the domain name in issue "incorporates
Yahoo!s famous mark", is "virtually identical" to Yahoo!s CAMP YAHOO
domain name", and is "confusingly similar to Complainants YAHOO! and CAMP
YAHOO! marks." Thus YAHOO! must prove that the domain name in issue is
either (1) "identical to Yahoo!s trade mark and service mark or (2) confusingly
similar to Yahoo!s trademark and service mark. DomainCollections failure
to respond does not relieve Yahoo! of its burden of proof on this element
or on either of the other two elements of Paragraph 4(a) of the Policy.
However, DomainCollections failure to deny any of Yahoo!s averments permits
this panel to take Yahoo!s averments as true and to draw appropriate inferences.
We focus here only on Yahoo!s YAHOO! mark. Yahoo!s averments are
insufficient to establish for purposes of this proceeding that CAMP YAHOO!
is also a Yahoo! trademark or service mark.
The domain name in issue indisputably incorporates Yahoo!s YAHOO!
mark and indisputably is virtually identical to Yahoo!s CAMP YAHOO domain
name. At minimum, in light of the well-known status of Yahoo!s mark with
respect to a wide variety of Internet services and Yahoo!s use of the
mark as a part of its CAMP YAHOO domain name, DomainCollections CAMPYAHOO.COM
domain name is confusingly similar to Yahoo!s YAHOO! mark.
B. Rights or Legitimate Interests
On this record, no challenge has been leveled with respect to (1) the
validity of any Yahoo! trademark or service mark, (2) Yahoo!s rights in
the YAHOO! mark with respect to Yahoo! services and goods, (3) the global
fame and goodwill associated with the Yahoo! mark, or (4) any fact averred
by Yahoo! as to promotion of marks, use of the marks, and total sales of
services and goods under the marks.
No challenge has been leveled with respect to Yahoo!s averments as
to DomainCollections acts and intentions.
On this record, it is fair to conclude that Domain Collection has no
rights or legitimate interests vis-a-vis the Yahoo! mark
C. Registration and Use in Bad Faith
Registration and use of the domain names in issue in bad faith are
matters of the appropriate inferences to draw from circumstantial evidence.
Each is to be proved by Yahoo!.
Yahoo! avers that the domain name in issue has not been used at all
by DomainCollection (other than as bait for a buy-sell transaction), and
there is no evidence to the contrary. The nonsensical address and contact
information supplied by DomainCollection to NSI is evidence of bad faith
both with respect to registration and use - there is no discernible good
faith basis for providing such unintelligible and diversionary information
if the registrant intends to register or to use the domain name in good
faith. DomainCollections inclusion of "ForSaleLeaseCoOpOrAnyImaginatio"
as part of its contact information supports the inference that DomainCollection
registered the domain name for the purpose of selling it or otherwise trading
on the Yahoo!s goodwill.
Yahoo!s uncontested averments, in light of the realities of the Internet
world, compel the conclusion that the only reason DomainCollection registered
CAMPYAHOO.COM was to trade in bad faith on the good will of Yahoo!s widely
known and highly respected mark.
D. Paragraph 4.c. Factors
With respect to the domain name in issue, by failing to respond to
the complaint, Domain Collection has failed to prove any of the three circumstances
set out in Paragraph 4.c. of the Policy, viz.:
(i) before any notice to DomainCollection of the dispute, DomainCollections
use of or preparations to use the domain name were in connection with a
bona fide offering of goods or services,
(ii) DomainCollection or a related entity has been commonly known by
the domain name, and
(iii) DomainCollection is making legitimate noncommercial 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."
As averred by Yahoo! and properly inferred from the undisputed facts
as to DomainCollections conduct, each of these three factors must be resolved
in favor of Yahoo!
6. Decision
The Panel has jurisdiction of this dispute. DomainCollection has received
notice of the commencement of the proceeding, the Policy, the complaint,
the consequences of Domain Collections default, and the appointment of
the Panel. DomainCollection has been afforded due process.
In light of the findings by the Panel, the Panel decides that Yahoo!
has met its burden of proving: (a) the CAMPYAHOO.COM domain name in issue
is confusingly similar to the YAHOO! marks, (b) DomainCollection has no
rights and no legitimate interest in respect of the domain name in issue,
and (c) the domain name in issue has been registered and is being used
by DomainCollection in bad faith.
Accordingly, the Panel requires that the registration of the CAMPYAHOO.COM
domain name be transferred to Yahoo!.
Footnotes:
1. In this paragraph and in paragraphs 28 and 38, Yahoo!
refers to its CAMP YAHOO! "mark." Yahoo! does not otherwise aver that CAMP
YAHOO! comprises a trademark or a service mark.
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