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Generic Top Level Domain Name (gTLD) Decisions |
Yahoo! Inc. and HotJobs.com, Ltd. v. Saeid Yomtobian d/b/a Movie Name
Inc., $$$ Buy This Domain $$$ Buy This Domain $$$ and ***Desperate*** $250 buy it today, it won't last
Claim Number: FA0304000154591
PARTIES
Complainant is Yahoo! Inc., Sunnyvale, CA (“Complainant”) represented by David M. Kelly of Finnegan Henderson
Farabow Garrett & Dunner LLP. Respondent is Saeid Yomtobian, Malibu, CA (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAMES
The domain names at issue are <ahoo.com>, <ahoos.com>, <hahoo.com>, <hahoos.com>, <hojob.com>, <hojobs.com>, <hojobs.net>, <hojobs.org>, <uahoo.net>, <uahoo.org>, <wwwhahoo.com>, <wwwyoo.com>, <yehoo.com>, <yehoo.org>, <yehooo.com> and <yohhoo.com> registered with Dotster, Inc.
PANEL
The undersigned 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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on April 15, 2003; the
Forum received
a hard copy of the Complaint on April 15, 2003.
On May 5, 2003, Dotster, Inc. confirmed by
e-mail to the Forum that the domain names <ahoo.com>, <ahoos.com>, <hahoo.com>, <hahoos.com>, <hojob.com>, <hojobs.com>, <hojobs.net>, <hojobs.org>, <uahoo.net>, <uahoo.org>, <wwwhahoo.com>, <wwwyoo.com>, <yehoo.com>, <yehoo.org>, <yehooo.com> and <yohhoo.com> are registered with Dotster, Inc. and that the
Respondent is the current registrant of the name. Dotster, Inc. has verified
that
Respondent is bound by the Dotster, 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 May 5, 2003, a Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting
a deadline of May 27, 2003 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@ahoo.com, postmaster@ahoos.com,
postmaster@hahoo.com, postmaster@hahoos.com, postmaster@hojob.com, postmaster@hojobs.com,
postmaster@hojobs.net, postmaster@hojobs.org, postmaster@uahoo.net, postmaster@uahoo.org,
postmaster@wwwhahoo.com, postmaster@wwwyoo.com,
postmaster@yehoo.com, postmaster@yehoo.org,
postmaster@yehooo.com and postmaster@yohhoo.com by e-mail.
A timely Response was received and determined to
be complete on May 8, 2003.
Complainant filed its Additional Response on May
13, 2003.
Respondent’s Additional Response was filed May
14, 2003.
On May 16, 2003, pursuant
to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as
Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. The
disputed domain names <ahoo.com>, <ahoos.com>,
<hahoo.com>, <hahoos.com>, <uahoo.net>,
<uahoo.org>, <wwwhahoo.com>, <wwwyoo.com>,
<yehoo.com>, <yehoo.org>, <yehooo.com and <yohhoo.com>
are typographical misspellings of and confusingly similar to Complainant
Yahoo!s famous and federally registered YAHOO! trademark
and trade name.
2. The
disputed domain names <hojob.com>, <hojobs.com>,
<hojobs.net> and <hojobs.org> are confusingly similar to
Complainant HotJobs’ famous HOTJOBS trademark and trade name.
3. Respondent
does not have any rights or a legitimate interest in the Domain Names by virtue
of the fact that each trades on the goodwill
of Complainant’s YAHOO! and
HOTJOBS marks, and Respondents’ use of those marks is unauthorized. Respondent is not and never have been a
licensee of Complainant. Respondent is
not and never has been otherwise authorized by Complainant to use the YAHOO! or
HOTJOBS marks.
4. Respondents’
registration and use of the Domain Names meet the bad faith requirement
described in Paragraph 4(a) of the UDRP.
B. Respondent
1. The disputed names are not confusingly
similar.
2. Respondent does have rights or legitimate
interests in the disputed domain names.
3. Respondents’ registration and use of the
domain names are not in bad faith.
C. Additional Submissions
A. Complainant
1. Each of the Domain Names is confusingly
similar to and a typographical misspelling of the YAHOO! mark, HOTJOBS mark,
and/or the URL
www.yahoo.com, and
Respondent has not refuted those facts.
Indeed, Respondent has a history of registering domain names comprised
of typographical misspellings of trademarks owned by third
parties, and
numerous UDRP Panels have ordered the transfer of those domain names.
2. The number of keystrokes between a domain
name and a trademark is not the test for confusingly similarity under the
UDRP. Confusing similarity is
demonstrated by comparing the domain name to the trademark at issue in
appearance, pronunciation, or meaning.
3. Respondent appears to argue that the Domain
Names are not confusingly similar to Complainant’s YAHOO! and HOTJOBS marks
because he
has “not received one single complaint from Complainant that any of
its users were mistaken[ly] directed to Respondent’s website.” (Response p. 6.) Respondent’s argument has no merit, however, because the UDRP
does not require proof of actual confusion.
4. Respondent has no legitimate interest in the
Domain Names.
B. Respondent
1. Many of the Domain Names were registered and
used as early as 1997.
2. ahoo.com is a Persian word meaning “deer”.
3. Networksolutions lost all ownership
information from December 1999 to February 2002.
FINDINGS
Complainant has
established all three elements required under the ICANN Policy. The relief should be granted, and each of
the disputed domain names be transferred in accordance with the relief
requested in the
complaint.
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.
Complainants, Yahoo! and HotJobs.com
(collectively, the “Complainant”), hold numerous registrations for the YAHOO!
and HOTJOBS marks.
Specifically, Complainant holds U.S. Patent and Trademark
Office (“USPTO”) Reg. No. 2,273,128 for the YAHOO! mark registered on the
Principal Register on August 24, 1999, and Canadian registration number
TMA570701 for HOTJOBS.COM registered on November 14, 2002.
See The Men’s
Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently
distinctive and have acquired secondary meaning”); see also Wal-Mart Stores, Inc. v. MacLeod,
D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to
register all possible domain names that surround its
substantive mark does not
hinder Complainant’s rights in the mark.
“Trademark owners are not required to create ‘libraries’ of domain names
in order to protect themselves”).
The panel finds that the
disputed domain names are confusingly similar to the YAHOO! and HOTJOBS.COM
marks because Respondent’s domain
names incorporate typographical errors into
the marks. See Treeforms, Inc. v.
Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding
that confusion would result when Internet users, intending to access
Complainant’s
website, think that an affiliation of some sort exists between
Complainant and Respondent, when in fact, no such relationship would
exist); see
also Reuters Ltd. v. Global Net 2000,
Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which
differs by only one letter from a trademark has a greater tendency
to be
confusingly similar to the trademark where the trademark is highly
distinctive); see also Dow Jones
& Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000)
(holding that the deliberate introduction of errors or changes, such as the
addition of a fourth
“w” or the omission of periods or other such generic typos
do not change Respondent’s infringement on a core trademark held by
Complainant);
see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002)
(finding that the domain name <compq.com> is confusingly similar
to Complainant’s COMPAQ mark because the omission of the letter “a” in the
domain
name does not significantly change the overall impression of the mark)
The Panel finds that
Respondent does not have any rights or legitimate interests in the subject
domain names by virtue of the fact
that Respondent is trading on the goodwill
of Complainant’s famous YAHOO! and HOTJOBS.COM marks. See Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole
purpose in selecting the domain names was to cause confusion with Complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc.,
FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use
of the domain name to confuse and divert Internet
traffic is not a legitimate
use of the domain name).
The Panel finds that
Respondent uses the subject domain names to divert Internet users to various
commercial websites located at <musicplus.com>,
<pata.com>,
<sexhorse.com> and <iwantgod.com>. The proof indicates that
Respondent’s websites typically generate
two pop-up advertisements, one of
which states “the domain name you typed is for sale.” The Panel finds that
Respondent’s intent
to sell its rights in the infringing domain names suggests
Respondent lacks rights and legitimate interests in the domain names.
See Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use);
see also Skipton Bldg. Soc’y v. Colman,
D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where
Respondent offered the infringing domain name for sale and
the evidence
suggests that anyone approaching this domain name through the worldwide web
would be "misleadingly" diverted
to other sites).
Complainant states that
Respondent’s use of the YAHOO! and HOTJOBS.COM marks in the domain names is
unauthorized, and that Respondent
has never been a licensee of Complainant. See
G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002)
(finding Respondent’s use of the disputed domain name to solicit pharmaceutical
orders
without a license or authorization from Complainant does not constitute
a bona fide offering of goods or services under Policy ¶
4(c)(i)); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and
never applied for a license
or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant;
(2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the
domain
name in question).
The Panel finds that
Respondent’s allegations that it used the domain names in connection with the
<newsguys.com> domain name
and corresponding website, are incredible. The
proof indicates only four of the Domain Names were registered and could have
been
used by Respondent prior to December 19, 1999. Second, prior to December 1999,
Respondent did not use those four Domain Names for his “newsguys.com”
website as he alleges. The unrefuted
evidence indicates that Respondent used <ahoo.com>, <hahoo.com> and
<yehoo.com> for competing, pornographic
and “under construction”
websites.
The Panel finds that
Respondent does not have any legitimate interests in the subject domain names.
The panel finds that
Respondent’s registration of the domain names constitutes bad faith because
Respondent was on notice of Complainant’
rights in the famous YAHOO! and
HOTJOBS.COM marks prior to seeking registration of the domain names. See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding
that “there is a legal presumption of bad faith, when Respondent reasonably
should
have been aware of Complainant’s trademarks, actually or
constructively”); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June
14, 2000) (finding that the fame of the YAHOO! mark negated any plausible
explanation for Respondent’s registration
of the <yahooventures.com>
domain name); see also Paws, Inc.
v. Odie, FA 96206 (Nat. Arb. Forum Jan. 8, 2001) ("Given the
uniqueness and the extreme international popularity of the [ODIE] mark,
the
Respondent knew or should have known that registering the domain name in
question would infringe upon the Complainant's goodwill").
The Panel finds that
Respondent’s registration and use of the domain names meet the bad faith
element articulated by Policy ¶ 4(b)(ii).
Specifically, Respondent’s
registration of sixteen YAHOO!-formative and/or HOTJOBS-formative domain names
that are the subject of
this dispute constitutes a pattern of infringing bad
faith registration of trademark-related domain names. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8,
2000) (finding that one instance of registration of several infringing domain
names satisfies
the burden imposed by the Policy ¶ 4(b)(ii)); see also YAHOO!
Inc. v. Syrynx, Inc., D2000-1675
(WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii)
in Respondent's registration of two domain
names incorporating Complainant's
YAHOO! mark).
The Panel finds that
Respondent registered and used the domain names in bad faith pursuant to Policy
¶ 4(b)(iii) because Respondent
is disrupting Complainant’s business. See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb.
Forum Dec. 23, 2000) (concluding that domain names were registered and used in
bad faith where Respondent and
Complainant were in the same line of business in
the same market area); see also S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that
competes with Complainant’s business).
Lastly, the Panel finds
that Respondent’s actions constitute bad faith under Policy ¶ 4(b)(iv). The
evidence indicates that Respondent
uses the infringing domain names to attract
Internet users to its commercial websites; thus, Respondent is
opportunistically trading
on the goodwill and fame of Complainant’s YAHOO! and
HOTJOBS.COM marks. See G.D. Searle & Co. v. Celebrex Drugstore, FA
123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and
used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because
Respondent was using the confusingly similar domain name to attract Internet
users to its commercial website);
see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding bad faith where Respondent registered and used an
infringing domain name to attract
users to a website sponsored by Respondent); see
also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
Respondent directed Internet users seeking Complainant’s site
to its own
website for commercial gain).
DECISION
Having established all three elements required
under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is
Ordered that the domain names <ahoo.com>,
<ahoos.com>, <hahoo.com>, <hahoos.com>,
<uahoo.net>, <uahoo.org>, <wwwhahoo.com>,
<wwwyoo.com>, <yehoo.com>, <yehoo.org>,
<yehooo.com and <yohhoo.com> be TRANSFERRED to Yahoo! Inc., and that the domain names <hojob.com>,
<hojobs.com>, <hojobs.net> and <hojobs.org> be TRANSFERRED to HotJobs.com, Ltd.
John J. Upchurch , Panelist
Dated: May 30, 2003
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