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Generic Top Level Domain Name (gTLD) Decisions |
Yahoo! Inc. and HotJobs.com, Ltd. v. Alex
Vorot a/k/a Arzra Khan, a/k/a Registrate Co., a/k/a NA, a/k/a Andrey Michailov,
a/k/a Amjad
Kauser, a/k/a Lorna Kang, a/k/a Venta, a/k/a Dotsan, a/k/a Yong Li,
a/k/a Mahmoud Nadim
Claim
Number: FA0305000159547
Complainant is Yahoo! Inc. and HotJobs.com, Ltd.,
Sunnyvale, CA, USA (“Complainant”) represented by David M. Kelly, of Finnegan Henderson Farabow Garrett &
Dunner LLP. Respondent is Alex Vorot a/k/a Arzra Khan, a/k/a Registrate Co., a/k/a NA,
a/k/a Andrey Michailov, a/k/a Amjad Kauser,
a/k/a Lorna Kang, a/k/a Venta, a/k/a Dotsan, a/k/a/ Yong
Li, a/k/a Mahmoud Nadim, Beijing, CN (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <auctionsyahoo.com>, <clubyahoo.com>,
<greetingyahoo.com>, <hotjibs.com>, <hotjobd.com>,
<hotjobes.com>, <hotjods.com>, <hotjopbs.com>,
<hotjpbs.com>, <hotlobs.com>, <nahoo.com>,
<radioyahoo.com>, <wwwyahoofinance.com>, <yaaahoo.com>,
<yadoo.com>, <yahahoo.com>, <yahooforkids.com>,
<yahoomatch.com>, <yahoosport.com>, <clubsyahoo.com>, <hottjobs.com>,
<myyhoo.com>, <yahoo1.com>, <yahoocalendar.com>,
<yahoocoupons.com>, <yahoogroup.com>, <yahoohealth.com>,
<yahoohoo.com>, <yahoomovie.com>, <yahpo.com>,
<yauhoo.com>, <yhoochat.com>, <yhoomail.com>,
<booksyahoo.com>, <peopleyahoo.com>, <travelyahoo.com>,
<yahee.com>, <myyahoomail.com>, <yachoo.com>,
<yahoo0.com>, <yahoobusiness.com>, <yahoocars.com>,
<yahooecards.com>, <yahoojob.com>, <yahoopeople.com>,
<yahoostore.com>, <yahootv.com> and <yyhoo.com>,
registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.
The
domain names at issue also include <sportsyahoo.com>, <yafhoo.com>,
<yahoho.com>, <yaholo.com>, <yahoomovies.com>,
<yahooweather.com>, <yahou.com>, <pyahoo.com>,
<qyahoo.com>, <yahoofantasysports.com>, <yahoomai.com>
and <yanhoo.com>, registered with Bulkregister.com.
In
addition, the domain names at issue are <yahod.com>, <yahoh.com>,
<yahon.com>, <yahoy.com>, <wwwhotjobs.com>, <yahnoo.com>,
<jyahoo.com>, <yaho0.com>, <yahol.com>, <yahooclassifieds.com>,
<yahoomobile.com>, <yahoosports.com>, <yooho.com>,
<yoohu.com>, <yhooo.com>, <myyaho.com>, <yahhogames.com>,
<yahhooo.com>, <yahom.com>, <yahook.com>,
<wwwyohoo.com>, <yohooo.com>, <ywhoo.com>,
<yhaooo.com>, <yohaa.com> and <yahhomail.com>,
registered with eNom Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 29, 2003; the Forum
received a hard copy of the Complaint
on May 29, 2003.
On
May 29, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to
the Forum that the domain names <auctionsyahoo.com>, <clubyahoo.com>,
<greetingyahoo.com>, <hotjibs.com>, <hotjobd.com>,
<hotjobes.com>, <hotjods.com>, <hotjopbs.com>,
<hotjpbs.com>, <hotlobs.com>, <nahoo.com>,
<radioyahoo.com>, <wwwyahoofinance.com>, <yaaahoo.com>,
<yadoo.com>, <yahahoo.com>, <yahooforkids.com>,
<yahoomatch.com>, <yahoosport.com>, <clubsyahoo.com>, <hottjobs.com>,
<myyhoo.com>, <yahoo1.com>, <yahoocalendar.com>,
<yahoocoupons.com>, <yahoogroup.com>, <yahoohealth.com>,
<yahoohoo.com>, <yahoomovie.com>, <yahpo.com>,
<yauhoo.com>, <yhoochat.com>, <yhoomail.com>,
<booksyahoo.com>, <peopleyahoo.com>, <travelyahoo.com>,
<yahee.com>, <myyahoomail.com>, <yachoo.com>,
<yahoo0.com>, <yahoobusiness.com>, <yahoocars.com>,
<yahooecards.com>, <yahoojob.com>, <yahoopeople.com>,
<yahoostore.com>, <yahootv.com> and <yyhoo.com>
are registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that
Respondent is the current registrant of the names. Iholdings.Com,
Inc. d/b/a
Dotregistrar.Com verified that Respondent is bound by the Iholdings.Com, Inc.
d/b/a Dotregistrar.Com 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 29, 2003 Bulkregister.com confirmed by e-mail to the Forum that the domain
names <sportsyahoo.com>, <yafhoo.com>, <yahoho.com>,
<yaholo.com>, <yahoomovies.com>, <yahooweather.com>,
<yahou.com>, <pyahoo.com>, <qyahoo.com>,
<yahoofantasysports.com>, <yahoomai.com> and <yanhoo.com>
are registered with Bulkregister.com. and that Respondent is the current
registrant of the names. Bulkregister.com has verified that
Respondent is bound
by the Bulkregister.com agreement and has thereby agreed to resolve domain-name
disputes brought by third parties
in accordance with the Policy.
On
May 29, 2003 & on June 2, 2003 eNom Inc. confirmed by e-mail to the Forum
that the domain names <yahod.com>, <yahoh.com>, <yahon.com>,
<yahoy.com>, <wwwhotjobs.com>, <yahnoo.com>, <jyahoo.com>,
<yaho0.com>, <yahol.com>, <yahooclassifieds.com>,
<yahoomobile.com>, <yahoosports.com>, <yooho.com>,
<yoohu.com>, <yhooo.com>, <yahhogames.com>,
<yahhooo.com>, <yahom.com>, <yahook.com>,
<wwwyohoo.com>, <yohooo.com>, <ywhoo.com>,
<yhaooo.com>, <yohaa.com> and <yahhomail.com>
are registered with eNom Inc. and that Respondent is the current registrant
of the names. eNom Inc. has verified that Respondent is
bound by the eNom Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in
accordance with the Policy.
On
June 26, 2003 eNom Inc. confirmed by e-mail to the Forum that the domain name <myyaho.com>
is registered with eNom Inc. and that Respondent is the current registrant
of the names. eNom Inc. has verified that Respondent is
bound by the eNom Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in
accordance with the Policy.
On
June 3, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
June 23, 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
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
July 2, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Louis
E. Condon as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum has 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 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
The registrants
of record for the disputed domain names represent a single entity, and thus a
single respondent, Alex Vorot.
Respondent’s
disputed domain names are confusingly similar to Complainant’s YAHOO! and
HOTJOBS.COM marks.
Respondent does
not have any rights or legitimate interests in the disputed domain names.
Respondent
registered and used the disputed domain names in bad faith.
Complainant
can submit one complaint for the eighty-six (86) disputed domain names because
the same individual or entity registered
each domain name. Respondent is Alex Vorot a/k/a Arzra Khan,
a/k/a Registrate Co., a/k/a NA, a/k/a Andrey Michailov, a/k/a Amjad Kauser,
a/k/a Lorna
Kang, a/k/a Venta, a/k/a Dotsan, a/k/a Yong Li, a/k/a Mahmoud Nadim.
A previous UDRP
Panel held that Complainant successfully proved that Alex Vorot registered and
used in bad faith eight YAHOO-formative
domain names under the names Private, Polanski, Marec Polanski, Victor Majevski,
Andrey Vasiliev, Victor Lashenko, Uevgeniy Sleptcov, and Solncev Michail. See Yahoo! Inc. v. Finance Ya Hoo a/k/a Victor Lashenko, Polanski a/k/a
Victor Lashenko, Private a/k/a Andrey Vasiliev, Private a/k/a Alex Vorot, Games
RU a/k/a Solncev Michail, Greetings Co. a/k/a Uevgeniy Sleptcov, and Victor
Majevski a/k/a Marec Polanski, D2002-0694 (WIPO Sept. 20,
2002) (decision
rendered against multiple respondents when Complainant proved the entities were
one and the same).
Alex Vorot is the person responsible for
the registration and use of all of the disputed domain names. His aliases or d/b/a include all of the
names listed in the WHOIS records for the disputed domain names, namely, the
registrants of
the disputed domain names (Azra Khan, Registrate Co., NA, Andrey
Michailov, Amjad Kauser, Lorna Kang, Venta, Dotsan, Yong Li, and
Mohmoud Nadim)
the contacts for the disputed domain names (Richard Dziadosh, Vladimir Seznko,
Andrey Vasiliev, Leonard Bogucki, and
R.S. Potdar), and Seocho, the name listed
in the address section of the WHOIS record for the domain name <yahhomail.com>.
The registrant names for the disputed
domain names were changed multiple times after they were initially registered,
but the creation
dates of the disputed domain names have not changed. If a domain name is transferred from one
entity to another, the creation date for the domain name will change. If the contact information for a domain name
is changed but the ownership of the domain name does not change, the creation
date will
not be updated. The fact that
the creation dates for the disputed domain names have not changed establishes
that the disputed domain names were not
transferred from one entity to another,
but rather shows that the same entity, using different names, merely changed
the contact
information and continues to be responsible for the registration
and use of all of the disputed domain names.
The registrant of the disputed domain
name <clubyahoo.com> changed from Azra Khan to Amjad Kauser, then
back to Azra Khan. Thus, Azra Khan and
Amjad Kauser are one and the same. The
registrant of the domain name <sportsyahoo.com> changed from Azra
Khan to Amjad Kauser to Registrate Co.
Thus, Azra Khan, Amjad Kauser, and Registrate Co. are one and the
same. The registrant of the domain name
<yahod.com> changed from Azra Khan to Amjad Kauser to NA, with
Host for You and Vladimir Snezko listed as the administrative contact. Thus, Azra Khan, Amjad Kauser, and NA, Host
for You, and Vladimir Snezko are all one and the same. The registrant of the domain name <wwwhotjobs.com>
changed from Azra Khan to Amjad Kauser to NA, with Free Domains Parking and
Andrey Vasiliev listed as the administrative contact. Thus, Azra Khan, Amjad Kauser, NA, Free Domains Parking, and
Andrey Vasiliev are all one and the same.
The registrant of the domain name <yahnoo.com> changed from
Azra Khan to Amjad Kauser to Andrey Michailov.
Thus, Azra Khan, Amjad Kauser, and Andrey Michailov are one and the
same. The registrant of the domain name
<clubsyahoo.com> changed from Azra Khan to Amjad Kauser to Lorna
Kang. Thus, Azra Khan, Amjad Kauser,
and Lorna Kang are one and the same.
The registrant of the domain name <pyahoo.com> changed from
Azra Khan to Amjad Kauser to Dotsan.
Thus, Azra Khan, Amjad Kauser, and Dotsan are one and the same. The registrant of the domain name <yahoobusiness.com>
changed from Azra Khan to Amjad Kauser to Yong Li. Thus, Azra Khan, Amjad Kauser, and Yong Li are one and the
same. The registrant of the domain name
<yahhogames.com> changed from Azra Khan to Amjad Kauser to Mahmoud
Nadim. Thus, Azra Khan, Amjad Kauser,
and Mahmoud Nadim are one and the same.
Accordingly, the entities listed as the registrants of the disputed domain
names, therefore, are all one and the same, namely, Azra
Khan, Amjad Kauser,
Registrate Co., NA, Andrey Michailov, Lorna Kang, Dotsan, Yong Li, and Mahmoud
Nadim.
Further illustrating the connection
between Alex Vorot and Amjad Kauser is the fact that Alex Vorot is the
administrative contact
for the domain name <nip.net>, and Amjad Kauser
has an e-mail address at that domain name: k
As noted above, Mr. Vorot’s many aliases
include the contacts for the disputed domain names (Richard Dziadosh, Vladimir
Seznko, Andrey
Vasiliev, Leonard Bogucki, and R.S. Potdar), and Seocho, the
name listed in the address section of the WHOIS record for the domain
name <yahhomail.com>.
The domain name <myyaho.com>
has been registered to Venta, with Leonard Bougucki listed as the
administrative contact. Venta/Leonard
Bougucki has the same e-mail address,
As described in Cox Holdings, Inc. v.
Private, D2001-1446 (WIPO Mar. 11, 2002), Mr. Vorot changed the contact for
the disputed domain name from himself to Andrey Vasiliev after
receiving the
complainant’s cease-and-desist letter.
Thus, Andrey Vasiliev is an alias of Mr. Vorot. Mr. Vorot also changed the WHOIS record for
the disputed domain name in A.H. Belo v. King TV and 5 Kings, D2000-1336
(WIPO Dec. 8, 2000), after the complainant filed its complaint, to list the
e-mail address domnet6@mail.ru, which isthe same e-mail address used by Vladimir Snezko. Thus, Vladimir Snezko is an alias of Mr. Vorot. Richard Dziadosh has a similar e-mail
address, domnet9@mail.ru.
Further illustrating the fact that the
ten (10) registrants of the disputed domain names are the same person, Alex
Vorot, is the fact
that seventy-seven (77) of the eighty-six (86) domain names
redirect to a website located at the domain name <ownbox.com>. Six (6) of the remaining disputed domain
names redirect to a website located at the domain name <gotoo.com>. The three (3) remaining disputed domain
names are used for third-party affiliate websites.
Alex Vorot was previously listed as the
administrative contacts for the domain names <ownbox.com> and
<gotoo.com>. The contacts for
those domain names were changed to Mahmoud Nadim and Amjad Kauser, but the
creation dates did not change. Thus,
Alex Vorot, using the names Mahmoud Nadim and Amjad Kauser, is the beneficiary
of the disputed domain names, as nearly all of
the domain names are being used
to redirect Internet users to Mr. Vorot’s <ownbox.com> and
<gotoo.com> websites.
The various aliases of Alex Vorot are
interlinked via the use of the disputed domain names to redirect to pages of
Mr. Vorot’s <ownbox.com>
and <gotoo.com> websites. The ten (10) listed registrants of the
disputed domain names (Azra Khan, Registrate Co., NA, Andrey Michailov, Amjad
Kauser, Lorna
Kang, Venta, Dotsan, Yong Li, and Mohmoud Nadim) are all using
particular disputed domain names to redirect Internet users to the
same URL,
<ownbox.com/treasure/search.html>.
Azra Khan, Registrate Co., Amjad Kauser, and Dotsan are all using
particular disputed domain names to redirect Internet users to the
same URL,
<gotoo.com/treasure/sport.html>.
Azra Khan and Yong Li are using particular disputed domain names to
redirect Internet users to the same URL,
<ownbox.com/treasure/finance.html>.
Azra Khan and NA/Free Domains Parking and Andrey Vasiliev are
redirecting Internet users to the same URL, <ownbox.com/treasure/jobs-best.htm>.
In addition to the fact that nearly all
of the disputed domain names redirect to Mr. Vorot’s websites, Mr. Vorot is
also associated
with ownership of the main server listed on the majority of
registrations of the domain names, which is <ns.nnw.net>. That server resolves to the IP address
216.65.41.159, which is owned by EuroStar Group, Inc. (“Eurostar”). EuroStar owns the domain name
<sexis.com>, for which Alex Vorot is listed as the administrative
contact. In addition, the server
<ns.nnw.net> is associated with the domain name <nnw.net>, for
which Alex Vorot is listed as the
administrative contact.
Further connecting Alex Vorot with
Eurostar is the fact that he changed the WHOIS record for the disputed domain
name in Geoffrey, Inc. v. Babys Russian, D2000-1011 (WIPO Oct. 13,
2000), from Eurostar to Babys Russian after corresponding with Complainant in
that case. He also changed the WHOIS
record for the disputed domain name in A.H. Belo, D2000-1336, from
Eurostar to King TV after Complainant filed its complaint.
The primary server for the remaining
disputed domain names is <dns1.name-services.com>, which resolves to
63.251.163.97, an
IP address owned by eNom, the registrar of some of the
disputed domain names. This fact proves
that there are no other involved parties, that Alex Vorot is the sole person
involved with the registration and use
of the disputed domain names, and that
he is using his registrar’s hosting services.
B. Respondent failed to submit a Response in
this proceeding.
The
Rules of this proceeding permit Complainant to submit one complaint when “the
domain names are registered by the same domain-name
holder” and they “relate to
more than one domain name.” Adobe Systems, Inc. v. Domain OZ, D2000-0057
(WIPO Mar. 22, 2000). The Panel
recognizes that Complainant would be faced with an “unjustifiable economic
burden” if it was required to bring ten separate
administrative proceedings,
“and that it would be a burden on the administrative process” to require it to
duplicate its effort in
the same case. Id. Thus, the Panel accepts as true and
inserts into its decision relevant sections of paragraphs 8-21 of the
complaint, explaining that
Respondent is Alex Vorot a/k/a Arzra Khan a/k/a
Registrate Co., a/k/a NA a/k/a Andrey Michailov a/k/a Amjad Kauser a/k/a Lorna
Kang
a/k/a Venta a/k/a Dotsan a/k/a Yong Li a/k/a Mahmoud Nadim.
Complainant,
Yahoo! Inc. and HotJobs.com, Ltd. (collectively, the “Complainant”), hold
registrations for the YAHOO! and HOTJOBS.COM
marks. Specifically, Complainant holds numerous trademark registrations
for the YAHOO! mark throughout the world including U.S. Patent and
Trademark
Office Reg. Nos. 2,273,128 (registered on Aug. 24, 1999), 2,243,909 (registered
on May 4, 1999), and 2,040,222 (registered
on Feb. 25, 1997) which are
registered on the Principal Register.
Yahoo! Inc. has been using the YAHOO! mark in commerce since 1994. In addition, Complainant holds Canadian
registration number TMA570701 issued on November 14, 2002 for the HOTJOBS.COM
mark. HotJobs.com, Ltd. has been using,
promoting, and advertising the HOTJOBS mark in connection with its job
placement website since at
least as early as 1996.
Yahoo!
Inc. is a global Internet communications, media, and commerce company that
delivers a branded network of comprehensive searching,
directory, information,
communication, shopping services and other online activities and features. Yahoo! Inc. provides most of its services
through its main website at the <yahoo.com> domain name. Since Yahoo! Inc. began using the YAHOO!
mark, its services have attracted more than 213 million unique users and more
than 101 million
active registered members in December 2002.
HotJobs.com,
Ltd., a wholly owned subsidiary of Yahoo! Inc., is a leading provider of
recuiting solutions and software.
HotJobs.com, Ltd. offers its services through a webwsite located at the
<hotjobs.com> domain name. Each
day, the website at the <hotjobs.com> domain name receives 14,000 new
resumes and nearly 4,000,000 search requests.
Respondent
registered the disputed domain names between March 23, 2000 and March 29,
2003. Respondent is using seventy-seven
(77) of the disputed domain names to redirect Internet users to his competing
search engine located
at websites that use variations of the <ownbox.com>
domain name. Respondent is also using
six (6) of the disputed domain names to redirect Internet users to websites
that contain variations of the
<gotoo.com> domain name. Respondent is using the three (3) remaining
disputed domain names to redirect Internet users to websites located at the
<1.vipfaires.com>,
<magazines.com>, and <bluedolphin.com> domain names. When Internet users are redirected to any of
these websites they are subjected to pop-up advertisements.
Respondent has a
long-established history of registering domain names that reflect the
trademarks of others and using such domain
names to redirect Internet users to
competing websites, casino advertisements, affiliate websites, pornographic
websites, and websites
at various domain names including the
<vipfares.com> domain name, the <ownbox> domain name, and the
<gotoo.com>
domain name. See The
Toronto-Dominion Bank v. Lorna Kang, FA 150816 (Nat. Arb. Forum Apr. 28,
2003) (finding that “the subject domain name [registered by Respondent]
resolves to <gotoo.com/treasure/finance.html>,
where links to various
websites (including <adultsingles.com> and <ancestry.com>), as well
as other pop-up advertisements,
appear”); see also Wells Fargo & Co. v. Azra Khan, FA 135009
(Nat. Arb. Forum Jan. 13, 2003) (finding Respondent “redirects Internet users
to the commercial website, <ownbox.com>.
After being redirected to <ownbox.com> consumers are inundated
with pop-up advertising windows for gambling as well as links
to other websites
that offer such things as home mortgages and dating services”); see also Cox Holding, Inc. v. Private, D2001-1446 (WIPO Mar. 11, 2002)
(finding that Respondent
used the domain name to direct Internet users to a website that contains framed
content from an eBay company caused a "pop
up" box for a virtual
gambling site to appear).
Respondent
failed to submit a formal response in this proceeding. However, in an informal submission to the
Panel, Respondent stated that it did not contest Complainant’s allegations and
offered to
assist Complainant in getting the disputed domain names transferred
to Complainant.
See ‘Appendix A’
for a complete list of the disputed domain names, the creation date, the
registrant, the contacts, and the registrar.
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."
In view of
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
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that 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 names registered by Respondent
are 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 names; and
(3) the domain names have been registered and
are being used in bad faith.
The National Arbitration Forum and
Complainant have made numerous attempts to contact Respondent, however none
have been successful. In addition,
Respondent has failed to submit a formal response in this proceeding. Thus, the Panel is permitted to accept all
reasonable allegation and inferences in the complaint as true. See Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that Respondent’s failure to respond allows all reasonable inferences of fact
in
the allegations of Complainant to be deemed true).
According to the UDRP Rules, by which this administrative
proceeding must abide, Complainant has met all procedural requirements. There is no evidence to the contrary and
Complainant has clearly shown, through the submission of evidence as well as
previous UDRP
cases involving the Complainant and Respondent, that all of the
disputed domain name registrants are one in the same. Thus, the Panel finds that it is appropriate for Complainant to
proceed with a single complaint.
Complainant has
established rights in the YAHOO! mark through registration with the U.S. Patent
and Trademark Office and its continuous
use of the mark in commerce since
1994. Complainant has also established
rights in the HOTJOBS.COM marks through its Canadian registration and by its
continuous use of the
mark in commerce since 1996. 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”).
Respondent’s
domain names are confusingly similar to Complainant’s marks. Each of the <auctionsyahoo.com>,
<clubyahoo.com>, <greetingyahoo.com>, <radioyahoo.com>,
<wwwyahoofinance.com>, <yahooforkids.com>, <yahoomatch.com>,
<yahoosport.com>, <clubsyahoo.com>,
<yahoocalendar.com>, <yahoocoupons.com>, <yahoogroup.com>,
<yahoohealth.com>, <yahoomovie.com>, <booksyahoo.com>,
<peopleyahoo.com>, <travelyahoo.com>, <myyahoomail.com>,
<yahoobusiness.com>, <yahoocars.com>, <yahooecards.com>,
<yahoojob.com>, <yahoopeople.com>, <yahoostore.com>,
<yahootv.com>, <sportsyahoo.com>, <yahoomovies.com>, <yahooweather.com>,
<yahoofantasysports.com>, <yahooclassifieds.com>, <yahoomobile.com>,
<yahoosports.com>, <yahoomai.com> and <myyahoomail.com>
domain names are confusingly similar to Complainant’s YAHOO! mark because each
domain name combines Complainant’s famous YAHOO! mark
in its entirety with a
generic term. See Yahoo! Inc. v. Casino Yahoo, Inc.,
D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name
<casinoyahoo.com> is confusingly similar to Complainant’s mark);
see
also Yahoo! Inc. and GeoCities v.
Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use
of multiple domain names incorporating the distinctive and famous
YAHOO!,
Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’
and ‘financial’ to be confusingly similar to
Complainant’s marks and likely to
mislead Internet users into believing that products and services offered by
Respondents are being
sponsored or endorsed by YAHOO! or GeoCities, given the
similarity of the names and products and services offered).
The <yahoo1.com>,
<pyahoo.com>, <qyahoo.com> and <yahoo0.com>
domain names are confusingly similar to Complainant’s YAHOO! mark because each
combines the famous YAHOO! mark in its entirety with
a single letter or number. See Am.
Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000)
(finding that the addition of the numeral 4 in the domain name <4icq.com>
does nothing to
deflect the impact on the viewer of the mark ICQ and is
therefore confusingly similar); see also: Oxygen Media, LLC v. Primary
Source, D2000-0362 (WIPO June 19, 2000) (finding that the domain name
<0xygen.com>, with zero in place of letter “O,” “appears calculated
to
trade on Complainant’s name by exploiting likely mistakes by users when
entering the url address”).
The <nahoo.com>,
<yaaahoo.com>, <yadoo.com>, <yahahoo.com>,
<yafhoo.com>, <yahoho.com>, <yaholo.com>,
<yahou.com>, <yahod.com>, <yahoh.com>, <yahon.com>,
<yahoy.com>, <yahnoo.com>, <jyahoo.com>,
<yaho0.com>, <yahol.com>, <yooho.com>, <yoohu.com>,
<yhooo.com>, <myyhoo.com>, <yahoohoo.com>,
<yahpo.com>, <yauhoo.com>, <yahee.com>, <myyaho.com>,
<yanhoo.com>, <yachoo.com>, <yyhoo.com>,
<yahhooo.com>, <yahom.com>, <yahook.com>,
<wwwyohoo.com>, <yohooo.com>, <ywhoo.com>,
<yhaooo.com>, <yohaa.com>, <yhoochat.com>, <yhoomail.com>,
<yahhogames.com> and <yahhomail.com> domain names are
confusingly similar to Complainant’s YAHOO! mark because each domain name is
merely a typographical misspelling
of the famous YAHOO! mark. See 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); see also America Online, Inc. v. Avrasya
Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000)
(finding that Respondent’s domain name, <americanonline.com>, is
confusingly similar
to the Complainant’s famous AMERICA ONLINE mark).
The <otjibs.com>,
<hotjobd.com>, <hotjobes.com>, <hotjods.com>,
<hotjopbs.com>, <hotjpbs.com>, <hotlobs.com>,
<wwwhotjobs.com> and <hottjobs.com> domain names are
confusingly similar because each domain name is a typographical misspelling of
the famous HOTJOBS.COM mark. See Google Inc. v. Jon G.,
FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be
confusingly similar to Complainant’s GOOGLE mark and
noting that “[t]he
transposition of two letters does not create a distinct mark capable of
overcoming a claim of confusing similarity,
as the result reflects a very
probable typographical error”); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1,
2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is
confusingly similar
to Complainant’s registered trademark BANK OF AMERICA
because it “takes advantage of a typing error (eliminating the period between
the www and the domain name) that users commonly make when searching on the
Internet”).
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In this
proceeding, Respondent did not submit a formal response. Respondent, in its informal submission to
the Panel, did not contest Complainant’s allegations and even offered to help
Complainant
get the disputed domain names transferred to Complainant. The fact that Respondent did not contest
Complainant’s allegations and it offered to help with the transfers is evidence
that that
Respondent lacks legitimate interests or rights in the disputed
domain names. See Land O’ Lakes Inc. v. Offbeat Media Inc.,
FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding that Respondent’s willingness
to transfer upon notification of the Complaint
is evidence of its lack of
legitimate interests or rights); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that Respondent’s failure to submit a formal response combined with
its agreement at the
onset of the Complaint to transfer the disputed names
satisfies all the requirements of 4(a)).
There is no
evidence in any of the disputed domain names or in any of the WHOIS information
indicating that Respondent is commonly
known by the disputed domain names. Furthermore, Complainant has never
authorized Respondent to use either the famous YAHOO! mark or the HOTJOBS.COM
mark for any reason. The Panel
reasonably infers that Policy ¶ 4(c)(ii) does not apply to Respondent. See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly
known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding
sufficient proof that Respondent was not commonly known by a domain name
confusingly
similar to Complainant’s VICTORIA’S SECRET mark because of
Complainant’s well-established use of the mark).
Respondent has
no rights or legitimate interests in the disputed domain names because
Respondent’s current use is neither an example
of a bona fide offering of goods
or services nor a legitimate non-commercial or fair use of the domain
name. Respondent is using the disputed
domain names to attract and redirect Internet traffic to his competing website
and other websites
that generate pop-up advertisements. Thus, Respondent could not establish rights
or legitimate interests in the disputed domain names under Policy ¶¶ 4(c)(i)
and (iii). See 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); 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 Am. Online Inc. v.
Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000)
(finding that Respondent’s operation of website offering essentially the same
services as Complainant
and displaying Complainant’s mark was insufficient for
a finding of bona fide offering of goods or services).
Accordingly,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered and is using the disputed domain names in bad faith pursuant to
Policy ¶ 4(b)(iv). Respondent creates a
likelihood of confusion as to the source of sponsorship of Respondent’s
websites when Respondent uses typosquatted
variations of Complainant’s famous
YAHOO! and HOTJOBS.COM marks to attract Internet users and then redirects them
to other websites
where they are subjected to various pop-up advertisements. The Panel reasonably infers that Respondent
is commercially benefiting from its unauthorized use of Complainant’s YAHOO!
and HOTJOBS
marks. Thus, Respondent’s
violation of Policy ¶ 4(b)(iv) is evidence of bad faith use and registration of
the disputed domain names. See America Online, Inc. v. Fu, D2000-1374
(WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to
attract Internet users to his website for commercial
gain by creating a
likelihood of confusion with the Complainant’s mark and offering the same chat
services via his website as the
Complainant); see also .ESPN, Inc. v. Ballerini, FA 95410 (Nat.
Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the
domain name to another website, presumably
receiving a portion of the
advertising revenue from the site by directing Internet traffic there, thus
using a domain name to attract
Internet users for commercial gain).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant having
established all three elements as required under ICANN Policy, the Panel
concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <auctionsyahoo.com>, <clubyahoo.com>,
<greetingyahoo.com>, <hotjibs.com>, <hotjobd.com>,
<hotjobes.com>, <hotjods.com>, <hotjopbs.com>,
<hotjpbs.com>, <hotlobs.com>, <nahoo.com>,
<radioyahoo.com>, <wwwyahoofinance.com>, <yaaahoo.com>,
<yadoo.com>, <yahahoo.com>, <yahooforkids.com>,
<yahoomatch.com>, <yahoosport.com>, <clubsyahoo.com>, <hottjobs.com>,
<myyhoo.com>, <yahoo1.com>, <yahoocalendar.com>,
<yahoocoupons.com>, <yahoogroup.com>, <yahoohealth.com>,
<yahoohoo.com>, <yahoomovie.com>, <yahpo.com>,
<yauhoo.com>, <yhoochat.com>, <yhoomail.com>,
<booksyahoo.com>, <peopleyahoo.com>, <travelyahoo.com>,
<yahee.com>, <myyahoomail.com>, <yachoo.com>,
<yahoo0.com>, <yahoobusiness.com>, <yahoocars.com>,
<yahooecards.com>, <yahoojob.com>, <yahoopeople.com>,
<yahoostore.com>, <yahootv.com>, <yyhoo.com>,
<sportsyahoo.com>, <yafhoo.com>, <yahoho.com>,
<yaholo.com>, <yahoomovies.com>, <yahooweather.com>,
<yahou.com>, <pyahoo.com>, <qyahoo.com>,
<yahoofantasysports.com>, <yahoomai.com>, <yanhoo.com>,
<yahod.com>, <yahoh.com>, <yahon.com>, <yahoy.com>,
<wwwhotjobs.com>, <yahnoo.com>, <jyahoo.com>,
<yaho0.com>, <yahol.com>, <yahooclassifieds.com>,
<yahoomobile.com>, <yahoosports.com>, <yooho.com>,
<yoohu.com>, <yhooo.com>, <myyaho.com>, <yahhogames.com>,
<yahhooo.com>, <yahom.com>, <yahook.com>,
<wwwyohoo.com>, <yohooo.com>, <ywhoo.com>,
<yhaooo.com>, <yohaa.com> and <yahhomail.com>
domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
July 16, 2003
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