DECISION

Yahoo! Inc. and GeoCities v. Eitan Zviely a/k/a comyahoo.com, et al.

Claim Number:  FA0306000162060

PARTIES

Complainant is Yahoo!, Inc. and GeoCities, Inc., Sunnyvale, CA (“Complainant”) represented by David M. Kelly of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.  Respondent is Eitan Zviely a/k/a comyahoo.com, et al., Memphis, TN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

Forty-six domain names are at issue, including: <comyahoo.com>, <hyahoo.com>, <yahoochinese.com>, <yahooh.com>, <yahoopager.com>, <yaooh.com>, <dyahoo.com>, <fyahoo.com>, <sahoo.com>, <yahaoo.com>, <yahooa.com>, <ysahoo.com>, <eliyahoo.com>, <gbchineseyahoo.com>, <gbyahoo.com>, <geocitties.com>, <geocitys.com>, <httpyahoo.com>, <lyahoo.com>, <searchyahoo.com>, <syahoo.com>, <yahooespanol.com>, <tyahoo.com>, <yaaoo.com>, <yahooc.com>, <yahooindex.com>, <yahoomaps.com>, <yahoosex.com>, <yahoou.com>, <yaohoo.com>, <yayhoo.com>, <yayoo.com>, <yoahoo.com>, <ytahoo.com>, <geociities.com>, <geocitiies.com>, <geocitoes.com>, <geocoties.com>, <geoities.com>, <yahgoo.com>, <yahoom.com>, <yahoow.com>, <yahopo.com>, <yaqhoo.com>, <yhooligans.com>, and <yahool.com>, registered with Tucows, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 8, 2003; the Forum received a hard copy of the Complaint on June 9, 2003.

On June 10, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain names: <comyahoo.com>, <hyahoo.com>, <yahoochinese.com>, <yahooh.com>, <yahoopager.com>, <yaooh.com>, <dyahoo.com>, <fyahoo.com>, <sahoo.com>, <yahaoo.com>, <yahooa.com>, <ysahoo.com>, <eliyahoo.com>, <gbchineseyahoo.com>, <gbyahoo.com>, <geocitties.com>, <geocitys.com>, <httpyahoo.com>, <lyahoo.com>, <searchyahoo.com>, <syahoo.com>, <yahooespanol.com>, <tyahoo.com>, <yaaoo.com>, <yahooc.com>, <yahooindex.com>, <yahoomaps.com>, <yahoosex.com>, <yahoou.com>, <yaohoo.com>, <yayhoo.com>, <yayoo.com>, <yoahoo.com>, <ytahoo.com>, <geociities.com>, <geocitiies.com>, <geocitoes.com>, <geocoties.com>, <geoities.com>, <yahgoo.com>, <yahoom.com>, <yahoow.com>, <yahopo.com>, <yaqhoo.com>, <yhooligans.com>, and <yahool.com> are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. verified that Respondent is bound by the Tucows, 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 June 12, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 2, 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@comyahoo.com, postmaster@hyahoo.com, postmaster@yahoochinese.com, postmaster@yahooh.com, postmaster@yahoopager.com, postmaster@yaooh.com, postmaster@dyahoo.com, postmaster@fyahoo.com, postmaster@sahoo.com, postmaster@yahaoo.com, postmaster@yahooa.com, postmaster@ysahoo.com, postmaster@eliyahoo.com, postmaster@gbchineseyahoo.com, postmaster@gbyahoo.com, postmaster@geocitties.com, postmaster@geocitys.com, postmaster@httpyahoo.com, postmaster@lyahoo.com, postmaster@searchyahoo.com, postmaster@syahoo.com, postmaster@yahooespanol.com, postmaster@tyahoo.com, postmaster@yaaoo.com, postmaster@yahooc.com, postmaster@yahooindex.com, postmaster@yahoomaps.com, postmaster@yahoosex.com, postmaster@yahoou.com, postmaster@yaohoo.com, postmaster@yayhoo.com, postmaster@yayoo.com, postmaster@yoahoo.com, postmaster@ytahoo.com, postmaster@geociities.com, postmaster@geocitiies.com, postmaster@geocitoes.com, postmaster@geocoties.com, postmaster@geoities.com, postmaster@yahgoo.com, postmaster@yahoom.com, postmaster@yahoow.com, postmaster@yahopo.com, postmaster@yaqhoo.com, postmaster@yhooligans.com, and postmaster@yahool.com by e-mail.

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 10, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1.            The disputed domain names are confusingly similar to Complainant’s YAHOO!, GEOCITIES, and/or YAHOOLIGANS! marks or variations thereof.

2.            Respondent has no rights or legitimate interests in the disputed domain names.

3.            Respondent registered and used the disputed domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, 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 to millions of Internet users daily. 

Yahoo! Inc. has used the YAHOO! mark since 1994 and holds several registrations for the mark with the U.S. Patent and Trademark Office, including Reg. Nos. 2,273,128 (registered August 24, 1999), 2,243,909 (registered May 4, 1999), and 2,040,222 (registered February 25, 1997).  The YAHOO! mark is used in conjunction with Complainant’s <yahoo.com> domain name, which was registered January 18, 1995.  More than 213 million Internet users accessed Complainant’s domain name in December 2002.  Complainant also operates a global network of 25 international YAHOO! Websites, including Yahoo! China, Yahoo! Chinese, Yahoo! Spain, and Yahoo! En Espanol!.

Yahoo! Inc. has used the YAHOOLIGANS! mark since April 1996 and owns several registrations with the U.S. Patent and Trademark Office, including Reg. Nos. 2,088,882 (registered August 19, 1997) and 2,280,143 (registered September 21, 1999).  The YAHOOLIGANS! mark is used in conjunction with Complainant’s <yahooligans.com> domain name which is targeted toward children Internet users.

Complainant, GeoCities Inc., is one of the leading hosts of personal homepages on the Internet and became a wholly owned subsidiary of Yahoo! Inc., May 28, 1999.  Complainant owns the GEOCITIES mark and the <geocities.com> domain name.  Per the WHOIS information for the <geocities.com> domain name, it was created December 15, 1995.  In March 2003, the <geocities.com> domain name received over 1.7 billion page views of which 40,560,720 were from registered users.  Complainant owns several registrations for the GEOCITIES mark with the U.S. Patent and Trademark Office, including Reg. Nos. 2,124,762 (registered December 30, 1997) and 2,424,484 (registered January 30, 2001).

Respondent registered the disputed domain names between April 2, 1998 and September 21, 2001.  Respondent uses all of the disputed domain names to redirect Internet users to Respondent’s competing <megago.com> website, which provides Internet search services and web directory services.  Respondent also uses the disputed domain names to generate “pop-up” advertisements relating to (1) additional web directory and Internet services that compete with Complainant, (2) competing e-mail services provided via the <37.com> website, and (3) to an adult oriented website.

DISCUSSION

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."

Complainant can submit one complaint for the forty-six (46) disputed domain names because the same individual or entity registered each domain name, the  Respondent, Eitan Zviely.

The Rules provide that "[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder."  See 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 several 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 6 – 14 of the Complaint, explaining that Respondent is Eitan Zviely. 

With regard to the identity of Respondent, Complainant alleged the following in its complaint:

Although the Rules provide that a Complaint may relate to more than one domain name as long as the domain names are registered by the same domain-name holder, in situations such as this one where it is clear that the same person is registering domain names using different fictitious names, it is appropriate to proceed in a single Complaint against multiple registrant names.  See Adobe Systems Inc. v. Domain OZ (WIPO D2000-0057) (decision rendered against multiple respondents where respondents shared the same post office box number and email address in their registration information).

The listed registrants of the Domain Names are obviously fictitious, as many are a direct copy of the domain name itself or an invented facsimile thereof.  For example, the registrant of the domain name <comyahoo.com> is comyahoo.com., the registrant of the domain name <yahohoo.com> is Yao Hoo Herski, the registrant of the domain name <yoahoo.com> is Yoa Hoo Nodski, and the registrant of the domain name <geoities.com> is Geo I Ties. 

The same e-mail address, tubul@prontomail.com, is listed for the administrative contact for all of the Domain Names.  That same e-mail address is listed for the technical contact for all of the Domain Names except for five registrations, which list instead a very similar e-mail address, tubul_law@prontomail.com.  The city of Gdynsk, Poland address is listed on all of the registrations of the Domain Names except one, which lists an Armenian address.  The Gdynsk addresses have the street address of “Flopgyteri” listed on six (6) registrations and the street address of “Pzscek” listed on the remaining thirty-nine (39) registrations. 

Further, all of the Domain Names are used to redirect Internet users to the same directly competing web directory website located at the domain name <megago.com> and to generate the same popup advertisements associated with the domain names <37.com> and <89.com>.  Complainant attaches a declaration of an individual who accessed the Domain Names as Exhibit 2.  In addition, the same server, ns.zf.net, is listed on the vast majority (41 of 46) of the Domain Names.  (See Exhibit 1.)

The fact that the Domain Names are being used in connection with the domain name <37.com> and/or the server ns.zf.net proves that the person responsible for registering and using the Domain Names is Eitan Zviely, a notorious cybersquatter who is associated with the domain name <37.com> and the server ns.zf.net and whose activities have been the subject of numerous adverse UDRP decisions and at least two court orders.  Attached as Exhibit 3 are March 2000 WHOIS printouts for the domain name <37.com> and the server ns.zf.net, which list one of Mr. Zviely’s aliases, Domain OZ, and Mr. Zviely’s address of P.O. Box 480167, Encino, CA, 90048.  Mr. Zviely used that address and the same server in a previous case brought by Complainant, Yahoo! Inc. v Eitan Zviely a/k/a Names OZ, Zvieli Fisher, F.Z., OZ Domains, E.Z.O.F., E&O Domains, and Fisher Zvieli (WIPO D2000-0273).  In that case, the UDRP Panel held that Yahoo! successfully proved that Eitan Zviely acted in bad faith by registering thirty-seven (37) YAHOO-formative domain names under numerous fictitious names and using those domain names to redirect Internet users to competing websites hosted on the ns.zf.net server, including the website located at the domain name <37.com>.

Mr. Zviely was also held to be the responsible party in Ty, Inc. v. O.Z. Names (WIPO D2000-0370).  In that case as well, he used the disputed domain names to redirect Internet users to the <37.com> and <megago.com> websites. 

Further connecting Mr. Zviely with the domain name <37.com> is Microsoft Corporation, et al v. Zvieli Fisher, et al (C.D. Cal. 1999).  In that case, Plaintiff Microsoft Corporation (“Microsoft”) sued regarding Zviely’s registration of 20 domain names comprised of misspellings of Microsoft’s marks MICROSOFT, WINDOWS, MSNBC, and HOTMAIL, and noted that Zviely had registered domain names comprised of numerous other misspelled trademarks owned by third parties, including the YAHOO! mark.  Microsoft alleged that Zviely infringed Microsoft’s marks by re-directing Internet users to his websites <37.COM> and <800GO.COM>, and the court entered a Default Judgment against the defendants.  Complainant attaches as Exhibits 6 and 7 a copy of the Complaint and a copy of the docket recording the series of Default Judgments entered against the defendants.

Further connecting Mr. Zviely with the Gdynsk, Poland address listed on the registrations of the Domain Names is the UDRP Decision, AltaVista Company v. O.F.E.Z., Fisher Zvieli, OZ Domains, EO Domains, Altavisto.com, Altavsita.com, Laltavista.com, and Altavistacom.com (WIPO D2000-1160).  In that case, the domain names were registered to fictitious entities that were associated with false addresses in Encino, California and Gdynsk, Poland.  A copy of that decision is attached as Exhibit 8.

Because the contact information for all of the Domain Names is nearly identical, because all of the Domain Names are being used to redirect Internet users to the same website and to the same popup advertisements, and because Eitan Zviely is indisputably connected with the registration and use of the Domain Names, Complainant has named Respondent as Eitan Zviely a/k/a comyahoo.com, a/k/a hyahoo.com, a/k/a yahoochinese.com, a/k/a yahooh.com, a/k/a yahoopager.com, a/k/a yaooh.com, a/k/a Yaha Public Rest Rooms, a/k/a eliyahoo.com, a/k/a gbchineseyahoo.com, a/k/a gbyahoo.com, a/k/a Geo Cit Ties, a/k/a geocitys.com, a/k/a Htt Pya Hoo, a/k/a lyahoo.com, a/k/a searchyahoo.com, a/k/a syahoo.com, a/k/a yahooespanol.com, a/k/a yaaoo.com, a/k/a Yaltzkin Hoocovichski, a/k/a yahooindex.com, a/k/a yahoomaps.com, a/k/a yahoosex.com, a/k/a yahoou.com, a/k/a Yao Hoo Herski, a/k/a yayhoo.com, a/k/a yayoo.com, a/k/a Yoa Hoo Nodski, a/k/a Yta Hoo Jung, a/k/a Geocii Ties, a/k/a Geoci Tiies Fgerschzki, a/k/a Geoci Toes, a/k/a Geo Co. Ties,  a/k/a Geo I Ties, a/k/a Yah Goo Szvontzki, a/k/a Yah Oom Chong, a/k/a Ya Hoow Ong, a/k/a Yaho Po Ching, a/k/a Ya Qhoo Schtzeski, a/k/a Yho Oligaski, and a/k/a Young Armenian Heart Operations On Line.

The National Arbitration Forum and Complainant made numerous attempts to contact Respondent; however, none were successful.  In addition, Respondent did not submit a formal response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations 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).  A complete list of the disputed domain names, the creation date, the registrant, contact information, and server information were provided.

According to the UDRP Rules, by which this administrative proceeding must abide, Complainant met all procedural requirements.  Respondent offered no evidence to the contrary and Complainant has clearly shown that the disputed domain name registrants are the same.  Thus, the Panel finds that it is appropriate for Complainant to proceed with a single complaint.

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 name registered by Respondent is 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 name; and

(3) the domain name has been registered and is being used in bad faith.

Identical to and/or Confusingly Similar

Complainant has established in this proceeding that it has legal rights in the YAHOO!, YAHOOLIGANS!, and GEOCITIES marks through registration with the U.S. Patent and Trademark Office and by use in commerce.

The Panel finds that each of the forty-six disputed domain names are confusingly similar to at least one of Complainant’s YAHOO!, YAHOOLIGANS!, and/or GEOCITIES marks.  The disputed domain names are confusingly similar to Complainant’s marks because they either (1) misspell one of Complainant’s marks, (2) combine “http” with one of Complainant’s marks, (3) fully incorporate one of Complainant’s marks into the domain name, (4) add a geographical or foreign language term to one of Complainant’s marks (eg., “gb,” “Chinese,” “espanol”), or (5) add a generic term to one of Complainant’s marks.  In all five instances the minor differences do not sufficiently distinguish the particular disputed domain name from Complainant’s famous marks to avoid the finding of confusing similarity.  Furthermore, the disputed domain names are confusingly similar to Complainant’s marks because the services offered via the disputed domain names are in competition with Complainant and Internet users could mistakenly assume that the disputed domain names should be associated with Complainant.

First, the disputed domain names that fully incorporate Complainant’s YAHOO! mark except to the extent that they omit the exclamation point cannot avoid a finding of confusing similarity.  Respondent fully incorporated Complainant’s mark into four of the disputed domain names and has merely added a geographical term, abbreviation of a geographical term, or foreign language term.  Respondent’s deletion of a letter or symbol or addition of generic terms do not prevent the Panel from concluding that the disputed domain names are confusingly similar to Complainant’s YAHOO! mark.  Therefore, Respondent’s <yahoochinese.com>, <gbchineseyahoo.com>, <gbyahoo.com>, and <yahooespanol.com> domain names are confusinlgy similar to Complainant’s YAHOO! mark. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights); see also Quixtar Inv., Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).

Misspelling one of Complainant’s marks does not prevent the Panel from finding that the particular disputed domain name is confusingly similar to Complainant’s marks.  Therefore, Respondent’s <hyahoo.com>, <yahooh.com>, <yaooh.com>, <dyahoo.com>, <fyahoo.com>, <sahoo.com>, <yahaoo.com>, <yahooa.com>, <ysahoo.com>,  <geocitties.com>, <geocitys.com>,  <lyahoo.com>, <syahoo.com>, <tyahoo.com>, <yaaoo.com>, <yahooc.com>, <yahoou.com>, <yaohoo.com>, <yayhoo.com>, <yayoo.com>, <yoahoo.com>, <ytahoo.com>, <geociities.com>, <geocitiies.com>, <geocitoes.com>, <geocoties.com>, <geoities.com>, <yahgoo.com>, <yahoom.com>, <yahoow.com>, <yahopo.com>, <yaqhoo.com>, <yhooligans.com>, and <yahool.com> domain names are confusingly similar to Complainant’s YAHOO!, YAHOOLIGANS!, and/or GEOCITIES marks.  See 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 America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to Complainant’s mark, ICQ).

The domain name registered by Respondent, <httpyahoo.com>, is confusingly similar to Complainant’s YAHOO! mark because it takes advantage of Internet users who make a typographical error when they attempt to access Complainant’s <yahoo.com> website.  See Dana Corporation v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding Respondent's <wwwdana.com> domain name confusingly similar to Complainant's registered DANA mark because Complainant's mark remains the dominant feature); 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”).

Finally, Respondent’s <comyahoo.com>, <yahoopager.com>, <eliyahoo.com>, <searchyahoo.com>, <yahooindex.com>, <yahoomaps.com>, and <yahoosex.com> are confusingly similar to Complainant’s YAHOO! mark because they merely add a generic word to Complainant’s mark.  See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the Complainant’s registered mark “llbean” does not circumvent the Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); 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 Panel concludes that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant established in this proceeding that it has rights to and legitimate interests in the marks in issue.  Complainant alleges that Respondent has no such rights. The worldwide fame of Complainant’s marks permit a finding that anyone other than Complainant could be commonly known as YAHOO!, YAHOOLIGANS!, or GEOCITIES and that, specifically, Respondent could not have shown had Respondent tried that Respondent is commonly known by any of the forty-six (46) disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); 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).

Furthermore, Respondent has attempted to commercially benefit from the goodwill associated with Complainant’s marks by offering competing services via domain names that are confusingly similar to Complainant’s marks.  Respondent has tarnished Complainant’s marks because the disputed domain names direct Internet users to an adult oriented website via Respondent’s “pop-up” advertisements.  Respondent’s use of the disputed domain names is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website); see also Nat’l Football League Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent had no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where the Respondent linked these domain names to its pornographic website).

Finally, Respondent has failed to respond to the allegations of the Complaint; thereby permitting the Panel to presume that Respondent lacks rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant’s marks are fanciful and internationally recognized; therefore, the Panel finds that Respondent knew of or should have known about Complainant’s famous marks before registering the disputed domain names.  Therefore, Respondent registered the disputed domain names in bad faith.  See 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 Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).

Furthermore, Respondent has attempted to commercially benefit from the goodwill associated with Complainant’s marks by offering competing services through domain names that are confusingly similar to Complainant’s marks.  Also, Respondent has tarnished Complainant’s marks by using domain names confusingly similar to the YAHOO!, YAHOOLIGANS!, and GEOCITIES marks to direct Internet users to adult oriented websites.  Respondent’s use of the disputed domain names constitutes bad faith pursuant to Policy ¶ 4(b)(iv).  See 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); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).

In addition, Respondent has engaged in the practice of “typosquatting” by intentionally registering thirty-four (34) domain names that incorporate misspellings of Complainant’s marks with the intent to divert Internet users for commercial gain.  Respondent’s “typosquatting” constitutes bad faith registration and use pursuant to Policy 4(a)(iii).  See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <comyahoo.com>, <hyahoo.com>, <yahoochinese.com>, <yahooh.com>, <yahoopager.com>, <yaooh.com>, <dyahoo.com>, <fyahoo.com>, <sahoo.com>, <yahaoo.com>, <yahooa.com>, <ysahoo.com>, <eliyahoo.com>, <gbchineseyahoo.com>, <gbyahoo.com>, <geocitties.com>, <geocitys.com>, <httpyahoo.com>, <lyahoo.com>, <searchyahoo.com>, <syahoo.com>, <yahooespanol.com>, <tyahoo.com>, <yaaoo.com>, <yahooc.com>, <yahooindex.com>, <yahoomaps.com>, <yahoosex.com>, <yahoou.com>, <yaohoo.com>, <yayhoo.com>, <yayoo.com>, <yoahoo.com>, <ytahoo.com>, <geociities.com>, <geocitiies.com>, <geocitoes.com>, <geocoties.com>, <geoities.com>, <yahgoo.com>, <yahoom.com>, <yahoow.com>, <yahopo.com>, <yaqhoo.com>, <yhooligans.com>, and <yahool.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: July 24, 2003.

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