DECISION

Yahoo! Inc. and GeoCities v. Host Master

Claim Number:  FA0307000167910

PARTIES

Complainants are Yahoo! Inc. and GeoCities, Sunnyvale, CA (“Complainant”) represented by David M. Kelly of Finnegan Henderson Farabow Garrett & Dunner LLP.  Respondent is Host Master, Wakefield, RI (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <bgeocities.com>, <eaahoo.com>, <fgeocities.com>, <geocit5ies.com>, <geocit6ies.com>, <geocit8es.com>, <geocit9es.com>, <geocitfies.com>, <geocitgies.com>, <geociti3s.com>, <geociti4s.com>, <geociti8es.com>, <geociti9es.com>, <geocitids.com>, <geocitie3s.com>, <geocitiee.com>, <geocitiefs.com>, <geocitiesw.com>, <geocitiesx.com>, <geocitiesz.com>, <geocitiex.com>, <geocitifs.com>, <geocitijes.com>, <geocitikes.com>, <geocitioes.com>, <geocitiss.com>, <geocitiues.com>, <geocitjes.com>, <geocitkes.com>, <geocitries.com>, <yah0oo.com> and <yaho0o.com>, registered with Go Daddy Software, 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

Complainants submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 2, 2003; the Forum received a hard copy of the Complaint on July 3, 2003.

On July 7, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <bgeocities.com>, <eaahoo.com>, <fgeocities.com>, <geocit5ies.com>, <geocit6ies.com>, <geocit8es.com>, <geocit9es.com>, <geocitfies.com>, <geocitgies.com>, <geociti3s.com>, <geociti4s.com>, <geociti8es.com>, <geociti9es.com>, <geocitids.com>, <geocitie3s.com>, <geocitiee.com>, <geocitiefs.com>, <geocitiesw.com>, <geocitiesx.com>, <geocitiesz.com>, <geocitiex.com>, <geocitifs.com>, <geocitijes.com>, <geocitikes.com>, <geocitioes.com>, <geocitiss.com>, <geocitiues.com>, <geocitjes.com>, <geocitkes.com>, <geocitries.com>, <yah0oo.com> and <yaho0o.com> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and 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 July 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 28, 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@bgeocities.com, postmaster@eaahoo.com, postmaster@fgeocities.com, postmaster@geocit5ies.com, postmaster@geocit6ies.com, postmaster@geocit8es.com, postmaster@geocit9es.com, postmaster@geocitfies.com, postmaster@geocitgies.com, postmaster@geociti3s.com, postmaster@geociti4s.com, postmaster@geociti8es.com, postmaster@geociti9es.com, postmaster@geocitids.com, postmaster@geocitie3s.com, postmaster@geocitiee.com, postmaster@geocitiefs.com, postmaster@geocitiesw.com, postmaster@geocitiesx.com, postmaster@geocitiesz.com, postmaster@geocitiex.com, postmaster@geocitifs.com, postmaster@geocitijes.com, postmaster@geocitikes.com, postmaster@geocitioes.com, postmaster@geocitiss.com, postmaster@geocitiues.com, postmaster@geocitjes.com, postmaster@geocitkes.com, postmaster@geocitries.com, postmaster@yah0oo.com and postmaster@yaho0o.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 August 1, 2003, pursuant to Complainants' 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 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.

RELIEF SOUGHT

Complainants request that the <yah0oo.com>, <yaho0o.com> and <eahoo.com> domain names be transferred from Respondent to Yahoo!, Inc., and the remaining twenty-nine (29) domain names be transferred to GeoCities, a subsidiary of Yahoo! Inc.

PARTIES' CONTENTIONS

A.  Complainants make the following assertions:

1. The domain names registered by Respondent, <bgeocities.com>, <eaahoo.com>, <fgeocities.com>, <geocit5ies.com>, <geocit6ies.com>, <geocit8es.com>, <geocit9es.com>, <geocitfies.com>, <geocitgies.com>, <geociti3s.com>, <geociti4s.com>, <geociti8es.com>, <geociti9es.com>, <geocitids.com>, <geocitie3s.com>, <geocitiee.com>, <geocitiefs.com>, <geocitiesw.com>, <geocitiesx.com>, <geocitiesz.com>, <geocitiex.com>, <geocitifs.com>, <geocitijes.com>, <geocitikes.com>, <geocitioes.com>, <geocitiss.com>, <geocitiues.com>, <geocitjes.com>, <geocitkes.com>, <geocitries.com>, <yah0oo.com> and <yaho0o.com>, are confusingly similar to Complainants’ YAHOO! and GEOCITIES marks.

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

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

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

FINDINGS

The first named Complainant, Yahoo! Inc., is an Internet communications, media and commerce company that provides Internet based searching, directory, information, communication and shopping services to Internet users. With an estimated value of approximately $3.8 billion, Complainant Yahoo! Inc., has used the YAHOO! mark since 1994 to denote the above-mentioned services, first registering the mark May 25, 1995, on the Prinicpal Register of the U.S. Patent and Trademark Office (U.S. Reg. No. 2,273,128). This Complainant also operates a website utilizing the YAHOO! mark at the <yahoo.com> domain name.

GeoCities, the second named Complainant, is a wholly owned subsidiary of Yahoo! Inc. and is the owner of the GEOCITIES mark (e.g., U.S. Reg. No. 2,214,762, registered on the Principal Register of the U.S. Patent and Trademark Office on December 30, 1997). Geocities uses this mark in connection with providing personal home pages on the Internet, a service it has performed since February of 1995. This Complainant also operates a website, at the <geocities.com> domain name, which received over 1.7 billion page views in March of 2003, over 40 million of those from Internet users registered with Complainants’ business.

Respondent, Host Master, registered the <yah0oo.com> and <yaho0o.com> domain names October 1 and September 22, 2002, respectively, and the remainder of the disputed domain names on September 27, 2002. Respondent uses each of the disputed domain names to redirect Internet users to the <typ0s.com> domain name, which openly displays the slogan: “Oops! Looks like you mistyped something!” and which offers web directory services while displaying adult-oriented banner advertisements. Each domain name also generates an adult-oriented pop-up advertisement for the <hustler.com> domain name.

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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainants' undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that a Complainants 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 Complainants have 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

Complainants established in this proceeding that they have rights in the YAHOO! and GEOCITIES marks through registration of the marks on the Principal Register of the U.S. Patent and Trademark Office, as well as by widespread use of the marks in commerce.

The <yah0oo.com> and <yaho0o.com> domain names are confusingly similar to Complainants’ YAHOO! mark. Both are identical to Complainants’ YAHOO! mark but for the addition of the numeral “0” within the mark. This slight alteration is insufficient to defeat analysis under Policy ¶ 4(a)(i). See Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding 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”); see also Am. 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).

Likewise, the other disputed domain names are each confusingly similar to Complainants’ GEOCITIES mark. Many duplicate the above mentioned domain names in that they include a numeral within Complainants’ mark. The other disputed domain names are all misspellings of the GEOCITIES mark, which nevertheless remain confusingly similar to the mark itself. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding <hewlitpackard.com> identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark).

Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainants’ marks under Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainants established in this proceeding that they have rights to and legitimate interests in the domain names at issue. They urge that Respondent uses each of the disputed domain names in exactly the same fashion, to redirect Internet users to a domain name, which prides itself on attracting Internet users who have mistyped Complainants’ marks and domain name addresses. After being misdirected, these Internet users are presented with a search engine and web directory services that compete directly with Complainants’ services offered under its YAHOO! mark. Using typographical alterations of Complainants’ marks, which merely capitalizes on the goodwill Complainants have built up around their famous marks, for the purpose of competing with Complainants 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 of the domain names under Policy ¶ 4(c)(iii). Without any evidence from Respondent to rebut these findings, the Panel holds that Respondent is unable to avail itself of these two “safe harbor” provisions of the Policy. See Yahoo! Inc. v. Web Master a/k/a MedGo, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum April 25, 2003) (finding that Respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to an Internet directory website that featured numerous pop-up advertisements for commercial goods and sexually explicit websites).

Given the fame of Complainants’ registered YAHOO! and GEOCITIES marks, the Panel is unwilling to find that Respondent is “commonly known by” any of the disputed domain names.  The Panel holds that Policy ¶ 4(c)(ii) does not act to benefit Respondent under these facts. See Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (stating that “[d]ue to the fame of Complainant’s FOOT LOCKER family of marks…and the fact that Respondent’s WHOIS information reveals its name to be “Bruce Gibson,” the Panel infers that Respondent was not “commonly known by” any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”); see also 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).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant alleges that Respondent registered and used the domain names in issue in bad faith.  The Panel finds that Respondent registered and used the disputed domain names in bad faith by setting up a commercial enterprise on the Internet that is dedicated to “typosquatting.” By using them for this purpose, Respondent is using each of the domain names in issue in bad faith. The fact that Respondent chose to register a series of domain names that were confusingly similar to Complainants’ famous YAHOO! and GEOCITIES marks is evidence that the domain names were registered in bad faith. As the UDRP was designed to combat not only cybersquatters but also blatant typosquatters, the Panel finds that Complainant’s met the burden with respect to Policy ¶ 4(a)(iii). 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 Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).

The Panel thus finds that Respondent registered and used the disputed domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

Accordingly, it is Ordered that the <bgeocities.com>, <fgeocities.com>, <geocit5ies.com>, <geocit6ies.com>, <geocit8es.com>, <geocit9es.com>, <geocitfies.com>, <geocitgies.com>, <geociti3s.com>, <geociti4s.com>, <geociti8es.com>, <geociti9es.com>, <geocitids.com>, <geocitie3s.com>, <geocitiee.com>, <geocitiefs.com>, <geocitiesw.com>, <geocitiesx.com>, <geocitiesz.com>, <geocitiex.com>, <geocitifs.com>, <geocitijes.com>, <geocitikes.com>, <geocitioes.com>, <geocitiss.com>, <geocitiues.com>, <geocitjes.com>, <geocitkes.com> and <geocitries.com> domain names be TRANSFERRED from Respondent to Complainant GeoCities, a subsidiary of Yahoo! Inc., and the <yah0oo.com>, <yaho0o.com> and <eaahoo.com> domain names be TRANSFERRED from Respondent to Complainant, Yahoo! Inc.

Hon. Carolyn Marks Johnson, Panelist

Dated: August 15, 2003.

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