DECISION

Yahoo! Inc. v. Denis Jalbert

Claim Number:  FA0307000166020

PARTIES

Complainant is Yahoo! Inc., Sunnyvale, CA, USA (“Complainant”) represented by David M. Kelly, of Finnegan, Henderson, Farabow, Garrett & Dunner L.L.P.  Respondent is Denis Jalbert, Pierrefonds Quebec, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <yahhoocam.com>, <yahhoocams.com>, <yahhoowebcam.com>, and <yahhoowebcams.com>, registered with Enom, 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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant 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 17, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain names <yahhoocam.com>, <yahhoocams.com>, <yahhoowebcam.com>, and <yahhoowebcams.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 ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On July 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 6, 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@yahhoocam.com, postmaster@yahhoocams.com, postmaster@yahhoowebcam.com, and postmaster@yahhoowebcams.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 14, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <yahhoocam.com>, <yahhoocams.com>, <yahhoowebcam.com>, and <yahhoowebcams.com> domain names are confusingly similar to Complainant’s YAHOO! mark.

2. Respondent does not have any rights or legitimate interests in the <yahhoocam.com>, <yahhoocams.com>, <yahhoowebcam.com>, and <yahhoowebcams.com> domain names.

3. Respondent registered and used the <yahhoocam.com>, <yahhoocams.com>, <yahhoowebcam.com>, and <yahhoowebcams.com> domain names in bad faith.

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

FINDINGS

Complainant 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.  Complainant owns the service mark and trademark YAHOO! and the domain name <yahoo.com>.  Complainant has used the YAHOO! mark in commerce since 1994.

Also, Complainant holds several registrations and filings for the YAHOO! mark in the U.S. and worldwide.  Complainant holds several registrations for the YAHOO! mark with the U.S. Patent and Trademark Office (“USPTO”), including Reg. Nos. 2,273,128 (registered August 24, 1999) and 2,243,909 (registered May 4, 1999).  In addition, Complainant holds several registrations in Canada, where Respondent is located, including Reg. Nos. TMA536693 (issued November 6, 2000) and TMA55622 (issued January 21, 2002).

Complainant’s <yahoo.com> website is one of the leading websites in the world and had more than 230 million users in March 2003.  Complainant registered the <yahoo.com> domain name on January 18, 1995. 

Respondent registered the disputed domain names on August 28, 2002.  Respondent uses the <yahhoocam.com>, <yahhoocams.com>, and <yahhoowebcams.com> domain names to direct Internet users to an adult oriented website.  When Internet users attempt to exit this website, an additional window opens to a second adult oriented website.  The <yahhoowebcam.com> domain name resolves to a competing web directory 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."

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 and/or Confusingly Similar

Complainant has established rights in the YAHOO! mark by registering the mark with the USPTO, other recognized registration authorities, and through use of the mark in commerce since 1994. 

Respondent’s disputed domain names are confusingly similar to Complainant’s mark because the disputed domain names merely misspell the YAHOO! mark by including an additional “h” and adding the generic words “cam(s)” and “webcam(s).”  Respondent’s misspelling of Complainant’s mark and the addition of the generic words is insufficient to avoid a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).  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 Yahoo!, Inc. 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).

Furthermore, the disputed domain names omit the exclamation point from Complainant’s YAHOO! mark, which is insufficient to distinguish the domain names from Complainant’s 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 Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark).

In addition, the “yahhoo” in each disputed domain name is phonetically the same as Complainant’s YAHOO! mark, which is evidence of confusing similarity pursuant to Policy ¶ 4(a)(i).  See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also YAHOO!, Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to Complainant’s YAHOO mark).

The Panel concludes that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Due to Respondent’s failure to contest the allegations of the Complaint, the Panel presumes that Respondent lacks rights or legitimate interests in the disputed domain names.  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); 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).

Furthermore, Respondent was not authorized or licensed to use or register domain names that incorporate Complainant’s YAHOO! mark.  The WHOIS information for the disputed domain names lists Respondent, Denis Jalbert as the registrant; however, the information fails to establish that Respondent is an “individual, business, or other organization” commonly known by the disputed domain names or the YAHOO! mark.  Therefore, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent, Inc. v. 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 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).

In addition, Respondent’s <yahhoocam.com>, <yahhoocams.com>, and <yahhoowebcams.com> domain names resolve to an adult oriented website.  Resolving the disputed domain names to an adult oriented website is evidence that Respondent’s use of the disputed domain names is neither a bona fide offering of goods or services pursuant to Policy ¶ 4 (c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  Therefore, Respondent lacks rights or legitimate interests in the disputed domain names.  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use), see also Am. Eagle Outfitters, Inc.  v. Zuccarini a/k/a Country Walk, FA 155178 (Nat. Arb. Forum June 10, 2003) (finding that Respondent’s use of a domain name that was a misspelling of Complainant’s mark to redirect Internet users to an adult-oriented website was not a bona fide offering of goods or services).

Also, the Panel concludes that Respondent’s use of the <yahhoowebcam.com> domain name was an attempt to disrupt Complainant’s business.  The disputed domain name resolved to a web directory website, similar to a service that Complainant provides, and therefore is in competition with Complainant.  Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  Therefore, Respondent lacks rights or legitimate interests in the <yahhoowebcam.com> domain name.  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 Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website).

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

Registration and Use in Bad Faith

It can be inferred that Respondent had either actual or constructive knowledge of Complainant’s YAHOO! mark because the mark is registered with recognized authorities within the U.S. and Canada, has been used in commerce since 1994, and Respondent registered several domain names that were confusingly similar to the YAHOO! mark.  Registration of a domain name, despite knowledge of Complainant’s rights in the mark, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § .

In addition, Respondent’s use of the <yahhoocam.com>, <yahhoocams.com>, and <yahhoowebcams.com> domain names indicates bad faith pursuant to Policy ¶ 4(a)(iii) because the disputed domain names resolve to an adult oriented website.  See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (stating that “whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”).

Furthermore, Respondent’s use of the <yahhoowebcam.com> domain name was an attempt to disrupt Complainant’s business because the disputed domain name resolves to a website that competes with Complainant.  Therefore, Respondent’s use of the disputed domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii).  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 Gen. Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web site).

The Panel concludes 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 <yahhoocam.com>, <yahhoocams.com>, <yahhoowebcam.com>, and <yahhoowebcams.com> domain names be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  August 26, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/874.html