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Generic Top Level Domain Name (gTLD) Decisions |
Yahoo! Inc. v. Peter Carrington d/b/a
Party Night, Inc., d/b/a Music Wave, and d/b/a Phayze Inc.
Claim
Number: FA0308000184899
Complainant is Yahoo! Inc., Sunnyvale, CA
(“Complainant”) represented by David M.
Kelly of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. Respondents are Peter Carrington d/b/a
Party Night, Inc. d/b/a Music Wave d/b/a
Phayze, Inc., Amsterdam, NL
(“Respondents”).
REGISTRARS
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <adviceyahoo.com>, <gameyahoo.com>,
<groupyahoo.com>, <lauchyahoo.com>, <luanchyahoo.com>,
<lunchyahoo.com>, <mailyhoo.com>, <messangeryahoo.com>,
<profileyahoo.com>, <sbsyahoo.com>, <scbyahoo.com>,
<urlyahoo.com>, <yahooadvice.com>, <yahoobooter.com>,
<yahoobreifcase.com>, <yahoocarrers.com>, <yahoocat.com>,
<yahoocht.com>, <yahooemoticons.com>, <yahoofootball.com>,
<yahooganes.com>, <yahoogeetings.com>, <yahoogmes.com>,
<yahoogretting.com>, <yahoogrops.com>, <yahoogrups.com>,
<yahoohat.com>, <yahooluanch.com>, <yahoolunch.com>,
<yahoomassanger.com>, <yahoomesanger.com>,
<yahoomesseger.com>, <yahoomessnger.com>,
<yahoommail.com>, <yahooogames.com>,
<yahoopersonels.com>, <yahoopersonnals.com>,
<yahooringtones.com>, <yahooroups.com>,
<yahooshoping.com>, and <yaoogames.com>, registered
with Key-Systems Gmbh, Inc., and
<yahoogreating.com>, registered with Joker.Com, and <byahoo.com>,
<mailyahooo.com>, <mailyhaoo.com>,
<yahoomusic.com>, <fantasyyahoo.com>, and
<yahoohotjob.com>, registered with I.D.R. Registry.
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.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically and by hard copy June 2,
2003.
In its Complaint, Complainant named several domain name registrants as
Respondents and requested transfer of fifty-nine domain names.
On
June 2, 2003, Key-Systems Gmbh, Inc.
confirmed by e-mail to the Forum that the domain names <adviceyahoo.com>,
<gameyahoo.com>, <groupyahoo.com>, <lauchyahoo.com>,
<luanchyahoo.com>, <lunchyahoo.com>, <mailyhoo.com>,
<messangeryahoo.com>, <profileyahoo.com>, <sbsyahoo.com>,
<scbyahoo.com>, <urlyahoo.com>, <yahooadvice.com>,
<yahoobooter.com>, <yahoobreifcase.com>, <yahoocarrers.com>,
<yahoocat.com>, <yahoocht.com>, <yahooemoticons.com>,
<yahoofootball.com>, <yahooganes.com>, <yahoogeetings.com>,
<yahoogmes.com>, <yahoogretting.com>, <yahoogrops.com>,
<yahoogrups.com>, <yahoohat.com>, <yahooluanch.com>,
<yahoolunch.com>, <yahoomassanger.com>, <yahoomesanger.com>,
<yahoomesseger.com>, <yahoomessnger.com>,
<yahoommail.com>, <yahooogames.com>,
<yahoopersonels.com>, <yahoopersonnals.com>,
<yahooringtones.com>, <yahooroups.com>,
<yahooshoping.com>, and <yaoogames.com> are
registered with Key-Systems Gmbh, Inc.,
and that Respondent Peter Carrington d/b/a Party Night Inc. is the current
registrant of the names. Key-Systems
Gmbh, Inc. verified that Respondent is
bound by the Key-Systems Gmbh, 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 3, 2003, I.D.R. Registry confirmed by e-mail to the Forum that the domain
names <byahoo.com>, <mailyahooo.com>,
<mailyhaoo.com>, <yahoomusic.com>,
<fantasyyahoo.com>, and <yahoohotjob.com> are registered
with I.D.R. Registry and that Respondent Phayze Inc. is the current registrant
of the names. I.D.R. Registry verified
that Respondent is bound by the I.D.R. Registry registration agreement and has
thereby agreed to resolve
domain-name disputes brought by third parties in
accordance with the Policy.
Also
on June 3, 2003, Joker.Com confirmed by e-mail to the Forum that the domain
name <yahoogreating.com> is registered with Joker.Com and that
Respondent Music Wave is the current registrant of the name. Joker.Com verified that Respondent is bound
by the Joker.Com registration agreement and has thereby agreed to resolve
domain-name
disputes brought by third parties in accordance with the
Policy. (The status of the other
disputed domain names, which are not here at issue, was also verified by the
respective registrars.)
On
June 16, 2003, the case was formally commenced and the Forum received an
informal e-mailed Response from Respondent John Zuccarini. In Zuccarini’s e-mail, he asserted that he
was not Peter Carrington, Party Night Inc., Phayze Inc., or Music Wave. When asked by the Forum’s case coordinator
whether he wished for his e-mail to be treated as his formal Response,
Zuccarini indicated
that he did not so wish.
On
July 17, 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 all documentation submitted, the Panel determined that the Complainant
submitted insufficient evidence to link all
of the named Respondents as required
by Rule 3(c). Accordingly, the case was
stayed pending re-filing by the Complainant so as to comply with Rule 3(c).
Complainant
submitted this Complaint to the Forum electronically August 14, 2003, naming
Peter Carrington, Party Night Inc., Music
Wave, and Phayze Inc. as Respondents;
the Forum received a hard copy of the Complaint August 15, 2003.
On
August 21, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
September 10, 2003, by which Respondents could file a Response to the
Complaint, was transmitted to Respondents
via e-mail, post and fax, to all
entities and persons listed on Respondents’ registration as technical,
administrative and billing
contacts, and to postmaster@adviceyahoo.com,
postmaster@gameyahoo.com, postmaster@groupyahoo.com, postmaster@lauchyahoo.com,
postmaster@luanchyahoo.com,
postmaster@lunchyahoo.com, postmaster@mailyhoo.com,
postmaster@messangeryahoo.com, postmaster@profileyahoo.com, postmaster@sbsyahoo.com,
postmaster@scbyahoo.com, postmaster@urlyahoo.com, postmaster@yahooadvice.com,
postmaster@yahoobooter.com, postmaster@yahoobreifcase.com,
postmaster@yahoocarrers.com, postmaster@yahoocat.com, postmaster@yahoocht.com,
postmaster@yahooemoticons.com, postmaster@yahoofootball.com,
postmaster@yahooganes.com, postmaster@yahoogeetings.com,
postmaster@yahoogmes.com, postmaster@yahoogretting.com,
postmaster@yahoogrops.com,
postmaster@yahoogrups.com, postmaster@yahoohat.com,
postmaster@yahooluanch.com, postmaster@yahoolunch.com,
postmaster@yahoomassanger.com,
postmaster@yahoomesanger.com,
postmaster@yahoomesseger.com, postmaster@yahoomessnger.com,
postmaster@yahoommail.com, postmaster@yahooogames.com,
postmaster@yahoopersonels.com, postmaster@yahoopersonnals.com,
postmaster@yahooringtones.com, postmaster@yahooroups.com,
postmaster@yahooshoping.com,
postmaster@yaoogames.com,
postmaster@yahoogreating.com, postmaster@byahoo.com, postmaster@mailyahooo.com,
postmaster@mailyhaoo.com,
postmaster@yahoomusic.com,
postmaster@fantasyyahoo.com, and postmaster@yahoohotjob.com by e-mail.
On
August 22, 2003, Respondent Peter Carrington submitted to the Forum an informal
e-mailed Response, asserting essentially that he
was not the registrant of all
of the disputed domain names. Mr.
Carrington’s e-mail was timely, but it did not comply with ICANN Rule 5 or
Forum Supplemental Rule 5. The Forum’s
case coordinator requested verification from Mr. Carrington as to whether he
wished for his e-mail to be considered his
complete and official Response. Mr. Carrington did not respond.
The
Panel has reviewed Mr. Carrington’s submission and finds that it addressed no
substantive defenses recognized by the Policy.
Furthermore, as the Panel will address the identities of the Respondents,
it would not be determinative in this proceeding. Accordingly, the Panel declines to rely on Respondent
Carrington’s non-compliant Response and will adjudicate this matter as if
Respondent
were in default.
Having
received no formal Response from Respondents, 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
September 17, 2003, Complainant timely filed an Additional Submission in
accordance with Forum Supplemental Rule 7.
The Panel has considered Complainant’s additional materials to the
extent detailed below.
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 Respondents.
Complainant
requests that the domain names be transferred from Respondents to Complainant.
A. Complainant makes the following assertions:
1. The names Peter Carrington, Party Night
Inc., Music Wave, and Phayze Inc. are all fictional names—and are aliases for
John Zuccarini. Complainant cites the
following evidence:
§
All of the
Domain Names are being used to direct Internet users to the same competing
website located at the domain name yes-yes-yes.com,
which is owned by the
notorious cybersquatter John Zuccarini.
In addition, all of the Domain Names are being used in conjunction with
the website located at the URL
http://www.worldonlinegames.tv/index.php?user=1282. The user ID located in that URL clearly indicates that one person
is responsible for the registration and use of the Domain Names,
as one person,
“user 1282,” is undoubtedly receiving commissions for the misdirected Internet
traffic. All of the Domain Names are
also being used in conjunction with the website located at http://mp3messenger.com. Finally, the majority of the domain names
are being used to direct Internet users to the pornographic website
“Hanky-Panky-College.”
[Footnote and citations to exhibits omitted.]
§
Peter
Carrington, Party Night, Inc., Music Wave, and Phayze Inc. have a
well-established pattern of using trademark-related domain
names for the same
websites for which the instant Domain Names are being used (namely, the
“Hanky-Panky-College” website and also
John Zuccarini’s yes-yes-yes.com
website). This fact proves that the use
of the Domain Names for the same websites is not a coincidence but is rather
part of a lengthy history
of cybersquatting. [Citations to exhibits omitted.]
§
Further
connecting the entity Music Wave to Peter Carrington/Party Night, Inc. is the
fact that the e-mail address for Music Wave,
6666666@marsattack.com, was found
by the Panel in Cimcities LLC v. Party Night Inc. (WIPO D2002-0613) to
belong to Peter Carrington. [Citation to exhibit omitted.]
§
In addition
to the fact that Peter Carrington/Party Night, Inc. and Phayze Inc. use some of
the Domain Names for the same websites
and popup advertisements, they also use
the same servers. [Citation to exhibit omitted.]
§
All of the
entities (Peter Carrington, Party Night, Inc., Music Wave, and Phayze Inc.)
were sent e-mail communications in NAF File
No. FA0306000161272. The e-mails were not returned as
undeliverable. None of those entities
responded, and none denied Complainant’s previous allegations that the names
Peter Carrington, Party Night,
Inc., Music Wave, and Phayze Inc. were
fictitious and that those entities were one and the same entity.
§
At least
one UDRP Panel has rendered a decision against Phayze Inc., Peter Carrington
and Party Night, Inc., finding that those entities
were one and the same and
also that the individual responsible was John Zuccarini. The respondents in that case did not file a
response, and did not deny that they were one and the same. See Washington Mutual, Inc. v.
Phayze Inc., Peter Carrington and Party Night, Inc. (WIPO D2003-0283). [Citation to exhibit omitted.]
§
There is no
evidence in the numerous UDRP Decisions against Peter Carrington, Party Night,
Inc., Music Wave, and Phayze Inc. that
those entities exist. Peter Carrington, under that name or the
d/b/a Party Night, Inc., has never filed a response in the thirty-four (34)
adverse UDRP
decisions that have been rendered against him, and two Panels
specifically held that the names “Peter Carrington” and “Party Night,
Inc.”
were false. See Autosales
Incorporated v. Peter Carrington dba Party Night Inc. (WIPO D2002-1131)
(“The Federal Express has informed that the Respondent Peter Carrington is
unknown at the address indicated in
the documents. It is ample proof of the fact that the Respondent has concealed its
true identity.”); Big 5 Corp. v. Peter Carrington and Party Night Inc.
(WIPO D2002-0897) (holding the respondent’s provision of a false name and
address was in bad faith and noting that the address in
WHOIS corresponded to a
hotel at which “Peter Carrington” was not a guest). [Citations to exhibits omitted.]
§
Phayze Inc.
has never filed a response in the ten (10) adverse UDRP Decisions that have
been rendered against it. [Citation to exhibit
omitted.]
§
Music Wave
has never filed a response in the five (5) UDRP decisions rendered against
it. The only person who has used the
name “Music Wave” when responding to a UDRP complaint is John Zuccarini, when
he used the name “Music
Wave Investments” in his address. See Disney Enterprises, Inc. v.
John Zuccarini, Cupcake City, and Cupcake Patrol (WIPO D2001-0489); Dow
Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, d/b/a Cupcake
Patrol (WIPO D2001-0302). [Citation to exhibit omitted; footnote converted
to text.]
§
In sum, the
fact that one individual is responsible for the registration and use of the
Domain Names is proved by the following facts:
(1) the Domain Names are being used for the same websites, including an
affiliate website for which clearly only one person is being
paid, (2) the
registration information listed for the Domain Names is interconnected, (3) the
entities Peter Carrington, Party Night,
Inc., Music Wave, and Phayze Inc. have
never come forward to dispute allegations that they are one and the same, and
(4) the entities
Peter Carrington, Party Night, Inc., Music Wave, and Phayze
Inc. are fictitious as none has ever filed a response in the forty-nine
(49)
adverse UDRP decisions rendered against them. Complaint at 2-4.
2. The disputed domain names are confusingly
similar to Complainant’s YAHOO mark.
3. Respondents have no rights or legitimate
interests in the disputed domain names.
4. Respondents registered and used the
disputed domain names in bad faith.
B. Respondents did not submit a formal Response
in this proceeding.
C.
Complainant’s Additional Submission:
Complainant submitted its Additional
Submission “[t]o the extent that the Panel considers [Carrington’s] e-mail as a
Response.” Much of Complainant’s
submission responded to Carrington’s non-compliant e-mail, which was not
considered by this Panel. Because
Carrington’s submission was not considered by this Panel, neither shall
Complainant’s arguments in response be considered.
In addition to replying to Carrington’s
e-mail, Complainant also noted in its Additional Submission:
§
As further
proof that “Peter Carrington” is a fictitious name, in the time after Yahoo!
filed its Complaint in this UDRP proceeding,
two adverse UDRP Decisions against
Peter Carrington have held that “Peter Carrington” is an alias for John
Zuccarini. In both cases, Carrington,
as the named party, received the complaints and had opportunities to file
responses disproving the complainants’
allegations that he is the same person
as John Zuccarini, but he failed to file a response in either case. Specifically, in Microsoft Corporation v.
Party Night, Inc. d/b/a Peter Carrington (WIPO D2003-0501) (August 18,
2003), the complainant alleged that Carrington was an alias for John Zuccarini
because the name “Peter
Carrington” was not listed in the Amsterdam telephone
directory, the Amsterdam address provided by Carrington in the WHOIS database
did not relate to him, and because the disputed domain names resolved to an
I.P. address used by Zuccarini. The
Panel found “it established that ‘Party Night Inc.’ and ‘Peter Carrington’ are
identical to John Zuccarini.” In the
second case, Citigroup, Inc. v. Party Night Inc. aka Peter Carrington
(WIPO D2003-0480) (August 22, 2003), the Panel found that based on the
complainant’s evidence, Carrington was “in all probability”
an alter ego of
Zuccarini. [Footnote and citation to exhibit omitted.] Complaint’s Additional Submission at 3.
Complainant
Yahoo! is a global Internet communications, media, and commerce company that
delivers YAHOO!-branded search, directory,
information, communication, and
shopping services, as well as other online activities and features, to millions
of Internet users
daily.
Complainant
holds a service mark and trademark in YAHOO! and conducts business at the
domain name <yahoo.com>.
Complainant has used its YAHOO! mark since as early as 1994, and
registered it on the Principal Register of the United States Patent
and
Trademark Office by at least 1997.
Complainant
asserts that Peter Carrington, Party Night Inc., Music Wave, and Phayze Inc.
are all fictional names, and that they all
represent the same individual. Based on the limited evidence submitted in
the prior hearing, this Panel declined to find that the named registrants were
aliases
for John Zuccarini.
Despite this
Panel’s order to either withdraw or re-file its Complaint(s) to comply with
ICANN Rule 3(c), Complainant continues to
assert that each of the domain name
registrants named here are properly joined as Respondents, and that each are
aliases of John
Zuccarini. The evidence
supporting Complainant’s assertion is still weak.
Complainant
essentially argues that any domain name which is served by the same
name-server, or which redirects to one of four sites
that consistently display
the same advertisements, must have been registered by the same individual. But Complainant is a sophisticated online
entity. Complainant is well aware that
many domain names redirect to the same websites and that, by doing so, they
will likely display the
same pop-up advertisements. Furthermore, the significance of the registrants’ choice of
name-server is insubstantial. While the
parties did not brief the Panel on this issue, the very nature of the Internet
suggests that parties engaged in a similar
online operation might utilize the
same resources.
Similarly,
Complainant’s evidence regarding the “user=1282” string is of little to no
value. Although Complainant has
suggested that the 1282 string is a tracking code that routes commissions to
Zuccarini, it has provided no
evidence as to the meaning of the “user=1282”
code. And even if Complainant’s
assertion were correct, Complainant’s suggestion that the disputed “Domain
Names are being used in conjunction
with the website located at the [1282] URL”
is misleading, at best. Complaint at 2.
Complainant’s exhibit describes the use of the 1282 URL as a “popup,” a
popup which only displays after the domain names redirected users to
another website. Complainant’s exhibit 3. It makes perfect sense that ads
displayed on another’s
sites would use the same tracking code. It does not follow, however, that the
original domain names were registered by the same individual as the target
websites that are
hosted at distinct and unrelated domain names. Accordingly, this Panel cannot find, based
on the evidence provided, that the domain names were registered by the same
individual.
While the Panel reviewed the decisions presented by
Complainant purportedly supporting a finding that each of the registrants may
be related or may be aliases of John Zuccarini, in light of the default posture
of each of the cases presented, the Panel will not
rely on them to find a
connection that is not supported by Complainant’s evidence.
In the interest of administrative efficiency, and pursuant
to the directive of ICANN Rules 10(c) (requiring that the administrative
proceeding take place with “due expedition”) and 10(e) (requiring the Panel to
resolve consolidation requests), the Panel hereby
dismisses, without prejudice,
Complainant’s claim as to all domain names not registered by Peter
Carrington. Accordingly, relief is DENIED
as to the <byahoo.com>, <mailyahooo.com>,
<mailyhaoo.com>, <yahoomusic.com>,
<fantasyyahoo.com>, <yahoohotjob.com>, and <yahoogreating.com>
domain names.
The remaining forty-one domain names were registered by
Peter Carrington, using as his company name “Party Night Inc;” the link between
Carrington and Party Night is not subject to dispute here. Each of Carrington’s domain names were
registered between March 2002 and March 2003.
Each has been used to redirect Internet users to websites hosted at
<hanky-panky-college.com>, <amaturevideos.nl>,
<mp3-network.com>,
or <yes-yes-yes.com>. The first two websites display pornographic images or direct
users to pornography and the second two websites provide Internet search
services in competition with Complainant’s.
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
Respondents’ failure to submit a compliant 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
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 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.
Respondent
Carrington (hereinafter, “Respondent”) registered and used forty-one domain
names, all bearing a striking resemblance to
Complainant’s YAHOO! mark. As to <adviceyahoo.com>, <gameyahoo.com>,
<groupyahoo.com>, <lauchyahoo.com>, <luanchyahoo.com>,
<lunchyahoo.com>, <messangeryahoo.com>,
<profileyahoo.com>, <sbsyahoo.com>, <scbyahoo.com>,
<urlyahoo.com>, <yahooadvice.com>, <yahoobooter.com>,
<yahoobreifcase.com>, <yahoocarrers.com>, <yahoocat.com>,
<yahoocht.com>, <yahooemoticons.com>, <yahoofootball.com>,
<yahooganes.com>, <yahoogeetings.com>, <yahoogmes.com>,
<yahoogretting.com>, <yahoogrops.com>, <yahoogrups.com>,
<yahoohat.com>, <yahooluanch.com>, <yahoolunch.com>,
<yahoomassanger.com>, <yahoomesanger.com>,
<yahoomesseger.com>, <yahoomessnger.com>,
<yahoommail.com>, <yahoopersonels.com>,
<yahoopersonnals.com>, <yahooringtones.com>,
<yahooroups.com>, and <yahooshoping.com>, each
incorporates Complainant’s entire YAHOO! mark (less the “!” which cannot
currently be reproduced in a domain name) along with
a word or misspelled word
that closely tracks services and features offered by Complainant. For example, Complainant offers games
online, group web pages, a Launch-branded service, instant messaging, an online
briefcase, chat
services, and e-mail, among many others. Respondent’s domain names utilize
Complainant’s mark and mimic domain names that would likely be held by
Complainant. Accordingly, they are
confusingly similar to Complainant’s YAHOO! mark. See Yahoo! Inc. v. Pham, FA 109699 (Nat. Arb. Forum May
21, 2002) (finding <yahoonail.com> to be confusingly similar to the
YAHOO! mark); see also Yahoo! Inc. v. Quan, FA 117877 (Nat. Arb. Forum
Oct. 10, 2002) (finding <bryahoo.com>, <cnyahoo.com> and
<espanolyahoo.com> to be confusingly
similar to Complainant’s YAHOO!
mark).
Similarly, <mailyhoo.com>,
<yahooogames.com>, and <yaoogames.com> are
confusingly similar to Complainant’s YAHOO! mark as each incorporates a
misspelled variation of Complainant’s YAHOO! mark with
a term likely to be used
in association with Complainant’s business.
See State Farm Mut. Auto.
Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000)
(finding that the domain name <statfarm.com> is confusingly similar to
Complainant’s
STATE FARM mark); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15,
2001) (finding that the domain names
<tdwatergouse.com> and <dwaterhouse.com> are virtually identical to
Complainant’s TD WATERHOUSE
name and mark).
Complainant has
satisfied Policy ¶ 4(a)(i) as to the <adviceyahoo.com>, <gameyahoo.com>,
<groupyahoo.com>, <lauchyahoo.com>, <luanchyahoo.com>,
<lunchyahoo.com>, <messangeryahoo.com>,
<profileyahoo.com>, <sbsyahoo.com>, <scbyahoo.com>,
<urlyahoo.com>, <yahooadvice.com>, <yahoobooter.com>,
<yahoobreifcase.com>, <yahoocarrers.com>, <yahoocat.com>,
<yahoocht.com>, <yahooemoticons.com>, <yahoofootball.com>,
<yahooganes.com>, <yahoogeetings.com>, <yahoogmes.com>,
<yahoogretting.com>, <yahoogrops.com>, <yahoogrups.com>,
<yahoohat.com>, <yahooluanch.com>, <yahoolunch.com>,
<yahoomassanger.com>, <yahoomesanger.com>,
<yahoomesseger.com>, <yahoomessnger.com>,
<yahoommail.com>, <yahooogames.com>,
<yahoopersonels.com>, <yahoopersonnals.com>,
<yahooringtones.com>, <yahooroups.com>, <yahooshoping.com>,
<mailyhoo.com>, and <yaoogames.com> domain
names.
Respondent has
used each of the forty-one domain names here considered to misleadingly direct
Internet users seeking Complainant’s
websites to pornographic websites and
competing search engine websites. Such
use does not constitute a bona fide offering of goods or services or a
legitimate noncommercial or fair use. See
Wells Fargo & Co. v. Party Night Inc. & Carrington, FA 144647 (Nat.
Arb. Forum Mar. 18, 2003) (holding that Respondent’s
use of confusingly similar derivatives of Complainant’s WELLS FARGO mark to
divert Internet users to websites featuring
pop-up advertisements was not a
bona fide offering of goods or services); see also Geoffrey,
Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that
Respondent’s use of the disputed domain name, a simple misspelling of
Complainant’s
mark, to divert Internet users to a website that featured pop-up
advertisements and an Internet directory, was neither a bona fide
offering of
goods or services nor a legitimate noncommercial or fair use of the domain
name); see also 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 McClatchy Mgmt. Serv., Inc. v. Carrington a/k/a Party Night Inc., FA
155902 (Nat. Arb. Forum June 2, 2003) (holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features
pornographic material, had been “consistently held” to be neither
a bona fide
offering of goods or services . . . nor a legitimate noncommercial or fair
use); see also 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).
Furthermore,
given Respondent’s pattern of registering confusingly similar domain names, it
is apparent that Respondent had no intention
to put the domain names to a
legitimate use. See Nat’l Ass’n
of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a means of redirecting
consumers against their will to another site, does not
qualify as a bona fide
offering of goods or services, whatever may be the goods or services offered at
that site”).
Accordingly,
Complainant has established that Respondent lacks rights and interests in the
forty-one domain names at issue and the
Panel finds that Policy ¶ 4(a)(ii) has
been satisfied as to the <adviceyahoo.com>, <gameyahoo.com>,
<groupyahoo.com>, <lauchyahoo.com>, <luanchyahoo.com>,
<lunchyahoo.com>, <mailyhoo.com>, <messangeryahoo.com>,
<profileyahoo.com>, <sbsyahoo.com>, <scbyahoo.com>,
<urlyahoo.com>, <yahooadvice.com>, <yahoobooter.com>,
<yahoobreifcase.com>, <yahoocarrers.com>, <yahoocat.com>,
<yahoocht.com>, <yahooemoticons.com>, <yahoofootball.com>,
<yahooganes.com>, <yahoogeetings.com>, <yahoogmes.com>,
<yahoogretting.com>, <yahoogrops.com>, <yahoogrups.com>,
<yahoohat.com>, <yahooluanch.com>, <yahoolunch.com>,
<yahoomassanger.com>, <yahoomesanger.com>,
<yahoomesseger.com>, <yahoomessnger.com>,
<yahoommail.com>, <yahooogames.com>,
<yahoopersonels.com>, <yahoopersonnals.com>,
<yahooringtones.com>, <yahooroups.com>,
<yahooshoping.com>, and <yaoogames.com> names.
Respondent’s
registration and use of each of the forty-one remaining domain names
demonstrates a pattern of typosquatting that was
calculated specifically to
prey upon Internet user error to earn Respondent undeserved click-through
fees. In so doing, Respondent
misappropriated Complainant’s goodwill for its own opportunistic gain. Such behavior demonstrates bad faith
registration and use under the Policy. 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 RE/MAX Int’l, Inc.
v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (inferring that
Respondent’s registration of the <wwwremax.com> domain name,
incorporating
Complainant’s entire mark, was done with actual notice of
Complainant’s rights in the mark prior to registering the infringing domain
name, evidencing bad faith).
By redirecting
users to pornographic and competing websites, Respondent earned profits in the
form of referral fees, and this type
of use demonstrates bad faith as described
in Policy ¶ 4(b)(iv). 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 Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding
that Respondent’s use of Complainant’s mark to post pornographic photographs
and to publicize
hyperlinks to additional pornographic websites evidenced bad
faith use and registration of the domain name).
Furthermore,
Respondent’s registration and use of the <adviceyahoo.com>, <gameyahoo.com>,
<groupyahoo.com>, <profileyahoo.com>, <yahooringtones.com>,
<yahooemoticons.com>, <yahooadvice.com>, and <yahoofootball.com>
domain names demonstrates an intentional attempt to deprive Complainant of the
opportunity to register domain names reflecting its
mark, as outlined in Policy
¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247
(Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of
several infringing domain names satisfies
the burden imposed by the Policy ¶
4(b)(ii)); see also YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad
faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two
domain
names incorporating Complainant's YAHOO! mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied
as to the <adviceyahoo.com>, <gameyahoo.com>, <groupyahoo.com>,
<lauchyahoo.com>, <luanchyahoo.com>, <lunchyahoo.com>,
<mailyhoo.com>, <messangeryahoo.com>, <profileyahoo.com>,
<sbsyahoo.com>, <scbyahoo.com>, <urlyahoo.com>,
<yahooadvice.com>, <yahoobooter.com>, <yahoobreifcase.com>,
<yahoocarrers.com>, <yahoocat.com>, <yahoocht.com>,
<yahooemoticons.com>, <yahoofootball.com>, <yahooganes.com>,
<yahoogeetings.com>, <yahoogmes.com>, <yahoogretting.com>,
<yahoogrops.com>, <yahoogrups.com>, <yahoohat.com>,
<yahooluanch.com>, <yahoolunch.com>, <yahoomassanger.com>,
<yahoomesanger.com>, <yahoomesseger.com>,
<yahoomessnger.com>, <yahoommail.com>,
<yahooogames.com>, <yahoopersonels.com>,
<yahoopersonnals.com>, <yahooringtones.com>,
<yahooroups.com>, <yahooshoping.com>, and <yaoogames.com>
domain names.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED as to the <adviceyahoo.com>,
<gameyahoo.com>, <groupyahoo.com>, <lauchyahoo.com>,
<luanchyahoo.com>, <lunchyahoo.com>, <mailyhoo.com>,
<messangeryahoo.com>, <profileyahoo.com>, <sbsyahoo.com>,
<scbyahoo.com>, <urlyahoo.com>, <yahooadvice.com>,
<yahoobooter.com>, <yahoobreifcase.com>, <yahoocarrers.com>,
<yahoocat.com>, <yahoocht.com>, <yahooemoticons.com>,
<yahoofootball.com>, <yahooganes.com>, <yahoogeetings.com>,
<yahoogmes.com>, <yahoogretting.com>, <yahoogrops.com>,
<yahoogrups.com>, <yahoohat.com>, <yahooluanch.com>,
<yahoolunch.com>, <yahoomassanger.com>, <yahoomesanger.com>,
<yahoomesseger.com>, <yahoomessnger.com>,
<yahoommail.com>, <yahooogames.com>,
<yahoopersonels.com>, <yahoopersonnals.com>,
<yahooringtones.com>, <yahooroups.com>,
<yahooshoping.com>, and <yaoogames.com> domain
names.
Accordingly, it
is Ordered that the <adviceyahoo.com>, <gameyahoo.com>,
<groupyahoo.com>, <lauchyahoo.com>, <luanchyahoo.com>,
<lunchyahoo.com>, <mailyhoo.com>, <messangeryahoo.com>,
<profileyahoo.com>, <sbsyahoo.com>, <scbyahoo.com>,
<urlyahoo.com>, <yahooadvice.com>, <yahoobooter.com>,
<yahoobreifcase.com>, <yahoocarrers.com>, <yahoocat.com>,
<yahoocht.com>, <yahooemoticons.com>, <yahoofootball.com>,
<yahooganes.com>, <yahoogeetings.com>, <yahoogmes.com>,
<yahoogretting.com>, <yahoogrops.com>, <yahoogrups.com>,
<yahoohat.com>, <yahooluanch.com>, <yahoolunch.com>,
<yahoomassanger.com>, <yahoomesanger.com>,
<yahoomesseger.com>, <yahoomessnger.com>,
<yahoommail.com>, <yahooogames.com>,
<yahoopersonels.com>, <yahoopersonnals.com>,
<yahooringtones.com>, <yahooroups.com>,
<yahooshoping.com>, and <yaoogames.com> domain
names be TRANSFERRED from Respondent Carrington d/b/a Party Night Inc.
to Complainant.
As to the <byahoo.com>,
<mailyahooo.com>, <mailyhaoo.com>,
<yahoomusic.com>, <fantasyyahoo.com>, <yahoohotjob.com>,
and <yahoogreating.com> domain names, relief is DENIED and
Complainant’s claim is DISMISSED WITHOUT PREJUDICE.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 20, 2003.
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