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Yahoo! Inc. v. Gianluca Deiana d/b/a Ayhooo Inc [2004] GENDND 1415 (22 November 2004)


National Arbitration Forum

DECISION

Yahoo! Inc. v. Gianluca Deiana d/b/a Ayhooo Inc

Claim Number: FA0410000339579

PARTIES

Complainant is Yahoo! Inc. (“Complainant”), represented by David Kelly, of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, 1300 I Street NW, Washington, DC 20005.  Respondent is Gianluca Deiana d/b/a Ayhooo Inc (“Respondent”), 106 West 28 Street, New York, NY 10001.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>, registered with Go Daddy Software.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Judge Irving H. Perluss (Retired) is the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 7, 2004; the National Arbitration Forum received a hard copy of the Complaint on October 8, 2004.

On October 7, 2004, Go Daddy Software confirmed by e-mail to the National Arbitration Forum that the domain names <ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com> are registered with Go Daddy Software and that the Respondent is the current registrant of the name.  Go Daddy Software has verified that Respondent is bound by the Go Daddy Software 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 October 8, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 28, 2004 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@ayhooo.com, postmaster@ayhooo.net, postmaster@ayhooo.org, postmaster@ayhoooindia.com, postmaster@ayhoookids.com, postmaster@ayhooorealty.com, postmaster@ayhooorealty.net, postmaster@ayhoooshopping.com, postmaster@ayhooo-uk.com, and postmaster@searchayhooo.com by e-mail.

A timely Response was received and determined to be complete on October 28, 2004.

An additional submission by Complainant was timely received on November 3, 2004.

On November 9, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

            1.            Complainant, Yahoo!, 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 hundreds of millions of Internet Users.  Yahoo! has continuously used the mark YAHOO! in a stylized logo format since at least as early as January 1996.

            2.            Complainant is the owner of the service mark and trademark YAHOO!, as well as the trade name YAHOO! and the domain name <yahoo.com>.  In use since 1994, the YAHOO! mark has become one of the most recognized brands in the world, with a value of nearly US $3.9 billion according to Interbrand.

            3.            Complainant offers a wide variety of services using the YAHOO! mark together with a descriptive name of its services.  These services include YAHOO! Search, YAHOO! Shopping, YAHOO! Real Estate, YAHOO! Messenger, YAHOO! Groups, YAHOO! Auctions, YAHOO! Maps, YAHOO! Chat, YAHOO! Personals, YAHOO! Games, YAHOO! Sports, YAHOO! Movies, YAHOO! Weather, YAHOO! Address Book, YAHOO! Bill Pay, and YAHOO! Store.

            4.            In addition to the main YAHOO! site located at <yahoo.com>, Complainant operates numerous sites specific to particular countries or regions around the world including for example, Yahoo! Italia, Yahoo! UK & Ireland, and Yahoo! India.  The Yahoo! Italia website, targeted to Internet users in Italy where Respondent was previously located, was launched on April 22, 1998, and has been available since that time.

            5.            Fifty-two UDRP decisions involving the YAHOO! mark have been issued in Yahoo!’s favor, and the Panelists in at least twenty-four of these cases expressly found the YAHOO! mark to be famous.

            6.            Complainant has numerous registrations of its mark on the Principal Register of the United State Patent and Trademark Office, including registration numbers 2,040,222 (issued Feb. 25, 1997 for directory and search engine services), 2,564,976 (issued Apr. 30, 2002 for electronic commerce services), 2,187,292 (issued Sept. 8, 1998 for an online buyer’s guide to the goods and services of others), 2,403,227 (issued Nov. 14, 2000 for online retail and mail order services in the field of general merchandise), and 2,040,691 (stylized, issued Feb.25, 1997 for director and search engine services).  Complainant also has registered the YAHOO! mark with other legitimate governmental authorities such as the European Community.

            7.            Complainant’s trademark rights in the mark YAHOO! and variations thereof, based on its trademark filings and on its common law rights acquired through the use of those marks, long predate Respondent’s registration of the domain names.

            8.            Respondent has used and is currently using the domain name <ayhooo.com> for directly competing search engine and web directory websites in Italian and English languages under the name “Ayhooo.”

            9.            Respondent currently uses the domain name <ayhooo.net> to redirect Internet users to its <ayhooo.com> website.  Respondent has previously used the domain name <ayhooo.net> for directly competing search engine and web directory websites in Italian and English under the names Ayhooo! Italia and Ayhooo.

            10.            Respondent has used the domain name <searchayhooo.com> for its directly competing search engine and web directory website, and currently uses it to display a “coming back soon” notice.

            11.            Respondent has used the domain name <ayhoookids.com> for its directly competing search engine and web directory websites under the names Ayhooo Kids!!! and Ayhooo Kids.

            12.            Respondent has used the domain name <ayhoooshopping.com> for its directly competing search engine and web directory websites under the name “Ayhooo.”  Respondent’s <ayhoooshopping.com> website currently displays the “Ayhooo” logo and a “coming back soon” notice.

            13.            Respondent has used the domain name <ayhooo-uk.com> for its website offering directly competing search engine services.

            14.            Respondent uses the domain name <ayhoooindia.com> for a GoDaddy.com registrar placeholder page advertising GoDaddy.com’s registration services.

            15.            Respondent does not appear to be currently using the domain names <ayhoookids.com>, <ayhoooshopping.com>, and <ayhooo-uk.com> for websites, and does not appear to have used the domain names <ayhooo.org>, <ayhooorealty.com>, and <ayhooorealty.net> for websites.

            16.            Each of the disputed domain names is confusingly similar to Complainant’s famous YAHOO! mark because each domain name is comprised of the following: a misspelling (“ayhooo”) of the YAHOOO! mark; a misspelling (“ayhooo”) of the YAHOO! mark combined with a generic term (“kids,” “realty,” “shopping” or “search); or a misspelling (“ayhooo”) of the YAHOO! mark combined with a geographic term (“India” or “UK”).  The term “ayhooo” is virtually identical to Complainant’s YAHOO! mark.  Respondent simply reserved the letters “Y” and “A” in the YAHOO! mark and added an extra “o” at the end.

            17.            Further, the disputed domain names <ayhooindia.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com> are virtually identical to the names of some of Complainant’s websites, namely, YAHOO!

            18.            Respondent’s registration and use of the disputed domain names trade on Complainant’s goodwill and infringe Complainant’s rights in its YAHOO! mark, Respondent’s use of the domain name to direct Internet traffic to a directly competing website cannot constitute a bona fide use of the disputed domain names pursuant to Policy ¶ 4(c)(i).

            19.            Respondent is not and has not been commonly known by the disputed domain names prior to its registration of the domain names.  Respondent’s use of the name “Ayhooo” in no way demonstrates any legitimate interest of Respondent in the domain names.  Respondent cannot justify its misappropriation of Yahoo!’s famous YAHOO! trademark in a domain name simply by also using the domain name as part of a trade name or business name.

            20.            Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names.  Complainant argues that Respondent’s registration of a total of ten domain names that are subject to this dispute constitutes a pattern of registering the trademark-related domain names in bad faith.

            21.            Respondent is in violation of Policy ¶ 4(b)(iii) because Respondent is unfairly competing with Yahoo! and disrupting Yahoo!’s business by using and/or intending to use the disputed domain names for directly competing, commercial websites.

            22.            Respondent is in violation of Policy ¶ 4(b)(iv) because Respondent uses, has used, and/or intends to use the disputed domain names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Yahoo! and its famous YAHOO! mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s directly competing, commercial websites.

            23.            Respondent’s passive holding of the unused disputed domain names is evidence of bad faith registration and use because those domain names are confusingly similar to the famous YAHOO! mark, and because there is no foreseeable use of the domain names that could be done in good faith.

            24.            Because of the fame of Complainant’s YAHOO! mark, and the fact that Respondent has used some of the disputed domain names for directly competing websites, it is apparent that Respondent had notice of Complainant’s rights in the YAHOO! mark prior to registering the domain names.

B. Respondent

            1.            The disputed domain names are not confusingly similar to Complainant’s YAHOO! mark because the domain names do not incorporate Complainant’s mark.  Rather, the domain names contain the name “Ayhooo,” which means “let’s go” in Sardinian and is a common phrase in the country of Sardinia, the country of origin for the owner of Respondent’s company.  In addition, many of the names are further distinguished from Complainant’s mark by adding other terms to the “Ayhooo” name.

            2.            Respondent is using the disputed domain names in connection with its Internet directory.  Such use is a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

            3.            Respondent’s intent in registering and using the disputed domain names was to create an Internet directory and not to create more opportunities for people to be tricked into being directed to Respondent’s website.  Thus, there was no bad faith registration and use.

            4.            Respondent holds the registration for the AYHOO mark (Reg. No. CA2001C000124) filed in Italy in 2001.

            5.            The combinations of a logo with a general category name are not the exclusive property of Complainant.  Many directories of this type use these same combinations.  The authority that Complainant relies on clearly allows the use of Yahoo.  See Yahoo! Inc. v. Peter Carrington, FA 184899 (Nat. Arb. Forum Oct. 20, 2003).

C. Additional Submission by Complainant

            1.            Respondent incorrectly claims to hold the Italian Trademark (Reg. No. CA2001C000124) for the AYHOOO mark and design.  Respondent holds a pending Italian application.  Respondent’s trademark application does not establish any legitimate interest in the disputed domain names.

            2.            Complainant’s rights in the YAHOO! mark are valid and in full force and effect in both Italy and the United States.  Yahoo!’s rights in the YAHOO! mark, based on Yahoo!’s trademark registration in the European Community (which covers Italy), the United States, and numerous other countries, and on its use of YAHOO! as a trademark and trade name, were established years before Respondent began registering the domain names beginning in May 2000.

            3.            Confusing similarity is demonstrated by comparing the domain name to the trademark at issue in appearance, pronunciation, or meaning and that is the case here.

            4.            Each of the disputed domain names is similar in appearance to the YAHOO! mark because “ayhooo” is an obvious misspelling of the YAHOO! mark.  Moreover, the domain names are similar in pronunciation to the YAHOO! mark, because the first syllable “ay” is merely a reversal of “ya” and the second syllable “hooo” and “hoo” are identical in pronunciation and appearance.  Finally, the overall impression left by the term “ayhooo” for a search engine is that it is merely a slight variation of Complainant’s YAHOO! mark. 

            5.            Respondent asserts that he selected the term “ayhooo” for his domain names because it “means ‘let’s go’ in Sardinian” and the spelling Ayhooo was chosen because it was deemed closest to the word’s pronunciation for English speakers.  Respondent’s website also claims that “ayhooo” means “‘AIO’ (roughly translated an exuberant LET’S GO!)”  Respondent’s explanation for his registration of the domain names, however, does not have credibility.  Respondent does not use the term “AIO” or the term “Let’s go” to identify his websites, although he could have registered the AIO-formative domain names instead of AYHOOO-formative domain names.  In addition, Respondent’s use of the domain names has been primarily for websites in English and targeted toward English speakers who would not recognize “ayhooo” as a variant spelling of the Sardinian word AIO.

            6.            Respondent’s assertion that he was not intending to “trick” or confuse Internet uses does not demonstrate any rights in the domain names.

            7.            Respondent’s use and/or intended use of the domain names for competing Internet search and web directory services and other Internet portal-related services is not a bona fide use under the UDRP.

            8.            Complainant’s YAHOO! mark has become famous in Italy and globally for Internet search services and web directory services before Respondent decided to offer Internet search services, web directory services, and other competing services, and Respondent has done nothing to refute the fact.  Respondent’s contention that it registered and used the domain names not because of the fame of Yahoo!’s mark YAHOO! but because of the Sardinian term “AIO” has absolutely credibility.

            9.            Respondent lists a number of websites that allegedly use domain names or logos similar to the YAHOO! logo.  The existence of other infringers, however, does not excuse Respondent’s bad faith use and registration of the domain names.

FINDINGS AND DETERMINATIONS

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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

It is found and determined that the disputed domain names <ayhooo.com>, <ayhooo.net>, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-ik.com>, and <searchayhooo.com> are confusingly similar to Complainant’s YAHOO! mark because each domain name incorporates a misspelled version of Complainant’s mark, specifically “ayhooo,” and in some cases simply adds a geographic or generic term to the mark, such as “India,” “kids,” “realty,” “shopping,” “uk,” and “search.”

The decision in Yahoo! Inc. and HotJobs.com Ltd. v. Yomtobian FA 154591 (Nat. Arb. Forum May 30, 2003), inter alia, is directly on point, wherein the domain name <ahoo.com> was ordered to be transferred to Complainant.  See also Yahoo! Inc. v. Jalbert, FA 166020 (Nat. Arb. Forum Aug. 26, 2003).

It further is found and determined that the addition of generic terms to a common misspelling of Complainant’s mark is sufficient to establish that such domain names are confusingly similar to Complainant’s mark.  See Yahoo! Inc. v. Vorot, FA 159547 (Nat. Arb. Forum July 16, 2003) (finding the domain names <yhoomail.com>, <yhoochat.com>, and <yahhogames.com>, among others, confusingly similar to Complainant’s YAHOO! mark); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding the domain name <yasexhoo.com> confusingly similar to Complainant’s YAHOO! mark).

The contention of Respondent that the selection of the term “ayhooo” for the disputed domain names was chosen because it “means ‘let’s go’ in Sardinian” and “the spelling Ayhooo was chosen because it was deemed closest to the word’s pronunciation for English speakers” is without merit as is Respondent’s website where it is stated “‘AIO’ (roughly translated to an exuberant LET’S GO!).”

Thus, the Panel in Yahoo! Inc. v. Kirovsky D2000-0428 (WIPO Aug. 9, 2000) rejected a similar contention that the disputed domain names at issue were based on a foreign language word.  Respondent there alleged that he registered the domain names <yahoofree.com>, <yahoofree.net>, <yahoochat.net>, and <yahooemail.net> based on his claim that the term “YAHOO” means “beast” in Spanish.  The Panel rejected the Respondent’s claim as unjustifiably coincidental and further noted “it is inconsistent for the [r]espondent to rely on an alleged Spanish meaning for the word YAHOO when the domain names registered by him also just happen to prominently feature foreign English  words such as ‘EMAIL’ and ‘CHAT’ which, in turn, constitute services for which the complainant is known amongst internet users.”  See also Yahoo! Inc. et al. v. Yomtobian (NAF FA 154591) (holding Respondent’s registration of the domain name ahoo.com among others and use of the disputed domain names for directly competing websites constituted bad faith despite Respondent’s claim that “ahoo” is the Persian word for “deer”); Yahoo! Inc. v. Wooyoun Cho, FA 146934 (Nat. Arb. Forum Apr. 16, 2003) (holding Respondent’s registration and use of the domain name <yahooplus.com> for a directly competing website in Korean constituted bad faith despite Respondent’s claim that he registered the domain name because of the dictionary meaning of the term “yah-hu”).

The decision in Yahoo! Inc. v. Carrington, FA 184899 (Nat. Arb. Forum Oct. 20, 2003), cited by Respondent is not helpful to him.  This is because, the Panelist after finding forty-one domain names confusingly similar, dismissed, without prejudice, the Complaint with respect to seven names because the names were not registered by the Respondent therein.

The Panelist said the following:

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. 

Yahoo! Inc. v. Carrington, FA 184899, at 7 (Nat. Arb. Forum Oct. 20, 2003).

Complainant has established the required first prong of the Policy.

Rights or Legitimate Interests

It is found and determined that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  This is because Respondent registered and used the domain names to trade on the goodwill that Complainant has developed in its famous YAHOO! mark.  See U.S. Fran. Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003).

It is also found and determined that Respondent is not, and has not, been commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”); see also Comagnie 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).

Complainant has established the required second prong of the Policy.

Registration and Use in Bad Faith

It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names.  The registration of the ten disputed domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.  See 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); see also Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that, where Respondent registered many domain names, held them hostage, and prevented the owners from using them, the behavior constituted bad faith).

It is also found and determined that Respondent is in violation of Policy ¶ 4(b)(iii) because Respondent is unfairly competing with Yahoo! and disrupting Yahoo!’s business by using and/or intending to use the domain names for directly competing, commercial websites.  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 Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant’s mark to divert Internet users to a competitor’s website.  It is a reasonable inference that Respondent’s purpose of registration and use was to either disrupt or create confusion for Complainant’s business in bad faith pursuant to Policy ¶¶ 4(b)(iii) & (iv).”).

Further, it is found and determined that Respondent is in violation of Policy ¶ 4(b)(iv) because Respondent uses, has used, and/or intends to use the domain names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Yahoo! and its famous YAHOO! mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s directly competing, commercial websites.  See Perot Sys. Corp. v. Pero.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (finding that Internet users would be confused as to the source of Respondent’s website that offered links to third party websites in competition with Complainant because users “are likely to use search engines to find Complainant’s website,” and would presumably be unaware of the actual source of Respondent’s website); see also Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Nat. Arb. Forum Dec. 4, 2003) (finding that Respondent created a likelihood of confusion as to the source of its website because it registered a domain name confusingly similar to Complainant’s mark and used it to redirect Internet traffic to a completely unrelated website).

Finally, it is found and determined that because of the fame of Complainant’s YAHOO! mark, and because Respondent has used some of the disputed domain names for directly competing websites, it is obvious that Respondent had actual notice of Complainant’s rights in the YAHOO! mark prior to registering the disputed domain names.  Thus, it is found and determined that Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  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 Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Entrepreneur Media, Inc. v. Smith[2002] USCA9 115; , 279 F.3d 1135, 1148 (9th Cir. 2002) (“Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.”).

Respondent’s argument that there are numerous unchallenged domain names similar to Complainant’s names is without merit.

In LowerMyBills, Inc. v. Lox Invs., FA 323756 (Nat. Arb. Forum Oct. 22, 2004), the Panel said the following:

Respondent’s argument that he is being singled out because there are many similar domain names that are available is without merit.  It is not relevant.  See MGM-Pathe Communications v. Pink Panther Patrol (S.D.N.Y. 1991) 774 F.Supp. 869, 873 (‘. . .the Patrol contends that another registered trademark for the words “pink panther” exists, and at least 15 other establishments, including a bar and a liquor store, use the Pink Panther name.  These arguments are unavailing. . . . The fact that there are other establishments that use the name Pink Panther does not contradict the harm suffered by MGM from the Patrol’s use of the mark.’).

LowerMyBills, Inc. v. Lox Invs., FA 323756, at 7 (Nat. Arb. Forum Oct. 22, 2004).

Complainant has established the third required prong of the Policy.

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 <ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com> domain names be TRANSFERRED from Respondent to Complainant.

JUDGE IRVING H. PERLUSS (Retired), Panelist
Dated:  November 22, 2004


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