DECISION

Yahoo! Inc. v. Chinayahoo.com Kevin Kevin

Claim Number:  FA0402000236538

PARTIES

Complainant is Yahoo! Inc. (“Complainant”) represented by David M. Kelly, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 1300 I Street, NW, Washington, DC 20005.  Respondent is China Yahoo Kevin Kevin (“Respondent”), South 91 University Pl. 4, Stillwater, OK 74075.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chinayahoo.com>, registered with Register.com.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 9, 2004; the Forum received a hard copy of the Complaint on February 10, 2004.

On February 10, 2004, Register.com confirmed by e-mail to the Forum that the domain name <chinayahoo.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 February 16, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 8, 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@chinayahoo.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 March 19, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <chinayahoo.com> domain name is confusingly similar to Complainant’s YAHOO! mark.

2. Respondent does not have any rights or legitimate interests in the <chinayahoo.com> domain name.

3. Respondent registered and used the <chinayahoo.com> domain name in bad faith.

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

FINDINGS

Complainant, Yahoo! Inc., is a leading global Internet communications, media, and commerce company that provides a network of searching, directory, information, communication, and shopping services, as well as a variety of other activities and features to millions of Internet users worldwide.

Complainant holds numerous trademark registrations with the United States Patent and Trademark Office for the YAHOO! mark (Reg. No. 2,040,691, issued February 25, 1997; Reg. No. 2,040,691, issued February 25, 1997; Reg. No. 2,076,457, issued July 1, 1997; Reg. No. 2,273,128, issued August 24, 1999; and Reg. No. 2,243,909, issued May 4, 1999). Complainant also holds trademark registrations and applications for the YAHOO! mark in approximately 80 countries, including China.

Complainant has used its Yahoo! mark since 1994 and is one of the most recognized global brands. Complainant currently holds the top ranking in brand strength with U.S. consumers. Complainant also operates numerous additional sites under the YAHOO! mark, including sites specific to many geographical regions.

Complainant’s main website is located at the <yahoo.com> domain name, where customers can access both domestic and international web directory and search services. Complainant also operates a Chinese website at the URL china.yahoo.com.

Respondent registered the disputed domain name on March 7, 2000. Respondent is using the disputed domain name to redirect Internet users to Respondent’s Chinese website at the domain name <backchina.com> which offers web directory and search services.

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 that it has rights in the YAHOO! mark through registration with the United States Patent and Trademark Office and in numerous countries worldwide, and through continued use of the mark in commerce for the last ten years. Respondent’s <chinayahoo.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name incorporates Complainant’s mark in its entirety and only deviates with the addition of the geographic word “china.” The mere addition of this word to Complainant’s famous mark does not remove the disputed domain name out of the realm of confusing similarity with regard to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark).

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

Rights or Legitimate Interests

Complainant urges that Respondent has no rights or legitimate interests in the disputed domain name. Based on Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name. When Complainant asserts a prima facie case against Respondent, the burden shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 3 (a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist).

Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent is using the <chinayahoo.com> domain name to redirect Internet users to its competing website that features search, information, and directory services similar to services offered at Complainant’s website. The use of a domain name confusingly similar to a mark to offer the same or similar services as those offered under the mark in competition with Complainant’s services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests in a domain name that diverted Internet users to Respondent’s competing website through the use of Complainant’s mark).

Moreover, Respondent has provided no proof and no evidence in the record suggests that Respondent is commonly known by the <chinayahoo.com>. Thus Respondent has not established rights or legitimate interests in the disputed domain name under 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 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).

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

Registration and Use in Bad Faith

Respondent’s domain name redirects Internet users who intend to search under Complainant’s famous mark to a website sponsored by Respondent through the use of a confusingly similar domain name. Respondent’s commercial use of a domain name confusingly similar to Complainant’s mark evidences registration and use in bad faith pursuant to ¶ 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 Perot Sys. Corp. v. Perot.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).

Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor. Respondent’s disputed domain name diverts Internet users to a website offering similar search, information, and directory services in direct competition with Complainant’s website. Registering a confusingly similar domain name for the primary purpose of disrupting the business of a competitor evidences registration and use in bad faith pursuant to ¶ 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 Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that Respondent registered and used the domain name primarily for the purpose of disrupting the business of Complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to Complainant’s services under the OPENMAIL mark).

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

DECISION

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

Accordingly, it is Ordered that the <chinayahoo.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  March 23, 2004

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