DECISION

Yahoo! Inc. v. The Underscore

Claim Number:  FA0402000241985

PARTIES

Complainant is Yahoo! Inc. (“Complainant”), represented by David Kelly of Finnegan, Henderson, Farabow, Garrett & Dunner L.L.P., 1300 I Street NW, Washington, DC 20005-3315.  Respondent is The Underscore (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yahoo-security.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.  Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically February 26, 2004; the Forum received a hard copy of the Complaint February 27, 2004.

On February 26, 2004, Melbourne IT d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the domain name <yahoo-security.com> is registered with Melbourne IT d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne IT d/b/a Internet Names Worldwide verified that Respondent is bound by the Melbourne IT d/b/a Internet Names Worldwide registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On March 1, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 22, 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@yahoo-security.com by e-mail.

Respondent submitted correspondence that was not in compliance with Forum Supplemental Rule #5 and UDRP Rule #5.  The Panel will not recognize correspondence as a formal Response and will not take into consideration the content of such correspondence in reaching a decision.  See Six Continents Hotel, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that Respondent’s failure to submit a hard copy of the Response and its failure to include any evidence to support a finding in its favor placed Respondent in a de facto default posture, permitting the Panel to draw all appropriate inferences stated in the Complaint); see also Schott Glas and Nec/Schott Components Corp. v. Necschott, D2001-0127 (WIPO Mar. 14, 2001) (choosing not to consider the Response in light of formal deficiencies).

Complainant submitted a timely Additional Submission that was considered to be complete March 26, 2004. 

On March 31, 2004, 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 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 Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <yahoo-security.com>, is confusingly similar to Complainant’s YAHOO! mark.

2. Respondent has no rights to or legitimate interests in the <yahoo-security.com> domain name.

3. Respondent registered and used the <yahoo-security.com> domain name 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 on a daily basis to millions of Internet.  Complainant uses the <yahoo.com> domain name in conjunction with its business.  The domain name received approximately 765 million unique users during August of 2003. 

Complainant offers a wide variety of services using the YAHOO! mark, together with a descriptive name of its services.  These services include YAHOO! Security Key, which provides users with a personal access code, designed to protect the user’s sensitive and confidential information, such as bank accounts and other private financial services.  Complainant holds several registrations with the U.S. Patent and Trademark Office (“USPTO”), including Reg. Nos. 2,040,222 and 2,273,128 (registered February 25, 1997, and August 24, 1999, respectively). 

Respondent registered the <yahoo-security.com> domain name May 29, 2003.  Respondent’s domain name resolves to a website that falsely gives the appearance of being Complainant’s website by displaying the YAHOO! and MY YAHOO! marks, directly copying Complainant’s stylized YAHOO! mark and logos, which directly link to Complainant’s website in numerous locations, and by copying the “sign in” box displayed on Complainant’s website.  Respondent then tricks Complainant’s users into revealing their Yahoo! User ID and confidential password by prompting users to “sign in to reactivate your Yahoo! account.”

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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 to and/or Confusingly Similar

Complainant has established by extrinsic proof in this proceeding that it has rights in the YAHOO! mark through registration with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The domain name registered by Respondent, <yahoo-security.com>, is confusingly similar to Complainant’s mark because the domain name fully incorporates the YAHOO! mark with the exception of the exclamation point, followed by a hyphen and the generic or descriptive term “security.”  The omission of the exclamation point and the addition of the generic or descriptive term “security” are insufficient to distinguish the domain name 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); see also Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum April 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

Furthermore, the addition of the generic top-level domain “.com” is irrelevant in determining whether the <yahoo-security.com> domain name is confusingly similar to Complainant’s mark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

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

Rights to or Legitimate Interests

Complainant established that it has rights to and legitimate interests in the mark contained in its entirety in the disputed domain name.  Nothing in the record suggests that Respondent is commonly known by the <yahoo-security.com> domain name.  Moreover, Respondent was not authorized or licensed to register or use domain names that incorporate Complainant’s mark.  Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the domain name, 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Furthermore, Respondent uses the <yahoo-security.com> domain name to mislead Internet users into believing that the website that the domain name resolves to is hosted by or endorsed by Complainant.  In addition to this misrepresentation, Respondent also attempts to defraud Yahoo!’s users of their personal and confidential information.  The Panel finds that Respondent’s fraudulent use of the domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Yahoo! Inc. v. Dank, FA 203169 (Nat. Arb. Forum Dec. 6, 2003) (finding that Respondent’s use of the disputed domain name, which utilized Complainant’s YAHOO! mark, to mislead Internet users into believing that Complainant was associated with the disputed domain name and thus submit confidential credit card information to Respondent was evidence that Respondent lacked rights and legitimate interests in the disputed domain name); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding, Respondent had no rights or legitimate interests in the <blizzardnorth.net> domain name because the infringing domain name was used to illegally procure account names and passwords from Internet users who believed that they were accessing one of Complainant’s websites).

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

Registration and Use in Bad Faith

The Panel finds that Respondent’s fraudulent use of the <yahoo-security.com> domain name to acquire unsuspecting Internet users’ personal information is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where Complainant’s mark was appropriated at registration, and a copy of Complainant’s website was used at the domain name in order to facilitate the interception of the Complainant’s customer’s account information, Respondent’s behavior evidenced bad faith use and registration of the domain name); see also Yahoo! Inc. v. Dank, FA 203169 (Nat. Arb. Forum Dec. 6, 2003) (finding Respondent’s use of the domain name <yahoo-wallet.com> for illegal commercial gain was in bad faith).

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 <yahoo-security.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: April 9, 2004.

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/481.html