DECISION

Yahoo! Inc. v. Christopher L. Hannah d/b/a DailyCrossword.com

Claim Number:  FA0404000250785

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 20005-3315.  Respondent is Christopher L. Hannah d/b/a DailyCrossword.com (“Respondent”), 18295 SW Jaylee St., Aloha, OR 97007.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yahookers.com>, registered with Tucows, Inc.

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.

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

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 2, 2004; the Forum received a hard copy of the Complaint on April 5, 2004.

On April 2, 2004, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <yahookers.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 April 8, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 29, 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@yahookers.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 May 13, 2004,  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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

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

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

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

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

FINDINGS

Complainant is the famous global Internet communications, media, and commerce company.  Complainant delivers a branded network of comprehensive searching and directory services, as well as other online activities that have attracted hundreds of millions of Internet users since 1994.

Complainant operates its business under the YAHOO! mark.  Complainant owns numerous registrations for the YAHOO! mark, which were filed and successfully registered with the United States Patent and Trademark Office (“USPTO”), including registration numbers 2,403,227 (registered Nov. 14, 2000), 2,040,222 (registered Feb. 25, 1997), and 2,273,128 (registered Aug. 24, 1999).

Complainant has used the YAHOO! mark continuously in international commerce since 1994.  Since then, the YAHOO! mark has become one of the most recognized brands in the world, with a value of nearly U.S. $3.9 billion according to Interbrand. 

Respondent registered the disputed domain name <yahookers.com> on June 23, 2002.  Respondent uses the domain name to host a subscription-based pornographic 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 as a result of its registration of the mark with the USPTO.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also 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.”).

The disputed domain name <yahookers.com> contains Complainant’s YAHOO! mark minus the exclamation point, which is incapable of being expressed in domain names.  Respondent has merely appended the letters “kers” to Complainant’s mark creating a take-off on Complainant’s YAHOO! mark, and accurately describing the attached website’s content.  However, domain names that incorporate third-party marks and merely add letters that fail to sufficiently differentiate the name from the mark satisfy Policy ¶ 4(a)(i).  In this case, Respondent has incorporated Complainant’s mark and has merely added the letters “kers” to Complainant’s famous mark.  Such addition fails to sufficiently differentiate the domain name from Complainant’s mark and renders the name confusingly similar to the mark under 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 Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (“Neither the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to Complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to Complainant’s mark).

Complainant has established Policy ¶ 4(a)(i). 

Rights or Legitimate Interests

Respondent has failed to respond to the Complaint.  As such, the Panel presumes Respondent lacks rights and legitimate interests in the disputed domain name.  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”).

Respondent is not authorized by Complainant to use the YAHOO! mark.  See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”); see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that Respondent lacked rights and legitimate interests in the domain name because Respondent was not authorized by Complainant to use its trademarks and the mark was distinct in its nature, such that one would not legitimately choose it unless seeking to create an impression of an association with Complainant).

Respondent’s use of the trade name “Yahookers!” on its website does not demonstrate any legitimate interest on behalf of Respondent in the disputed domain name <yahookers.com> because Respondent cannot justify its misappropriation of Complainant’s trademark in the domain name merely through use of a trade name.  If such were the case, domain name holders could freely pirate the trademarks of others as domain names simply by using the disputed domain name as a trade name.  See Yahoo! Inc. v. Yahoo-Asian Co. Ltd., D2001-0051 (WIPO Feb. 28, 2001) (finding that respondent’s business name failed to establish respondent’s legitimate interest in the disputed domain name); see also Yahoo! Inc. v. Yahoo Computer Servs., DPH2001-0001 (WIPO Mar. 23, 2001) (same.).

Furthermore, Complainant has asserted that Respondent is not commonly known by the disputed domain name.  Respondent has failed to rebut Complainant’s assertion.  Therefore, the Panel accepts Complainant’s assertion and finds that Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(i).  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 Vert. 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).

Moreover, Respondent is using a domain name confusingly similar to Complainant’s YAHOO! mark to host a pornographic website.  Such use has a tendency to tarnish Complainant’s mark and thus is not 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).  See Yahoo! Inc. v. Cupcake Patrol, D2000-0928 (WIPO Oct. 4, 2000) (finding respondent’s use of the disputed domain name to direct traffic to a pornographic website constituted tarnishment in contravention of Policy ¶ 4(c)(iii)); see also ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (stating that the fact that the “use of the disputed domain name in connection with pornographic images and links tarnishes and dilutes [Complainant’s mark]” was evidence that Respondent had no rights or legitimate interests in the disputed domain name); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Using domain names that are confusingly similar to third-party marks to host pornographic content has consistently been found to evidence bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  A primary rationale for such a finding is that such use has a tendency to tarnish and dilute a trademark owner’s mark.  Such is the case here.  Respondent is using the disputed domain name <yahookers.com> to direct users to a subscription-based website featuring graphic pornographic imagery.  Respondent’s association of the proffered content with Complainant’s mark tarnishes the YAHOO! mark and is evidence of Respodnent’s bad faith registration and use.  See 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); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also 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) (“[W]hatever 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.”); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith).

In conjunction with the foregoing, Respondent is using Complainant’s mark to intentionally attract Internet users to its commercial pornographic website by creating a likelihood of confusion with Complainant’s YAHOO! mark.  Such intentions are evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the disputed domain name was obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

Complainant has established Policy ¶ 4(a)(iii).

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 <yahookers.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  May 27, 2004

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