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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc.
Case No. D2000-0587
1. The Parties
1.1 The Complainants are Yahoo! Inc., a corporation organized under the laws of the State of Delaware, United States of America, having its principal place of business at 3420 Central Expressway, Santa Clara, California, United States of America, and GeoCities, a corporation organized and existing under the laws of the State of Delaware, and is a wholly owned subsidiary of complainant Yahoo! Inc. For ease of reference, the complainants will be referred to, jointly and severally, as "Complainant."
1.2 The Respondents are:
1.2.1 Data Art Corp., a corporation organized and existing under the laws of the State of New York, United States of America, having an address at 475 Park Avenue South, New York, New York, United States of America. Whois lists Data Art Corp.'s address as 6350 Laurel Canyon Blvd., Suite 300, North Hollywood, California, United States of America.
1.2.2 DataArt Enterprises Inc., an entity listed by Whois as having the same North Hollywood, California address as that of Data Art Corp.
1.2.3 Powerclick, Inc., an entity listed by Whois as having the same North Hollywood, California address as that of Data Art Corp.
1.2.4 Stonybrook Investments, an entity listed by Whois as having an address at 18 Mopan St., Belize City, Belize.
1.2.5 Global Net 2000, Inc, an entity listed by Whois as having the same Belize address as that of Stonybrook Investments.
1.2.6 Yahoo Search, Inc., an entity listed by Whois as having the same Belize address as that of Stonybrook Investments.
1.3 The address listed for the Technical contact for many of the domain names owned by respondents Global net 2000, Inc, Powerclick, Inc., DataArt Enterprises, Inc., and Data Art Corp. is listed as 6530 Lural, Hollywood, California, United States of America, a slight variation of the previously identified North Hollywood address. According the United States Postal Service Records, the Lural address does not exist.
1.4 The telephone information given by several of the respondents is identical and is not an active telephone number.
1.5 The current Administrative Contact for all of the Domain Names except one is John Dow, Stonybrook, 18 Mopan St., Belize City, Belize. The one exception is for "geosities.com", and on that domain name John Dow is listed as the Technical Contact.
1.6 Nearly all of the domain names link to the same content.
1.7 Complainant alleges that all of the domain names at issue were registered by or on behalf of Yevgeny Goland, who is alleged to be the president of Data Art Corp.
1.8 For ease of reference the respondents will be referred to, jointly and severally, as "Respondent."
2. The Domain Name(s) and Registrar(s)
The domain names at issue are:
2.1 "ayhoo.com", registered August 1, 1997;
2.2 "chatyahoo.com", registered September 6, 1997;
2.3 "eeeyahoo.com", registered January 14, 2000;
2.4 "eocities.com", registered December 1, 1997;
2.5 "foreleven.com", registered November 16, 1997;
2.6 "gecities.com", registered September 5, 1997;
2.7 "geocitie.com", registered August 8, 1997;
2.8 "geocitiesyahoo.com", registered January 18, 2000;
2.9 "geocitis.com", registered November 29, 1997;
2.10 "geocties.com", registered November 29, 1997;
2.11 "geosities.com", registered August 13, 1997;
2.12 "gocities.com", registered October 6, 1999;
2.13 "goecities.com", registered August 18, 1997;
2.14 "iahoo.com", registered August 11, 1997;
2.15 "myahoo.com", registered September 6, 1997;
2.16 "myyahoo.com", registered August 12, 1997;
2.17 "our11.com", registered June 18, 1998;
2.18 "wwwchatyahoo.com", registered January 14, 2000;
2.19 "wwwfour11.com", registered March 25, 1998;
2.20 "wwwgeocities.com", registered August 15, 1997;
2.21 "wwwmyyahoo.com", registered January 13, 2000;
2.22 "yafoo.com", registered August 18, 1997;
2.23 "yahll.com", registered November 30, 1997;
2.24 "yahooguide.com", registered May 27, 1998;
2.25 "yahoonews.com", registered May 31, 1998;
2.26 "yahoosearch.com", registered September 25, 1998;
2.27 "yahomail.com", registered February 3, 1998;
2.28 "yahos.com", registered November 20, 1997;
2.29 "yahow.com", registered August 18, 1997;
2.30 "yahu.com", registered October 24, 1997;
2.31 "yahuu.com", registered July 28, 1998;
2.32 "yahwho.com", registered November 23, 1997;
2.33 "yahwoo.com", registered November 24, 1997;
2.34 "yanoo.com", registered November 30, 1997;
2.35 "yauoo.com", registered November 30, 1997;
2.36 "yyahoo.com", registered July 29, 1997.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on June 12, 2000, and the signed original together with four copies was received on June 14, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated June 16, 2000.
3.2 On June 16, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain names at in issue are registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain names.
3.3 On June 21, 2000, NSI confirmed by reply e-mail as follows:
3.3.1 That the domain names "ayhoo.com", "chatyahoo.com", "gecities.com", "geociti e.com", "geosities.com", "goecities.com", "iahoo.com", "myahoo.com", "myyahoo.com", "wwwgeocities.com", "yafoo.com", and "yahoe.com" are registered with NSI, are currently in active status, that the Administrative and Billing Contact is John Dow of Belize, and that the Respondent, Data Art Corp. is the current registrant of the names.
3.3.2 That the domain names "eeeyahoo.com", "geocitiesyahoo.com", "wwwhcatyahoo.com", and "wwwmyyahoo.com" are registered with NSI, that the domain names "geocitiesyahoo.com" and "wwwmyyahoo.com" are currently in active status, that the domain names "wwwchatyahoo.com" and "eeeyahoo.com" are currently on "Hold" status, and that the Administrative, Technical, Billing, and Zone Contact is John Dow of Belize, and that the respondent Stonybrook Investments, giving the same address in Belize as that given by Mr. John Dow, is the registrant of the names.
3.3.3 That the domain names "eocities.com", "foreleven.com", "geocitis.com", "foreleven.com", "wwwfour11.com", "geocties.com", "our11.com", "yahll.com", "yahooguide.com", "yahoonews.com", "yahomail.com", "yahos.com", "yahu.com", "yahuu.com", "yahwho.com", "yahwoo.com", "yanoo.com", and "yauoo.com" are registered with NSI, that all are currently in active status with the exception of "wwwfour11.com", which is on "Hold" status, that the Administrative and Billing Contact is John Dow of Belize, and that the respondent Global Net 2000, Inc., giving the address of Stonybrook Investments, is the registrant of the names.
3.3.4 That the domain name "gocities.com" is registered with NSI and is in active status, that the Administrative and Billing Contact is John Dow of Belize, and that the respondent Powerclick, Inc, is the Registrant of the name.
3.4 The Registrar also confirmed that the Policy is in effect.
3.5 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a sole Panelist were paid on time and in the required amount by the Complainant.
3.6 No formal deficiencies having been recorded, on June 27, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of July 17, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI’s confirmation. In addition, the complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
3.7 On July 20, 2000, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.
4. Factual Background
4.1 Complainant first registered the trademark and service mark YAHOO in connection with computer software for searching and retrieving information and related services with the United States Patent Office ("USPTO") on February 27, 1997.
4.2 Complainant has also registered the mark MY YAHOO, the application for which was filed August 29, 1996, and issued July 29, 1997. The mark covers computer services, namely creating indexes of information, sites and other resources available on computer networks for others; searching and retrieving information, sites, and other resources available on computer networks; providing an online link to news weather sports, current events, and reference materials.
4.3 Complainant registered the domain name "yahoo.com" on January 18, 1995, and since has established a commanding and well-known presence on the World Wide Web.
4.4 Complainant began as a web directory and search engine in 1994, adopting the name "YAHOO!" in June of that year. Complainant derives revenues from, among other sources, the advertising on its site. In 1999, Complainant carried advertisements from more than 3,500 companies, including American Express, Apple, Colgate-Palmolive, Disney, The Gap, Honda, IBM, Lego, Microsoft, Procter & Gamble, Sony, and others.
4.5 In 1999, Complainant's revenues were in excess of US$588 million.
4.6 The price one can command for advertising placed on the World Wide Web depends on "hits" and/or "page views." A "hit" is defined as a user arriving at a given site. A "page view" is defined one electronic page of information displayed in response to a user request. One "hit" or user visit can result in more than one page view. Complainant's web site is consistently listed as the first or second most popular sites on the World Wide Web.
4.7 Complainant is the owner of the service mark FOUR11, for which an application was filed May 17, 1995, and for which the United States Patent and Trademark Office issued its registration on April 9, 1996.
4.8 Complainant also is the current registrant of the domain name "four11.com".
4.9 GeoCities, Complainant's wholly owned subsidiary, owns the U.S. service mark GEOCITIES in connection with the dissemination of advertising for others via online electronic communications network and related computer services, including the creation and maintenance of web sites for others.
4.10 On December 15, 1995, GeoCities registered the domain name "geocities.com". and Complainant has used the GeoCities mark, trade name and domain name since 1995.
4.11 In March 2000 the web site at "geocities.com" registered over 1.7 billion page views, and the home page alone registered in excess of 50 million hits.
4.12 GeoCities sells advertising on its site, carrying advertisements of 390 companies in the first half of 1999, including E-Trade, CDnow, Microsoft, ABC, Disney, and others.
4.13 GeoCities revenues for 1998 were more than US$18 million. GeoCities was acquired by Complainant in May 1999.
4.14 July 29, 1997 is the date on which Respondent first registered any of the domain names at issue.
4.15 Four of Respondent's domain names do not resolve to an active web site. The other thirty-two web sites link to various web sites offering gambling, sports betting, sports news, services including web site creation and hosting, Internet domain name services, real time financial quotes, and new and used car listings.
4.16 At least two of the web sites to which the domain names at issue resolve list the Belize addresses previously discussed in their Whois details.
4.17 Complainant has sent Respondent various letters requesting transfer of the domain names at issue. Respondent, in the person of Yevgeny Goland has declined to do so, stating that visitors are notified that they have made a spelling mistake. And that Respondent is doing nothing wrong.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered as a domain name a mark which are confusingly similar to the service marks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain names at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
6.1 The Panel is asked to determine that the domain names at issue come within the "Consolidation" provision of the Policy. Policy, ¶ 4(f). That paragraph provides in pertinent part: "In the event of multiple disputes between [a respondent] and a complainant, either [the respondent] or the complainant may petition to consolidate the disputes before a single Administrative Panel. . . . [The] Administrative Panel may consolidate before it any or such disputes in its sole discretion, provided that the disputes being consolidated are governed by this Policy or a later version of this Policy."
6.2 The Panel notes that the Complainant has alleged that the domain names at issued were all registered by or on behalf of a certain individual, and that Respondent has not denied those allegations. Thus, the allegations may be deemed admitted. Alcoholics Anonymous World Services, Inc. v. Raymond, ICANN Case No. D2000-007; Ronson plc v. Unimetal Sanayai ve Tic.A.S., ICANN Case No. D2000-0011. Moreover, Complainant has presented proof in the form of Whois details, which have been confirmed by the Registrar, that the addresses used and the Contacts designated are inter-linking and identical. Adobe Systems Incorporated v. Domain Oz, ICANN Case No. D2000-0057.
6.3 Accordingly, the Panel exercises the broad discretion vested in it by Paragraph 4(f) of the Policy to consolidate the claims concerning the various domain names at issue.
6.4 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
6.5 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.6 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respect of the domain name; and,
3) the domain name has been registered and is being used in bad faith.
6.7 The domain names at issue include names which are identical or confusingly similar to the service marks in which the Complainant has rights (e.g., "yahoosearch.com", "yahoonews.com").
6.8 Moreover, the majority of the others consist of typographical error variations and misspellings of the Claimant's trademarks (e.g., "yyahoo.com" and "geosities.com").
6.9 Respondent is obviously engaging in "typosquatting," a practice that has been condemned and been found to be confusingly similar to the marks which they mimic. See, e.g., American Media Operations, Inc. v. Erik Simons, ICANN Case No. AF-0134; AOL v. Asian On-Line This Domain For Sale, ICANN Case No. FA 00040000094636. Yahoo! Inc. v. Zviely, et al, ICANN Case No. D2000-0273.
6 10 Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-007; Bronson Plc v. Unimetal Sanayai ve Tic.A.S., WIPO Case No. D2000-0011.
6.11 Respondent is trading on the value established by Complainant in its marks to attract users who misspell or mistype Complainant's mark when entering the URL, which includes Complainant's, domain name. Clearly, Respondent is deriving economic benefit from this practice, either by attracting users to Respondent's web site, where goods and services are offered, or by the receipt of compensation from the owners of other web sites for delivering users to those sites. This constitutes bad faith registration and use as defined by ¶4(b)(iv) of the Policy: "[T]he following circumstances …. shall be evidence of the registration and use of a domain name in bad faith . . . by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or a product or service on your web site or location."
6.12 While a user who arrives at the site may promptly conclude that it is not what he or she was originally looking for, Respondent has already succeeded in its purpose of using the service mark to attract the user with a view to commercial gain. National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, ICANN Case No. D2000-0118.
For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent are identical or confusingly similar to the service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain names at issue, and that the Respondent's domain names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names at issue, specifically identified at ¶¶ 2.1 through 2.36, supra, be transferred to the Complainant.
M. Scott Donahey
Dated: August 10, 2000