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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. v. M & A Enterprises
Case No. D2000-0748
1. The Parties
The complainant is Yahoo! Inc. of 3420 Central Expressway, Santa Clara, California 95051, United States of America. The respondent is M & A Enterprises, of 31 Diamond Street, Lahug, Cebu 6000, The Philippines.
2. The Domain Name and Registrar
The domain name in dispute is "visayahoo.com" and the registrar is Network Solutions, Inc. of Herndon, Virginia, United States of America.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The complaint was received by the Center by email on July 7, 2000. On July 14, 2000, registration details were confirmed by the registrar. The Center satisfied itself that the complainant had complied with all formal requirements, including payment of the prescribed fee, and on July 18, 2000, the Center formally notified the respondent by post/courier, fax and email of the complaint and of the commencement of this administrative proceeding and sent copies to the complainant, the registrar and ICANN.
At the request of the respondent and with the consent of the complainant, the Center extended the time for a response to September 6, 2000. On September 4, 2000, the response was filed. The complainant filed an unsolicited reply on September 21, 2000, and the respondent filed an unsolicited rejoinder on October 5, 2000. The Center made it clear to the parties that the panel would decide, in its discretion, whether to admit any of the unsolicited submissions. On September 21, 2000, the Center invited Alan L Limbury to serve as panelist. That day Mr. Limbury accepted the appointment and submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On October 9, 2000, the Center transmitted the case file to the panel and notified the parties of the projected decision date of October 23, 2000.
The panel is satisfied that the complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center’s assessment concerning the complaint’s compliance with the formal requirements; the complaint was properly notified to the respondent in accordance with paragraph 2(a) of the Rules; the response was filed within the extended time and the administrative panel was properly constituted.
Except where sought by the panel under Rule 12, no provision is made in the Policy, the Rules or the Supplementary Rules for further submissions after the response. For the reasons given in Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (Case No. D2000-0802) this panel does not interpret Rule 12 as precluding acceptance of additional uninvited submissions under the panel’s general powers conferred by Rule 10, particularly having regard to the panel’s duty under Rule 10(b) to ensure each party is given a fair opportunity to present its case.
In this case the panel admits both the reply and the rejoinder in the interests of fairness to the parties, pursuant to Rule 10(b).
4. Factual Background
The name "YAHOO!" has been used by the complainant since 1994. The complainant currently has a market capitalization of approximately U.S. $70 billion and is a global Internet communications, media, and commerce company offering a network of searching, directory, information, communication, and shopping services to millions of Internet users daily.
One of the complainant’s partners is the credit card company Visa International Service Association ("Visa"). The VISA logo appears at the bottom of the main page of the "http://www.yahoo.com" website of the complainant.
Since July 1997, Yahoo! and Visa have jointly offered an online shopping service called "Yahoo! Shopping with Visa". The VISA logo is featured on the YAHOO! Shopping site. Since February 1998, Yahoo! and Visa have offered a co-branded YAHOO! VISA credit card at the URL "http://visa.yahoo.com". The YAHOO! VISA credit card features both the YAHOO! and VISA trademarks.
Yahoo! carried the advertisements of more than 3,500 companies during 1999. The complainant’s income, which is primarily derived from the sale of advertising and co-branding or sponsorship agreements with other companies, increased from $US1,666,000 in 1995, to $US 588,608,000 in 1999.
The number of visits to the YAHOO! website are tens of millions every month. As of March 31, 2000, Yahoo! had over 145 million unique registered users worldwide, i.e., users who register with Yahoo! in order to participate in Yahoo!’s registered member services, including email, chat rooms, shopping, auctions, classifieds, clubs, calendars, message boards, and more. As of February 1999, when the respondent registered the disputed domain name, the complainant had over 47 million registered users worldwide.
In addition to the services offered at the complainant’s main site located at the domain name "yahoo.com", the complainant operates many additional sites under the YAHOO! mark and using YAHOO-formative trademarks and domain names, including specific to particular countries or regions, such as China ("yahoo.com.cn"), Taiwan "yahoo.com.tw"), Hong Kong ("yahoo.com.hk"), Japan ("yahoo.co.jp"), Canada ("yahoo.ca"), Mexico ("yahoo.com.mx"), the United Kingdom ("yahoo.co.uk"), France ("yahoo.fr"), Korea ("yahoo.co.kr"), Australia and New Zealand ("yahoo.com.au"), Denmark ("yahoo.dk"), Germany ("yahoo.de"), Norway ("yahoo.no") and Sweden ("yahoo.se"). There are also sites directed to particular U.S. cities, including New York City ("nyc.yahoo.com"), Washington, D.C. ("dc.yahoo.com"), Miami ("miami.yahoo.com"), Atlanta ("atlanta.yahoo.com"), Boston ("boston.yahoo.com"), Los Angeles ("la.yahoo.com"), Seattle ("seattle.yahoo.com").
Although there is no current site directed solely to the Philippines, there are categories in the main YAHOO! directory containing travel information and other content about the Philippines. As of February 1999, when the disputed domain name was registered, the complainant had more than 300,000 registered users that identified the Philippines as their country of residence. The complainant currently has more than 1,220,000 unique registered users that identified the Philippines as their country of residence.
The complainant also offers a wide variety of services using the YAHOO! mark together with a descriptive name of its services, including YAHOO! Mail, YAHOO! Chat, YAHOO! Messenger, YAHOO! Finance, YAHOO! Auctions, YAHOO! Photos, YAHOO! Address Book, YAHOO! Calendar, YAHOO! Bill Pay, and YAHOO! Store. The standard procedure for identifying the URL for such sites is to use a term describing the content of the site or the partner’s name, followed by the "yahoo.com" domain name, separated by a period (e.g., "http://chat.yahoo.com", "http://finance.yahoo.com", and "http://visa.yahoo.com").
The complainant is the owner of the following United States trademark registrations and application:
h Registration No. 2,040,222 for the mark YAHOO!, issued February 25, 1997, in International Classes 9,16, 35 and 42.
h Registration No. 2,040,691 for the mark YAHOO! (stylized), issued February 25, 1997, in International Class 42.
h Registration No. 2,076,457 for the mark YAHOO!, issued July 1, 1997, in International Class 16.
h Registration No. 2,159,115 for the mark YAHOO!, issued May 19, 1998, in International Class 38.
h Registration No. 2,187,292 for the mark YAHOO!, issued September 8, 1998, in International Class 42.
h Registration No. 2,243,909 for the mark YAHOO!, issued May 4, 1999, in International Class 25.
h Registration No. 2,243,823 for the mark YAHOO!, issued May 4, 1999, covering credit card services in International Class 36. (Emphasis added.)
h Registration No. 2,273,128 for the mark YAHOO!, issued August 24, 1999, in International Classes 9, 21 and 35.
h Application No. 75/536,236 for the mark YAHOO!, filed August 13, 1998, in International Classes 9, 35, 39, and 42.
The complainant also owns the domain name "yahoo.com", which was registered with NSI on January 18, 1995, and has been used to identify the YAHOO! website since then.
The respondent registered the domain name "visayahoo.com" on February 5, 1999. Its website entitled VISAYAHOO offers web directory and searching services, free email, and content promoting the Philippines, its government, its people, its tourist spots, and its business and commercial enterprise/s.
Thus both the complainant and the respondent offer web directory and searching services, as well as free email services and content about the Philippines.
The respondent is not and has never been a licensee of the complainant and is not and has never been otherwise authorized by the complainant to use the YAHOO! mark.
During the course of correspondence between counsel for the parties before the complaint was lodged, the respondent’s counsel indicated that the respondent would consider turning over the domain name to the complainant "if our client is properly compensated." The complainant offered to compensate the respondent $2,500 for the domain name to avoid the cost of litigation. The respondent offered to sell the domain name to the complainant for $2,000,000.
5. Parties’ Contentions
By virtue of the arbitrary nature and hence the inherent strength of the YAHOO! mark as applied to Yahoo!’s vast array of web-based services; the millions of visitors to the YAHOO! network of websites every day; the millions of links to the YAHOO! site from third-party websites; and Yahoo!’s extensive use, promotion, and registration of its YAHOO! mark, the YAHOO! mark and "yahoo.com" domain name have become famous. Indeed, the United States District Court for the Eastern District of Virginia has specifically held that the YAHOO! mark is famous. See Yahoo! Inc. v. Buffalo Wu, CA-00-00178-A (memorandum decision at p. 8); see also Yahoo! Inc. v. David Ashby, Case No. D2000-0241 (administrative panel decision) and Yahoo! Inc. v. Eitan Zviely, Case No. D2000-0273 (administrative panel decision).
The domain name is confusingly similar to the world famous trademark YAHOO! in which the complainant has rights which predate the registration of the disputed domain name by the respondent; the respondent has no rights or legitimate interests in respect of the domain name and the domain name was registered and is being used in bad faith.
Yahoo! is not confusingly similar to Visayahoo. They are very different. Of the more than 150 million clients of the complainant, not one will ever mistake Visayahoo as Yahoo!, or vice versa; not one will ever surf Visayahoo, believing that it is surfing Yahoo!, or vice versa.
Since more than 1,220,000 unique registered users identified the Philippines as their country of residence, practically all pc/internet users in the Philippines are Yahoo! users, and therefore there is no way a Yahoo! user in the Philippines will mistake Yahoo! as Visayahoo; they will and can always distinguish between Yahoo! and Visayahoo, and will and can always understand that Yahoo! is entirely different and distinct from Visayahoo; neither will they ever make a mistake on the distinction between the two.
"Hoo" is a generic term, which in Philippine language, means a sign of respect to a parent, superior or an elderly. So that when a Filipino says "Magandang Gabi Hoo!", it means "Good Evening, with due respect"; when somebody asks anybody from what geographical region in the Philippines does he come from, and he answers "Visaya, hoo", it means "I am from the Visayas, with due respect". The complainant does not own and cannot appropriate to itself all the words in the world which end with "hoo".
The respondent does not need any authority from the complainant in order to use the domain name Visayahoo. On the contrary, after (and only after) it received a letter from complainant’s Philippine counsel advising it to discontinue the use of the domain name Visayahoo, it promptly placed a disclaimer in its website that "Visayahoo is in no way affiliated with Yahoo!"; this is a clear sign of good faith on the part of the respondent, and a clear and manifest pronouncement that Visayahoo is entirely and absolutely different from Yahoo!
The respondent’s Visayahoo is local in nature, and Filipino by origin. It caters primarily to Filipinos as it was created by Filipinos and for the use and comfort of the Filipinos. The respondent is developing its own website to the best of its ability, using the local talent of Filipinos; it is putting more and more information on its website about the Philippines, with emphasis on Cebu City and the Visayas and it will, as it does, trade on its own goodwill to do its business. So far, it has survived on its own, and may perish only now in view of the filing of this baseless and unfounded complaint by the complainant.
The respondent has legitimate interests in the domain name Visayahoo. Its company is organized and existing under and by virtue of the laws of the Republic of the Philippines; its website "www.visayahoo.com" was created by its staff of Filipino web designers and encoders; it was duly registered with Network Solutions, Inc.; moreover, complainant acknowledges that the respondent lawfully and legitimately owns the domain name Visayahoo by sending a draft agreement to the respondent for a possible settlement acknowledging that "…. Assignor is the owner of the domain name "visayahoo.com" which was registered with Network Solutions, Inc."
A pc/internet user surfing Yahoo! will NEVER be diverted to Visayahoo. The respondent challenges any self respecting pc/internet user to try going to the website "www.yahoo.com", and see if indeed he will be diverted to "www.visayahoo.com"; a "dot" or a "letter" in the internet world is so significant that any addition and/or absence of it will not bring you to the website that you intend to surf; a "dot" or a "letter" in the internet world will mean a "world apart".
The respondent registered the name Visayahoo in good faith. Visayahoo promotes the Philippines, its government, its people, its tourist spots, and its business and commercial enterprise/s, the company being organized in Cebu City, which is well within the geographical region of the Visayas in central Philippines. The respondent and NSI firmly believed at the time of registration that it did not interfere with or infringe upon the rights of third parties, much less the complainant. The respondent and NSI likewise firmly believed that it was registered for a lawful purpose, as indeed it was.
It was proper for the respondent’s counsel to advise its client to consider turning over its domain name to the complainant "….if respondent is properly compensated", as nothing is free in this world. Since complainant made an outrageously low offer of US$2,500.00 as consideration for the turning over of the domain name to the complainant, the respondent likewise made an outrageously high counter-offer of US$2,000,000.00, which in effect is tantamount to a NO answer.
Intentionally attracting Yahoo! users to Visayahoo is far from the minds of respondent; it never happened, it is not happening, and it will never happen. No commercial, business, monetary gains have redounded to the benefit of the respondent, as access to Visayahoo is free, and all information that one gets from Visayahoo are free; not one, repeat, NOT ONE advertiser at Yahoo! ever advertised in Visayahoo, mistaking it to be Yahoo!.
When it registered its domain name Visayahoo, the respondent never intended to sell, rent or transfer it to anybody. The offers and counter-offers came about only when the complainant entered into the picture and were all initiated by complainant, not by the respondent.
The respondent never attracted pc/internet users from Yahoo! to Visayahoo. It never disrupted, it is not disrupting, and it will never disrupt the business of complainant.
The respondent is offering legitimate goods and services to all, but more particularly to Visayans or Filipinos. It is making a legitimate non-commercial or fair use of the domain name, which was registered long before the filing of the complaint. The respondent registered not a series of names but only one domain name, visayahoo. Both of these circumstances negate the existence of bad faith.
6. Discussion and Findings
To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Identity or confusing similarity
The contested domain name "visayahoo.com" is not identical to the trademark YAHOO!, nor does the complainant so submit. The issue in this case is whether the domain name is confusingly similar to the trademark.
The respondent argues correctly that no-one intending to reach the complainant at "www.yahoo.com" would be likely to type "www.visayahoo.com". However, this does not resolve the issue. Some Internet users attempting to access the "http://visa.yahoo.com" website would be likely inadvertently to arrive at the respondent’s "visayahoo.com" website simply by omitting the dot after "visa".
Registration of a domain name and the creation of an active website establish a presence on the Internet accessible to all Internet users. Access cannot be restricted to those within any particular country. The respondent implicitly acknowledges this when stating it is offering legitimate goods and services to all, but more particularly to Visayans or Filipinos. The issue of confusing similarity must be considered in this context.
Amongst Philippinos unfamiliar with the trademarks VISA and YAHOO!, the disputed domain name may appear to be a combination of the words VISAYA and HOO, meaning "I am from the Visayas, with due respect".
The parties agree that more than 1,220,000 residents of the Philippines are registered YAHOO! users. The respondent accepts that this means that practically all pc/internet users in the Philippines are Yahoo! users. Having registered with the complainant as YAHOO! users, they must be taken to know of the YAHOO! trademark. No doubt many will also know the famous VISA mark. To many, if not most pc/internet users in the Philippines, therefore, the domain name "visayahoo.com" would be likely to convey both that it is a combination of the VISA and YAHOO! trademarks and that it is also a combination of the words VISAYA and HOO.
To Internet users beyond the Philippines unfamiliar with the words Visaya and hoo and their meaning, especially those familiar with the complainant’s joint offerings with the Visa credit card company, the disputed domain name would convey only the combination of the VISA and YAHOO! marks.
Insofar as the domain name conveys (both within and beyond the Philippines) that it is a combination of the VISA and YAHOO! trademarks, the Panel finds it to be confusingly similar to the complainant’s trademark YAHOO!
The complainant has proved the disputed domain name is confusingly similar to its YAHOO! mark.
The incorporation of the respondent in the Philippines under the name M & A Enterprises does not establish a legitimate interest in the disputed domain name. Neither does the creation of the web site by Filipino designers and coders. Nor does the registration with NSI of the disputed domain name, since such registration is governed by the registration agreement, which incorporates the Policy, thereby rendering the registration subject to challenge by an aggrieved trademark owner. The terms of the proposed settlement agreement do not amount to a concession by the complainant that the respondent’s ownership of the disputed domain name was not subject to challenge by the complainant under the Policy.
Given the fame of the YAHOO! mark, the fact that the respondent offers services on the Internet where the complainant’s fame originated and the similarity between the respondent’s services and some of those of the complainant, the Panel finds that, even though the disputed domain name has a particular meaning in the Philippines, the respondent must have known of the registration and use of the complainant’s mark YAHOO! at the time it registered the disputed domain name.
The Panel concludes that the respondent’s use of the disputed domain name was intended misleadingly to divert Internet users from the complainant to the respondent and that, although the services it offers on its website are genuine services, its use of the disputed domain name is not legitimate.
The respondent has not been commonly known by the disputed domain name.
The complainant has established that the respondent has no rights or legitimate interest in the disputed domain name.
Bad faith registration and use
In SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport (Case FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (Case FA94737); Canada Inc. v. Sandro Ursino (Case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (Case FA95037).
The Panel has found that the respondent must have known of the registration and use of the complainant’s mark YAHOO! at the time it registered the disputed domain name.
Despite the particular meaning to Filipinos of the words Visaya hoo, in the context of the Internet, with which virtually all Filipino pc users are familiar, there is no plausible explanation for the respondent’s registration of the disputed domain name other than to benefit from the goodwill of Yahoo! and its famous YAHOO! mark and name (as well as the name and mark VISA). See Telstra Corp. Ltd. v. Nuclear Marshmallows (WIPO Case No. D2000- 0003) and Cellular One Group v. Paul Brien (WIPO Case No. D2000-0028.
The panel finds that the disputed domain name was registered in bad faith.
It is true that no Internet user would be likely to type "visayahoo.com" when intending to type "yahoo.com". But mistakenly typing the name is not the only way by which Internet users may find themselves at the respondent’s website. Knowledge, however derived, of the disputed domain name would be likely to lead to confusion with the complainant’s mark as to the source, sponsorship, affiliation and endorsement of the web site conducted under the disputed domain name and of the services offered at that site. Once there, despite the disclaimer added by the respondent after the complainant’s counsel complained, some proportion of the traffic generated as a consequence of this confusion would be likely to stay, preferring the respondent’s services those of the complainant.
Intentional diversion of trade in such circumstances is evidence of both bad faith registration and use: Policy paragraph 4 (b)(iv). See The Channel Tunnel Group Ltd. v. Powell (WIPO Case No. 2000-0038) and Shirmax Retail Ltd./D¢ etaillants Shirmax Lt¢ ee v. CES Marketing Group Inc.(Case AF-0104) as elaborated in Passion Group Inc.v. Usearch, Inc. (Case AF-0250). Given the fame of the complainant’s mark and the knowledge of it that the respondent must have had when registering the disputed domain name, the Panel finds the respondent must have anticipated and intended to benefit from the very confusion that was likely to arise. It is not necessary that the respondent trade with those diverted Internet users in order to gain that benefit, since the increased traffic attributable to that diversion would make the respondent’s site more attractive for advertisers.
The Panel does not find that the respondent registered the domain name primarily to sell, rent, or otherwise transfer it for valuable consideration in excess of its documented out-of-pocket costs. The respondent’s offer to sell the domain name to the complainant for $2,000,000 in response to the complainant’s offer to pay Respondent $2,500 to cover the respondent’s costs for changing its site and domain name constituted an offer for sale in excess of the respondent’s documented out-of-pocket expenses but the Panel is not persuaded that this was the respondent’s intention at the time of registration.
As mentioned, some Internet users attempting to access the "http://visa.yahoo.com" website would be likely inadvertently to arrive at the respondent’s website (by omitting the dot after "visa"). Once there, some proportion of them would be likely to stay despite the disclaimer, causing the complainant to lose revenue and thereby disrupting the complainant’s business.
The complainant has proved bad faith registration and use.
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the panel directs that the domain name "visayahoo.com" be transferred to the complainant. The Panel notes that Visa International Service Association, the owner of the VISA trademark, consents to this course.
Alan L. Limbury
Dated: October 23, 2000