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WIPO Domain Name Decision: D2000-1711
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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc., v. Silicon City and Osama Al-Ayoub
Case No. D2000-1711
1. The Parties
The Complainant is Yahoo! Inc., (Yahoo!), a Delaware corporation with its principal place of business located at 3420 Central Expressway, Santa Clara, California 95051, USA. The Complainant’s authorized representative in this proceeding is David M. Kelly, of Finnegan, Henderson, Farabow, Garrett and Dunner, 1300 I Street NW, Washington DC 20005-3315, USA.
The Respondents are the Registrant, Silicon City, P.O. Box 64416, Shuwaikh-B, Kuwait 70455; and the Registrant's administrative, technical and billing contact, Osama Al-Ayoub, P.O. Box 64416, Shuwaikh-B, Kuwait 70455. The Domain Name was previously registered by Silicon City, 132-1769 St. Laurent Boulevard, Ottawa, K1G 5X7, Canada, with Osama Al-Ayoub named as the administrative, technical and billing contact. All of these will be referred to individually and collectively as the Respondent.
2. The Domain Name and Registrar
The Domain Name being the subject of this Complaint is <yahoo-1.com>.
The Registrar of the Domain Name is Network Solutions, Inc., (NSI), 505 Huntmar Park Drive, Herndon, Virginia, 20170, USA.
3. Procedural History
3.1. The Complaint in respect of the disputed Domain Name was received by the World Intellectual Property Organization Arbitration and Mediation Center (WIPO Center) by email on December 7, 2000, and in hard copy on December 11, 2000. The Complaint states that a copy was sent to the Respondent at the latter's presently listed address by international certified mail, and (without exhibits) to the Registrar, NSI by email.
3.2. On December 13, 2000, verification was received from the Registrar, NSI to the effect that the disputed Domain Name is registered in the name of Silicon City (YAHOO-8-DOM), P.O. Box 64416, Shuwaikh-B, Kuwait 70455. The Registrant's administrative, technical and billing contact is recorded as Osama Al-Ayoub, Silicon City, 132-1769 St. Laurent Boulevard, Ottawa, K1G 5X7, Canada. The Domain Name is in active status and Network Solutions’ 5.0 Service Agreement is in effect.
3.3. On December 14, 2000, WIPO Center determined (and the Administrative Panel has subsequently accepted) that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (Uniform Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (Uniform Rules) and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules) all as approved by the Internet Corporation for Assigned Names and Numbers (ICANN).
3.4. The Center recorded a print copy of the web site of the disputed Domain Name on December 15, 2000 and supplied this to the Administrative Panel.
3.5. The Formal Notification of Complaint and Commencement of Administrative Proceeding (with enclosures) was sent by WIPO Center to the Respondent in Kuwait and in Canada on December 15, 2000 by courier, and (without attachments) by fax and email. The Formal Notification was copied to the Complainant, to ICANN and to the Registrar, NSI by email.
3.6. At the request of the Respondent and in acknowledgement of the holiday period the period of time to file a Response was extended by WIPO Center from January 3, 2001 to January 13, 2001.
3.7. A Response was received from the Respondent by email on January 13, 2001 and in hard copy on January 18, 2001.
3.8. On February 1, 2001, Dr Clive Trotman, having provided the WIPO Center with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and notification was sent by email to the Complainant, the Respondent and the Administrative Panel. An electronic copy of the Complaint and Response was emailed to the Administrative Panel on February 1, 2001, and the hardcopy of the Case File was sent by courier.
4. Factual Background
4.1. The Complainant, Yahoo!, is a company well known to users of the Internet. Yahoo! delivers a variety of services to Internet users including searching, shopping, travel services, electronic mail and chat, games, stock-market information, business advice, financial services, news, maps, auctions and many other services.
4.2. The Complainant company has grown since 1994 into a company having a current market capitalization in the region of $US 60 billion. An independent firm of valuation consultants has valued the brand name Yahoo! at $US 6.3 billion, making it the most valuable brand name associated with the Internet and the 38th most valuable brand name in the world.
4.3. The trademark Yahoo! is, broadly speaking, universally recognized in the manner of world-class trademarks. Its website is exceedingly popular with the general public and has won a number of industry awards. Yahoo! earns revenues approaching $US 1 billion annually mainly by attracting advertising and related promotional contracts from major international companies including those in the league of Colgate-Palmolive, IBM and Visa.
4.4. The trade or service marks (trademarks) of Yahoo! are the subject of at least eight Trademark Registration Numbers issued between 1995 and 1997 that comprehensively cover the fields in which the company operates. A further comprehensive Application was made in 1998.
4.5. The Complainant's own web site "yahoo.com" was registered on January 18, 1995.
4.6. The disputed Domain Name <yahoo-1.com> was registered on March 9, 2000.
5. Parties’ Contentions
A. Contentions of Complainant
5.1. The contentions of the Complainant include (paragraphs 5.2-5.8 below) that:
5.2. The dispute is properly within the scope of the Uniform Dispute Resolution Policy. The registration agreement, pursuant to which the Domain Name being the subject of this Complaint was registered, incorporates the Uniform Policy.
5.3. The disputed Domain Name is confusingly similar to the valuable and famous trademark in which the Complainant has clearly established and exclusive rights.
5.4. The Respondent has no rights or legitimate interest in the disputed Domain Name and its use of the trademark is not authorized by the Complainant.
5.5. The Respondent’s registration and use of the disputed Domain Name is in bad faith in terms of the Uniform Policy.
5.6. The Complainant complained to the Respondent on August 14, 2000 and attempted to resolve the dispute by offering to reimburse registration fees in exchange for the transfer of the Domain Name to the Complainant. No agreement was reached.
5.7. The Respondent has offered the disputed Domain Name for sale publicly by auction at a "starting bid" considerably in excess of original registration costs.
5.8. The remedy requested by the Complainant is that the disputed Domain Name be transferred to the Complainant.
B. Contentions of Respondent
5.9. The contentions of the Respondent include (paragraphs 5.10 - 5.17 below) that:
5.10. The Complainant did not complain about the Respondent's disputed Domain Name for five months, during which time the Respondent invested money in the development of its site.
5.11. The Respondent has been conciliatory in modifying some content objected to by the Complainant.
5.12. The Respondent does not intend to take advantage of the reputation or goodwill associated with Yahoo! and does not intend to divert Complainant's users to the Respondent's site. The Respondent's site does not look like the Complainant's site.
5.13. The Respondent's site is for non-commercial, non-profit purposes.
5.14. The Respondent owns over 100 domain names and any other instances of them being confusingly similar to trademarks have been unintentional.
5.15. The Respondent's listing of the disputed Domain Name for sale was merely to obtain a market valuation.
5.16. The word "yahoo" is an expression in general use and could be registered by anyone on a basis of first come, first served.
5.17. The Respondent requests that the remedy sought by the Complainant be denied.
6. Discussion and Findings
Jurisdiction of Administrative Panel
6.1. The registration Agreement between the Registrar and the Respondent, at Section 8 Domain Name Dispute Policy, states:
"If you reserved or registered a domain name through us, you agree to be bound by our current domain name dispute policy that is incorporated herein and made a part of this Agreement by reference."
Paragraph 4 (a) of the Uniform Policy states:
"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
6.2. The Complainant has made the relevant assertions as in 6.1 above. This dispute is properly within the scope of the Domain Name Dispute Policy and the Administrative Panel has jurisdiction to decide the dispute.
Whether the Domain Name is Identical or Confusingly Similar to a Trademark
6.3. The Domain Name subject to Complaint is <yahoo-1.com>. The word element ("yahoo") of the disputed Domain Name is identical to the word element of the Complainant's trademark, Yahoo! Furthermore the suffix "-1" incorporated into the disputed Domain Name projects a misleading semblance of visual similarity to the exclamation mark incorporated into the Complainant's trademark.
6.4. The Respondent has submitted a reference from Merriam-Webster's Collegiate Dictionary as to the meaning of the word "yahoo" and by implication the Respondent offers the defence that the word is of ordinary meaning and available for use. The view of the Administrative Panel is that the word "yahoo" has lately acquired a stronger meaning as the trademark of Yahoo! Inc., than as a dictionary word.
6.5. The Administrative Panel finds that the disputed Domain Name is confusingly similar to the trademark of the Complainant. The Complainant succeeds under Paragraph 4 (a) (i) of the Uniform Policy.
Whether Respondent Has Rights or Legitimate Interests in Respect of the Domain Name
6.6. The Complainant certifies that the Respondent is not and never has been licensed or authorized by the Complainant to use its trademark and submits that the Respondent does not have any rights or legitimate interest in the disputed Domain Name.
6.7. The Respondent has submitted various statements and evidence that by implication should be considered as establishing applicable rights or legitimate interest in the Domain Name in accordance with Paragraph 4 (c) (i) or (ii) or (iii) of the Uniform Policy. These clauses are governed by the requirement that they be "... found by the Panel to be proved based on its evaluation of all the evidence presented ..."
6.8. Paragraph 4 (c) (i) of the Uniform Policy recognizes the use, prior to a Complaint, of a Domain Name in connection with a bona fide offering of goods or services; however that clearly does not legitimise an otherwise non-legitimate use of a Domain Name. Evaluation of all of the evidence in the present matter, including the adoption of a Domain Name confusingly similar to that of a well-known corporation and competitor, leads the Administrative Panel to the conclusion that any purported offering of goods or services was superficial, part of an overall scheme of bad faith use of the Domain Name, and not bona fide.
6.9. In respect of Paragraph 4 (c) (ii) of the Uniform Policy there is no evidence that the Respondent as an individual or as a business has been commonly known by the disputed Domain Name.
6.10. The Respondent's submission includes reference to an "investment" of $US 5000 in development of the site, and to the presentation or hosting of auctions, car dealers, real estate and other activities of a commercial nature on the disputed website. Notwithstanding the appearance of a "non-profit" disclaimer on later versions of the disputed web site, the only realistic interpretation of the evidence is that the Respondent created the site as a skeleton commercial operation for sale as a going concern. In respect of Paragraph 4 (c) (iii) of the Uniform Policy there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the Domain Name.
6.11. While acknowledging that the circumstances listed under Uniform Policy Paragraph 4 (c) are without limitation, the Administrative Panel finds that the Respondent does not have any rights or legitimate interest in the Domain Name. The Complainant succeeds under Paragraph 4 (a) (ii) of the Uniform Policy.
Whether Domain Name Has Been Registered and Is Being Used in Bad Faith
6.12. The Complainant has provided evidence that it informed the Respondent in writing of the Complainant's rights in respect of its trademark and subsequent replies to the correspondence prove that it was received by the Respondent. Three and a half months later the disputed Domain Name <yahoo-1.com> was found to be listed for auction with a "starting bid" invited of $US 5000 on a web site dealing in domain names, over the slogan: "Yahoo in a Formula-1 Style!". The evidence is clear that the Respondent's primary intention is the sale of the Domain Name for valuable consideration in excess of the direct costs of registration. The Administrative Panel finds that the Respondent is acting in bad faith in the terms of Paragraph 4 (b) (i) of the Uniform Policy.
6.13. The Respondent claims to have registered "over 100 domains ... in the past few years". It is implausible that the Respondent with such experience did not know of the existence, reputation and trademark of the Complainant and there can be no reasonable interpretation of the Respondent's activities other than a primary intention to divert users to the disputed Domain Name site for purposes of commercial gain and thereby to disrupt the business of the Complainant. The Administrative Panel finds the Respondent to be acting in bad faith in the terms of Paragraphs 4 (b) (iii) and (iv) of the Uniform Policy.
6.14. Paragraph 4 (b) of the Uniform Policy states, "For the purposes of Paragraph 4 (a) (iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:" and then presents Paragraph 4 (b) clauses (i), (ii), (iii) and (iv) in the alternative. The Administrative Panel finds (6.12 and 6.13 above) clauses (i), (iii) and (iv) of Paragraph 4 (b) to be proven, any one of which is "evidence of the registration and use of a domain name in bad faith". The Complainant therefore succeeds under Paragraph 4 (a) (iii) of the Uniform Policy.
6.15. All elements of the Response were considered and those not discussed above were not relevant to the Decision.
6.16. In summary, as concluded in 6.5 above the Complainant succeeds under element 4 (a) (i) of the Uniform Policy. As concluded in 6.11 above, the Complainant succeeds under element 4 (a) (ii) of the Uniform Policy. As concluded in 6.14 above, the Complainant succeeds under element 4 (a) (iii) of the Uniform Policy. The Complainant has proven its case in full and the Administrative Panel decides in favor of the Complainant and against the Respondent.
The Decision of the Administrative Panel is that the disputed Domain Name <yahoo-1.com> is confusingly similar to the trademark Yahoo! in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed Domain Name; and that the Respondent has registered and is using the disputed Domain Name in bad faith. The Domain Name <yahoo-1.com> shall be transferred to the Complainant.
Dr Clive N. A. Trotman
Dated: February 13, 2001