yawho.com

WIPO Arbitration and Mediation Center

The Complainant is Yahoo! Inc., a Delaware corporation doing business at 3420 Central Expressway, Santa Clara, California 95051, United States of America (USA).

The Respondent is David Murray, an individual doing business at 3000 Parkhaven Drive, Flower Mound, Texas 75022, (USA).

The domain name at issue is <yawho.com> (the Domain Name). The registrar with which the Domain name is registered is Network Solutions, Inc. (the Registrar or NSI), located in Herndon, Virginia, USA.

The Registrar provided the following contact details for the Respondent:

Administrative and Billing Contact:

Murray, David (DM19710) [email protected]
3000 Park Haven Drive
Flower Mound, TX 75022
United States of America

Technical Contact, Zone Contact:

Digiweb, Inc. (HDI2-ORG)
4716 Pontiac Street
College Park, MD 20740
United States of America

The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s Complaint by e-mail on August 11, 2000 and in hardcopy on August 15, 2000. On August 18, 2000, the Center sent the Complainant an Acknowledgment of Receipt of the Complaint.

On August 24, 2000, the Center sent to the Registrar, NSI, a Request for Registrar Verification. On August 25, 2000, the Registrar transmitted to the Center via e-mail a Registrar Verification Response confirming that the Domain Name is registered with NSI and that the Respondent is the current registrant of the Domain Name.

On August 28, 2000, the Center notified Complainant that a Network Solutions 4.0 Service Agreement is in effect for the disputed domain name and indicated that under this Service Agreement, the Complainant must submit to the jurisdiction of the domain name holder’s address in accordance with Paragraph 3(b)(xiii) of the Rules. In response, on September 1, 2000, Complainant amended its complaint to submit to the jurisdiction where the Respondent resides.

The Center completed a Formalities Compliance Review on September 5, 2000, and verified that the Complaint satisfied the formal requirements of the ICANN Uniform Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Dispute Resolution Policy (the Uniform Rules), and the Supplemental Rules for Uniform Domain Dispute Resolution Policy (the WIPO Supplemental Rules). Complainant made the required payment to the Center. Upon independent review, the Administrative Panel also finds that the Complaint satisfies the formal requirements of the Policy, the Uniform Rules, and the Supplemental Rules.

On September 5, 2000, the Center transmitted to the parties a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of September 24, 2000 by which the Respondent could file a Response to the Complaint. This Notification was sent to the Respondent via courier, with delivery confirmed on September 7, 2000.

When by September 27, 2000, the Center had not received Respondent’s Response to the Complaint, the Center issued a Notification of Respondent Default. To this date, the Center has not received a Response from the Respondent. On November 1, 2000, the Center notified the parties that it would now proceed to appoint the Administrative Panel.

In view of the parties’ selection of a single panelist, the Center invited Dana Haviland to serve as the sole panelist. On November 1, 2000, after having received a Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties via e-mail a Notification of Appointment of Administrative Panel and Projected Decision Date, appointing the aforementioned panel. The Projected Decision Date was November 14, 2000. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.

Complainant Yahoo! Inc. (Complainant) is a Delaware corporation with its principal place of business in Santa Clara, California, USA. Complaint para. 3. Complainant is a global Internet communications, media and commerce company that provides searching, directory information, shopping and communication services to Internet users. Complaint para. 14.

On January 1, 1999, the Respondent registered the domain name <yawho.com>. Complaint para. 42, Exhibit 13. Since at least August 1999 respondent has generated a website at the Domain Name that provides free MP3 (digital music) downloads and free e-mail services. Complaint para. 42, 44.

The Complainant contends that the Domain Name registered by the Respondent is identical or confusingly similar to Complainant’s incontestable, federally registered trademarks. Complaint para. 51. Complainant offers ample evidence of the strength and famousness of its marks and contend that the Domain Name is confusingly similar in appearance and phonetically identical to Complainant’s marks. Complaint paras. 18, 20, 22-26, 31-35. Complainant further contends that the Respondent has no rights or legitimate interests in the Domain Name. Complainant argues that "[t]here is no plausible explanation for Murray’s registration of the disputed Domain Name given the fame of the ‘YAHOO!’ Marks." Complaint para. 55.

Additionally, Complainant contends that the Respondent has registered and is using the Domain Name in bad faith. With respect to bad faith, Complainant first alleges that the Respondent registered the Domain Name in order to attract Internet users to his website for commercial gain, by creating a likelihood of confusion with Complainant’s marks. Complaint para. 52. Complainant further alleges that Respondent registered and is using the Domain Name primarily to disrupt the business of a competitor by attracting Internet users away from Complainant’s website onto Murray’s website, which "offers directly competitive and highly related products." Complaint, para. 53.

Complainant also alleges that Respondent’s bad faith is manifested in his offer to sell the Domain Name to Yahoo! for an unspecified amount. Finally, Complainant alleges that bad faith is shown by Respondent’s continued use of the Domain Name despite repeated protestations by Complainant.

Respondent has submitted no response to the Complaint.

Under the terms of the Policy, the Complainant must prove three distinct elements in order to prevail on a claim for transfer of a domain name. These elements are set forth in Paragraph 4(a) of the Policy:

- 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

- that the respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

The Panel finds that the domain name <yawho.com> registered by the Respondent is confusingly similar to the Complainant’s mark. The Complaint cites various cases from United States federal district courts in support of the contention that phonetically identical marks are confusingly similar. The Complainant also cites two decisions made pursuant to the Rules and Policy which hold that phonetically similar names satisfy the first element under the Policy.

Although the cases cited by Complainant are factually distinguishable from the facts presented here, the Panel is satisfied that <yawho.com> is confusingly similar to <yahoo.com> because it is identical in pronunciation and differs by only one letter. See Yahoo Inc. v. Eitan Zviely, ICANN Case. No. D2000-0273 (thirty-seven variations of the Complainant’s Yahoo trademark registered by the respondent, including <yahu.com> and <yhu.com,> confusingly similar to Complainant’s trademark); Neuberger Berman, Inc. v. Alfred Jacobsen, ICANN Case No. D2000-0323 (the domain name <newbergerberman.com> is confusingly similar to complainant’s domain name <neubergerberman.com> because the two are pronounced identically); Reuters Limited v. Global Net 2000, Inc., ICANN Case No. D2000-0441 ("A domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive.")

A party may demonstrate its rights or legitimate interest in a domain name under paragraph 4(c) of the Policy in any of the following ways:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Despite Respondent’s failure to respond, the Complainant carries the burden of demonstrating no legitimate rights on the part of the Respondent. Due to Respondent’s failure to submit a response, it is difficult for the Panel to determine what his legitimate interest in the Domain Name may be.

The word "yahwo" does not have any plain meaning in the English language. Were it to have a separate meaning, or if Respondent could have distinguished it from the Complainant’s uncontestedly famous mark, Respondent might have been able to establish his rights or legitimate interest in the name. However, Complainant has shown that its Yahoo! mark is indeed famous, and the Panel finds that Respondent knew, or at least had constructive knowledge, of the Complainant’s mark at the time he registered the Domain Name. Although the Complainant undeniably provides a broader array of services than the <yawho.com> website, similarities between the two are shown. Both websites provide search, information, MP3 digital music downloads and email services.

Out of all of the potential derivations of letters Respondent could have chosen to create his Domain Name, he chose one so similar to Complainant’s that it cannot be inferred, without benefit of explanation, that he has a valid right or legitimate interest in the Domain Name. The Panel thus finds that the Complainant has satisfied the second element of its claim.

Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which "shall be evidence of registration and use of a domain name in bad faith":

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) 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 of a product or service on your website or location.

Here, Complainant has established both bad faith registration and use of the Domain Name by the Respondent, pursuant to Paragraph 4(b)(iv) of the Policy. The Respondent has registered a domain name that is contrived, yet visually and phonetically similar to the Complainant’s trademark. Absent some explanation by the Respondent, the Panel can think of no reason why the Respondent would choose a domain name so similar to the Complainant’s mark, for a site which offers services similar to the Complainant, except to attract customers to Respondent’s site through potential confusion. See Massachusetts Medical Society v. Michael Karle, ICANN Case No. D200-0282 (using domain name nearly identical to claimant’s mark to sell medical and health care related publications constitutes bad faith). Although the Panel finds bad faith under Paragraph 4(b)(iv), the Panel does not find the evidence sufficient to show bad faith under Paragraph 4(b)(iii), which requires a showing that a respondent registered a domain name primarily for the purpose of disrupting the business of a competitor.

Further, the Panel does not find that Complainant has shown bad faith by alleging that the Respondent offered to sell the Domain Name to Yahoo! for an unspecified amount. The evidence offered to support this contention consists only of the following allegation: "On September 15, Laura Covington, in-house trademark counsel for Yahoo!, contacted Murray by telephone to discuss the matter. Murray rejected Yahoo!’s trademark concerns as unfounded and inquired whether Yahoo! would purchase the YAWHO site and Domain Name for an unspecified amount." Complaint para. 47. This allegation is not supported by an affidavit from Ms. Covington or any other documentary evidence. The evidence presented here is thus distinguishable from that presented in the cases cited by the Complainant, which all involved public offers to sell the contested domain names. See Robert Ellenbogen v. Mike Pearson, ICANN Case No. D200-0001 (disputed domain name offered for sale on the Great Domains website); America Online, Inc. v. QTR Corp., NAF Case No. FA000100092016 (disputed domain name offered for sale on the WHOIS directory); The Avenue, Inc. v. Chris Guirguis, ICANN Case No. D2000-0013 (disputed domain name offered for sale on the Great Domains website). Although formal rules of evidence do not apply to these summary proceedings, the Panel believes that the evidence is insufficient to establish a bad faith offer of sale of the domain name pursuant to 4(b)(i). See Edgar Rice Burroughs, Inc. v. Adtel Communications, ICANN Case No. D2000-0115 ("in cases of default, a Complainant’s papers will be held to an exacting standard").

Neither does the Panel find, as Complainant alleges, that bad faith is shown by Respondent’s continued use of the Domain Name despite repeated protestations by Complainant. Although this contention supports the Panel’s finding that the Respondent was, or reasonably should have been, aware of the Complainant’s registered trademarks, the mere failure to respond does not constitute bad faith use.

Nonetheless, because the Panel finds evidence supporting the inference that the Respondent registered and is using the Domain Name to attract customers for commercial gain by creating a likelihood of confusion with the Complainant’s mark, the Panel is satisfied that the Complainant has shown bad faith registration and use.

For all of the foregoing reasons, it is the decision of the Panel that the Complainant has satisfied its burden of proving the essential elements of a claim under Paragraph 4(a) of the Policy, and that the Complainant’s claim for transfer of the Domain Name <yawho.com> is therefore granted.

Dana Haviland
Sole Panelist

Dated: November 17, 2000