WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. v. Blue Q Ltd., Romain Barissat
Case No. D2011-0702
1. The Parties
The Complainant is Yahoo! Inc. of Sunnyvale, California, United States of America, represented by Keats McFarland & Wilson, LLP, United States of America.
The Respondent is Blue Q Ltd., Romain Barissat of Surrey, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <yahoopage.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2011. On April 26, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On April 26, 2011, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2011.
The Center appointed Francine Tan as the sole panelist in this matter on June 8, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a leading global Internet communications, commerce, and media company. It offers a network of searching, directory, information, communication, shopping, electronic commerce and other online services to millions of Internet users daily under the YAHOO! trade mark and trade name. The Complainant claims to have used the YAHOO! trade mark since 1994, and the trade mark has been ranked as one of the top global brands.
The Complainant’s mark has been registered in countries around the world and evidence of its United States federal registrations were submitted with the Complaint. Its main website located at “www.yahoo.com” is claimed to be one of the leading websites on the Internet. In December 2011 alone, apparently more than 219 million individuals used Yahoo! worldwide and the Yahoo! site received 1.3 billion page views per day. The Complainant submitted evidence of a Nielsen/Net Rating in February 2002 in which Yahoo! was ranked as the number one destination on the Internet for the 21st straight month, recognizing Yahoo! as the global leader in reach, total time spent, visits per person and total page views. In December 2010, Yahoo! was ranked as the number one property in the United States, with 181.2 million visitors, with 3.4 billion searches performed on its website, and Yahoo! advertising services reaching more than 85% of the online population.
The Complainant also operates other websites under the YAHOO! mark and using YAHOO-formative trade marks and domain names, e.g. YAHOO! MAIL, YAHOO! MESSENGER, YAHOO! ENTERTAINMENT, YAHOO! GAMES, YAHOO! FINANCE, YAHOO! MOVIES, etc. Some of these sites are specific to particular countries, regions and/or languages.
The disputed domain name was registered on May 2, 2002. The Complainant claims it first became aware of the registration of the disputed domain name and use thereof in late 2010. On or around December 23, 2010, the Complainant sent via email a letter informing the Respondent of the Complainant’s trademark rights in YAHOO! and requesting the transfer of the disputed domain name. The Complainant submitted in evidence a copy of the Respondent’s reply which was sent by email on the same day. The email read: “I don’t believe I am infringing your Trademark YAHOO! Indeed, nowhere in the page do I mention ‘YAHOO!’. However, I am not going to proceed with the project I had for this domain name and am ready to cease it to you but not without any costs as you suggest in your email. My asking price is US$1,200”.
On or around January 3, 2011, the Complainant’s counsel sent via email a letter informing the Respondent of the Complainant’s trademark rights in the YAHOO! mark and requesting a transfer of the disputed domain name. Later that day, the Respondent sent a response via email, identical to that of its email of December 23, 2010. It again demanded USD 1,200. On January 4, 2011, the Complainant’s counsel sent a reply to the Respondent, indicating that, contrary to its claims, the YAHOO! mark was specifically mentioned in the Respondent’s webpage in numerous places. On January 18, 2011, the Complainant’s counsel sent another letter via email, requesting the Respondent’s confirmation that it would agree to transfer the disputed domain name. No response was received from the Respondent.
5. Parties’ Contentions
A. Complainant
The Complainant asserts, firstly, that the disputed domain name is confusingly similar to the Complainant’s trade marks in which it has rights (paragraph 4(a)(i) of the Policy). The disputed domain name which incorporates the Complainant’s YAHOO! mark and another generic word “page” renders it confusingly similar to the Complainant’s said mark. The omission of the exclamation mark from the disputed domain name is irrelevant since exclamation marks are not permitted in domain names and the dominant portion of the Complainant’s mark is YAHOO. Moreover, even if exclamation points were permitted, its absence would not sufficiently differentiate the Complainant’s mark and the disputed domain name.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name (paragraph 4(a)(ii) of the Policy). On this point, the Complainant submits as follows:
(i) There is no evidence that the Respondent is and has been commonly known by the disputed domain name. Further, neither the business name of the Respondent (Blue Q Ltd.) nor the name of the Respondent (Romain Barissat) incorporates or bears any similarity to the Complainant’s mark.
(ii) The Complainant has not authorized the Respondent to use its YAHOO! trade mark.
(iii) Over 90 panel decisions under the Policy involving YAHOO! marks have been issued in the Complainant’s favour. The Panels in at least 38 of these cases expressly found the YAHOO! mark to be a well-known mark. Given the international fame of the Complainant’s YAHOO! mark, the Respondent could not be known by the disputed domain name.
(iv) The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers (paragraph 4(c)(iii) of the Policy); instead, the Respondent appeared to be planning to profit from the disputed domain name by placing pay-per-click or sponsored links to advertisements from one of the Complainant’s competitors. The Respondent’s repeated attempts to sell the disputed domain name to the Complainant for USD 1,200 is also reflective of the Respondent’s intent to profit financially.
(v) The Respondent clearly registered the disputed domain name with the Complainant’s YAHOO! mark in mind and did so with the intention to divert Internet traffic to its website.
Thirdly, the Complainant asserts that the Respondent registered and used the disputed domain name in bad faith (paragraph 4(a)(iii) of the Policy) and this is supported by the following facts:
(a) The Respondent undoubtedly registered the disputed domain name with actual knowledge of the Complainant’s rights in the YAHOO! mark since the mark is internationally well known. It must also have known that the inclusion of the YAHOO! mark in the disputed domain name would serve to draw Internet traffic to its website, thereby capitalizing on the fame of the YAHOO! mark.
(b) Despite having been informed by the Complainant of its rights to the YAHOO! mark, the Respondent refused to transfer the disputed domain name for a reasonable sum. Instead, it demanded a sum of USD 1,200 for the transfer. Such conduct constitutes bad faith cybersquatting.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As required by paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is clear in this case that the Complainant has rights in the trade mark YAHOO! and that the mark is well known internationally. The remaining question then is whether the disputed domain name is confusingly similar to the Complainant’s trade mark.
In this regard, the generic top-level domain “.com” can be ignored. The difference between the disputed domain name and the Complainant’s YAHOO! trade mark lies only in the addition of the word “page” and the omission of the exclamation mark. Numerous earlier decisions under the Policy have established the principle that the addition of a descriptive or generic word to a trade mark does little to avoid confusion. The Panel agrees that with the wholesale incorporation of the YAHOO sign (which is the primary word element in the Complainant’s YAHOO! mark), the addition of the descriptive word “page” does not at all serve to remove the confusing similarity with the Complainant’s mark, all the more in the context of webpages or websites. The Panel also agrees with the Complainant’s submission that the omission of the exclamation mark is irrelevant in this context.
The Panel therefore concludes that paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(b) of the Policy provides that a complainant must establish that a respondent has no rights or legitimate interests in the disputed domain name. Once a prima facie case has been established by the complainant, the respondent has the burden of rebutting the presumption. Paragraph 4(c) of the Policy gives a few examples of ways in which a respondent may demonstrate his rights or legitimate interests in a disputed domain name.
In this case, the Panel finds that the Complainant has succeeded in establishing a prima facie case of the Respondent’s absence of rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name. Further, bearing in mind the arbitrary, distinctive and well-known nature of the mark in this case and in the absence of the Complainant’s authorization for the Respondent to use its trade mark in the disputed domain name, the Panel is of the view that it would indeed be difficult for the Respondent to establish that he has rights or legitimate interests in the disputed domain name which contains the mark YAHOO. There is also no evidence that the Respondent has made use of, or demonstrable preparations to use, the disputed domain name, or name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
The Complainant has successfully established that the Respondent has no rights or legitimate interests in the disputed domain name. Since the Respondent has chosen not to file a Response to rebut the prima facie case, the Panel finds in favor of the Complainant.
The Panel therefore concludes that paragraph 4(a)(ii) of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that “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”:
(i) circumstances indicating that the respondent registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location.
The facts presented in the Complaint do support a finding of bad faith registration and use. As a preliminary point, the Panel finds that the Respondent could not but have known of the Complainant’s rights in the mark YAHOO! when it registered the disputed domain name. Even in the year 2002 when the disputed domain name was registered, the evidence submitted by the Complainant does reflect that the YAHOO! mark and brand name had attained a high level of reputation and recognition. Further, looking into the issue of how the disputed domain name was used, it has been noted that it resolved to a website that contained links to other sites that included that of the Complainant’s competitors. The Respondent’s use of the disputed domain name was evidently in an attempt to create confusion to attract Internet users to its website for commercial gain (paragraph 4(b)(iv) of the Policy). Such use cannot constitute good faith use. Earlier panel decisions under the Policy have also held that the wholesale incorporation of a well-known trade mark into a domain name tends to support a finding of bad faith registration and use. These circumstances, as well as the evidence of the Respondent’s demand for USD 1,200 notwithstanding the Complainant’s clear rights in the mark YAHOO!, all support a finding of bad faith registration and use.
In the absence of any evidence which would suggest the contrary, the Panel finds in favour of the Complainant.
The Panel therefore concludes that paragraph 4(a)(iii) of the Policy has been established.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <yahoopage.com> be transferred to the Complainant.
Francine Tan
Sole Panelist
Dated: June 20, 2011
