WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yahoo! Inc. v. Yang Zhi

Case No. D2013-0522

1. The Parties

The Complainant is Yahoo! Inc. of Sunnyvale, California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.

The Respondent is Yang Zhi of Guangzhou, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <brandyahoo.com> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2013. On March 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 20, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On March 23, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 March 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2013.

The Center appointed Jonathan Agmon as the sole panelist in this matter on April 19, 2013. 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, Yahoo! Inc. is a US company based in California. The Complainant owns the domain name <yahoo.com>, which is one of the most trafficked Internet destinations worldwide. The Complainant provides various online services, including searching, directory, information, communication, shopping, and electronic commerce services.

The Complainant owns multiple worldwide trademark registrations for the mark YAHOO! For example: US Trademark Registration No. 2,403,227, first used in June 1994, filed on August 13, 1998; US Trademark Registration No. 2,040,222, first used on June 1, 1994, filed on January 24, 1996; US Trademark Registration No. 2,187,292, first used on September 22, 1997, filed on February 28, 1997; US Trademark Registration No. 2,040,691, first used on January 2, 1996, filed on April 24, 1996. Chinese Trademark Registration No. 3864422, registered on November 7, 2010.

The disputed domain name was registered on September 12, 2006.

On the basis of the record and on the statements made by the Complainant, it appears that the disputed domain name had been used for placing listings for counterfeit goods before it was deactivated by the Respondent.

The Complainant’s counsel sent a cease and desist letter to the Respondent on July 21, 2011 informing the Respondent of the Complainant’s trademark rights in the mark YAHOO! and requesting transfer of the disputed domain name. On September 14, 2011 the Complainant’s counsel sent an additional letter to the Respondent. On January 13, 2013 the Complainant’s counsel sent a follow up letter informing the Respondent that the Complainant must receive an immediate response or the Complainant would take further action to halt the illegal conduct made by the Respondent. The Respondent has not responded.

On January 16, 2013, the Complainant sent a letter to the former host of the website under the disputed domain name, GoDaddy.com, regarding the Respondent’s unauthorized use of the Complainant’s trademark in connection with the disputed domain name. In response, GoDaddy.com redirected the website to a parked webpage and notified the Respondent of this action.

On January 17, 2013, the Complainant discovered the Respondent had moved the website at the disputed domain name to a new service provider. On the same day the Complainant’s counsel sent two letters to the current host of the website at the disputed domain name, Ecommerce Corporation, regarding the Respondent’s unauthorized use of the Complainant’s trademark in connection with the disputed domain name. On January 20, 2013 Ecommerce Corporation replaced the website at the disputed domain name with an error page.

5. Parties’ Contentions

A. Complainant

The Complainant argues the YAHOO! mark is a well-recognized trademark around the world.

The Complainant further argues that the disputed domain name includes the entirety of the Complainant’s mark.

The Complainant further argues that the YAHOO! is an arbitrary, distinctive, strong and famous trademark.

The Complainant further argues that the disputed domain name merely adds a generic or descriptive term to the Complainant’s well-known trademark.

The Complainant further argues that the disputed domain name consists of two elements – “Yahoo” and “brand”. The Complainant further contends that the element “brand” is descriptive and is not sufficient to prevent confusing similarity with the Complainant’s trademark.

The Complainant further argues that the omission of the exclamation point of the disputed domain name is irrelevant.

The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Respondent is not related in any way to the Complainant’s business.

The Complainant further argues that the Respondent must have had knowledge of YAHOO! trademark at the time of the registration of the disputed domain name, since it is a well-known trademark.

The Complainant further argues that the Respondent has been using the disputed domain name by placing an auction or online retail store website offering for sale counterfeit goods.

The Complainant further argues that the Respondent is making an illegitimate commercial use of the disputed domain name.

The Complainant further argues that the Respondent acted in bad faith when using the disputed domain name to intentionally attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark.

The Complainant further argues that even after the Respondent was put on notice and the former host of the website at the disputed domain name redirected the website to a parked webpage, the Respondent immediately changed its service provider to be able to continue operating the website under the disputed domain name.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the YAHOO! mark around the world. For example: US Trademark Registration No. 2,403,227, first used in June 1994, filed on August 13, 1998; US Trademark Registration No. 2,040,222, first used on June 1, 1994, filed on January 24, 1996; US Trademark Registration No. 2,187,292, first used on September 22, 1997, filed on February 28, 1997; US Trademark Registration No. 2,040,691, first used on January 2, 1996, filed on April 24, 1996. Chinese Trademark Registration No. 3864422, registered on November 7, 2010.

Also, the Complainant’s rights in the YAHOO! mark have been established in numerous UDRP decisions (see e.g.Yahoo! Inc. v. Blue Q Ltd., Romain Barissat, WIPO Case No. D2011-0702, and Yahoo! Inc. v. Yahoosexy.com, Yahoo-sexy.com, Yahoosexy.net, Yahousexy.com and Benjamin Benhamou, WIPO Case No. D2001-1188).

The disputed domain name <brandyahoo.com> differs from the registered YAHOO! trademark by the additional word “brand”, the omission of the exclamation point and the additional gTLD “.com”.

The Panel finds the disputed domain name integrates the Complainant’s YAHOO trademark in its entirety, as a dominant element.

The additional word “brand” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark, as it is a common term in the Complainant’s field of business.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate a domain name from the relevant registered trademark: “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”. (See Yahoo! Inc. v. Blue Q Ltd., Romain Barissat, WIPO Case No. D2011-0702).

Also see: “the Disputed Domain Name integrates the Trademark in full to which is added a suffix (i.e. (shows), which is a generic term. The Panel consequently holds that the addition of this suffix does not distinguish the Disputed Domain Name from the Trademark to avoid a confusing similarity”. (See Yahoo! Inc. v. Jesper Hansen, WIPO Case No. D2011-2227).

The Panel agrees with the Complainant’s submission that the omission of the exclamation mark is irrelevant in this context (See Yahoo! Inc. v. Blue Q Ltd.,Romain Barissat, WIPO Case No. D2011-0702; Yahoo! Inc. v. Jesper Hansen, WIPO Case No. D2011-2227): “this Panel finds that the relevant trademark YAHOO! is recognizable as such within each disputed domain names, albeit without the exclamation mark “!”. The exclamation mark is not relevant for any aural comparison”. (See Yahoo! Inc. v. Scott Mcvey, WIPO Case No. D2011-1486).

The addition of the gTLD “.com” to the disputed domain name does not avoid a finding of confusing similarity. (See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate a domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the YAHOO! trademark, or a variation thereof.

The Respondent had not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the YAHOO! trademark at least since the year 1994. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Complainant also provided evidence to demonstrate its trademark’s vast goodwill. The Panel cites the following with approval: “The Respondent’s selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence… Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent’s registration and use of the disputed domain name other than that of bad faith” (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.

Indeed, “the YAHOO! mark has developed into one of the most famous marks associated with the Internet by way of the mark’s use on the highly popular “www.yahoo.com” website. Because of the established identity of the YAHOO! mark, Respondent had at the very least constructive knowledge of Complainant’s rights in the mark….. Therefore, circumstances indicate that Respondent was fully aware of Complainant’s valuable interests in the YAHOO! mark prior to registering the subject domain names. Hence, Respondent registered the domain names in bad faith under Policy” (Yahoo! Inc. v. Yuan Zhe Quan, NAF Claim No. 117877).

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name resolves, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolve.

The disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

The Complainant submitted evidence that the Respondent was using the disputed domain name to direct Internet users to a webpage offering for sale counterfeit goods, which does not constitute a bona fide offering of goods or services or noncommercial fair use.

The Respondent has been utilizing the Complainant’s trademark in the disputed domain name for commercial gain by creating Internet user confusion through suggesting that the source of the Respondent’s website is the Complainant. Such action constitutes bad faith registration and use of the disputed domain name. (See Schur International A/S v. Jorge Massa, WIPO Case No. D2009-0450 and Yahoo! Inc. v. Jesper Hansen, WIPO Case No. D2011-2227).

Furthermore, even after the Respondent was put on notice and also the former host of the website at the disputed domain name redirected the website to a parked webpage, the Respondent immediately changed its service provider to be able to continue operating the website under the disputed domain name. This clearly indicates to the Panel the Respondent’s bad faith.

Finally, based on the evidence presented to the Panel, taking into consideration the goodwill the Complainant achieved in its trademark, the late registration of the disputed domain name, the non-legitimate commercial use of the disputed domain name and the Respondent’s act in changing the service provider, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 disputed domain name <brandyahoo.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: April 30, 2013