Yahoo! Inc. v. CPIC NET, MIC; Syed Hussain

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yahoo! Inc. v. CPIC NET and Syed Hussain

Case No. D2001-0195

1. The Parties

Complainant is Yahoo! Inc. ("Complainant" or "Yahoo"),

a Delaware corporation with its principal place of business at 3420 Central

Expressway, Santa Clara, California 95051 USA.

Respondents are CPIC NET and Syed Hussain ("Respondent" or "CPIC")

located at 15 15th Street, Closter, New Jersey 07624 USA.

2. The Domain Name(s) and Registrar(s)

The following domain names at issue are listed below and are registered with

Network Solutions, Inc. (the "NSI") located at 505 Huntmar Park Drive,

Herndon, Virginia, 20170 USA:

<yahookimo.com>

<yahoocabs.com>

<yahoocab.com>.

These domain names are collectively referred to as the "NSI Domain Names."

The following domain names at issue are listed below and are registered with

BulkRegister.com ("BulkRegister") at 7 East Baltimore Street, Baltimore,

Maryland 21202 USA:

<yahooebay.org>

<yahooebaycorp.com>

<yahooebaygroup.com>

<yahoo-ebay.com>

<ebay-yahoo.com>

<ebayyahoo.net>

<yahoobay.net>

<yahoobay.org>.

These domain names are collectively referred to as the "BulkRegister Domain

Names."

3. Procedural History

On February 6, 2001, the WIPO Arbitration and Mediation Center (the "Center")

received a copy of the Complaint of Complainant. The Complainant paid the required

fee.

On February 21, 2001, after the Center sent a Request for Verification to NSI

and to BulkRegister.com requesting verification of registration data, the registrars

confirmed, inter alia, that they are the registrars of the domain names

at issue and that the NSI Domain Names and the BulkRegister Domain Names are

registered in the Respondent's name.

The Center verified that the Complaint with Amendment satisfies the formal

requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the

"Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy

(the "Rules"), and the Supplemental Rules for Uniform Domain Name

Dispute Resolution Policy (the "Supplemental Rules").

On February 26, 2001, the Center sent a Notification of Complaint and Commencement

of Administrative Proceeding to the Respondent together with copies of the Complaint

with Amendment, with a copy to the Complainant. This notification was sent by

the methods required under paragraph 2(a) of the Rules.

On March 20, 2001, the Center advised Respondent that it was in default for

failing to file its Response. No Response has been received.

On April 18, 2001, after the Center received a completed and signed Statement

of Acceptance and Declaration of Impartiality and Independence from Richard

W. Page (the "Sole Panelist"), the Center notified the parties of

the appointment of a single-arbitrator panel consisting of the Sole Panelist.

4. Factual Background

Complainant is the owner of the service marks and trademarks YAHOO! and YAHOO!

(stylized) as well as the trade name YAHOO! and the domain name <yahoo.com>

(the "Yahoo Marks"). Yahoo is the owner of the following United States

trademark registrations:

Registration No. 2,040,222 for the mark Yahoo!

issued February 25, 1997.

Registration No. 2,040,691 for the mark Yahoo!

Stylized) issued February 25, 1997.

Registration No. 2,076,457 for the mark Yahoo!

issued July 1, 1997.

Registration No. 2,159115 for the mark Yahoo!

issued May 19, 1998.

Registration No. 2,187,292 for the mark Yahoo!

issued September 8, 1998.

Registration No. 2,243,909 for the mark Yahoo!

issued May 4, 1999.

Registration No. 2,273,128 for the mark Yahoo!

issued August 24, 1999.

Registration No. 2,403,227 for the mark Yahoo!

issued November 14, 2000.

Yahoo is a global Internet communications, media and commerce company that

delivers a branded network of comprehensive searching, directory, information,

communication, shopping services and other online activities and features to

millions of Internet users daily. Yahoo’s services include web directory and

search services, travel-related service, Internet access, email, chat, online

games, sweepstakes and other contests, stock quotes, insurance quotes, tax information

and filing services, small business advice and services, business and financial

information and services, loan quotes, real estate and mortgage information

and quotes, movie reviews, news, weather, sports, yellow pages, maps, auctions,

online shopping, classified advertising, audio and video streaming, and web

store hosting and management. The main Yahoo website can be accessed at <www.yahoo.com>.

Yahoo began as a web directory and search engine. Yahoo’s web directory was

developed in early 1994 by the company’s founders, David Filo ("Filo")

and Chihyuan "Jerry" Yang ("Yang"), while they were graduate

students at Stanford University. Filo and Yang started by "surfing the

Web" to find interesting sites and maintaining a list of those sites and,

thereafter, by creating software to categorize the websites and link them with

hierarchies in a directory. They also created software to enable users to search

the directory. In March 1994, the directory websites were made available by

Filo and Yang on the Internet free of charge.

Yahoo’s web directory initially called "Jerry and David’s Guide to the

World Wide Web." A short time later, in June 1994, the name was changed

to "Yahoo!" Shortly thereafter, the overwhelming success of the Yahoo

site led it founders to take a leave of absence from Stanford University and

to concentrate on setting up a business and raising capital to run the business.

Yahoo’s Initial Public Offering of stock was in April 1996. Yahoo currently

has a market capitalization of approximately US$15 billion.

Yahoo’s directory and search services enable Internet users, even non-technical

ones, to find information relevant for their purposes out of the vast amount

of content on the Web. The Yahoo web directory and search services allow users

to quickly locate information on the Internet by typing in a word or words relating

to the subject matter of interest to the user.

Yahoo also sells advertising and promotions on its site. Much of the advertising

consists of banner advertisements that appear on the top of directory pages

within the Yahoo website. A "hypertext link" is embedded in each banner

advertisement, which allows the user to click on the banner and instantaneously

access the advertiser’s own website to obtain additional information or to purchase

products or services. In addition to banner advertisements, Yahoo also sell

merchandising units, sponsorships and promotions (including on line sweepstakes

and other contests), and also sends targeted direct email advertisement to registered

users who have opted to receive such email.

Yahoo carried the advertisements of more that 3,700 companies during 2000.

Among the companies that have advertised their products or services on the Yahoo

site are Apple, Colgate-Palmolive, Disney, The Gap, Honda, IBM, Lego, Microsoft,

Procter & Gamble, Sony, Swatch, Toshiba, and Visa.

Nearly all of Yahoo’s current Internet services are offered to the public free

of charge, its income being primarily derived from the sale of advertising and

co-branding or sponsorship agreements with other companies. Yahoo also receives

revenues from certain electronic commerce transactions originating from the

Yahoo site, including Yahoo Travel. Yahoo also sells merchandise bearing the

Yahoo mark such as "Official Strategy Guides" for popular online games

such as poker and blackjack, Yahoo! Internet Life magazines, computer equipment,

toy cars, watches, writing instruments, clothing, hats, posters, clocks, duffel

bags, baseballs and much more. Yahoo’s revenues have increased since it started

accepting advertising in August 1995. Revenues were US $1.6 million in

1995; US $23.8 million in 1996; US $84.1 million in 1997; US $245.1 million

in 1998; US $588.6 million in 1999; and US $1.1 billion in 2000.

The Yahoo website has become incredibly popular, with traffic on Internet users

to the site increasing rapidly. The Yahoo site has emerged as one of the leading

Internet web guides in terms of traffic, advertising, household and business

user reach, and is one of the most recognized brands associated with the Internet.

It has also been ranked number one among websites in numerous categories including

Regional/Local Content, Travel, Shopping, Finance, the Arts, Entertainment,

Health and Fitness, News and Politics. The Yahoo Marks are unique and not diluted.

Since its inception, the Yahoo website has been recognized with numerous industry

awards, including the 1998 "Entrepreneurial Company of the Year" award

from Harvard Business School, the "Best of the Net ’97" award from

Internet World magazine, and the 1998 "ASAP - Number One Internet Services

and Content" from Forbes magazine.

The number of visits to the Yahoo website has increased dramatically each year

since Yahoo’s inception. During September 1998, for example, the Yahoo site

averaged 144 million "page views" per day, and during September

2000 traffic grew to an average of 780 million page view per day. A "page

view" is defined as one electronic page of information displayed in response

to a user request. One visitor to the site can represent more that one page

view. This translates into hundreds of millions of discrete visits to the Yahoo

site every quarter. According to a December 2000 report from the Web market

research firm Media Metrix, the Yahoo network of properties has ranked number

two in the "Top 50 Digital Media/Web Properties At Home & At Work Combined

in the United States" for the month of November 2000.

Moreover, as of January 1, 2001, Yahoo had over 233 million unique registered

users, i.e., users who registered with Yahoo in order to participate in Yahoo’s

registered member services, including games, shopping, auctions, classifieds,

email, clubs calendars, message boards, chat rooms and more.

In addition to the variety of services offered at Yahoo’s main site located

at <www.yahoo.com>, Yahoo operates many additional sites under the Yahoo

Marks and using Yahoo-formative trademarks and domain names. Yahoo has sites

that are specific to particular countries or regions.

Yahoo announced on November 9, 2000, that it signed an agreement to acquire

Kimo (<www.kimo.com.tw>), the top-ranked website in Taiwan according to

an October 2000 study released by AC Nielsen, that provides online consumers

with comprehensive search capabilities, localized content, and community and

personalized services, including email, clubs and chat. For the third quarter

of 2000, Kimo reported an average of 25 million page views per day and four

million registered members, Kimo provides comprehensive search capabilities,

localized content, community and personalized services across one of the most

advanced technology platforms in the Taiwan Internet industry, including a sophisticated

Chinese language search engine, an advanced email system, and a real time stock

quote delivery system.

Yahoo operates other sites specific to particular topics or population groups,

such as the Yahoo Chinese site which is directed to Chinese speakers around

the world (<chinese.yahoo.com>), the Yahoo en Espanol site which is directed

to Spanish speakers around the world (<espanol.yahoo.com>) and the Yahooligans

site which is specifically designed for children aged 7-12 (<yahooligans.com>).

Yahoo also offers a wide variety of services using the Yahoo Marks together

with a descriptive name of its services, including but not limited to Yahoo!

Shopping, Yahoo! Travel, Yahoo! Chat, Yahoo! Small Business, Yahoo! Messenger,

Yahoo! Finance, Yahoo! Auctions, Yahoo! Photos, Yahoo! Address Book, Yahoo!

Calendar, Yahoo! Bill Pay and Yahoo! Store.

In July 2000, one of the word’s leading brand marketing and consulting firms

– Interbrand – published its annual report which ranks the world’s most valuable

brands. Yahoo moved from number 53 in 1999, valued at nearly US $1.8 billion,

to number 38 with a value of US $6.3 billion. The Yahoo brand surpassed

AOL as the most valuable brand associated with the Internet.

By virtue of the arbitrary nature and hence the inherent strength of the Yahoo

Marks as applied to Yahoo’s vast array of web-based services; the millions of

visitors to the Yahoo network of websites everyday; the millions of links to

the Yahoo site from third-party website; and Yahoo’s extensive use, promotion,

and registration of its Yahoo Marks, the Yahoo Marks and the <yahoo.com>

domain name have become famous. The United States District Court for the Eastern

District of Virginia has specifically held that the Yahoo Marks are famous.

See, Yahoo! Inc. v. Buffalo Wu, CA 00-00178-A.

Moreover, fifteen ICANN decisions involving the Yahoo Marks have been issued

by WIPO Panels, all in Yahoo’s favor. The panelists in at least nine of these

cases expressly found the Yahoo Marks to be famous.

5. Parties’ Contentions

A. Complainant contends that it has numerous registrations relating to the

Yahoo Marks. Complainant further contends that the NSI Domain Names and the

BulkRegister Domain Names are identical with and confusingly similar to the

Yahoo Marks pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in

the NSI Domain Names and the BulkRegister Domain Names pursuant to the Policy

paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the NSI Domain

Names and the BulkRegister Domain Names in bad faith in violation of the Policy

paragraph 4(a)(iii).

B. Respondent failed to contest Complainant’s assertion that it has numerous

registrations relating to the Yahoo Marks or that the NSI Domain Names and the

BulkRegister Domain Names are identical with and confusingly similar to the

Yahoo Marks.

Respondent failed to contest Complainant’s assertion that Respondent has no

rights or legitimate interest in the NSI Domain Names and the BulkRegister Domain

Names.

Respondent failed to contest Complainant’s assertion that Respondent registered

and used the NSI Domain Names and the BulkRegister Domain Names in bad faith.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel

is to use in determining the dispute: "A Panel shall decide a complaint

on the basis of the statements and documents submitted in accordance with the

Policy, these Rules, and any rules and principles of law that it deems applicable."

Since both the Complainant and Respondent are domiciled in the United States,

and since United States’ courts have recent experience with similar disputes,

to the extent that it would assist the Panel in determining whether the Complainant

has met its burden as established by Paragraph 4(a) of the Policy, the Panel

shall look to rules and principles of law set out in decisions of the courts

of the United States.

Prove Up of Elements.

Even though Respondent has failed to file a Response or to contest Complainant’s

assertions, the Sole Panelist will review the evidence proffered by Complainant

to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each

of the following:

i) 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,

ii) that the Respondent has no legitimate interests in respect of the domain

name; and,

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

Enforceable Trademark Rights

Registered Trademark (Prima Facie).

Complainant contends that it has numerous registrations relating to the Yahoo

Marks and that its trademark registrations are valid and subsisting and serve

as prima facie evidence of its ownership and the validity of the ENCARTA

mark. 15 U.S.C. § 1115. Complainant further alleges that its registrations are

incontestable and conclusive evidence of its ownership of the mark and exclusive

right to use the mark in connection with the stated goods. 15 U.S.C. §§ 1065

and 1115(b).

Panel decisions have held that registration of a mark is prima facie evidence

of validity, which creates a rebuttable presumption that the mark is inherently

distinctive. Respondent has the burden of refuting this assumption. See,

e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,

ICANN Case No. D2000-0047. It is the Panel's

belief that Respondent has not met its burden.

Respondent has not contested the assertions by Complainant that it has valid

registrations relating to the Yahoo Marks. Therefore, the Sole Panelist finds

that Complainant, for purposes of this proceeding, has enforceable rights in

the Yahoo Marks.

Confusingly Similar

Complainant further contends that the NSI Domain Names and the BulkRegister

Domain Names are confusingly similar to the trademark pursuant to the Policy

paragraph 4(a)(i).

Respondent has not contested the assertions by Complaint that the NSI Domain

Names and the BulkRegister Domain Names are confusingly similar to the trademark.

The Sole Panelist notes that the entirety of the phrase "yahoo" is

included in both the NSI Domain Names and the BulkRegister Domain Names.

Non-Distinctive or Descriptive Material (Generally).

Generally, a user of a mark "may not avoid likely confusion by appropriating

another's entire mark and adding descriptive or non-distinctive matter to it."

3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition

§ 23:50 (4th ed. 1998).

Here, Respondent’s NSI Domain Names and BulkRegister Domain Names are confusingly

similar to the Yahoo Marks because they incorporate the "yahoo" phrase

in its entirety.

Adaptive Molecular Tech., Inc. v. Woodward, WIPO

Case No. D2000-0006 (February 28, 2000) (finding that a domain name was

"undoubtedly" confusingly similar because it incorporated the "primary, distinctive

element of both of Complainant's trademarks.") Moreover, in determining the

similarity of two marks, points of similarity are weighed more heavily than

points of difference. See, GoTo.com, Inc. v. Walt Disney Co., 202 F.3d

1199, 1206 (9th Cir. 2000); Brookfield Communications, Inc. v. West Coast

Entertainment Corp., 174 F.3d 1036, 1054-55 (9th Cir. 1999).

Association With Complainant (Misleading).

In addition, the NSI Domain Names and the Bulk Register Domain Names are confusingly

similar in that the offending domain name is misleading. The NSI Domain Names

and the Bulk Register Domain Names suggest an association with or relationship

to Complainant, which does not exist and, if used by parties other than Complainant,

will cause confusion in the marketplace. See Nike, Inc., WIPO

Case No. D2000-0167, id.

Complainant's mark and its services are famous. Complainant has been using

"yahoo" since June 1994. The enormous volume of traffic on Complainant's

site is evidence of the fame of Complainant's mark. Accordingly, Complainant's

Yahoo Marks are well known and foremost in the minds of consumers. Addition

of the names of other websites such as "kimo" and "ebay"

to the phrase "yahoo" does not adequately distinguish Respondent’s

registrations from the Yahoo Marks. Persons familiar with the Yahoo Marks are

likely to conclude that the NSI Domain Names and the BulkRegister Domain Names

are simply an extension of Complainant's business. Persons encountering Respondent's

site will be mislead into believing Complainant is beginning another business,

which could be detrimental to Complainant. In view of the fame of Complainant's

marks and the lack of distinctiveness afforded by the addition of the names

of other websites unrelated to Respondent is misleading.

Conclusion

Therefore, the Sole Panelist finds that the NSI Domain Names and the BulkRegister

Domain Names are confusingly similar to the Yahoo Marks pursuant to the Policy

paragraph 4(a)(i).

Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interest in

the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Respondent has no relationship with or permission from Complainant for the

use of the Yahoo Marks.

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist

to conclude that Respondent has rights or a legitimate interest in the NSI Domain

Names or the BulkRegister Domain Names:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.

The file contains no evidence that the use of the NSI Domain Names and the

BulkRegister Domain Names meets the elements for any of the nonexclusive methods

provided for in the Policy paragraph 4(c).

Respondent has offered no evidence that the use of the Domain Names meets the

elements for any of the nonexclusive methods provided for in the Policy paragraph

4(c).

Therefore, the Sole Panelist finds that Respondent has no rights or legitimate

interest in the NSI Domain Names or the BulkRegister Domain Names pursuant to

the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the NSI Domain

Names and the Bulk Register Domain Names in bad faith in violation of the Policy

paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant

to show bad faith registration and use of domain names:

(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 website 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 website or location

or of a product

Complainant alleges that the registration of the NSI Domain Name <yahookimo.com>

was made by Respondent at the same time Yahoo issued a press release regarding

its acquisition of its Taiwanese subsidiary Kimo.

Complainant further alleges that the registration of the NSI Domain Names <yahoocabs.com>

and <yahoocab.com> corresponded to the Yahoo press release regarding the

launch of Yahoo-branded Internet cabs in New York City.

Complainant further alleges that the registration of the BulkRegister Domain

Names coincided with reports of a rumor of a possible merger between eBay and

Yahoo.

Complainant alleges that Respondent registered the NSI Domain Names and the

BulkRegister Domain Names with prior knowledge of the famous Yahoo Marks.

On January 9, 2001, Yahoo’s in-house counsel senior trademark counsel, Laura

Covington, attempted to contact Respondent. Ms Covington left a voice message

for Respondent Hussain at the phone number listed in the WHOIS record regarding

Respondent’s use of the domain name <yahookimo.com>. On January 10, 2001,

Mr. Hussain returned Ms Covington’s call and discussed the use of the domain

name <yahookimo.com>. On the same day, Mr. Hussain left a voice message

for Ms. Covington in which he advised her that he was open to consider

a "reasonable offer" in exchange for the transfer of <yahookimo.com>.

On January 12, 2001, Ms. Covington left Mr. Hussain a voice message in

which she informed him that Yahoo would not pay any fees beyond registration

and transfer costs and that Mr. Hussain’s action infringed the Yahoo Marks.

On January 16, 2001, Ms Covington emailed Mr. Hussain reiterating Yahoo’s

position. Mr. Hussain did not respond to the email.

Respondent has been found to have breached the Policy on numerous previous

occasions in reported ICANN cases. In one of those cases, Time Warner, Inc.

and EMI Group plc v. CPIC NET, WIPO Case

No. D2000-0433, the Panel found that Respondent had registered several domain

names after announcement of the merger between Time Warner and EMI. Specifically,

the Panel found that:

It was with knowledge of Time Warner and EMI’s rights in their individual marks

and new joint marks, and with the specific intent to trade off of those rights,

that CPIC NET registered the Domain Names. The merger between Time Warner and

EMI was reported in the United States on January 22, 2000, two days before it

was announced by the companies. It is during that interval that Mr. Hussain

systematically registered different combinations of the two companies’ marks

in an attempt to exploit the expected use of these famous marks in a combined

form.

Purpose of Selling 4(b)(i).

Complainant alleges that the Respondent has offered to sell the NSI Domain

Name <yahookimo.com> for an amount greater than its out-of-pocket costs.

This allegation is uncontested by Respondent.

Therefore, the Sole Panelist finds that Complainant has shown the necessary

elements of bad faith under the Policy paragraph 4(b)(i).

Prevent Owner’s Use With Pattern 4(b)(ii).

Complainant alleges that the Respondent has registered the NSI Domain Names

and the BulkRegister Domain Names in order to prevent the Complainant from reflecting

the trademark in the corresponding Domain Names. The numerous findings of bad

faith by Respondent and specifically Respondent’s attempt to trade off the Time

Warner/EMI merger constitute a pattern of such activities.

Therefore, the Sole Panelist additionally finds that this evidence is sufficient

to establish the necessary elements of bad faith under the Policy paragraph

4(b)(ii).

Conclusion.

Based upon this evidence, the Sole Panelist finds that Complainant has shown

sufficient facts to support a finding that Complainant has demonstrated the

existence of the criteria in the Policy paragraphs 4(b)(i) and (ii) and that

Respondent registered and used the NSI Domain Names and the BulkRegister Domain

Names in bad faith pursuant to the Policy paragraph 4(a)(iii).

Nonexclusive Criteria

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive.

Telstra Corporation Limited v. Nuclear Marshmallows, WIPO

Case No. D2000-0003. In addition to these criteria, other factors alone

or in combination can support a finding of bad faith.

Inaction or Lack of Use.

One such factor is that Respondent has made no use of the NSI Domain Names

or the BulkRegister Domain Names. Complainant alleges that Respondent has not

developed any active website in relation to any of the NSI Domain Names and

BulkRegister Domain Names. See Telstra Corp. v. Nuclear Marshmallows,

D2000-0003 (WIPO February 18, 2000).

Telstra it was established that registration together with "inaction"

and other facts can constitute bad faith use, and the Telstra decision

has since been cited for that proposition and followed by subsequent

Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO

Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO

Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO

Case No. D2000-0042; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO

Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com,

WIPO Case No. D2000-0110; Marconi Data

Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO

Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO

Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO

Case No. D2000-0075.

To quote a prior Panel decision, "[B]ecause Respondent is contributing no value-added

to the Internet -- it is merely attempting to exploit a general rule of registration

-- the broad community of Internet users will be better served by transferring

the domain name to a party with a legitimate use for it." Educational Testing

Service v. TOEFL, ICANN Case No. D2000-0044.

See also, Leland Stanford Junior Univ. v. Zedlar Transcription &

Translation, FA 0006000094970 (NAF July 11, 2000); Revlon Consumer Prods.

Corp. v. Yosef, D2000-0468 (WIPO July

27, 2000) (citing cases where panel found inaction constitutes bad faith).

In World Wrestling Federation Entertainment Inc (WWFE) v. Rooij, WIPO

Case No. D2000-0290 (June 20, 2000) the Panel made a finding of bad faith

based on the fact that the domain name website had not been developed, stating

"the concept of a domain name being used in bad faith is not limited to positive

action; inaction is within the concepts." Id. at 10.15. See also, Mondich

v. Brown, WIPO Case No. D2000-0004

(February 16, 2000) (bad faith evidenced by "failure for a substantial period

of time to make good faith use of the domain name for [respondent's] business");

Casual Corner Group, Inc. v. Neil Young, No. FA0007000095112 (NAF August

7, 2000); Emory Healthcare, Inc. v. Gulf South Limited, No. FA 0005000094892

(NAF July 5, 2000).

Actual or Constructive Knowledge

A second factor found to support a finding of bad faith is Respondent’s knowledge

of the Yahoo Marks when Respondent registered the NSI Domain Names and the BulkRegister

Domain Names. Respondent had actual and constructive notice of the Yahoo Marks,

because of the inescapable presence of Yahoo on the Internet and as a trademark

search on the date of the registration of the NSI Domain Names and the BulkRegister

Domain Names would have revealed the Yahoo Marks. Actual or constructive knowledge

of the Complainant’s rights in the Trademarks is a factor supporting bad faith.

See Expedia, Inc. v. European Travel Network, D2000-0137

(WIPO April 18, 2000); Document Technologies v. International Electronic

Communications, Inc., D2000-0270 (WIPO

June 6, 2000) (Respondent’s knowledge of complainant’s mark at the time of registration

of the domain name suggests bad faith).

See, e.g., CCA Industries v. Dailey (bikinizone.com), WIPO Administrative

Panel Decision in Case No. D2000-0148

(constructive notice found where domain name confusingly similar to complainant’s

mark and mark registered prior to respondent’s domain name); Young Genius

Software AB v. MWD (younggenius.com), WIPO Administrative Panel Decision

in Case No. D2000-0591 (constructive notice

found where complainant had trademark registration in Sweden and domain name

registration under the .se top-level domain name prior to respondent’s domain

name registration); The Channel Tunnel Group Ltd. v. Powell, WIPO Case

No. D2000-0038 (March 17, 2000)

(Respondent's awareness of complainant's mark when he registering the domain

name at issue supported an inference of bad faith).

Failure to Respond to Requests to Transfer

A third factor is Respondent’s refusal to voluntarily transfer a contested

domain name. During January 2001, Complainant’s in-house counsel and Respondent

exchanged communications in which Complainant clearly stated it position that

use of the NSI Domain Name <yahookimo.com> was infringing. Respondent

never responded to Complainant’s final offer, thus refusing to transfer the

<yahookimo.com> Domain Name. Failure to respond to a complainant’s efforts

to make contact provides "strong support for a determination of ‘bad faith’

registration and use." Encyclopaedia Britannica v. Zuccarini, D2000-0330

(WIPO June 7, 2000).

Respondent has ignored Complainant’s request to transfer ownership of the Domain

Name. Failure to positively respond to a complainant’s efforts to make contact

provides "strong support for a determination of ‘bad faith’ registration

and use." Encyclopaedia Britannica v. Zuccarini, D2000-0330

(WIPO June 7, 2000).

Course of Conduct

A fourth such factor is a course of conduct by Respondent suggesting bad faith.

The Sole Panelist has previously determined that Respondent has engaged in a

pattern of registrations for mergers of well-known companies. Such a pattern

constitutes a course of conduct, which supports a finding of bad faith.

Use of Entire Mark Without Plausible Good Faith Use

A fifth factor is the use of Complainant’s entire mark in the Domain Name,

thus making it difficult to infer a legitimate use of the contested domain names

by Respondent. In Cellular One Group v. Paul Brien, D2000-0028

(WIPO March 10, 2000), Complainant filed a WIPO complaint

against the Registrant of domain name <cellularonechina.com>. The WIPO

panel agreed with Complainant that the Registrant unlawfully registered an identical

or confusingly similar domain name in bad faith. Moreover, the Panel inferred

bad faith use of <cellularonechina.com>, because the domain name included

Complainant’s entire trademark. In light of Cellular One’s trademark registrations

and applications, "it is not possible to conceive of a plausible circumstance

in which Respondent could legitimately use the domain name." See Telstra

Corp. Ltd. v. Nuclear Marshmallows, WIPO

Case No. D2000-0003 ¶ 7.

The NSI Domain Names and the BulkRegister Domain Names use the entirety of

the phrase "yahoo". No plausible explanation exists as to why Respondent

selected the name "yahoo" as part of the NSI Domain Names and the

BulkRegister Domain Names other than to trade on the goodwill of Yahoo. Despite

contact by Yahoo’s counsel, Respondent has never provided any information to

contradict the conclusion that Respondent registered the NSI Domain Names and

the BulkRegister Domain Names in order to benefit from the well-known Yahoo

Marks.

Respondent has failed to come forward with any facts to contradict the assertions

of Complainant.

The evidence establishes: (i) inaction by Respondent in the use the NSI Domain

Names and the BulkRegister Domain Names to post any content on the Internet

or for any other legitimate purpose; (ii) actual and constructive knowledge

by Respondent of Complainant’s rights in the Yahoo Marks upon the registration

of the NSI Domain Names and the BulkRegister Domain Names; (iii) Respondent’s

failure to positively respond to Complainant’s request for transfer; (iv) a

course of conduct by Respondent to take advantage of mergers between well-know

companies, and (v) the use of Complainant’s entire mark creating an absence

of any plausible use of the NSI Domain Names or the BulkRegister Domain Names

that would constitute good faith.

Conclusion.

Based upon this evidence, the Sole Panelist finds that Complainant has shown

sufficient facts based upon the nonexclusive factors to be considered in addition

to the criteria of the Policy paragraph 4(b) to support a finding that the NSI

Domain Names and the BulkRegister Domain Names were registered and used in bad

faith pursuant to the Policy paragraph 4(a)(iii).

7. Decision

The Sole Panelist concludes (a) that the NSI Domain Names and the BulkRegister

Domain Names are confusingly similar to Complainant’s registrations of the Yahoo

Marks, (b) that Respondent has no rights or legitimate interest in the NSI Domain

Names or the BulkRegister Domain Names and (c) that Respondent registered and

used the NSI Domain Names and the BulkRegister Domain Names in bad faith. Therefore,

pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist

orders that the NSI Domain Names and the BulkRegister Domain Names be transferred

to Yahoo, Inc.

Yahoo, Inc. has not shown that it has any rights in the phrase "ebay."

Therefore, the Sole Panelist transfers the BulkRegister Domain Names without

prejudice to any rights, which might be asserted by eBay, Inc.

Richard W. Page

Sole Panelist

Dated: May 8, 2001

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