Yahoo! Inc. v. NetGames Inc.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Yahoo! Inc.

v. Net Games, Inc.

Case No.

D2002-0304

1. The Parties

The Complainant in this

administrative proceeding is Yahoo! a Delaware corporation with its principal

place of business at 701 First Avenue, Sunnyvale, California 94089., United

States of America.

The Respondent in this

administrative proceeding is Net Games, Inc., with a postal mailing address

listed as 36 Barracks Street, Belize City, Belize. Ido Raviv is listed as the

Administrative, Technical, and Billing Contacts.

2. The Domain Name and

Registrar

The disputed domain name

is <yahoops.com>.

The Registrar of the domain

name is Network Solutions, Inc.

3. Procedural History

This is a mandatory administrative

proceeding submitted for decision in accordance with the Uniform Policy for

Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned

Names and Numbers (ICANN) on August 26, 1999 ("the Policy"), the Rules

for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October

24, 1999 ("the Rules") and the World Intellectual Property Organization

("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy (the "Supplemental Rules").

By registering the subject

domain name with the Registrar, the Respondent agreed to the resolution of dispute

pursuant to the Policy and the Rules.

The Complainant filed its

Complaint with the World Intellectual Property Organization Arbitration and

Mediation Center ("the Center") on March 28, 2002 by email and on

April 3, 2002 by hardcopy. On April 10, 2002, having verified that the

Complaint satisfied the formal requirements of the Policy and the Rules, the Center

formally commenced this proceeding. The Respondent filed its Response with the

Center on April 30, 2002 by email and on May 3, 2002 by hardcopy. The Respondent

objected to the Complainant’s Supplemental Submission on May 4, 2002 and the

Center acknowledged receipt of the Complainant’s Supplemental Submission on

May 6, 2002.

The Administrative Panel

consisting of three members was appointed on May 28, 2002 by the Center.

After considering the Respondent’s

objection, the Administrative Panel gave to the Respondent an opportunity to

reply to the Complainant’s Supplemental Submission. The Respondent did so.

An examination of this

material confirms that all technical requirements for the prosecution of this

proceeding were met.

The Administrative Panel

has considered all material delivered by the parties.

4. Factual Background

The following information

is derived from the Complaint.

The Complainant 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.

It 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 an arbitrary term as applied to the Complainant’s services

and products. Since at least as early as 1996, the Complainant actively has

advertised the YAHOO! brand through advertising on television and radio, in

publications and on signage, both in the United States and internationally.

The advertising has reached millions of people around the world.

The Complainant’s services

include both local and international web directory and search services, online

games, people searches, astrology and horoscopes, clubs, greetings, corporate

network software and services, travel-related services, internet access, e-mail,

chat, 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. In addition to its many online services, The Complainant

uses the YAHOO! trademark on a wide variety of products including clothing,

books, magazines, housewares, and computer accessories.

The main YAHOO! site can

be accessed at the http://www.yahoo.com. The YAHOO! website is one of the leading

Internet websites worldwide in terms of traffic, advertising, household and

business user reach.

The YAHOO! mark is one

of the most recognized brands in the world. The Complainant’s global web network

includes 25 world properties, with offices in Europe, Asia Pacific, Latin America,

Canada, and the United States.

In addition to the variety

of services offered at the Complainant’s main site located at the domain name

<yahoo.com>, it operates many additional sites under the YAHOO! mark and

using YAHOO-formative trademarks and domain names.

The Complainant has sites

that are specific to particular countries or regions, such as Spain <yahoo.es>,

Mexico <yahoo.com.mx>, Argentina <yahoo.com.ar>, France <yahoo.fr>,

Asia <asia.yahoo.com>, China <yahoo.com.cn>, Taiwan <yahoo.com.tw>,

Hong Kong <yahoo.com.hk>, Japan <yahoo.co.jp>, Singapore <yahoo.com.sg>,

Canada <yahoo.ca>, Korea <yahoo.co.kr>, Australia and New Zealand

<yahoo.com.au>, Denmark <yahoo.dk>, Germany <yahoo.de>, Norway

<yahoo.no>, Sweden <yahoo.se>, Brazil <yahoo.com.br>, Italy

<yahoo.it>, United Kingdom and Ireland <yahoo.co.uk>, and India

<yahoo.co.in>. It also has sites directed to particular U.S. cities, including

Miami <miami.yahoo.com>, New York City <nyc.yahoo.com>, Washington,

D.C. <dc.yahoo.com>, Atlanta <atlanta.yahoo.com>, Boston <boston.yahoo.com>,

Los Angeles <la.yahoo.com>, Seattle <seattle.yahoo.com> and others.

The Complainant operates

other sites specific to particular topics or population groups, such as the

YAHOO! en Español site which is directed to Spanish speakers around the

world <espanol.yahoo.com>, the YAHOO! en Català site which is directed

to Catalan speakers around the world <ct.yahoo.com>, the YAHOO! Chinese

site which is directed to Chinese speakers around the world <chinese.yahoo.com>

and the YAHOOLIGANS! site which is specifically targeted to children aged 7-12

<yahooligans.com>.

Since its inception, the

Complainant’s website has been recognized with numerous industry awards, including

the "Best of the Internet" and "Outstanding Service" awards

from Internet World in April 1995, Global Network Navigator’s "Best

of the Net" for Internet Navigation award in December 1995, 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" award

from Forbes magazine. More recent awards include the 2000 "Hall

of Fame" award from Search Engine Watch, the "People’s Voice"

award in the Broadband category from the 2001 Webby Awards, and the 2001 Webby

Award in the Finance category. The YAHOO! website has also been consistently

included by PC Magazine in its list of Top 100 websites.

The Complainant began as

a web directory and search engine. Its 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. They then created 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

of websites was made available by Filo and Yang on the Internet free of charge.

The availability of The

Complainant’s directory and search services enabled Internet users, even non-technical

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

of content on the Web. The Complainant’s web directory and search services allow

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

relating to the subject matter of interest to the user. This made the Complainant’s

website wildly popular with Internet users. Shortly after the site was launched,

the overwhelming success of the Complainant’s site led its founders to take

a leave of absence from Stanford University to concentrate on running the website

and raising capital to run the business.

The Complainant’s Initial

Public Offering of stock was in April 1996. Since then, its revenues have grown

significantly: US $1,666,000 in 1995; US $23,793,000 in 1996; US $84,108,000

in 1997; US $245,100,000 in 1998; US $588,608,000 in 1999; US $1,110,178,000

in 2000 and US $717,422,000 in 2001.

Most of the Complainant’s

current Internet services are offered to the public free of charge and the majority

of its income is derived from the sale of advertising, marketing and co-branding

or sponsorship agreements with other companies. The Complainant also receives

revenues from certain electronic-commerce transactions originating from the

its site, including YAHOO! Shopping, YAHOO! Auctions, and YAHOO! Travel.

Much of the advertising

sold by the Complainant consists of banner advertisements that appear on the

top of directory pages within the Complainant’s 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, the Complainant also sells merchandising units, sponsorships

and promotions. It also sends targeted direct e-mail advertisements to users

of its e-mail services, chat room services and other registered Yahoo! users.

The

Complainant served 3,795 advertisers and merchants during the fourth quarter

of 2001. Its clients include 31 of the Fortune 50, and 52 of the Fortune 100

advertisers. Among the companies that have advertised their

products or services on the Complainant’s site are Apple, Colgate-Palmolive,

Disney, The Gap, Hilton Hotels, Honda, IBM, Lego, Microsoft, Procter & Gamble,

Seagrams, Sony, Swatch, Target Stores, Toshiba and Visa.

The Complainant also licenses the

YAHOO! mark for use on merchandise such as clothing, hats, computer equipment,

toy cars, watches, writing instruments, posters, watches, clocks, duffel bags,

baseballs, the "Yahoo! Internet Life" magazine, and much more. In

2001, the Complainant’s worldwide licensing revenues were approximately US $1.5

million.

The number of visits to

the Complainant’s website has increased dramatically each year since its inception.

During September 1998, for example, the site averaged 144 million "page

views" per day. During September 2000 it was an average of 780 million

page views per day. During December 2001, the site averaged over 1.32 billion

page views 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 than one page view. This translates into hundreds of millions

of discrete visits to the Complainant’s site every quarter.

The Complainant’s global

audience grew to 219 million unique users during December 2001. A record

86 million active registered member logged onto their personalized YAHOO! accounts

during December 2001 (e.g., to participate in the Complainant’s registered member

services, including shopping, auctions, classifieds, e-mail, clubs, calendars,

message boards, chat rooms and more).

According to a report from

the market research firm Jupiter Media Metrix, the Complainant’s network of

properties was ranked number three in the "Global Top 50 Web and Digital

Media Properties At Home" for the month of November 2001. In February 2002,

Nielsen//NetRatings ranked the Complainant’s network of properties number two

with more than 59 million unique users and a global reach of 56% of home users

in the United States and ranked the Complainant number three among Top Web Advertisers

in the United States, having served more than 1.75 billion advertisement impressions

for the company’s products and services that month.

In July 2001, Interbrand,

one of the world’s leading brand marketing and consulting firms, published its

annual report which ranks the world’s most valuable brands. This survey ranks

the Complainant’s mark number 59, with a value of nearly US $4.4 billion.

The Complainant’s mark

is unique and not diluted. The Complainant’s mark and YAHOO.COM domain name

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

of Virginia has specifically held that the Complainant’s mark is famous. See

Yahoo! Inc. v. Buffalo Wu, CA-00-00178-A (memorandum decision at p. 8)

Twenty-two UDRP decisions

involving the Complainant’s mark have been issued by WIPO Panels, all of which

have required the transfer of all involved domain names to the Complainant.

The Panels in at least fifteen of these cases expressly found the Complainant’s

mark to be famous. See Yahoo! Inc. v. David Ashby, WIPO Case No.

D2000-0241, (June 14, 2000) <yahooventures.com>; Yahoo! Inc. v. Eitan

Zviely, et al., WIPO Case No. D2000-0273, (June 14, 2000)

(thirty-seven YAHOO-formative domain names); Yahoo! Inc. v. DomainCollection,

WIPO Case No. D2000-0476, (July 21, 2000) <campyahoo.com>; Yahoo!

Inc. v. Jorge O. Kirovsky, WIPO Case No. D2000-0428, (August 9, 2000) (holding

that the "YAHOO! mark is not only fanciful but also an international well-known

mark constituting one of the most famous marks in the on-line world today"

and ordering transfer of four domains); Yahoo! Inc. v. Cupcake Patrol

& John Zuccarini, WIPO Case No. D2000-0928, (September 29, 2000)

(twenty-three domain names); Yahoo! Inc. & GeoCities v. Cupcakes,

et al., WIPO Case No. D2000-0777, (October 2, 2000) (twenty-seven domain

names); Yahoo! Inc. v. M&A Enterprises, WIPO Case No. D2000-0748

(October 23, 2000) <visayahoo.com>; Yahoo! Inc. v. Microbiz, Inc.,

WIPO Case No. D2000-1050, (November 7, 2000) <yahooflorida.com> and <yahoousa.com>;

Yahoo! Inc. v. David Murray, WIPO Case No. D2000-1013, (November 17,

2000) <yawho.com>; Yahoo! Inc. v. Somsak Sooksripanich, et al.,

WIPO Case No. D2000-1461, (January 29, 2001) (twenty-two domain names); Yahoo!

Inc. v. Internet Entertainment Group, WIPO Case No. D2000-1595,

(February 1, 2001) <yahomo.com>; Yahoo! Inc. v. Yahoo-Asian Company

Limited, WIPO Case No. D2001-0051, (February 28, 2001) (five domain names);

Yahoo! Inc. v. Logicland Corporation, WIPO Case No. DVE2001-0001, (May 15, 2001)

<yahoo.com.ve>; Yahoo! Inc. v. CPIC NET, MIC & Syed

Hussain, WIPO Case No. D2001-0195, (May 8, 2001) (ten domain names); Yahoo!

Inc. v. Yahoosexy.com et al, WIPO Case No. D2001-1188 (February 20, 2002)

(five domain names); See also Yahoo! Inc. v. Casino Yahoo, Inc. &

Jon Maranda, WIPO D2000-0660, (August 24, 2000) <casinoyahoo.com>;

Yahoo! Inc. & GeoCities v. Data Art Corp., et al., WIPO Case No. D2000-0587

(August 10, 2000) (thirty-six domain names); Yahoo! Inc. v. Roger Campanera

Renom, WIPO Case No. D2000-1012, (November 10, 2000) <geocities-yahoo.com>;

Yahoo! Inc. v. Wing Hung Trading Co., WIPO Case No. D2000-1137,

(November 30, 2000) <newyahoo.com and yahoo-usa.com>; Yahoo! Inc. v.

Syrnx, Inc. and Hugh Hamilton WIPO D2000-1675, (January 30, 2001) <yahoobroadcast.com>

and <yahoolinux.com>; Yahoo! Inc. v. Silicon City and Osama Al-Ayoub,

WIPO Case No. D2000-1711, (February 13, 2001) <yahoo-1.com>; Yahoo!

Inc. v. Yahoo Computer Services, WIPO Case No. DPH2001-0001, (March

21, 2001) <yahoo.com.ph> and <yahoo.ph>.

The Complainant is the

owner of the following federal trademark registrations, as well as many others

in the United States and throughout the world:

a. Registration No.

2,040,222 for the mark YAHOO!, filed January 24, 1996, issued February 25, 1997,

covering computer software for searching and retrieving information, sites,

and other resources on computer networks; computer software, namely, a directory

of information, sites, and other resources available on computer networks in

International Class 9; books regarding computer networks and searching and retrieving

information, sites, and other resources on computer networks in International

Class 16; promoting the goods and services of others by placing advertisements

and promotional displays in an electronic site accessed through computer networks

in International Class 35; computer services, namely, creating indexes of information,

sites, and other resources available on computer networks; searching and retrieving

information, sites, and other resources available on computer networks for others;

providing an online link to news, weather, sports, current events, and reference

materials in International Class 42;

b. Registration No.

2,040,691 for the mark YAHOO! (stylized), filed April 24, 1996, issued

February 25, 1997, covering computer services, namely, creating indexes of information,

sites, and other resources available on computer networks; searching and retrieving

information, sites, and other resources available on computer networks for others;

providing an online link to news, weather, sports, current events, and reference

materials in International Class 42;

c. Registration No.

2,076,457 for the mark YAHOO!, filed January 24, 1996, issued July 1, 1997,

covering magazines regarding computer networks and searching and retrieving

information, sites, and other resources on computer networks in International

Class 16;

d. Registration No.

2,159,115 for the mark YAHOO!, filed August 13, 1997, issued May 19, 1998, covering

electronic mail services in International Class 38;

e. Registration No.

2,187,292 for the mark YAHOO!, filed February 28, 1997, issued September 8,

1998, covering online computer services, namely, providing information regarding

the goods and services of others in the nature of a buyers’ guide, by means

of a global computer network in International Class 42;

f. Registration No.

2,243,909 for the mark YAHOO!, filed May 25, 1995, issued May 4, 1999, covering

posters, in International Class 16; shirts, sweatshirts, jackets, visors, and

hats in International Class 25;

g. Registration No.

2,243,823 for the mark YAHOO!, filed October 20, 1997, issued May 4, 1999, covering

credit card services in International Class 36;

h. Registration No.

2,273,128 for the mark YAHOO!, filed May 25, 1995, issued August 24, 1999, covering

computer software for use as a screen saver in International Class 9; housewares,

namely, cups and mugs in International Class 21; demographic consultation services

in International Class 35;

i. Registration No.

2,403,227 for the mark YAHOO!, filed August 13, 1998, issued November 14, 2000,

covering computer software for providing multiple-user access to computer networks;

and computer software for use in creating and designing web sites in International

Class 9; online retail and mail order services in the field of general consumer

merchandise; directory services to help locate people, places, organizations,

phone numbers, home pages, and electronic mail address; promoting the web sites

of others, namely, distributing advertising for others via an online electronic

communications network in International Class 35;

j. telecommunications

services, namely, providing telephone communications via computer networks;

electronic transmission of data, images, and documents via computer terminals

and networks; providing online facilities for real-time interaction with other

computer users concerning topics of general interest and for playing games;

and broadcasting services, namely, audio broadcasting, radio broadcasting, cable

television broadcasting, television broadcasting, and video broadcasting in

International Class 38; making reservations and bookings for transportation

and online reservations and bookings for transportation in International Class

39; computer services, namely, providing multiple-user access to computer networks

for the transfer and dissemination of a wide range of information; providing

a wide range of general interest information via computer networks; computer

bulletin and message boards in the fields of general interest; design, creation,

hosting, maintenance, consulting, and technical assistance in the fields of

designing, creating, hosting, maintaining, operating, managing, advertising,

and marketing of online commerce web sites; making reservations and bookings

for temporary lodging and online reservations and bookings for temporary lodging

and online reservations and bookings for temporary lodging; and club services

relating to web searching and web site information in International Class 42.

Although some of these

registrations issued in the name of Yahoo! Inc. (a California corporation),

they are now owned by the Complainant (a Delaware corporation) by virtue of

the merger of the California corporation into the Delaware corporation on May 18,

1999.

The Complainant also owns

the domain name <yahoo.com>. The <yahoo.com> domain name was registered

on January 18, 1995, and has been used to identify the Complainant’s website

since on or about that date.

Having been used by the

Complainant in connection with its Internet-based business, and having been

widely promoted and advertised among members of the general consuming public,

the YAHOO! Marks have become valuable property of the Complainant. The Marks

enjoy fame as a result of favorable public acceptance and recognition worldwide.

The Complainant’s trademark

rights in the mark YAHOO! and variations thereof, based on its trademark filings

and on its common law rights acquired through the use of the YAHOO! mark, trade

name, and domain name, predate the registration by Respondent of the subject

domain name on March 13, 2002.

The Respondent uses the

subject domain name for a gambling website that offers gambling on a variety

of sports, including basketball, hockey, tennis, and boxing. Respondent also

has advertised on the website to which the subject domain name resolves by sending

unsolicited marketing emails, e.g. spam.

The Complainant provides

extensive sports-related information and services on a wide variety of sports,

including all of the sports identified on the Respondent’s website.

On March 20, 2002, the

Complainant, through its counsel, sent to the Respondent a cease-and-desist

letter. As of the date of the initiation of this proceeding, the Respondent

has not replied to the Complainant’s demands that it transfer the subject domain

name to the Complainant and cancel the website to which it resolves.

The Respondent is not using,

has not used, is not demonstrating and has not demonstrated an intent to use

the subject domain name in connection with a bona fide offering of goods

or services.

The Respondent is not and

has not been known commonly by the subject domain name.

The following information

is derived from the Response.

The Respondent used the

subject domain name for many months with no objection from the Complainant.

The Respondent acquired the subject domain name from Eyescream Interactive,

Inc. Even before this acquisition was recorded in the registrar’s records, the

Respondent began using the subject domain name approximately in connection with

the operation of an active website based in Belize City, Belize.

The website to which the

subject domain name resolves offers sports betting services related to the sport

of basketball. The Respondent neither offers nor promotes searching, directory,

information, communication, or shopping services of the type offered by the

Complainant.

The Respondent is aware

of no actual confusion by Internet users between the parties and their services.

Specifically, the Respondent has received no misdirected e-mails, phone calls,

other inquiries from Internet users mistakenly believing the Net Games and its

website are offered, authorized, sponsored or are otherwise connected, associated

or affiliated with Complainant.

The word "yahoo",

is used in common parlance. There are a number of U.S. registrations using the

word or a variation of it. They include:

- YA-HOO (Reg. No. 2,059,071

for retail store and catalog services in the field of gourmet foods);

- YAHOO (Reg. No. 1,846,672

for human propelled watercraft; namely kayaks and canoes);

- YA-HOO (Reg. No. 1,536,595

for cakes);

- YAHOOTIE (Reg. No.

1,936,760 for self-service laundromats (sic) installed in mobile trailers);

- U.S. state trademark

registrations for YAHOO YOGURT (New Mexico Reg. No. NM009781 for the sale and

service of yogurt); and

- YAHOO JUICE (California

Reg. No. 49530 for a provider of smoothies, fresh juices and health snacks).

Several active websites

also are associated with domain names incorporating "yahoo

- <www.yahoo-x.com>

(website provide a listing, review and rating of thousands of porn sites:

- <www.yahoohelper.com>

(website offering website administration assistance as well as various links

to information pages, FAQ’s, tutorials and references);

- <www.yahoobites.com>

(website devoted to individuals who want to post complaints against Complainant

because of its enforcement of adult content-related restrictions);

- <www.y-a-h-o-o.com>

(web hosting provider offering technical support and domain administration services);

No language or graphics

on and nothing in the design of the Respondent’s website mimics the Complainant’s

website or alludes to any connection with the Complainant.

The subject domain name

is a unique play on words, combining the common expression "yahoo"

with a popular, universal term for basketball, "hoops", or a slang

term for yes, "ya," with the slang term "hoops."

The Respondent is using

the subject domain name in connection with a legitimate on-line gaming website

and had been doing so for at many months prior to the initiation of this proceeding

or challenge by the Complainant.

The Respondent has been

using the subject domain name in connection with the offering of its sports

betting services since at least September 2001 – seven months prior to any notice

of the Complainant’s dispute with the Respondent’s use of the subject domain

name. The Respondent was not aware of the Complainant’s March 20, 2002

letter until after the initiation of this proceeding.

The Respondent has expended

considerable time and money developing its sports wagering website. Specifically,

it invested numerous hours and significant sums in developing the sports betting

site associated with the subject domain name. The Respondent hired a top graphic

designer from Israel. It also retained three computer programmers to ensure

that the website was active prior to the start of the National Basketball Association

season in fall 2001. The Respondent has invested more than $250,000 in advertising

and marketing the website under to which the subject domain name resolves.

The Respondent is commonly

known as "yahoops" in the circles in which it operates.

The following information

is derived from the Complainant’s Additional Submission.

Registration Nos. 2,059,071

and 1,536,595 for the mark YA-HOO, to which the Respondent referred, are not

owned by third parties, but are owned by the Complainant through an assignment

recorded on December 3, 1996 at the USPTO.

The deadline to file a

declaration of use to maintain Registration No. 1,936,760 for the mark YAHOOTIE

was November 21, 2001. According to the USPTO’s website the declaration of use

has not been filed by the trademark owner. If it were not filed by May 21,

2002, the end of the six-month grace period, the registration would be cancelled.

After the Complaint was

filed in this proceeding, the Intellectual Property Office of Belize issued

Registration No. 383/TM/2002 for the mark YAHOO! in Belize to the Complainant.

The effective date of the Complainant’s Belize registration is February 19,

2002, prior to the March 13, 2002 date on which Respondent registered the subject

domain name. The Complainant filed its Belize trademark application on February

4, 2002. Its Belize registration for the YAHOO! mark covers goods and services

in International Classes 9, 16, 25, 28, 30, 35, 38, 41, and 42. The Class 41

services include "entertainment services," and the Class 42 services

cover "computer services and online computer services."

The following information

is derived from the Respondent’s Reply to the Complainant’s Additional Submission.

The U.S. Registration Nos.

2,059,071 and 1,536,595 for the mark "YA-HOO", initially were registered

to Miss King's Kitchens, Inc. Miss King’s Kitchen’s, originally secured

those registrations based on its use of those them. The Complainant asserts

that it obtained the registrations by assignment, but it does not offer an explanation

of the circumstances under which it obtained those registrations.

As to Registration No.1,936,760

for the mark YAHOOTIE, registered to Ronald and Barbara Smith (the "Smiths"),

the Complainant states that a declaration of use was due on or before May 21,

2002 to maintain that registration. At this date, it is impossible for anyone

to determine whether or not such a filing was made. The U.S. Patent & Trademark

Office has a policy of waiting at least 3 months following the date upon which

such a filing is due before declaring a registration expired.

The Respondent’s effective

control and actual use of the subject domain name predates the Complainant’s

filing of its mark in Belize. The Complainant says that it applied to register

its mark in Belize on February 4, 2002 and that Belize issued the registration

on an unspecified date after the Complaint in this proceeding was filed. The

Respondent began use of the subject domain name many months earlier.

5. Parties’ Contentions

A. Complainant

The Complainant relies

on its registrations and use of the mark "yahoo" and says that the

subject domain name is confusingly similar. It asserts:

"The Domain Name is

identical to Yahoo!’s mark except for the addition of two non-distinguishing

letters, ‘p’ and ‘s,’ to the end of the YAHOO! mark. Because the Domain Name

fully incorporates the YAHOO! mark, and because the pronunciation of ‘yahoops’

is virtually identical to the pronunciation of ‘yahoo,’ Internet users could

easily confuse the two names."

In response to the Respondent's

contention that others have used the word "yahoo", the Complainant notes that

it is the assignee of two domain names and that another registration may expire.

The Complainant contends

that the Respondent has no legitimate interest in the subject domain name because

it is not known commonly by that name and because it is capitalizing on the

Complainant’s good name and reputation to attract customers to a gambling site.

In addition, the Complainant points to the notoriety of its mark and asserts

that the Respondent must have know of the Complainant’s rights before it began

to use the subject domain name.

Bad faith is said to be

evidenced by the fact that the Respondent clearly knew of the Complainant’s

rights when it registered the subject domain name. It is asserted that customers

will be confused because the Complainant provides sports information. The Respondent

will profit from the confusion. That is, the subject domain name intentionally

is being used to gain profit at the expense of the Complainant’s goodwill and

reputation. This is opportunistic bad faith.

By registering the subject

domain Name with actual knowledge of the Complainant’s YAHOO! mark and name,

the Respondent acted in bad faith by breaching its registration contract with

VerSign because it falsely represented that its registration of the subject

domain name did not infringe the rights of any third party.

Incorporation of the word

"yahoo" in the subject domain name has no legitimate purpose. It has

no value other than to trade on the Complainant’s goodwill and reputation.

B. Respondent

The Respondent denies that

the subject domain name is confusingly similar to the Complainant’s mark and

asserts that it "…is aware of no actual confusion by Internet users between

the parties and their services." It also states that although there are

similarities between the subject domain name and the Complainant’s mark, they

do not rise to the level of being confusingly similar. In support of this proposition

the Respondent says that "…a finding of confusing similarity must be based

on a number of factors, including the strength of the trademark owner’s mark,

the degree of the similarity between the marks, the proximity of the parties’

products, evidence of actual confusion, and respondent’s good faith in adopting

its mark, among others…."

The Respondent contends

that it has a legitimate interests in the subject domain name and asserts that

the Complainant is attempting to obtain exclusive use over the word "yahoo",

which is used in common parlance. In support of this contention, the Complainant

refers to a number of domain names and websites that use the word or a variation

of it. Answering the Complainant's assertion that it is the assignee of two

domain names and that one may expire, the Respondent says that the important

point is that the word "yahoo" was used by others, not its present status.

It also says that it uses

the subject domain name for its gambling business and that users are not confused

or mislead by its website. This is said to be a bona fide offering of

services, which is legal under the law of Belize.

In addition, the Respondent

notes that it was using the subject domain name for many months before becoming

aware of the Complainant's concern and that it has expended considerable money

and effort developing its website, gambling business.

It also denies the Complainant's

assertion that it is not identified with the subject domain name and states

that in the environment in which it operates it is known as "yahoops".

Denying bad faith, the

Respondent says that the subject domain name is " a clever pun on two common

words" and is not an attempt to confuse consumers. It says that it did not acquire

the subject domain to sell it and denies sending spam as alleged by the Complainant.

6. Discussion and Findings

Paragraph 4(a) of the Policy

requires the Complainant to prove that:

(i) the domain name

is identical or confusingly similar to a service mark in which the Complainant

has rights;

(ii) the Respondent

has no legitimate interest in respect of the domain name;

(iii) the domain name

has been registered and is being used in bad faith.

Paragraph 4(b) provides

for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that

indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration

in excess of the Respondent’s documented out-of-pocket costs directly related

to the domain name;

(ii) registration of

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;

(iii) registration of

the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain

name, intentionally attempting to attract, for commercial gain, Internet users

to the Respondent’s 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 the web site or location or of a product or service on it

or a location.

These are illustrative

and do not represent the only circumstances from which may arise evidence of

bad faith.

The parties refer to a

number of previous domain name dispute and domestic court decisions. While these

are neither controlling nor binding on this Administrative Panel, often reference

to them is of assistance.

The resolution of this

dispute takes place in the context of a consideration of the requirements of

paragraph 4(a) of the Policy.

A. Identical or Confusingly

Similar

The Respondent asserts

that there is no evidence of actual confusion between it and the Complainant

and states that: "The complete absence of any actual confusion between Complainant’s

YAHOO! mark and Respondent’s Domain Name is, perhaps, the strongest evidence

that there is no confusing similarity between the parties’ names."

This is not the test.

The question is whether

the subject domain name itself is confusingly similar and the standard is objective.

A complainant is not obliged to establish actual confusion. The inquiry is whether

the subject domain name is similar to the Complainant’s mark and, if it were,

whether it would be confusingly so. The absence of any actual confusion may

indicate that the domain name is not confusingly similar, but it is neither

strong nor compelling evidence.

It is clear that the Complainant

has rights to the word "yahoo". It has used the word for many years and has

many trade marks incorporating it.

The subject domain name

is similar. It differs only by the addition of the letters "ps" and .com, the

latter being of no consequence. Considering the notoriety of the Complainant's

mark and the fact that its primary use is on the internet, the subject domain

name is confusing. Objectively, a reader would be likely to believe that the

subject domain name is related to the Complainant and its mark.

The Administrative Panel

is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

B. Respondent’s Legitimate

Interest

The Respondent has answered

a number of assertions made by the Complainant, but of concern is the notoriety

of the Complainant's mark and the possible benefit that it confers on the Respondent.

Although, the Respondent

asserts that "yahoops" is a play on words or a clever pun, it did not create

the term. The previous owner of the subject domain name clearly must have been

aware of the Complainant's mark. It is a reasonable inference that the subject

domain name was created with the Complainant’s mark in mind.

Benefiting from an existing

mark and reputation does not necessarily lead to a finding that the user of

a domain name that is confusingly similar to another's mark, has no legitimate

interest in the domain name. In this case, the Respondent is using the subject

domain name for a legal business purpose and has spent time and money to develop

that use. It did so for many months before objection was taken by the Complainant

and the business clearly is distinguishable from the Complainant's business.

In the circumstances of

this case, whether the Respondent's use offends the Complainant's intellectual

property rights is not a matter for determination by this Administrative Panel.

On the information available in this proceeding, it cannot be said that the

Respondent does not have a legitimate interest in the subject domain name.

The majority of the Administrative

Panel is not satisfied that the Complainant has met the requirements of paragraph

4(a)(ii).

C. Bad Faith

The Complainant's case on bad faith is based mainly on the

information it provides in support of the other two requirements it must satisfy.

In addition, it says that bad faith is exhibited by the fact

that the Respondent violated its registration agreement because it had to represent

that the registration did not violate the rights of another. This begs the question.

It would lead to the proposition that the conclusion that a domain name is identical

or confusingly similar to a complainant's mark means that the registration of

the domain name was in bad faith. The Administrative Panel rejects this proposition.

It is consonant neither with logic nor with the requirement that a complainant

establish each component of its domain name complaint.

At best, the Complainant's bad faith claim rests on the fact

that the Respondent likely is benefiting from the notoriety of the Complainant's

name and mark. In the context of the information provided to the Administrative

Panel in this case, that is not enough.

The majority of the Administrative Panel is not satisfied that

the Complainant has met the requirements of paragraph 4(a)(iii).

7. Decision

Based on the information

presented to it and on its findings, the majority of the Administrative Panel

concludes that the Complainant has not established its claim. It is dismissed.

Edward C.

Chiasson, Q.C. G.

Presiding Panelist

Gervaise

Davis III

Panelist

Dated: June 21, 2002

Dissenting

opinion

The minority would hold

that by adopting a famous and fanciful mark and domain name, such as the Complainant’s,

in its entirety, as a part of the Respondent’s domain name, the Respondent is

precluded, ab initio, from the ability to establish a legitimate interest

in respect of that domain name.

The minority would hold

that the adoption and registration of a domain name by the Respondent coupled

with a statement to the registrar that such registration does not infringe the

rights of any third party, when the domain name sought to be registered includes

in its entirety the famous and well known domain name of the Complainant was

the presentation of a knowingly false statement to the registrar, which constituted

a bad faith registration. Use of the Respondent’s domain name under these circumstances

is a bad faith use.

The minority would have

concluded that the Complainant had established its claim and would have directed

that the subject domain name be transferred to it.

Terrell

C. Birch

Dissenting Panelist

Dated: June

21, 2002

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