WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant
Case No. D2004-0896
1. The Parties
The Complainant is Yahoo! Inc. and Overture Services, Inc. (hereafter referred to, individually and collectively, as “Complainant”), Sunnyvale, California of United�States of America, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America.
The Respondents are Registrant (187640), Gary Lam, Birgit Klosterman, XC2, Robert Chua, Registrant, all of Hong Kong, SAR of China. As further explained under Discussion and Findings, all of Registrant (187640), Gary Lam, Birgit Klosterman, XC2, Robert Chua and Registrant will be referred to, individually and collectively, as “Respondent”.
2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with eNom;
The disputed domain names , , , , , , , , , , , and are registered with Moniker Online Services, LLC;
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with OnlineNic, Inc. d/b/a China-C.
3. Procedural History
A First Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on October 21, 2004. An Amended Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2004. On October�25,�2004, the Center transmitted by email to eNom, OnlineNic, Inc. d/b/a China-C and Moniker Online Services, LLC a request for registrar verification in connection with the domain names at issue. On October 25, 2004, and October �27,�2004, eNom, OnlineNic, Inc. d/b/a China-C and Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a Second Amended Complaint on November 4, 2004, confirming that for the Domain Names registered with eNom and Moniker, Complainant agrees to submit with respect to any challenges to a decision in this administrative proceeding to the court jurisdictions of the principal offices of the registrars, and that for the Domain Names registered with OnlineNIC, Complainant agrees to submit to the court jurisdiction of the domain name holder.
The Center verified that the Second Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 November 9, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November�29, 2004. The Respondent did not submit any response, apart from an e-mail message from Mr. Robert Chua on November 18, 2004. Accordingly, the Center notified the Respondent’s default on November 30, 2004.
The Center appointed Mr. P-E H Petter Rindforth as the sole panelist in this matter on December 6, 2004. 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.
On December 20, 2004, the Panel issued an Administrative Panel Procedural Order No. 1, referring to the fact that the disputed Domain Name is a combination of two separate trademarks, owned by separate entities, and that a transfer of this domain name may interfere with the rights of the third party trademark holder (the holder of the HOTMAIL mark).
The Panel Order requested the Complainant to provide the Panel with a signed letter of support from an authorized representative of the third party trademark holder, indicating support for the Complaint and consent to the Panel issuing an order transferring the disputed domain name to the Complainant as an alternative, the Panel Order mentioned the possibility of the third-party trademark holder to join the Complaint. The Complainant was given until December 28, 2004, to send the said letter to the Center, and the due date for the decision was extended to December 30, 2004. Complainant’s response to the Panel Order was timely received by the Center on December 28, 2004.
According to the Rules, paragraph 10(b), the Panel “shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”.
Accordingly, the Administrative Panel shall issue its Decision based on the Amended Complaint (using the Exhibits of the First Complaint where appropriate), the Second Amended Complaint, the Response to the Administrative Panel Procedural Order No.1, the e-mail message from Mr. Robert Chua, the Policy, the Rules, and the Supplemental Rules. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant, 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. Overture Services, Inc is a wholly owned subsidiary of Yahoo!
Complainant is the owner of the service mark and trademark YAHOO! (printouts from the USPTO Tess provided as Exhibit 7 of the Complaint), registered in the United�States for the first time on February 25, 1997, under No. 2,040,222, as well as the trade name YAHOO! and the domain name . In continuous use since 1994, the YAHOO! mark has become one of the most recognized brands in the world, with a value of nearly US $3.9 billion according to Interbrand (copy of the 2003 Global Brands Scoreboard provided as Exhibit 5 of the complaint.).
The main YAHOO! website at “www.” has long been one of the leading websites worldwide. In June 2004, more than 146 million active registered members logged onto their personalized YAHOO! accounts, to participate in Complainant’s registered member services, including auctions, classifieds, e-mail, chat rooms, and more. At the same time, Complainant’s global audience grew to 300 million unique users.
The Yahoo! services include both local and international web directory and search services covering a wide variety of subjects, including but not limited to games, people searches, astrology and horoscopes, clubs, greetings, corporate network software and services, travel-related services, real estate and mortgage information and quotes, movie reviews, news, weather, sports, yellow pages, maps, auctions, message boards, and various types of entertainment.
Yahoo!’s global web network includes 25 world properties, with offices in Europe, Asia Pacific, Latin America, Canada, and the United States. Complainant operates many additional sites under the YAHOO! mark and using YAHOO-formative trademarks and domain names.
The Complainant offers music services under the mark LAUNCH, at the domain name and the URL “launch.”.
Since April 1996, Complainant offers its YAHOOLIGANS! website, specifically designed for children aged 7-12, and located at the domain name .
Complainant is the owner of numerous trademark registrations for YAHOOLIGANS! in the United States, such as No. 2,088,882 registered on August 19, 1997 (Exhibit 8 of the Complaint).
Complainant offers a wide variety of services using the YAHOO! and/or YAHOOLIGANS! marks together with a descriptive name of its services, such as YAHOO! Mail, YAHOO! Messenger, YAHOO! Chat, YAHOO! Personals, YAHOO! Shopping, YAHOOLIGANS! Games, YAHOOLIGANS! Music, and YAHOOLIGANS! Science.
Complainant offers personal home page services under the GEOCITIES mark. GEOCITIES has been used by Yahoo! and/or its predecessor-in-interest, GeoCities, to identify its website development and hosting services since at least as early as February�1995. The Complainant is the owner of two U.S. trademark registrations for the mark GEOCITIES, namely No. 2,124,762, of December 30, 1997, and No. 2,424,484, of January 30, 2001 (Exhibit 9 of the Complaint).
Complainant Overture, founded in 1997, and acquired by Yahoo! in October 2003, offers online marketing services. Among Overture’s assets is the famous AltaVista search engine, acquired in February 2003. The AltaVista mark has been continuously used by Overture and its predecessors-in-interest to identify Internet-related services, including Internet search engine services, since at least as early as December 1995.
The AV mark, the shorthand version of the AltaVista mark, has been continuously used by Overture and its predecessors-in-interest to identify its Internet-related services since at least as early as December 1998. The AltaVista and AV marks are synonymous.
Complainant is the owner of the following U.S. trademark registrations: No. 2,047,808 AltaVista (in block letters), of March 25, 1997; No. 2,112,885 AltaVista (in block letters), of November 11, 1997; No. 2,047,808 AV AltaVista (stylized), of June�15,�2004 (Exhibit 11 of the Complaint).
No specific information is provided about the Respondent’s business activities, apart from (i) the e-mail of November 18, 2004, in which Mr. Robert Chua informs that he once had plans to offer some Audio Visual products/services, and (ii) what is mentioned below under�5A.
5. Parties’ Contentions
A. Complainant
Complainant address the fact that the disputed Domain Names are listed with different owners, and claims that the contact information indicates that these owners are in fact the same entity:
All owners have a Hong Kong address. Registrant (187640), Registrant, Gary Lam, Birgit Klosterman, and XC2 all share the same post office box. The same telephone number is listed for Registrant (187640), Gary Lam, Birgit Klosterman, and XC2, and a nearly identical telephone number, is listed for Registrant. Registrant (187640) and Registrant share the same e-mail address, whereas Gary Lam, Birgit Klosterman, XC2 and Robert Chua shares another one. The same fax number is listed for Gary Lam, Birgit Klosterman, and XC2. Lastly, Gary Lam and XC2 are listed together on twelve (12) of the registrations.
Complainant claims the Yahoo!, GEOCITIES, AV and AltaVista trademarks to be famous. Fifty-two UDRP decisions involving the YAHOO! mark have been issued in Yahoo!’s favor, and the Panelists in at least twenty-four of these cases expressly found the YAHOO! mark to be famous (Exhibit 6 of the Complaint). The LAUNCH music service is one of the most popular music destination in the U.S. according to Nielsen/NetRatings. Overture’s AV mark is a commercially strong mark entitled to a broad scope of protection, by virtue of the extensive use, advertising, and commercial success associated with the mark since 1998. All Complainant’s trademark rights predate Respondent’s registration of the Domain Names.
Complainant further states that Respondent misappropriated Complainant’s goodwill when it registered the disputed Domain Names, and that Respondent uses the Domain Names for directly competing web directory websites offering Internet search services and to generate numerous popup advertisements.
When Respondent’s websites are viewed on a computer screen, the Domain Name appears in the address line of the browser, but the domain name listed on the website printout is DomainS, which is the originating URL for seventy-three (73) of Respondent’s websites. One of the five remaining websites is identical in appearance to the DomainS websites but has a different URL, and four websites are associated with the domain name and website H, a competing search engine (Exhibits 13-14 of the Complaint, Exhibits D-F of the Amended Complaint). Complainant concludes that Respondent receives pay-per-click commissions from DomainS and/or Hitfarm for its websites and advertisements associated with the Domain Names (Exhibits 16-17 of the Complaint).
Respondent, under numerous aliases, has been the subject of at least nine adverse UDRP Decisions.
Each of the seventy-eight (78) Domain Names is confusingly similar to Complainant’s famous YAHOO!, YAHOOLIGANS!, GEOCITIES, and AV marks. The disputed Domain Names are comprised of one of Complainant’s trademarks combined with a generic term or a misspelling of a generic term, a misspelling of Complainant’s mark combined with a generic term, Complainant’s mark combined with another mark, or a misspelling or slight variation of Complainant’s mark (a further specification is provided as Exhibit 2 of the Second Amended complaint). Misspelling and/or combining Complainant’s marks with generic terms is not sufficient to distinguish the Domain Names from Complainant’s trademarks.
The domain names , , , and are confusingly similar to Complainant’s AltaVista mark because AV is an abbreviation for the AltaVista mark. Combining an abbreviation of Complainant’s mark with a generic term or number does not distinguish the Domain Names from Complainant’s mark.
Complainant states that the domain name is comprised of Complainant’s mark YAHOO! and the mark HOTMAIL owned by Complainant’s competitor, which is not sufficient to distinguish the domain name from Complainant’s mark (See Yahoo! Inc. v. M & A Enterprises, WIPO D2000-0748, finding the domain name confusingly similar to the Complainant’s mark YAHOO! because it combines the YAHOO! mark with the mark VISA). Complainant further states that the Rules do not preclude Complainant from requesting the transfer of the Domain Name because it incorporates a third-party mark. Complainant refers to the fact that many UDRP decisions have ordered the transfer of domain names in cases such as this (See G.D. Searle & Co. v. Entertainment Hosting Services, Inc., NAF FA0204000110783, finding the domain name confusingly similar to the complainant’s mark CELEBREX despite the inclusion of the trademarks owned by the complainant’s competitors, noting that “this presents a unique situation since the domain name appears to infringe on the rights of multiple trademark holders, but only one party can hold registration of the domain name”).
Complainant argues that the disputed Domain Name is confusingly similar to Complainant’s famous YAHOO! mark, which is prominently placed at the beginning of the Domain Name, followed by the addition of Microsoft’s mark HOTMAIL, and that a transfer of the Domain Name to Complainant would not establish any rights of Complainant in the HOTMAIL mark, but rather would allow Complainant to protect its rights in its YAHOO! mark.
Complainant also acknowledges the Panel’s concern that the transfer of the Domain Name may interfere with the rights of Microsoft, but notes that such transfer would not prevent Microsoft in any way from objecting to Complainant’s ownership of the Domain Name at any time in the future. Complainant has no intention of using the Domain Name to interfere with the rights of Microsoft.
Respondent has no legitimate interest in the Domain Names. Respondent is not and has not been commonly known by the Domain Names prior to Respondent’s registration of those names. Further, Respondent’s use of the Domain Names as trade names on its websites does not demonstrate any legitimate interest of Respondent in the Domain Names, as Respondent cannot justify its misappropriation of a trademark in a domain name merely through use of that same mark in a trade name. Respondent is not making legitimate noncommercial or fair use of the Domain Names, without intending to mislead and divert consumers and/or to tarnish Complainant’s trademarks for commercial gain.
The disputed Domain Names are registered and used in bad faith, as
(i) Respondent uses the Domain Names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its trademarks as to the source, sponsorship, affiliation, and endorsement of Respondent, Respondent’s websites, and the goods and services advertised on those websites and in Respondent’s popup advertisements.
(ii) Respondent is disrupting Complainant’s business by using the Domain Names for competing, commercial websites.
(iii) Respondent’s registration and use of the seventy-eight (78) Domain Names that are the subject of this Complaint in and of itself constitutes a pattern of registering trademark-related domain names in bad faith pursuant to Section 4(b)(ii) of the UDRP.
(iv) Respondent’s registration and use of domain names comprised of trademarks owned by third parties have been the subject of at least nine adverse UDRP Decisions.
(v) Many of the Domain Names are designed to take advantage of Internet users making typographical errors, and “typosquatting” constitutes bad faith.
(vi) Respondent was on notice of Complainant’s rights in its YAHOO!, YAHOOLIGANS!, GEOCITIES, and AV marks when it registered the Domain Names.
The Complainant requests, in accordance with Paragraph 4(i) of the Policy, that the Administrative Panel issue a decision that the Domain Names be transferred to the Complainant, Yahoo! Inc.
B. Respondent
The Respondent did not reply to the Complainant’s contentions, in a way that complies with paragraph 5 of the Rules.
The only communication from Respondent is an e-mail message of November�18,�2004, sent to the Center from Respondent in the name of Mr.�Robert�Chua. In the said e-mail, Respondent denies any knowledge of Complainant’s mark AV and indicates that “lots of names”, including the and domain names, were registered “during the Dotcom boom days” with the intention of “doing some Audio Visual products/services” in the future. Respondent denies having used the domain names for any on-going business and does not contest Complainant’s request for transfer of the domain names and .
Respondent, in the name of Mr. Robert Chua, denies any knowledge of the entity XC2 and other disputed Domain Names, but does not exclude the possibility that Respondent is also the holder of the other two domain names including AV ( and ).
6. Discussion and Findings
The Panel concurs with the Complainant’s submission that the instant case is one where it is appropriate to proceed in a single complaint against multiple registrant names (See Yahoo! Inc. and GeoCities v. Data Art Corp., et al., WIPO Case No. D2000-0587, and; Yahoo! Inc. v. Finance Ya Hoo et al., WIPO Case No. D2002-0694). Registrant (187640) and Registrant are obviously fictitious entity names, using the same post box as Gary Lam, Birgit Klosterman and XC2. Registrant (187640), Gary Lam, Birgit Klosterman and XC2 shares the same telephone number, whereas Gary Lam, Birgit Klosterman, XC2 and Robert Chua shares the same e-mail address.
The Panel concludes that the different holder names used with a mix of the same contact information is a clear misuse of the Whois function and an attempt to conceal that the parties are in fact the one and the same entity. Thus, the different Respondents will be treated as one.
According to Paragraph�4(a) of the Policy, the Complainants must prove each of the following:
(i) that the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of the registered trademarks YAHOO!, YAHOOLIGANS!, GEOCITIES, AltaVista and AV AltaVista (stylized), all registered and extensively used in respect of goods and services connected with the Internet.
Complainant has no registered trademark rights to the letters/mark AV as such, but only in a stylized version in combination with the mark AltaVista. Complainant argues that AV is a well known abbreviation for the AltaVista mark. Respondent states that AV is an abbreviation for “Audio Visual”. The Panel agrees with the Respondent that AV is likely more known as the short for “audio visual”. This does however not exclude the possibility that such abbreviation / word may also be regarded as a distinctive trademark for non audio visual goods and services. Complainant has used AV together with the AltaVista trademark in such extent that the Panel finds it likely to believe that Complainant has established common law trademark rights to AV as an abbreviation for the famous AltaVista mark.
The Complainant is also the owner of the unregistered trademark LAUNCH for a music service. Complainant claims that LAUNCH is, according to Nielsen/NetRatings, one of the most popular music destination in the U.S., however no evidence is submitted the Complaint in order to prove this statement. Considering the fact that the Respondent has not contested Respondent’s statement of LAUNCH as a trademark, and as some of the disputed Domain Names consists of LAUNCH, variations or misspellings thereof, in combination with the trademark YAHOO!, the Panel finds no reason to doubt that the Complainant has established common law trademark rights to LAUNCH, at least in combination with the mark YAHOO!.
One of the disputed domain names is , incorporating both Complainant’s mark YAHOO! and the HOTMAIL mark, owned by Microsoft Corporation (an entity that is not a part in this proceeding). As stated in the Response to the Panel Order, citing previous UDRP decisions, the addition of other marks does not create a distinct mark / domain name, capable of overcoming a claim of confusing similarity, it merely adds to the potential confusion of Internet users as to the source, sponsorship and affiliation of the Domain Name.
None of the 78 disputed Domain Names are identical to Complainant’s trademarks. However, all Domain Names consists of (i) Complainants trademark with the addition of a generic term, or (ii) combinations of Complainant’s trademarks, or (iii) misspellings of Complainant’s trademarks, with or without combination of generic terms. Such combinations or misspellings are not sufficient to distinguish Respondent’s domain names from Complainant’s trademarks. On the contrary, if the addition is a term associated with the business of the Complainant - such as in , , , , , , , , , , , , , , , , , , , , , , , , , and - it can even add to the similarity between the domain name and the trademark in question (see ACCOR v. Jose Manuel Fernandez Garcia, WIPO Case No. D2002-0988). Even if the generic terms are misspelled, it may, in the eyes of the public, add to the similarity of the trademark if the misspelling is obvious and easy to read as the original term – such as mial v. mail.
It is the opinion of this Panel that all disputed Domain Names are confusingly similar to Complainant’s trademarks (registered and/or established by common law).
The Panel therefore concludes that the Complainant has satisfied the requirements of Paragraph�4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent is not an authorized agent or licensee of the Complainant’s products or services and has no other permission to apply for any domain name incorporating Respondent’s trademarks or misspellings thereof. The Respondent is not commonly known by the Domain Names.
Respondent’s use of the Domain Names for commercial, competing websites and to generate popup advertisements cannot constitute a bona fide use of the Domain Names pursuant to Section 4(c)(i) of the UDRP (See TM Acquisition Corp. v. Gary Lam, NAF FA0405000280499, holding Respondent’s use of the disputed domain name for a commercial web directory website linking users to competing services did not constitute a bona fide use or fair use pursuant to the UDRP; see also Chanel, Inc. v. Cologne Zone, WIPO D2000-1809, “Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights.”).
By not submitting a proper response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name. The e-mail message from Respondent in the name of Mr. Robert Chua refers to some former and not realized plans to use two of the Domain Names for certain Audio Visual products/services. That is not enough to prove rights or legitimate interests in the Domain Names.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of any of the Domain Names.
C. Registered and Used in Bad Faith
The Complainant is domiciled in the United States of America, whereas the Respondent seems to be an entity domiciled in Hong Kong, SAR of China.
Complainant’s trademarks are however known and used world-wide, and local websites exist in many countries. All Domain Names refer to Complainant’s trademarks, directly or misspelled, and the sheer number of Domain Name registrations makes it clear that Respondent had prior knowledge of the Complainant and registered the Domain Names with the Complainant specifically in mind.
Further, Respondent uses the Domain Names to intentionally attract, presumably for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its trademarks as to the source, sponsorship, affiliation, and endorsement of Respondent, Respondent’s websites, and the goods and services advertised on those websites and in Respondent’s popup advertisements. Respondent is also disrupting Complainant’s business by using the Domain Names for competing, commercial websites.
Respondent’s extensive registration and use of domain names incorporating misspellings of Complainant’s trademarks is a further evidence of bad faith, as such actions are not only trading of the goodwill pertaining to the said trademarks, but will also cause harm to the goodwill.
Thus, this Panel concludes that the Domain Names are both registered and used in bad faith.
The Complainant has requested the disputed Domain Name to be transferred to the Complaint. The Panel concludes that the Complainant has satisfied all three requirements of Paragraph�4(a) of the Policy. However, the Panel notes that incorporates not only Complainant’s mark YAHOO!, but also the mark HOTMAIL, owned by Microsoft Corporation, one of Complainant’s competitors.
Complainant has been given the opportunity to present some form of authorization from the holder of the HOTMAIL mark (Administrative Panel Procedural Order No. 1). Complainant has failed to present a consent from the said holder (See Yahoo! Inc. v. M & A Enterprises,WIPO Case No. D2000-0748, where the Panel ordered the transfer of the domain name to Complainant Yahoo! Inc, noting that Visa International Service Association, the owner of the VISA trademark, had consented to such course).
This Panel has no reason to disbelieve Complainant’s assertions that it has no intention of using the Domain Name to interfere with the rights of Microsoft. As remarked by the Complainant, a transfer of to Complainant would not prevent Microsoft from objecting to Complainant’s ownership of the Domain Name at any time in the future.
It is, however, this Panel’s understanding of the Policy that it is not meant to be used in a way that may create new basis for other Administrative Proceedings, by ordering the transfer of a domain name incorporating one entity’s trademark to a competitor, even if – as in this case – the said domain name is regarded as confusingly similar to trademarks of both entities.
The remedy in a proceeding is a matter for the Panel’s discretion. Considering the abovementioned circumstances, it is this Panel’s opinion that the only fair remedy for the disputed domain Name is the cancellation of the same.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the First Complainant Yahoo! Inc.
The Panel orders that the domain name be cancelled.
P-E H Petter Rindforth
Sole Panelist
Dated: December 30, 2004
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