The Complainant is Yahoo! Inc. of Sunnyvale, California, United States of America, represented by Keats McFarland & Wilson, LLP, United States of America.
The Respondent is Jesper Hansen of Norddjurs, Denmark. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2011. On December 19, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 20 and 23, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Disputed Domain Name. The Center verified that the Complaint the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2012. The Response was filed with the Center on January 15, 2012.
The Center appointed Jacques de Werra as the sole panelist in this matter on February 3, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a United States (“U.S.”) company which is the owner of the YAHOO! web browser and which provides various online services, including searching, directory, information, communication, shopping, and electronic commerce services.
The Complainant is the owner of the service mark and trademark YAHOO!, the trade name YAHOO! and the domain name .
The Complainant owns numerous trademark registrations for the YAHOO! mark around the world, including but not limited to federal trademark registrations in the United States, including the following representative trademarks (jointly referred to as the “Trademark”):
- Registration No. 2,403,227, first used in June 1994, filed on August 13, 1998, issued on November 14, 2000, covering telecommunications services, online computer services for a wide range of general interest information, online advertising and retail services, transportation services, and computer software in International Classes 9, 35, 38, 39, and 42.
- Registration No. 2,040,222, first used on June 1, 1994, filed on January 24, 1996, issued on February 25, 1997, covering online computer services including creating indexes of information and providing online reference materials, software, books, and advertising services in International Classes 9, 16, 35, and 42.
- Registration No. 2,187,292, first used on September 22, 1997, filed on February 28, 1997, issued on September 8, 1998, covering online computer services in International Class 35.
- Registration No. 2,040,691, first used on January 2, 1996, filed on April 24, 1996, issued on February 25, 1997, covering online computer services including creating indexes of information and providing online reference materials in International Class 42.
The Disputed Domain Name was registered on April 21, 2010. On the basis of the record and on the statements made by the Respondent, it appears that the Disputed Domain Name had been used for offering subscription based adult content and dating services before it was deactivated by the Respondent.
The Complainant’s counsel sent a cease and desist letter to the Respondent on September 21, 2011. The Respondent replied on the same day by stating that the term “Yahoo” was a common expression that did not belong to the Complainant and that he would only transfer the Disputed Domain Name to the Complainant if an entity referred to as “Ripe” (what appears to be the host provider of the Respondent for the website associated with the Disputed Domain Name) would consider that the claim of the Complainant is legitimate. On the basis of an undated answer from the host provider informing the Respondent that “you should investigate ICANN rules but I'm pretty sure Yahoo can't take your domain”, which the Respondent has transmitted to the Complainant, the Respondent has refused to transfer the Disputed Domain Name to the Complainant. By an email of November 11, 2011, to the Complainant’s counsel, the Respondent has offered the Disputed Domain Name for sale to the Complainant for an amount of USD 25000. 5. Parties’ Contentions A. Complainant
The Complainant claims that the Disputed Domain Name is confusingly similar to the Trademark because it includes the entirety of the Trademark, which is an arbitrary, distinctive, strong and famous trademark, to which the Respondent merely adds a generic term.
The Respondent has no rights or legitimate interests in the Disputed Domain Name because the Respondent is not commonly known by the Disputed Domain Name and could not be known because of the fame of the Trademark. The Respondent is further not making a legitimate noncommercial or fair use of the Disputed Domain because the Respondent’s intent is to profit financially from the Disputed Domain Name, and to monetize it by using it in connection with a dating website, which competes with Complainant’s online dating services, and with a commercial website for “models” allowing users to purchase videos and pictures of the “models” in what has been admitted by the Respondent to be adult-related content.
The Disputed Domain Name was registered in bad faith because there is no doubt that the Respondent was aware of the Trademark at the time of registration of the Disputed Domain Name, and registered and uses it in order to misleadingly divert consumers for the Respondent’s own commercial gain. The Respondent also offered the Disputed Domain Name for sale to the Complainant for valuable consideration in excess of the out-of-pocket costs of the Respondent, which is an additional evidence of bad faith. By using the Disputed Domain Name to display adult content for financial gain, the Respondent is further making a bad faith use of the Disputed Domain Name that tarnishes the Trademark. B. Respondent
The Respondent claims that he did not register the Disputed Domain Name to harm the Complainant. He states that the term “Yahoo is an expression that means happy, and a way to talk, and that it cannot be right that Yahoo inc shall own this domain name is not even close to could be misspelled, of any of yahoo’s clients”. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Disputed 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 Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trademark acquired through its global on-line use and registration, which predate the date of registration of the Disputed Domain Name. The Panel has further no hesitation in finding that the Trademark is a well-known trademark as held by many other panels. See, e.g., Yahoo! Inc. v. Blue Q Ltd., Romain Barissat,WIPO Case No. D2012-0702.
In this case, the Disputed Domain Name integrates the Trademark in full to which is added a suffix (i.e. (“shows”), which is a generic term. The Panel consequently holds that the addition of this suffix does not distinguish the Disputed Domain Name from the Trademark to avoid a confusing similarity. The Panel also agrees with the Complainant’s submission that the omission of the exclamation mark is irrelevant in this context. See by analogy, Yahoo! Inc. v. Blue Q Ltd., Romain Barissat, supra.
The Panel consequently finds that the Disputed Domain Name is confusingly similar to the Trademark and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
“(i) before any notice to you 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 (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you 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 trade mark or service mark at issue.”
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the Trademark. The Complainant has prior rights in the Trademark, which precede the Respondent’s registration of the Disputed Domain Name. The Panel finds that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and the burden is thus on the Respondent to produce evidence to rebut this presumption. See Do The Hustle, LLC v.Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
The Respondent claims that there would be no risk of confusion between the website associated with the Disputed Domain Name and the websites of the Complainant and that “Yahoo” is used as a generic term referring to “happy” for which the Complainant cannot claim any right. However, as stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") (para. 2.2), in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase). This genuine use, or demonstrable intention for such use, has however not been established by the Respondent in this case, given that the Disputed Domain Name has been used in connection with dating services which were competing with certain services offered by the Complainant; and with adult-related services, which have no connection with the alleged generic meaning of the words contained in the Disputed Domain Name. As a result, and considering the well-known nature of the Trademark, the Panel finds that such use of the Disputed Domain Name without the authorization of the Complainant does not give rise to any rights or legitimate interests in the Disputed Domain Name on the part of the Respondent.
The Respondent has further failed to show that it would be known by the Disputed Domain Name or that he has acquired any trademark rights in respect of the Disputed Domain Name.
The Panel consequently finds that the Respondent has failed to produce any evidence establishing his rights or legitimate interests in the Disputed Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel first acknowledges that the Complainant is the owner of the Trademark, which is distinctive and which has gained a very high grade of recognition in the on-line environment on a worldwide basis (including in Europe and particularly in Denmark where the Respondent is based). Therefore, the Panel can validly infer that the Respondent had, or should have had, knowledge of the Complainant’s Trademark and business at the time when it registered the Disputed Domain Name as it incorporates the Complainant’s Trademark in its entirety with the addition of a generic suffix; and as the Disputed Domain Name has been used in connection with services which competed with some services offered by the Complainant. The Panel also notes that the Respondent has not claimed that he did not know about the Complainant’s Trademark and services at the time when he registered the Disputed Domain Name. Consequently, the Panel holds that it is not conceivable that the Disputed Domain Name has been registered by the Respondent without having in mind the Complainant’s Trademark and services.
The circumstances of this case thus lead the Panel to consider that the Respondent was aware of the Complainant’s Trademark, and that he registered the Disputed Domain Name and has used it in bad faith, in order to attract Internet users by creating a likelihood of confusion with the Complainant's Trademark for the Respondent’s commercial gain under paragraph 4(b)(iv) of the Policy. The Panel notes indeed that the Disputed Domain Names has been used in connection with a dating website which competed with Complainant’s online dating services and with a commercial website for “models” allowing users to purchase videos and pictures of the “models” in what has been admitted by the Respondent to be adult-related content. The Panel thus can conclude that the Respondent’s intent was to benefit financially from the fame of the Trademark for promoting his own services. In addition, the use of the Trademark in connection with adult content (as admitted by the Respondent) may be considered as tarnishing the Trademark and the Complainant and constitutes another evidence of a bad faith use of the Disputed Domain Name under the Policy. See Christian Dior Couture v. Paul Farley,WIPO Case No. D2008-0008.
The Panel finally notes that the Respondent has offered the Disputed Domain Name for sale to the Complainant for an amount of USD 25000,,which constitutes further evidence of the bad faith of the Respondent under paragraph 4(b)(i) of the Policy. See by analogy Yahoo! Inc. v. Blue Q Ltd., Romain Barissat,WIPO Case No. D2011-0702. In this respect, the fact that the Disputed Domain Name has been deactivated, and is not currently actively used, does not prevent a finding of a bad faith use in view of the circumstances described above.
For all these reasons, the Panel finds that the third element of the Policy is established, and that the Disputed Domain Name was registered and has been used in bad faith by the Respondent, pursuant to paragraph 4(a)(iii) of the Policy. 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 Disputed Domain Name be transferred to the Complainant.
Jacques de Werra
Sole Panelist
Dated: February 17, 2012
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