WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. v. Fady Alassahd a/k/a Fady Al Assaad
Case No. DAE2008-0001
1. The Parties
The Complainant is Yahoo! Inc., Sunnyvale, California, United States of America, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America.
The Respondent is Fady Alassahd a/k/a Fady Al Assaad, Dubai, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with UAE Network Information Center (“UAEnic”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2008. On February 21, 2008, the Center transmitted by email to UAEnic a request for registrar verification in connection with the Domain Name. After several reminders by the Center, on March 7, 2008, UAEnic transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Domain Name Dispute Resolution Policy for .AE (the “Policy”), the Rules for Domain Name Dispute Resolution Policy for .AE (the “Rules”), and the WIPO Supplemental Rules Domain Name Dispute Resolution Policy for .AE (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2008.
The Center appointed Assen Alexiev as the sole panelist in this matter on April 9, 2008. 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.
In accordance with Rules, paragraph 11, the language of the proceeding is English.
4. Factual Background
Complainant is a global Internet communications, media, and commerce company. It delivers a branded network of comprehensive searching, directory, information, communication and shopping services, and other online activities and features to millions of Internet users daily.
Complainant owns the following trademark registrations for the YAHOO! mark in the United Arab Emirates:
- Registration No.24095, filed on April 4, 1999, issued on March 12, 2000, covering services in International Class 42; and
- Registration No.39371, filed on July 7, 2002, issued on May 7, 2003, covering communications services, telecommunications services, broadcasting services, and online services in International Class 38.
Complainant also owns the following trademark registrations for the YAHOO! mark in the United States of America:
- Registration No.2,040,222, filed on January 24, 1996, issued on February 25, 1997, covering goods and services in International Classes 9, 16, 35, and 42; and
- Registration No.2,403,227, filed on August 13, 1998, issued on November 14, 2000, covering goods and services in International Classes 9, 35, 38, 39, and 42.
Respondent registered the Domain Name on September 6, 2007.
5. Parties’ Contentions
A. Complainant
Complainant states that, besides the YAHOO! mark, it is also the owner of the trade name YAHOO! and of the domain name . Being continuously used since 1994, the YAHOO! mark has become one of the most recognized brands in the world, having a value of more than 6 billion US Dollars according to the 2007 BusinessWeek / Interbrand Annual Brand Report.
The main website of Complainant, located at , has long been one of the leading websites on the Internet. During the month of December 2007, the YAHOO! website received an average of approximately 5.5 billion page views per day from the world over. Complainant’s global audience was more than 647 million unique users in December 2007 (excluding Yahoo! Japan). More than 253 million active registered members from around the world (excluding Yahoo! Japan) logged onto their personalized YAHOO! accounts during December 2007, in order to participate in Complainant’s registered member services, including shopping, classifieds, e-mail, clubs, calendars, message boards, chat rooms, etc. In addition, comScore Media Metrix ranked Complainant’s website as the number one website in the United States of America in October 2007, with 136,775,000 unique visitors.
Complainant submits that its services include both local and international Internet search services covering a wide variety of subjects and media, including web, image and video search, network software and services including astrology, auctions, chat, corporate network software and services, e-mail, finance, games, greetings, groups, health, high-speed Internet and DSL, instant messenger, job search, maps, message boards, mobile services, movie information and reviews, music, news, people search, personals, photos, real estate and mortgage information, shopping, sports, television listings, travel-related services, weather, yellow pages, and entertainment. Complainant offers and has offered for years a wide variety of services using its YAHOO! mark together with a descriptive name of the services. These include, for example, YAHOO! Mail, YAHOO! Finance, YAHOO! Games, YAHOO! Messenger, YAHOO! Movies, YAHOO! Music, YAHOO! News, YAHOO! Sports, and YAHOO! Weather. In addition to the variety of services offered at Complainant’s main website, Complainant (either directly or through its licensees and related companies) operates many additional sites under the YAHOO! mark and using YAHOO-formative trademarks and domain names, including sites specific to particular countries or regions.
Complainant asserts that it vigorously defends its rights in the YAHOO! mark. It has prevailed in 63 cases under the Uniform Domain Name Dispute Resolution Policy against respondents who had registered domain names under generic top level domains and country code top level domains.
According to Complainant, the Domain Name is both identical and confusingly similar to Complainant’s YAHOO! mark because it fully incorporates Complainant’s mark and differs from it only by the addition of the country code top-level domain .ae and the omission of the exclamation mark. Such omission is required under the DNS system, as exclamation marks are not allowed in domain names.
As contended by Complainant, Respondent has no rights or legitimate interests in the Domain Name. Respondent is not and has not been commonly known by the Domain Name. Respondent’s registration and use of the Domain Name for an “under construction” website does not substantiate a legitimate interest under the Policy. In Yahoo! Inc. v. Syrynx, Inc. and Hugh Hamilton,WIPO Case No. D2000-1675, the Panel found no legitimate interest where respondent did not use the disputed domain names, and held that “in the absence of any license or permission from Complainant to use its YAHOO! names and marks or to apply for or use any domain name incorporating those marks, it is clear that no actual or contemplated bona fide or legitimate use of the contested domain names could be claimed by [r]espondent”. In Yahoo! Inc. v. DomainCollection,WIPO Case No. D2000-0476, the Panel found no legitimate interest where respondent did not use the disputed domain name and noted that “no challenge has been leveled with respect to (1) the validity of any Yahoo! trademark or service mark, (2) Yahoo!’s rights in the YAHOO! mark with respect to Yahoo! services and goods, (3) the global fame and goodwill associated with the YAHOO! mark, or (4) any fact averred by Yahoo! as to promotion of marks, use of the marks, and total sales of services and goods under the marks”.
Complainant states that its trademark rights in the YAHOO! mark and variations thereof predate Respondent’s registration of the Domain Name. Respondent registered the Domain Name many years after Complainant began using its YAHOO! mark, years after Complainant’s YAHOO! mark became famous, and years after the effective dates of Complainant’s trademark registrations in the United Arab Emirates and the United States of America.
In Complainant’s submission, Respondent had actual knowledge of Complainant’s rights in the YAHOO! mark, being a customer of Complainant. Respondent used Complainant’s domain name registration services to register the domain name .
Respondent uses the Domain Name for an “under construction” website displaying a “Coming soon!” notice, stating “If you have any questions or need more information please click here!”, and providing a link to Respondent’s e-mail address via the words “click here”
As contended by Complainant, Respondent had knowledge of Complainant’s rights in its YAHOO! mark when he registered the Domain Name, given the international fame of Complainant’s YAHOO! mark, Complainant’s registrations of its YAHOO! mark in the United Arab Emirates and the United States of America, and the fact that Respondent has used Complainant’s services. Registration of a domain name with knowledge of the trademark owner’s rights has been found to constitute bad faith under the Policy and similar policies such as the UDRP. In eBay Inc. v. Akram Mehmood,WIPO Case No. DAE2007-0001, the Panel noted that the Policy only requires that a complainant shows that the respondent registered or used the domain name at issue in bad faith and holding the respondent that registered the domain name in bad faith, because “Registration of a domain name that is confusingly similar or identical to a famous trademark by any entity, which has no relationship to that mark, is itself sufficient evidence of bad faith registration and use”. In Yahoo! Inc. v. Pham (NAF FA109699), the Panel found that “Because of the famous and distinctive nature of Complainant’s YAHOO! mark, [the respondent] is thought to have been on notice of the existence of Complainant’s mark at the time [r]espondent registered the infringing [domain name]”. In Yahoo! Inc. v. Patrick Sullivan (NAF FA945961), the Panel considered respondent’s use of Yahoo!’s services as evidence of respondent’s knowledge of Complainant’s business and marks and respondent’s bad faith.
According to Complainant, Respondent’s registration and use of the Domain Name for an “under construction” website constitutes “passive holding” in bad faith because the Domain Name incorporates the famous YAHOO! mark in its entirety and because there is no conceivable use of the Domain Name by Respondent that would be legitimate. In Yahoo! Inc. v. Domain Web (NAF FA128671), the Panel held that respondent’s non-use of the domain name constituted bad faith because “The name in itself is clearly infringing upon Complainant’s mark”, and found bad faith use of the domain name “since there has been no showing of an intent to eventually use the domain name for a genuine purpose”. In Yahoo! Inc. v. DFI Inc. (NAF FA147313) the Panel reasoned that “Given the infringing nature of [r]espondent’s domain name, the Panel infers that [r]espondent has no good faith use planned for the domain name, and doubts that any good faith use would be possible for a domain name incorporating the famous and distinctive YAHOO! mark”. In Indymac Bank F.S.B. v. Jim Hogan (NAF FA220042), the Panel decided that respondent’s passive holding of the domain names constituted bad faith and stated “The Panel will not wait until the domain names have actually been used before finding bad faith because it is inconceivable that [r]espondent could use the domain names in a manner that would not infringe upon [c]omplainant’s mark . . .”
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following to justify the transfer of the Domain Name:
(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 rights or legitimate interests in respect of the Domain Name; and
(iii) that the Respondent has registered or is using the Domain Name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, Paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By Rules, Paragraph 5(b)(i), it is expected of a Respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In the event of a default, under Rules, Paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”
The Panel notes that the Policy and Rules are to a great extent identical to the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) and the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules for UDRP”), adopted by ICANN for the resolution of disputes in relation to gTLDs. Therefore, in the Panel’s view, the established practice in numerous decisions under the UDRP and the Rules for UDRP is relevant to the interpretation and implementation of the Policy and Rules in the present case. Of course, one has to take into account the differences between the two sets of rules, the main of which is the requirement under the Policy for the Complainant to prove either registration or use in bad faith, and not both, in order to prevail.
As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques,WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the Panel in Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, Respondent’s default entitles the Panel to conclude that Respondent has no arguments or evidence to rebut the assertions of Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
Complainant has provided evidence and has thus established its rights in the YAHOO! mark, protected in the United Arab Emirates and in the United States of America through several registrations as a word mark.
It is a common practice under the UDRP to disregard the final sections of domain names (in this case the “.ae” section) for the purposes of the comparison for identity or confusing similarity. The Panel is convinced that this practice is fully applicable to the present dispute. Therefore, the relevant part of the Domain Name that has to be analyzed is the sequence “yahoo”. This sequence is confusingly similar to the YAHOO! mark of Complainant, the only difference being the omission of the exclamation mark. This difference is not sufficient to render the Domain Name dissimilar to Complainant’s mark.
On these grounds, the Panel finds that the Domain Name is confusingly similar to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant has contended that Respondent has no rights or legitimate interests in the Domain Name. It is not authorized by Complainant to use the YAHOO! mark, and is not commonly known by the name “Yahoo!”. Respondent has apparently not used the Domain Name for any active purpose (the Panel notes at the time of drafting there is no active webpage at the Domain Name, which merely reads “coming soon”), and there is no conceivable bona fide legitimate use which the Respondent can make of the Domain Name.
Thus, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.
It is well established that once Complainant makes out a prima facie case under the UDRP, paragraph 4(a)(ii), the burden shifts to Respondent to rebut the showing by providing evidence of its rights or legitimate interests in the Domain Name. The UDRP and the Policy are identical in respect of their requirements for the establishment of lack of rights and legitimate interests, so the Panel is of the opinion that the same line of reasoning should be applied in the present case.
Respondent, although given a fair opportunity to do so, has chosen not to present to the Panel any arguments in its defense in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If Respondent had any legitimate reason for the registration or use of the disputed Domain Name, it could have brought it to the attention of the Panel. In particular, Respondent has failed to contend that any of the circumstances described in Policy, paragraph 4(c), is present in his favor.
In fact, the only information available about Respondent is the Whois information, provided by the Registrar, and the contentions made by Complainant in this regard.
The Whois information contains no indication that Respondent is commonly known by the Domain Name. There is no active content on the website linked to the Domain Name from which a current right or legitimate interest could reasonably be inferred.
Complainant has established that the YAHOO! mark is one of the most famous trademarks around the world. It is an invented word and is highly distinctive of Complainant and its services. Complainant has provided sufficient evidence that Respondent was well aware of Complainant and its trademarks, being a customer of Complainant. Therefore, the Panel accepts that the YAHOO! trademark is not one that Respondent would choose unless seeking to create an impression of an association with Complainant or with its Internet-related services. In the lack of any evidence to the contrary, it is very likely that Respondent acquired the Domain Name mainly taking into account its goodwill and value for Complainant, in an attempt to extract certain commercial gain from it.
Such actions may not be regarded as bona fide, and the Panel finds that Respondent has no rights or legitimate interests in the Domain Name. The second element of the test, required under the Policy, paragraph (4)(a), is therefore established.
C. Registered or Used in Bad Faith
The Panel is satisfied that the Complainant has established that the Respondent had knowledge of Complainant’s rights in its YAHOO! mark when he registered the Domain Name. The Domain Name is confusingly similar to Complainant’s YAHOO! mark, and Respondent acquired it without having any rights or legitimate interests in such name, while being fully aware of the goodwill attached to it that was created through the efforts of Complainant. Registration of a confusingly similar domain name with knowledge of the trademark owner’s rights (particularly in a well-known mark) has been found to constitute bad faith under the UDRP. The Panel is of the opinion that the same interpretation of Respondent’s conduct should be made under the Policy as well.
In addition, considering the rights of Complainant over the YAHOO! mark and its worldwide fame, it is clear that no active use of the Domain Name by Respondent could be legitimate. It is widely accepted that in such circumstances the lack of active use of the Domain Name does not prevent a finding of bad faith, and this conclusion is even more valid under the Policy, as it does not contain a cumulative requirement for registration and use in bad faith.
Taken together, this evidence supports a finding that Respondent acquired the Domain Name in bad faith. Therefore, Complainant has established the third element of the test under Policy, paragraph (4)(a).
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 name be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Dated: April 23, 2008
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