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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. v. Microbiz, Inc.
Case No. D2000-1050
1. The Parties
The Complainant is Yahoo! Inc., a Delaware corporation located in Santa Clara, California.
The Respondent is Microbiz, Inc. located in Carson City, Nevada.
2. The Domain Names and Registrar
The disputed domain names are yahooflorida.com and yahoousa.com.
The registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Rules").
The Complaint was submitted to the WIPO Arbitration and Mediation Center on August 14, 2000. The Response was submitted on September 25, 2000. Mark V.B. Partridge was appointed as a single panelist on October 26, 2000.
It appears that all requirements of the Policy and the Rules have been satisfied by the parties, WIPO and the Panelist.
4. Factual Background
Complainant is a global Internet communications company operating an Internet portal site under the mark YAHOO! The business was developed by its founders in early 1994, and adopted the YAHOO! mark later that same year. Complainant’s initial public offer occurred in April 1996, and it currently has a market capitalization of about $75 billion.
Most of Complaint’s Internet services are offered to the public free of charge. Complainant’s income is derived primarily from the sale of advertising on its site. Since Complainant began accepting advertising, its revenues have grown from about $1.6 million in 1995 to $588 million in 1999. Its revenue is expected to exceed $1 billion in 2000. The advertising on Complainant’s site covers a wide array of products and services from a range of companies including Apple, Disney, Honda, Microsoft, Sony, Swatch and Visa, to give a few examples.
The public’s use of Complainant’s services is massive. For example, in December 1999, traffic to Complainant’s site averaged 465 million page views per day. As of June 30, 2000, Complainant had over 150 million registered users.
In addition to its main site at "www.yahoo.com", Complainant operates additional sites under related ccTLDs such as Yahoo.com.cn (China), Yahoo.co.uk (United Kingdom), Yahoo.fr (France), etc., and under related local names such as nyc.yahoo.com (New York City), miami.yahoo.com (Miami, Florida), la.yahoo.com (Los Angeles) etc.
The YAHOO mark is the subject of numerous U.S. Trademark Registrations, including federal registrations issued as early as February 1997.
Respondent registered the disputed domain name yahooflorida.com on October 6, 1999. The domain name has been used for a web site that appears to be a portal for information about Florida shopping, business, tourism and the like. The site states that it accepts advertising inquiries and contains no indications that it is not affiliated with Complainant. Copies of the web page submitted by Respondent state "You have typed yahooflorida.com. This website and Domain name are FOR SALE! For more information, please visit listing. Only serious inquires will be considered. This is not a solicitation or an offering." Complainant’s efforts to contact Respondent through the WHOIS contact information provided to Network Solutions has been unsuccessful or has gone unanswered.
Respondent registered the disputed domain name yahoousa.com on October 19, 2000. The domain name is listed for sale at GreatDomains.com for a price of $1,100,000.
5. Parties’ Contentions
Complaint contends that the disputed domain names are confusingly similar to its YAHOO! mark. It further contends that Respondent has no rights or legitimate interest in the domain names. Finally, Complainant contends that Respondent obtained and used the disputed domain names to resell them for profit and, in the case of yahooflorida.com, to disrupt the business of a competitor and to attract traffic to Respondent’s site for commercial gain due to confusion with Complainant’s mark.
Respondent does not dispute that the disputed domain name is identical or confusingly similar to Complainant’s trademark. Respondent, however, claims that Complainant’s site is primarily a search engine while its yahooflorida.com site is not a search engine but is instead "primarily an e-commerce website taking part in various affiliate programs." Thus, it claims the sites are not competitive and that it is not seeking to divert users from Complainant’s site. Respondent also contends that its use of YAHOO is derived from the common dictionary term and not from Complainant’s use of YAHOO. Instead of proceeding to decision, Respondent states that it "would agree to any reasonable and fair offer on the part of Complainant, in order to recoup some of the cost involved as well as current and future advertising revenues." It would then relinquish the site.
The parties are free, of course, to negotiate a settlement of this dispute. At this point, however, there is no indication that the parties have agreed to a settlement, and I will proceed to issue a decision based on the submissions of the parties.
6. Discussion and Findings
A. Similarity of the Disputed Domain Names and Complainant’s Mark
The disputed domain names are confusingly similar to Complainant’s YAHOO! mark. The registrations submitted by Complainant are prima facie evidence of its prior rights in the mark. It further appears from the record that the YAHOO! mark is arbitrary, unique and famous.
Respondent suggests that the letters YAHOO appear in numerous other trademarks and domain names (Respondent cites 325 domain names "bearing the YAHOO letters" that are listed for sale on the GreatDomains.com site). There is no evidence, however, of the extent to which any of these are in actual use. Moreover, most if not all seem to be unfair attempts to misappropriate Complainant’s goodwill. Such efforts do not diminish Complainant’s rights or justify Respondent’s conduct.
Accordingly, I find that Complainant has satisfied the requirements of Paragraph 4(c)(i) of the Policy.
B. Lack of Rights or Legitimate Interests In Domain Name
Complainant has submitted evidence showing that Respondent lacks any right or legitimate interest in the disputed domain names. Respondent was not known by the YAHOO name prior to this dispute and is not making fair or non-commercial use of the name.
Although the record supports a conclusion that Respondent used the domain name in connection with commercial services prior to notice of the dispute, it does not appear that the use was bona fide. Respondent’s claim that it adopted the yahooflorida.com name based on the dictionary definition of the term without regard to Complainant’s use, is not plausible. I find instead that name was selected and used by Respondent with the intent to attract for commercial gain Internet users to Respondent’s web site by trading on the fame of Complainant’s mark. I see no other plausible explanation for Respondent’s conduct and agree with prior decisions finding that a use that intentionally trades on the fame of another can not constitute a "bona fide" offering of goods or services. As stated in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com," ICANN Case No. D2000-0847 (WIPO, October 16, 2000): "To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy."
Based on the record before me, I find that Complainant has satisfied the requirements of Paragraph 4(a)(ii) of the Policy.
C. Bad Faith Registration and Use
Under Paragraph 4(b) of the Policy, evidence of bad faith registration and use of a domain name includes the following circumstances:
(1) The domain name was registered or acquired primarily for the purpose of selling the domain name registration for profit. 4(b)(ii).
(2) The domain name was registered primarily for the purpose of disrupting the business of a competitor. 4(b)(iii).
(3) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 you web site or location or of a product or service on your web site or location. 4(b)(iv).
With respect to "yahoousa.com", the evidence shows that the domain name was registered primarily for the purpose of selling the registration for a substantial profit. Respondent has said nothing to the contrary.
With respect to "yahooflorida.com", I find that the site is very similar in nature to key aspects of Complainant’s site. Although it is not a search engine, it appears to be a portal site that will compete with Complainant for Internet users and for advertisers. This conclusion is enhanced by the fact that Complainant already operates a variety of local sites. Users and advertisers could easily think that Respondent’s site was another one of Complainant’s many YAHOO sites.
When Respondent registered its domain name in 1999, the YAHOO! mark had already become famous, a fact that was certainly known to Respondent at the time. In the United States, when a newcomer adopts a mark for a competitive purpose that is the same as or confusingly similar to a famous mark, the Courts will infer bad faith. See e.g. Century 21 Real Estate Corp. v. Magee, 19 U.S.P.Q.2d 1530 (C.D. Cal. 1991)(inferring bad faith from defendant’s adoption of CENTURY 31 for real estate services). I believe that principle also applies here.
Respondent’s carefully worded denial, that "there was (sic) no attempts whatsoever on the part of Respondent to divert Internet users away from their initial access to Yahoo.com or any other linked pages," is not persuasive and seems cleverly deceptive at best. Moreover, the fact that YAHOO has a dictionary meaning does nothing to justify the selection of a name that is confusingly similar to a famous mark.
Based on the submissions of the parties it appears that yahooflorida.com was registered and used for the purpose of disrupting a competitor’s business and to attract Internet users and advertisers to Respondent’s site for commercial gain based on confusion with Complainant.
Accordingly, I find that Complainant has satisfied the requirements of Paragraph 4(a)(iii) of the Policy with respect to the disputed domain names.
Under Paragraph 4(i) of the Policy, I find in favor of the Complainant. The disputed domain names are confusingly similar to a mark in which Complainant has rights; Respondent lacks rights or legitimate interests in the domain name; and the domain name has been registered and used in bad faith. Therefore, the disputed domain names "yahooflorida.com" and "yahoousa.com" should be transferred to the Complainant.
Mark V.B. Partridge
Dated: November 7, 2000