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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo!, Inc v. Somsak Sooksripanich and Others
Case No. D2000-1461
1. The Parties
The Complainant is:
3420 Central Expressway
Santa Clara, California 95051
David M. Kelly, Esq.
Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
1300 I Street, NW
Washington, D.C. 20005-3315
The Respondent is Somsak Sookripanich of 3272/119. City Villa E2, Ladpraw 130rd, Bangakabi, Bangkok, Thailand, plus numerous registrant names as set out in the Appendix to this decision.
The Complainant alleges that the Respondent, Somsak Sookripanich, registered domain names under numerous registrant names, many of which involve slightly misspelled versions of the names of countries. For example, registrant names for the domain names include the Respondent’s own individual name (both as "Somsak Sookripanich" and "Mr.Somsak Sookripanich"); "http://www.yahooth.com"; "http://www.thyahoo.com"; "http://www.yahoocombodia.com"; "http://www.yahoothaiand.com"; "yahooth.com"; "dnsdealer.com"; " in-express.com";
The street address listed for each registrant is 3272/119 City Villa E2 Ladpraw 130rd, Bangkabi, Bangkok, 10240, Thailand. In addition, the name given as the Administrative and Billing Contact for the majority of the domain names is Somsak Sooksripanich (or Mr."Somsak Sooksripanich" or "Dr. Somsak Sooksripanich"), in most cases at a variety of company names (which are not in most cases the same as the name of the registrant, but may reflect one of the other registrant or domain names); with four exceptions. Sometimes a name such as "mrsomsaknicknameyai" or "saetungmrsomkiet" is given. All of the Administrative Contacts have the same ultimate street address, 3272/119 City Villa E2 Ladpraw 130rd, Bangkabi, Bangkok, 10240, Thailand.
Although the Rules provide that a Complaint may relate to more than one domain name, as long as the domain names are registered by the same domain-name holder, in situations such as this, where it is clear that the same person is registering domain names using different fictitious names, it is appropriate to proceed in a single Complaint against multiple registration names. See Adobe Systems Incorporated v. Domain Oz, WIPO Case No. D2000-0057 (decision rendered against multiple respondents where respondents shared the same post office box number and email address in their registration information). In this case, there is even greater identity in the Respondents’ address and contact information than was present in Adobe Systems. See also Yahoo! Inc. and GeoCities v. Data Art Corp., et al, WIPO Case No. D2000-0587 (decision rendered against multiple respondents where "the addresses used and the contacts designated [were] inter-linking and identical").
Following the above precedents, the Panel considers that it is appropriate to render a decision against the multiple Respondents which seem to be fronts for the real Respondent, Somsak Sooksripanich.
2. The Domain Names and Registrar
There are some twenty-two (22) domain names. They are shown in Appendix attached hereto. Together they shall be referred to as "the disputed domain names".
The Registrar for the disputed domain names is Network Solutions Inc (NSI) of Herndon, Virginia, USA ("the Registrar").
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Resolution ("the Policy") and Rules ("the Rules") approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center’s ("the Center") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The Complaint was filed on October 26, 2000, electronically and on October 31 2000, by hard copy. Initially, the Complainant covered some 96 names. On November 10, 2000, the Complainant advised the Center that the Respondent had deleted 80 names and reregistered 6 under different registrant names, leaving twenty-two (22) active domain registrations at issue.
On November 1, 2000, the Center sought NSI verification which was provided from November 7 and 13, 2000. NSI’s 5.0 agreement is in full force for all registrations. NSI confirmed the information concerning the registrations outlined above.
On November 24, 2000, the Center forwarded a copy of the Amended Complaint as amended to the Respondent by courier and by email and this proceeding officially began. The Respondent did not file a Response, and were declared in default on December 19, 2000.
The Honorable Sir Ian Barker QC of Auckland, New Zealand, having submitted a Declaration of Impartiality and Independence, was appointed by the Center as sole Panelist on January 10, 2001.
The Complainant has paid the necessary fees. The language of the proceeding is English.
The Panel finds the Center has adhered to the Policy and the Rules in administering this case.
The decision is due by January 23, 2001.
4. Factual Background
The Complainant, Yahoo!, Inc., is a global Internet company that offers a wide range of services such as Internet searching and shopping to millions of Internet users worldwide. The Complainant began doing business in 1994, as a web directory and search engine company. The Complainant has registered many service marks, trademarks and domain names in connection with its Internet services. It also has conducted much advertising on its websites. Some 3500 companies were advertised during 1999. Its Internet services are free of charge to the public. It also sells merchandise bearing the Yahoo! Mark. As at September 1999, the date of the Respondent’s earliest registration of a disputed name, it had over 74 million registered users. In December 1999, it averaged 465 million page views per day. Yahoo! The Complainant also operates sites specific to regions, countries and cities and to particular languages.
The Respondent has registered the twenty-two (22) disputed domain names all using the Complainant’s trademark, "Yahoo!". In this proceeding, the Complainant is seeking to have the disputed domain names transferred to itself.
In Yahoo! Inc v Buffalo WU (CA-00-00178-A) the United States District Court for the Eastern District of Virginia has specifically held that the Yahoo! Mark is famous.
Moreover, eight decisions involving the Yahoo! Mark have been issued by WIPO Panels, all in Yahoo!’s favor. The Panelists in at least six of these cases expressly found the Yahoo! Mark to be famous. See Yahoo! Inc. v. David Ashby, WIPO Case No. D2000-0241, p.12 (decided June 14, 2000,) (involving the domain name "yahooventures.com"); Yahoo! Inc v. Etian Zviely, et al, WIPO Case No. D2000-0273, p.9 (decided June 14, 2000,) involving 37 Yahoo-formative domain names); Yahoo! Inc. v. DomainCollection, WIPO Case No. D2000-0476, p.5 (decided July 21, 2000,) (involving the domain name "campyahoo.com"); Yahoo! Inc. v. Jorge O. Kirovsky, WIPO Case No. D2000-0428, p.7 (decided August 9, 2000,) (finding 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"); Yahoo! Inc. v.Cupcake Patrol & John Zuccarini, WIPO Case No. D2000-0928, p.6 (decided September 29, 2000,) (ordering transfer of 23 domain names to Yahoo!); Yahoo! Inc. & Geocities v. Cupcakes, et al WIPO Case No. D2000-1777, p.16 (decided October 2, 2000,) ordering transfer of 27 domain names to Yahoo!); Yahoo! Inc. v. Casino Yahoo, Inc. & Jon Maranda, WIPO Case No. D2000-1660 (decided August 24, 2000,) ordering transfer of the domain name "casinoyahoo.com" to Yahoo!); Yahoo! Inc & Geocities v. Data Art Corp, et al, WIPO Case No. D2000-0587 (decided August 10, 2000,) (ordering transfer of 36 domain names to Yahoo!).
The Respondents are not and have never been licensees of the Complainant. The Respondents are not and have never been otherwise authorized by the Complainant to use the Yahoo! marks.
Yahoo!’s outside trademark counsel in Thailand sent a cease and desist letter to the Respondents Sooksripanich on July 11, 2000. On July 12, 2000, Mr. Sooksripanich replied that he would not transfer the domain names without monetary compensation.
Yahoo! subsequently learned that the Respondent Sooksripanich was the owner of additional Yahoo! domain names and was running a site called "Yahoo! Thailand" at "www.geocities.com/sosoms/". The activities at the "www.geocities.com/sosoms/" webpages were in violation of the provider’s terms of service, so the site was deactiviated.
The Respondent Sooksripanich registered an additional 75 Yahoo-formative domain names after the July 11, 2000, cease and desist letter was sent to him by Yahoo!’s Thai counsel.
On July 27, 2000, in a telephone conversation with Yahoo!’s Thai counsel, the Respondents Sooksripanich indicated that he was willing to assign all Yahoo-formative domain names to Yahoo!. However, Yahoo!’s Thai counsel discovered shortly thereafter that in Sooksripanich was advertising for a lawyer to represent him in negotiations of the sale of one of his Yahoo-formative domain names to Yahoo! This advertisement reads "Wanted: Female lawyer: good at negotiation and sale website yahooth.com (Yahoo Thailand). Yahoo wants it badly to share 50% of benefit" contact details were then given.
On August 7, 2000, Yahoo!’s Thai counsel faxed a draft undertaking to the Respondents Sooksripanich in the hope that he would, agree to transfer the Yahoo-formative domain names to Yahoo!.
On August 11, 2000, the Respondent Sooksripanich sent Yahoo!’s Thai counsel an email indicating that he wanted at least $100 per domain name.
On August 11, 2000, Yahoo!’s Thai counsel received the draft undertaking, signed from the Respondent Sooksripanich.
On August 11, 2000, the Respondent Sooksripanich sent Yahoo!’s Thai counsel another email indicating that he wanted $6210 for the 62 (out of 96) domain names of which Yahoo! was then aware.
Subsequent attempts to negotiate or otherwise reach the Respondents Sooksripanich were unsuccessful.
5. Parties’ Contentions
The Complainant is the owner of many U.S. federal trademarks based on "yahoo" such as Registration No. 2,040,222 for the mark "Yahoo" issued on February 25, 1997, covering computer software, International Class 42; or Registration No. 2,159,115 for the mark "Yahoo" issued May 19, 1998, covering electronic mail services in International Class 38 (Complaint Exhibit 10). It also owns trademark registrations and applications for Yahoo! or Yahoo in some 80 other countries.
The Respondents have registered domain names, confusingly similar to the Complainant’s trademarks, between September 1998 and October 2000. All use the letters Yahoo in some form or another.
As a result of the Respondents’ activities, Internet users may mistakenly enter one of the Respondents’ disputed domain name websites instead of, or before, being forwarded to Yahoo!’s own websites. However, when the additional windows pop up containing advertisements for third-party goods and services, Internet users are likely to be misled into believing the Complainant sponsors or endorses these advertisers and their goods and services.
The Respondents are known prolific cybersquatters who register domain names consisting of well-known trademarks owned by others, and typographical misspellings and phonetic misspellings of well-known trademarks owned by others. In addition to their misappropriation of the famous Yahoo! marks, the Respondents have registered variations of many famous trademarks, trade names, and celebrity names as domain names, including, but without limitation, the following:
Louis Vuitton Dockers Cerruti Redbull
Gucci Dunhill R.J. Reynolds Toyota
McDonalds Pepsi Coca-Cola Lacosite
Informix Oil of Olay Versace Hilton
Grammy Guess Bacardi Guy Laroche
Lauder Ebay Saks Bertelsmann
Revlon Sandra Bullock David Beckham
By way of demonstration of this allegation, the Complainant attached printouts listing domain names registered to "somsak sooksripanich", ""yahooth.com"", "Yahoo Thailand", "Yahoo Sweden", ""thaicenter.net"", ""dnsdealer.com"", ""in-express.com"" and "Yahoo burmuda".
Given the uniqueness and fame of the Yahoo! mark, there is no plausible explanation for the Respondents’ registration of the domain names, other than to trade upon the goodwill of Yahoo! and its famous Yahoo! mark and name. Indeed, the Respondent Sooksripanich was well aware of the Yahoo! mark before he registered the domain names, as evidenced by his use of the ""email@example.com"" email address since May 1998. See Yahoo! Inc. v. David Ashby, (supra) (holding that the Respondent’s use of a ""yahoo.com"" email address supported the panel’s finding of confusing similarity); Telstra Corp. Ltd v. Nuclear Marshmallows (WIPO Case No.D2000-0003) (holding that registration of the well-known Telstra mark could not have been for any plausible reason other than to trade on the goodwill of trademark owner); Cellular One Group v. Paul Brien (WIPO Case No. D2000-0028) (inferring the Respondent’s bad faith intent to sell "cellularonechina.com" domain name where the name would not otherwise be commercially useful without violating the Complainant’s rights in the "unique and inherently distinctive coined word" Cellularone).
The Respondents’ registration and use of the domain names meet the bad faith element section 4(b)(i) of the UDRP. The Respondents registered the domain names primarily to sell, rent, or otherwise transfer the domain names for valuable consideration. Initially, the Respondents’ advertisement for a lawyer to help in the "negotiation and sale" of the "yahooth.com" domain name to Yahoo! and share 50% of the gain, is clearly an indication of the Respondents’ bad faith to sell that name for more than his documentable out-of-pocket expenses. The Respondents’ later refused to transfer the domain names to Yahoo! unless Yahoo! paid about $100 per domain name, well more than NSI’s charge of $35/year per domain name in effect at the time the domain names were registered with NSI. See Robert Ellenbogen v. Mike Pearson (WIPO Case No. D00-0001) (finding that the Respondents’ offer to sell domain name to anyone interested without limiting price to out-of-pocket expenses indicated bad faith); The Avenue, Inc. v. Chris Guirguis (WIPO Case No. D2000-0013) finding the Respondents’ offering of domain name on "greatdomains" auction website constituted bad faith.
The Respondents’ registration and use of the domain names meet the bad faith element set forth in section 4(b)(iii) of the UDRP. Specifically, by attracting Internet users away from Yahoo!’s website towards its own websites, the Respondents prove that their registration and use of the domain names was primarily for the purpose of disrupting the business of a competitor.
The Respondents’ registration and use of the disputed domain names meet the bad faith element set forth in section 4(b)(ii) of the UDRP. Specifically, the Respondents have engaged in a pattern of registering domain names that incorporate others’ trademarks. In addition to the domain names, the Respondents have also registered domain names based upon the well-known trademarks of other parties. It is reasonable to conclude that the Respondents’ intends to trade on the goodwill of other trademark owners and have engaged in a pattern of such activity.
Pursuant to section 4(c) of the UDRP:
(i) Respondents’ are not using and have not used or are not demonstrating and have not demonstrated an intent to use the domain names in connection with a bona fide offering of goods or services;
(ii) Respondents’ are not and have not been commonly known by the domain names; and
(iii) Respondents’ are not making legitimate non-commercial or fair use of the domain names, without intending to mislead and divert consumers or to tarnish the Complainant’s Yahoo! mark for commercial gain.
The Respondents have filed no response.
6. Discussion and Findings
The Complainant must prove the following:
(a) The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) The Respondents’ have no rights or legitimate interests in respect of the domain names; and
(c) The domain names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided copies of several of its trademark registrations for the trademark "Yahoo!". All twenty-two (22) disputed domain names registered by the Respondents to it are composed of Complainant’s trademark plus other letters. The Panel finds that the disputed domain names are confusingly similar to the Complainant’s "Yahoo!" trademark because the Complainant’s famous trademark forms the nongeneric part of each one of the disputed domain names.
The Panel finds the Respondents’ disputed domain names, all twenty-two (22) of them, are confusingly similar to the Complainant’s famous "Yahoo!" trademark.
B. Legitimate Rights or Interests
The Panel finds that the Respondents have no licence or permission from the Complainant to use the trademark "Yahoo!". The Respondents are in default and hence did not contest the Complainant’s contentions in this regard.
It appears to the Panel that, in the context of the disputed domain names, the Respondents’ only business is to interfere with the web traffic to the Complainant and other famous web sites, a factor the Panel will discuss further in the bad faith section below.
C. Registered and Used in Bad Faith
The Complainant has produced overwhelming evidence that the Respondent has registered the disputed domain names with the aim of attracting the public interested in reach Complainant Yahoo!, Inc., and its services. The Panel can see that the Respondents registered these twenty-two (22) disputed domain names which are variations on the Complainant’s trademarks in order to intercept Internet traffic seeking the Complainant’s websites.
The Panel finds the Respondent has registered and used the disputed domain names in bad faith because, as proscribed by the Policy 4(b) (iv)), the Respondents seek to attract the Complainant’s customers to the Respondent’s websites. Moreover, the Respondent has indicated that he wishes to sell the disputed domain names to the Complainant at a profit, which is clear evidence of bad faith use.
The Panel considers that the Complaint has been made out and that:
(a) The disputed domain names are confusingly similar to the Complainant’s trademarks;
(b) The Respondent has no legitimate rights or interests in the disputed domain names; and
(c) The disputed domain names were registered and are being used in bad faith.
The twenty-two (22) disputed domain names listed in the Appendix hereto are ordered to be transferred to the Complainant.
Hon. Sir Ian Barker QC
Dated: January 29, 2001
Mr. somkiet saetung