WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
YAHOO! INC V. SYRYNX, INC. and HUGH HAMILTON
Case No. D2000-1675
1. The Parties
The Complainant is YAHOO! INC., a Delaware corporation with its principal place of business at 3420 Central Expressway, Santa Clara, California 95051, USA.
The Respondents are SYRYNX, INC., AT 292 South Country Road, Palm Beach, Florida 33480 and Hugh Hamilton, an individual listed as the Administrative Contact of one of the domain names here in issue, "yahoobroadcast.com".
2. The Domain Name and Registrar
The dispute concerns the following domain names: "yahoobroadcast.com" and "yahoolinux.com", hereinafter the Domain Names. The Registrar with which these Domain Names are registered is Network Solutions, Inc. with a business address in Herndon, Virginia, U.S.A.
3. Procedural History
On December 1, 2000, and December 4, 2000, respectively, the World Intellectual Property Organization Arbitration and Mediation Center (the WIPO Center) received a Complaint electronically and by hard copy for a decision in accordance with 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).
On December 5, 2000, the WIPO Center acknowledged receipt of the said Complaint.
On December 6, 2000, the WIPO Center sent a Request for Registrar Verification to the Registrar. On December 11, 2000, the Registrar confirmed to the WIPO Center that it was the Registrar of the said Domain Names and also that the current registrant of the said Domain Names was the Respondent.
On December 13, 2000, the WIPO Center sent to Complainant a Mutual Jurisdiction Deficiency Notification which was remedied by an Amended Mutual Jurisdictional Submission on December 13, 2000.
On December 15, 2000, having found that the Complainant had satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier, facsimile, and e-mail to the Respondent and transmitted electronically copies of said documents to the Complainant, ICANN, and the Registrar. The said Notification particularized the formal date of the commencement of this administrative proceeding as December 15, 2000, and required the Respondent to submit a Response to the Complaint within 20 calendar days from the date of receipt of the Notification, failing which the Respondent would be considered to be in default.
The Respondent failed to file the Response with the WIPO Center by the last date, i.e. January 3, 2001. On January 4, 2001, the WIPO Center sent the Notification of Respondent Default to the Respondent by e-mail and copied the Complainant via e-mail. The Complainant elected to have the dispute decided by a single-member panel (the Panel). On January 12, 2001, the WIPO Center appointed Mr. Terrell C. Birch to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him and sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel by e-mail. On the same day, the WIPO Center sent a Transmission of Case File to the Panel.
The Panel finds that the WIPO Center has discharged its obligations and responsibility under the Rules. The Panel will hereby issue its Decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules, without the benefit of any Response from the Respondent.
4. Factual Background
A. Yahoo! and its Services
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. Yahoo!’s services include web directory and search services, audio and video broadcasting, Internet access, e-mail, chat, online games, sweepstakes and other contests, travel-related services, stock quotes, insurance quotes, tax information and filing services, small business advice and services, business and financial information and services, loan quotes, real estate and mortgage information and quotes, movie reviews, news, weather, sports, yellow pages, maps, auctions, online shopping, classified advertising, and web store hosting and management.
The main YAHOO! site can be accessed at the URL "http://www.yahoo.com". The Yahoo! property created by the acquisition of Broadcast.com is now called Yahoo! Broadcast, and is accessible at "http://broadcast.yahoo.com" or "http://www.broadcast.com/"; further information can be found at "http://fusion.yahoo.com/broadcast/index.html".
Yahoo!’s web directory was initially called "Jerry and David’s Guide to the World Wide Web." A short time later, in June 1994, the name was changed to "YAHOO!". Shortly thereafter, the overwhelming success of the YAHOO! site led its founders to take a leave of absence from Stanford University to concentrate on setting up a business and raising capital to run the business. Yahoo!’s Initial Public Offering of stock was in April 1996. Yahoo! currently has a market capitalization of approximately U.S. $60 billion.
Yahoo! carried the advertisements of more than 3,500 companies during 1999. Among the companies that have advertised their products or services on the YAHOO! site are Apple, Colgate-Palmolive, Disney, The Gap, Honda, IBM, Lego, Microsoft, Procter & Gamble, Sony, Swatch, Toshiba, and Visa.
Nearly all of Yahoo!’s current Internet services are offered to the public free of charge, its income being primarily derived from the sale of advertising and co-branding or sponsorship agreements with other companies. Yahoo! also receives significant revenue from its Internet broadcast services, which are offered to content providers who wish to stream audio or video, by use of Yahoo!’s technology and equipment, to their employees, clients and/or the general public. Yahoo! also receives revenues from certain electronic commerce transactions originating from the Yahoo! site. Yahoo! also sells merchandise bearing the YAHOO! mark such as Yahoo! Internet Life magazines, computer equipment, toy cars, watches, writing instruments, clothing, hats, posters, watches, clocks, duffel bags, baseballs and much more. Yahoo!’s revenues have skyrocketed since it started accepting advertising in August 1995. Revenues were US $1,666,000 in 1995; US $23,793,000 in 1996; US $84,108,000 in 1997; US $245,100,000 in 1998; and US $588,608,000 in 1999. Revenue is expected to exceed US $1 billion in the year 2000.
The number of visits to the YAHOO! website has increased dramatically each year since Yahoo!’s inception. During September 1998, for example, the YAHOO! site averaged 144 million "page views" per day, and during September 2000, traffic grew to an average of 780 million page views per day. A "page view" is defined as one electronic page of information displayed in response to a user request. One visitor to the site can represent more than one page view. This translates into hundreds of millions of discrete visits to the YAHOO! site every quarter. According to an April 2000, report from the Web market research firm Media Metrix, the Yahoo! network of properties was ranked number one in reach among home users (58.3%), second in work reach (57.9%), and first in combined work/home reach during that month.
Moreover, as of June 30, 2000, Yahoo! had over 150 million unique registered users, i.e., users who register with Yahoo! in order to participate in Yahoo!’s registered member services, including games, shopping, auctions, classifieds, e-mail, clubs, calendars, message boards, chat rooms, and more.
Yahoo! also offers a wide variety of services using the YAHOO! mark together with a descriptive name of its services, including but not limited to YAHOO! Shopping, YAHOO! Travel, YAHOO! Chat, YAHOO! Small Business, YAHOO! Messenger, YAHOO! Finance, YAHOO! Auctions, YAHOO! Photos, YAHOO! Address Book, YAHOO! Calendar, YAHOO! Bill Pay, and YAHOO! Store.
By virtue of the arbitrary nature and hence the inherent strength of the YAHOO! mark as applied to Yahoo!’s vast array of web-based services; the millions of visitors to the YAHOO! network of websites every day; the millions of links to the YAHOO! site from third-party websites; and Yahoo!’s extensive use, promotion, and registration of its YAHOO! mark, the YAHOO! mark and "yahoo.com" domain name have become famous. Indeed, the United States District Court for the Eastern District of Virginia has specifically held that the Yahoo! mark is famous. See Yahoo! Inc. v. Buffalo Wu, CA-00-00178-A (memorandum decision at p. 8)
Yahoo! has vigorously defended and policed the mark YAHOO! as evidenced by twelve prior UDRP decisions in its favor.
On April 1, 1999, Yahoo! Inc. officially announced its acquisition of "Broadcast.com", an Internet company specializing in the aggregation and broadcast of streaming audio and video via the Internet. Prior to Yahoo!’s official announcement, numerous industry and business publications had speculated on the high possibility of a merger. As early as March 15, 1999, there had been industry speculation concerning the possibility of such a merger or acquisition. In fact, the day before Respondents registered the "yahoobroadcast.com" domain name, the Wall Street Journal reported that "Yahoo! Inc. was in talks to acquire Broadcast.com." The Respondents registered the "yahoobroadcast.com" domain name on March 24, 1999, after speculation of the possibility of a merger had been widely publicized in major financial and Internet news publications, and only a week before the official announcement was made.
Respondents are not and have never been licensees of Complainant. Respondents are not and have never been otherwise authorized by Complainant to use the YAHOO! Marks.
B Yahoo!’s Trademark Holdings
Yahoo! is the owner of the following federal trademark registrations (Footnote 1) and applications:
Yahoo! also owns the domain name "yahoo.com". That domain name was registered with NSI on January 18, 1995 and has been used to identify the YAHOO! website since on or about that date.
Yahoo! also owns the domain name "broadcast.com". That domain name was registered with NSI on October 10, 1997 and has been used to identify the "Broadcast.com" and/or Yahoo! Broadcast websites continuously since on or about that date.
Yahoo!’s trademark rights in the YAHOO! Marks and variations thereof, based on its trademark filings and on its common law rights acquired through the use of the YAHOO! and "broadcast.com" marks, trade names, and domain names, predate the registration of the Domain Names by Respondents.
Having been used by Yahoo! in connection with its Internet-based business, and having been widely promoted and advertised among members of the general consuming public, the YAHOO! Marks have become valuable property of Yahoo!. Furthermore, the YAHOO! name and mark enjoys unquestionable fame as a result of favorable public acceptance and recognition worldwide.
C. Respondents’ Infringing Activities
The "yahoobroadcast.com" domain name was registered by Respondents on March 24, 1999. The "yahoolinux.com" domain name was registered by Respondents on January 16, 2000.
On May 10, 2000, after discovering Respondents’ "yahoobroadcast.com" domain name, Yahoo!’s in-house senior trademark counsel, Laura Covington, spoke with Respondent Hamilton. Ms. Covington offered to reimburse Respondents’ registration fees if they would agree to transfer that domain name to Yahoo!. Mr. Hamilton informed Ms. Covington of his need to discuss this with his partner. Having not received a return call, Ms. Covington left a message on May 23, 2000. A call placed on June 2, 2000, to Hamilton found the telephone line disconnected. On June 29, 2000, Yahoo!’s in-house trademark counsel, Michael Rodenbaugh, contacted Respondent via the email addresses listed at the website "www.yahoobroadcast.com", "info@yahoobroadcast.com" and "hughham@inx.net".
On July 11, 2000, Mr. Rodenbaugh spoke with Mr. Hamilton. During the conversation, Mr. Hamilton alleged that he had spent between $100,000 to $125,000 to get the site "ready to roll" and had solicited advertising. During the conversation, Mr. Hamilton stated, "$5000 would make this go away."
As of June 15, 2000, the "yahoobroadcast.com" domain name had connected to a website located at "www.yahoobroadcast.com" which contained a welcome message accompanied by solicitations for advertising. As of October 10, 2000, the "yahoobroadcast.com" domain name connected to a website consisting solely of an "index" page displaying one dead link ("parent directory") and one password protected link ("stats/").
On November 28, 2000, Yahoo! discovered that Respondents registered the domain name "yahoolinux.com". As of that date, this domain name connected to a temporary website provided by its web hosting company, NSI.
5. Parties’ Contentions
A. Complainant
Essentially, the contentions of the Complainant are as follows:
The Domain Names wholly incorporate the Complainant’s unquestionably famous YAHOO! mark, trade name and domain name, and the "yahoobroadcast.com" domain name wholly incorporates Complainant’s well known "broadcast.com" mark, trade name and domain name.
Upon information and belief, at the time that Respondents registered the Domain Names, they had actual knowledge of Yahoo!’s rights to the YAHOO! Marks and registered the Domain Names in bad faith to take advantage of the tremendous reputation and goodwill of the YAHOO! Marks.
Respondents used and/or intended to use the Domain Name to divert Internet users attempting to reach the "yahoo!, broadcast.com" and/or YAHOO! Broadcast sites and to trade on the goodwill of the YAHOO! Marks.
Upon information and belief, when Respondents registered the Domain Names they intentionally and willfully misrepresented to NSI that the registration of the Domain Names did not interfere with or infringe upon the rights of any third parties and that the Domain Names were not being registered for any unlawful purpose.
Respondents’ registration and use of the "yahoobroadcast.com" domain name meets the bad faith element set forth in Section 4(b)(iv) of the UDRP. Specifically, Respondents used that domain name to intentionally attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with the YAHOO! Marks as to the source, sponsorship, affiliation and endorsement of Respondents’ website. See The Channel Tunnel Group Ltd. v. Powell (WIPO Case No. D2000-0038) (bad faith found where respondent registered domain name with knowledge of complainant’s mark and used website to seek commercial gain); Yahoo! Inc. v. David Ashby (WIPO Case No. D2000-0241) (same).
Respondents’ registration and use of the "yahoobroadcast.com" domain name meets the bad faith element set forth in Section 4(b)(iii) of the UDRP. By attracting Internet users away from Yahoo!’s website toward their own website offering online advertising, Respondents proved that their registration and use of that domain name was primarily for the purpose of disrupting the business of an online advertising competitor.
Respondents’ registration and use of the "yahoobroadcast.com" domain name also constitutes bad faith because Respondents had reason to believe that a pending merger or acquisition between Yahoo! Inc. and Broadcast.com would take place as evidenced by industry and business speculation. Furthermore, Mr.Hamilton represented to Mr. Rodenbaugh that he was a former Wall Street bond trader, which would have placed Mr. Hamilton in a greater position to have knowledge of Yahoo!’s intended acquisition (for example, he is more likely to subscribe to the Wall Street Journal, which predicted the merger the day before the Domain Name was registered). See Pharmacia & Upjohn AB v. Sol Meyer (WIPO Case No. D2000-0785) (finding bad faith where respondent registered domain name after hearing news of possible merger between two companies); Time Warner Inc. and EMI Group plc v. CPIC Net (WIPO Case No. D2000-0433) (same); A.P. Moller v. Web Society (WIPO Case No. D2000-0135) (same); Yahoo! Inc. v. Roger Campanera Renom (WIPO Case No. D2000-1012) (same).
Respondents’ registration and use of the "yahoobroadcast.com" domain name meets the bad faith element set forth in Section 4(b)(i) of the UDRP. Respondents registered that domain name primarily to sell, rent or otherwise transfer the domain name for valuable consideration. Indeed, Respondents offered to sell that domain name to Yahoo! for $5,000. See Robert Ellenbogen v. Mike Pearson (WIPO Case No. D00-0001) (finding that Respondents’ offer to sell domain name to anyone interested without limiting price to out-of-pocket expenses indicated bad faith); America Online, Inc. v. QTR Corp. (NAF Case No. FA000100092016) (finding Respondents’ offer to sell domain name by listing "this domain name is for sale" in WHOIS directory constituted bad faith); The Avenue, Inc. v. Chris Guirguis (WIPO Case No. D2000-0013) (finding Respondents’ offering of domain name on GREATDOMAINS auction website constituted bad faith).
Internet users looking for Yahoo!’s online broadcasting services may attempt to locate those services by typing "www.yahoobroadcast.com" in their browsers. By currently using the Domain Name for an index page (thus, a non-functional website), Respondents will cause Internet users reaching Respondents’ website to mistakenly believe that Complainant does not have a web presence dedicated to its YAHOO! Broadcast services, and seriously interferes with Complainant’s business. See S.S. Société Générale de Surveillance S.A. v. Inspectorate (WIPO Case No. D2000-0025) (finding that respondent’s use of a tombstone, or minimalist website, diverts prospective customers and constitutes bad faith); Pricegrabber.com v. Larry O’Connor et al. (NAF Case No. FA0004000094651) (finding respondent’s registration of its competitor’s mark as a domain name and use of it for an "under construction" website caused confusion and disrupted complainant’s business).
Similarly, Internet users looking for the section of Yahoo!’s website dedicated to the LINUX computer operating system may attempt to locate that site by typing "www.yahoolinux.com" in their browsers. By currently directing the "yahoolinux.com" domain name to an "under construction" website, Respondents will cause Internet users reaching Respondents’ website to mistakenly believe that Complainant does not have a web presence dedicated to this topic, and seriously interferes with Complainant’s business. See id.
Given the uniqueness and fame of the YAHOO! mark, there is no plausible explanation for Respondents’ registration of the Domain Names other than to trade upon the goodwill of Yahoo! and its famous and well-respected YAHOO! Marks. See Telstra Corp. Ltd. v. Nuclear Marshmallows (WIPO Case No. D2000-0003) (holding that registration of coined, 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 respondent’s bad faith intent to sell "cellularonechina.com" domain name where name would not otherwise be commercially useful without violating complainant’s rights in the "unique and inherently distinctive coined word" CELLULARONE).
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 noncommercial or fair use of the Domain Names, without intending to mislead and divert consumers for commercial gain.
B. Respondent
In view of the fact that the Respondent has not filed a Response, the Panel is in no position to make out its contentions.
6. Discussion and Findings
6.1 Effect of Respondent’s Default
By paragraph 5(b)(i) of the Rules, it is expected of the 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 paragraph (14)(b) of the Rules:
"…the Panel shall draw such inferences therefrom as it considers appropriate."
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 (February 16, 2000):-
"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."
In the instant administrative proceeding, the Respondent’s default entitles the Panel to conclude that the Respondent has no evidence to rebut the assertions of the Complainant. It enables the Panel to proceed to make a finding in favor of the Complainant.
6.2 Elements to be proven
However, paragraph 4(a) of the Policy envisages that for the Complaint to succeed, the Complainant must establish that:
i) the Respondent’s Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and
ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
ii) the Respondent’s Domain Name has been registered and is being used in bad faith.
The panel in Cortefiel, S.A. v. Miguel Garcia Quintas WIPO Case No. D2000-0140 (April 24, 2000) notes that under the Policy, even if the respondent is in default,
"…the complainant must prove that each of these three elements are present."
6.3 Identical or Confusingly Similar
The Complainant claims and has established first use and ownership of the YAHOO! marks. It has also shown substantial use. Ownership of these marks is clearly in the Complainant. Under the Policy, all that is required of the Complainant is to establish its rights in the marks, and the extent of the geographical area in which the rights accrue does not matter. The Panel has compared the Disputed Domain Names with the Complainant’s YAHOO! marks and finds that the second level domains thereof are substantially identical to the Complainant’s marks. The Panel finds that there is such similarity in sound, appearance, and connotation between the YAHOO! marks and the said Disputed Domain Names as to render said Disputed Domain Names confusingly similar to Complainant’s YAHOO! marks.
6.4 Respondent’s Rights or Legitimate Interests in the Disputed Domain Names
Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the said Disputed Domain Names by showing:
i) its use of, or demonstrable preparations to use, the said Disputed Domain Names or a name corresponding to the said Disputed Domain Names in connection with a bona fide offering of goods or services before any notice to him of the dispute; or
ii) he (as an individual, business, or other organization) has been commonly known by the said Disputed Domain Names, even if he has acquired no trademark or service mark rights; or
iii) he is making a legitimate noncommercial or fair use of the said Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence presented by Respondent in demonstrating any of the foregoing factors because Respondent is in default and has failed to respond in this action. Accordingly, the evidence available contains nothing that may justify a legitimate noncommercial or fair use of the said Disputed Domain Names by Respondent. Neither is there any evidence for any of the other two foregoing requirements.
Furthermore, 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 Respondent. Guerlain S.A. v. Peikang, D2000-0055 (WIPO).
The contested domain names resolve to non-functional sites; accordingly, confused customers of the Complainant are likely to be frustrated in their efforts to reach the Complainant’s web sites. Indeed, Respondent has not undertaken a bona fide offering for sale of goods using the disputed domain names before notice of the dispute, and cannot establish rights or legitimate interests in the Disputed Domain Names, thereby establishing the second element necessary for Complainant to prevail on its claim that Respondent has engaged in abusive domain name registration. The Frozfruit Company v. Maui Bound Media Group, D2000-0851 (WIPO).
6.5 Registration and Use in Bad Faith
As stated by the panel in World Wrestling Federation Entertainment, Inc. v. Michael Bosman WIPO Case No. D99-0001 (January 14, 2000) in order for the Complainant to succeed:
"... the name must not only be registered in bad faith, but it must also be used in bad faith."
The Complainant must prove that the Respondent registered and also used the said Domain Name in bad faith in order to establish ‘bad faith’ on the part of the Respondent.
Complainant has averred and the Panel finds that the Disputed Domain Names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Names registrations to the Complainant, the owner of the YAHOO! marks for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the Disputed Domain Names. Still further, Respondent registered multiple domain names all of which contain Complainant’s YAHOO! marks. "The registration of several names corresponding to Complainant’s trademarks is sufficient to constitute a pattern of such conduct, and thus to constitute bad faith with the meaning of paragraph 4(b)(ii) of the Policy." General Electric Company v. Normina Ansalt a/k/s Igor Fyordorov, WIPO Case No. D2000-0452.
Respondent registered multiple domain names here at issue all identical to names and/or marks belonging to Complainant. This course of conduct is further evidence of Respondent’s bad faith intent and effort to capitalize in some way on Complainant’s goodwill. The Price Company v. Price Club, also known as Tsung-Pei Chang, WIPO Case No. D2000-0664 ("the selection of three domain names that are virtually identical to complainant’s famous mark demonstrates that these were abusive registrations contrary to the Policy").
Before any notice to the Registrant of this dispute, there has been absolutely no evidence of the Registrant’s use of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services. Such inaction, in view of the facts and circumstances of this case, further constitutes evidence of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Based on the alleged facts, which have not been disputed, the Panel finds that the Respondent has engaged in the practices defined in Paragraph 4(b)(i) and 4(b)(ii) of the Policy as evidencing the registration and use of the said Disputed Domain Names in bad faith.
7. Decision
For all the foregoing reasons and pursuant to the ICANN Rules, paragraph (15), the Panel finds that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. The Panel requires that the said Disputed Domain Names, namely, "yahoobroadcast.com" and "yahoolinux.com", be transferred to the Complainant pursuant to paragraph 4(i) of the Policy.
Terrell C. Birch
Sole Panelist
Dated: January 30, 2001
Footnotes:
1. Although these registrations issued in the name of Yahoo! Inc. (a California corporation), they are now owned by Yahoo! Inc. (a Delaware corporation) by virtue of the merger of the California corporation into the Delaware corporation on May 18, 1999.
2. This application was filed in the name of AudioNet, Inc., a change of name document was recorded with the PTO on April 9, 1999.