Nominet UK Dispute Resolution Service

You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Yahoo! Inc v Cook [2004] DRS 1694 (19 June 2004)
URL: http://www.bailii.org/uk/cases/DRS/2004/1694.html
Cite as: [2004] DRS 1694

[New search] [Help]

Nominet UK Dispute Resolution Service

DRS 01694

Yahoo! Inc –v- Shane Cook

Decision of Independent Expert

a. Parties

Complainant:Yahoo! Inc
Country:US

Respondent:Shane Cook
Country:GB

b. Domain Name

yahoopersonals.co.uk (“the Domain Name”)

c. Procedural Background

The Complaint was lodged with Nominet on 16th April 2004. Nominet notified the Respondent of the validated Complaint on 21st April 2004. The Respondent failed to respond within the required time period of 15 days and Nominet so informed the Complainant on 17th May 2004. Mediation not being possible in these circumstances, the Complainant paid Nominet the appropriate fee for a decision of an Expert, pursuant to §6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”), before the stated deadline of 1st June 2004.

Steve Ormand, the undersigned, (“the Expert”) confirmed to Nominet on 1st June 2004, that he knew of no reason why he could not properly accept the invitation to act as expert in this case and that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

d. Procedural Issues

There is no evidence before the Expert to indicate the presence of exceptional circumstances that prevented the Respondent from submitting a response to Nominet within the required time period; accordingly, the Expert will now proceed to a Decision on the Complaint in accordance with §15b of the Procedure.

e. The Facts

The Complainant is a global Internet communications, media, and commerce company that delivers a branded network of searching, directory, information, communication, shopping services and other online activities and has extensive goodwill and reputation in the “Yahoo!” name.

The Complainant has operated under the name YAHOO! at yahoo.com since 1994 and YAHOO! UK & Ireland at yahoo.co.uk since 1996. The Complainant operates YAHOO! Personals which provides on-line dating services available via yahoo.com and at some of their international websites including yahoo.co.uk. The Complainant operates numerous other services identified by the YAHOO! mark and a descriptive word.

“Yahoo!” was rated at 65 in the 2003 Interbrand Annual Survey of the most valuable brands with a brand value of $3.9 billion. The Complainant has submitted copy documents to show it is the proprietor of 2 registered European Community trademarks with priority claims that pre-date the Respondent’s registration of the Domain Name. One of the EC trademarks covers goods and services that includes “directory services to help locate people” and “providing online facilities for real-time interaction with other computer users”. The other includes “providing online forum (or an online website) where computer users can interact with other computer users”. The Complainant also submits copy documents to show it is the proprietor of 2 registered US trademarks for “YAHOO!”.

The Complainant claims a global audience that grew to 765 million unique users during August 2003 and that more than 101 million active registered members logged on to personalised YAHOO! Accounts during the same month to participate in registered member services.

The Respondent registered the Domain Name on 2nd March 2000. The Respondent uses the Domain Name to redirect users to a website at the domain name bluesapphires.net which offers an on-line dating agency that specialises in introducing users to women from Russia and the former USSR.

f. The Parties’ Contentions

Complainant

The Complainant’s assertion is that:

1. The Domain Name (“yahoopersonals.co.uk”) is confusingly similar to a name or mark in which the Complainant has rights because:

a. The Domain Name is similar to the Complainant’s mark YAHOO! since it incorporates the YAHOO! mark in its entirety combined with the descriptive/generic word “personals”.
b. Panels deciding cases under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) have consistently held that a domain name comprised of a trademark and a descriptive term is similar to the mark at issue. See, e.g., Yahoo! Inc. v. Seocho (NAF FA0204000109050) finding the domain name yahoopersonal.com among others confusingly similar to the YAHOO! mark because “merely adding a generic term to the famous YAHOO! mark does not diminish the confusing similarity between the mark and the disputed domain names”.
c. The Domain Name is identical to the name of the Complainant’s YAHOO! Personals website. As a result, Internet users may mistakenly believe that the Domain Name, the Respondent, and/or the bluesapphires.net website are affiliated with the Complainant and/or its YAHOO! Personals services.
d. Combining the Complainant’s YAHOO! mark with a word that closely tracks services and features offered by the Complainant is not sufficient to distinguish the Domain Name from the Complainant’s mark. See Yahoo! Inc. v. Peter Carrington (NAF FA308000184899) finding that the domain name gameyahoo.com and many other domain names confusingly similar to the Complainant’s YAHOO! mark because these domain names combine that mark with a term describing the Complainant’s services and therefore mimic domain names that would likely be held by the Complainant
e. One decision under the Dispute Resolution Service (“DRS”), Yahoo! Inc. v. Simon Charles Smith (DRS No. 1770), and forty-nine decisions under the UDRP involving the YAHOO! mark have been issued in Yahoo!’s favour. In addition, the Panels in at least thirty-three of these cases, including the DRS case, expressly found the YAHOO! mark to be famous.
f. The Complainant’s trademark rights in the mark YAHOO! and variations thereof, based on its trademark filings and on its common law rights acquired through the use of those marks, long predate the Respondent’s registration of the Domain Name.
g. The Complainant owns the domain name YAHOO.COM, which was registered on January 18, 1995 and which has been used to identify the YAHOO! website since on or about that date.
h. The Complainant owns the domain name YAHOOPERSONALS.COM, which it obtained from a cybersquatter in a settlement of the UDRP proceeding, Yahoo! Inc. v. V Entertainment, et al. (WIPO D2001-0985). The Complainant uses YAHOOPERSONALS.COM to direct Internet users to the YAHOO! Personals website.
i. The Complainant also owns the domain name YAHOO.CO.UK, which it has used to direct Internet users to the YAHOO! UK & Ireland website since the launch of that site on September 23, 1996.

2. The Respondent’s registration and use of the Domain Name constitute an Abusive Registration because:

a. It takes unfair advantage of and is unfairly detrimental to the Complainant’s rights in its famous YAHOO! mark.
b. It is likely to cause confusion and to deceive consumers into mistakenly believing that the Respondent’s Domain Name and his affiliated website that offers directly competing services are offered, authorised, or sponsored by the Complainant, or are otherwise affiliated with the Complainant. See DRS No. 1770 holding that the respondent’s domain name yahho.co.uk was an abusive registration because the respondent’s use of the domain name for competing services may cause consumer confusion.
c. It unfairly disrupts the Complainant’s business by redirecting Internet users to directly competing services and by depriving the Complainant of Internet traffic rightly intended for the Complainant’s websites. See DRS No. 1770 holding that the respondent’s domain name was an abusive registration because the respondent’s use of the domain name for competing services disrupted the Complainant’s business.
d. The Respondent misappropriated the Complainant’s goodwill when he registered the Domain Name solely for its value derived from the famous YAHOO! mark long after the Complainant used and registered its YAHOO! Mark, launched the YAHOO! UK & Ireland website and the mark became internationally famous.
e. The Respondent uses the Domain Name to redirect Internet users to a directly competing website at the domain name BLUESAPPHIRES.NET which offers online dating services and thus competes with the YAHOO! Personals services.
f. Pursuant to Section 4 of the Policy, the Respondent is not using or has not demonstrated an intent to use the Domain Name in connection with a bona fide offering of goods or services. The Respondent’s misappropriation of the Complainant’s famous YAHOO! mark in the Domain Name and use of that name to redirect Internet users to directly competing services does not constitute a bona fide offering of goods and/or services. In addition, the Respondent has not been commonly known by the Domain Name, and is not making legitimate non-commercial or fair use of the Domain Name.

Respondent

The Respondent has not responded.

g. Discussion and Findings

General

To succeed in this Complaint, the Complainant has to prove to the Expert on the balance of probabilities, pursuant to §2 of the Policy, both legs of the test that:

1. it has rights (as defined in §1 of the Policy) in respect of a name or mark identical or similar to the Domain name; and
2. the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in §1 of the Policy).

Complainant’s Rights

The Complainant has substantial rights in the mark “YAHOO!” as evidenced by registered trademarks and global branding of the mark. The Domain Name includes the word “yahoo” but is not identical to the Complainant’s mark. The wholly generic domain suffix “.co.uk” is discounted for the purposes of establishing whether the Domain Name is similar or identical to the Complainant’s name or mark.

The remaining element of the Domain Name (“personals”) is a generic term and descriptive of the personal nature of the service that is available via the Respondent’s website and of the service provided by the Complainant under the YAHOO! Personals branding.

Clearly, the distinctive component of the Domain Name is the word “yahoo” and in this context it will be seen by Internet users as the Complainant’s brand name coupled with a generic term describing the service available at the website. The generic term does not render “YAHOO!” and the Domain Name dissimilar.

The Expert finds therefore that the Complainant has rights in respect of a name or mark that is similar to the Domain Name.

Abusive Registration

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, is set out in §3 of the Policy.

The Complainant’s submission argues that the Respondent has registered the Domain Name primarily for the purpose of unfairly disrupting the Complainant’s business, which is an abusive registration under §3a.i.C of the Policy. Furthermore, the Respondent’s use of the Domain Name is abusive under §3a.ii of the Policy in that it is being used in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.

The Complainant presents evidence to show that entering “yahoopersonals.co.uk” into an Internet browser automatically redirects the user to the Respondent’s website “bluesapphires.net” where the Respondent is offering a service that is similar to that provided by the Complainant under the YAHOO! Personals branding. It is highly likely that some users would not know that the Domain Name was not connected with the Complainant and possibly this would lead those people to purchase a service from the Respondent believing it to be a site endorsed by or connected with the Complainant. The Expert concludes therefore that confusion will be caused to Internet users intending to search for the Complainant’s dating service provided under YAHOO! Personals and that the Respondent is disrupting the Complainant’s business.

The Respondent has not offered any evidence to justify use of the Domain Name and the Expert concludes that the Respondent is taking advantage of the Complainant’s reputation and goodwill in the mark “YAHOO!”.

Accordingly, the Expert finds that on the balance of probabilities the Respondent registered the Domain Name in a manner consistent with §3a.i.C, and is using it in a manner consistent with §3a.ii of the Policy, in contravention of §1(ii) of the Policy and it is therefore an Abusive Registration.

h. Decision

In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, yahoopersonals.co.uk, be transferred to the Complainant.

Signed: Steve Ormand
Date: 19th June 2004