Decision for dispute CAC-UDRP-100604

The panel is not aware of other pending proceedings.

The Complainant is, inter alia proprietor of the following trademarks:

YAHOO!, US-Registration No. 2,403,227, first used in June 1994, filed on August 13, 1998, issued on November 14, 2000, covering telecommunications services, online computer services for a wide range of general interest information, online advertising and retail services, transportation services, and computer software in International Classes 9, 35, 38, 39, and 42.

FLICKR: US Registration No. 3,455,275 first used on February 28, 2004, filed on May 10, 2005, issued on June 24, 2008, covering goods and services in International Classes 9 (computer software for use in connection with photographs); 38 (communication services and online services including services relating to photographs); 39 (electronic storage of digital content including photographs); 40 (digital enhancement of photographs; alteration and/or retouching of photographic images); and 41 (online journals, namely, blogs concerning topics of general interest to the blogger; photography services; providing information in the field of photography).

SHINE: U.S. Registration No. 3,843,659, first used in 2008, filed for in 2009, issued in 2010, covering goods and services in International Classes 36 (insurance and financial), 41(education and entertainment), 43 (hotels and restaurants), 44 (medical beauty and agricultural), and 45 (personal).

YMAIL : Hong Kong registration no. 301049391, filed on February 12, 2008 and actually registered on August 8, 2008 in classes 9, 35, 38, 41, 42, 43, 45.

ROCKETMAIL : U.S. Registration No. 4,287,128, first used in 1997, filed for in January 2008, issued in 2013, covering goods and services in International Classes 38 (electronic mail services).

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

This Complaint is hereby submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy (UDRP), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 and approved by ICANN on October 24, 1999, and the Rules for Uniform Domain Name Dispute Resolution Policy (UDRP Rules), with an effective date of March 1, 2010, and the Czech Arbitration Court (CAC)'s UDRP Supplemental Rules, UDRP Rule 3(b)(i).

Trademark Information

Yahoo!’s focus is on making the world's daily habits inspiring and entertaining. By creating highly personalized experiences for its users, Yahoo! keeps people connected to what matters most to them, across devices and around the world. In turn, Yahoo! creates value for advertisers by connecting them with the audiences that build their businesses.

There is little doubt as to the broad based international awareness of Yahoo!’s trademarks. E.g., Yahoo! Inc. v. Blue Q Ltd., Romain Barissat, WIPO Case. No. D2012-0702 (YAHOO!); Yahoo! Inc. v. Nicolas Morrow, WIPO Case No. D2011-1487 (Oct. 20, 2011) (FLICKR).

Yahoo! owns multiple registered trademarks throughout the world for YAHOO, FLICKR, SHINE, ROCKETMAIL, Y! and YMAIL. Representative certificates of registration for the marks YAHOO!, FLICKR, SHINE, ROCKETMAIL and Y! in the United States, and YMAIL in Hong Kong.

The YAHOO! Mark

The YAHOO! mark has been in continuous use in commerce since 1994. The Complainant owns numerous trademark registrations for the YAHOO! mark around the world, including but not limited to federal trademark registrations in the United States, such as: (a) Registration No. 2,403,227, first used in June 1994, filed on August 13, 1998, issued on November 14, 2000, covering telecommunications services, online computer services for a wide range of general interest information, online advertising and retail services, transportation services, and computer software in International Classes 9, 35, 38, 39, and 42; (b) Registration No. 2,040,222, first used on June 1, 1994, filed on January 24, 1996, issued on February 25, 1997, covering online computer services including creating indexes of information and providing online reference materials, software, books, and advertising services in International Classes 9, 16, 35, and 42; and (c) Registration No. 2,187,292, first used on September 22, 1997, filed on February 28, 1997, issued on September 8, 1998, covering online computer services in International Class 35.

The FLICKR Mark

The FLICKR mark has had significant commercial success around the world through extensive usage of its photographic services, which in turn is part of the larger YAHOO! worldwide image with its own extensive commercial strength. E.g., Yahoo! Inc. v. Nicolas Morrow, WIPO Case No. D2011-1487 (Oct. 20, 2011) (transferring <nastyflickr.com>). Complainant operates a photo-sharing website under the FLICKR trademark owned by Complainant which has been registered in countries around the world, including but not limited to U.S. Registration No. 3,455,275 for the FLICKR mark, first used on February 28, 2004, filed on May 10, 2005, issued on June 24, 2008, covering goods and services in International Classes 9 (computer software for use in connection with photographs); 38 (communication services and online services including services relating to photographs); 39 (electronic storage of digital content including photographs); 40 (digital enhancement of photographs; alteration and/or retouching of photographic images); and 41 (online journals, namely, blogs concerning topics of general interest to the blogger; photography services; providing information in the field of photography).

The SHINE Mark

On March 7, 2008, the news service provider BusinessWeek published an article on a new website Complainant was to offer under the YAHOO! mark for women offering news, information, and online services with a proposed name of 'Shine.' On March 31, 2008, Complainant launched this service and website. Yahoo!’s SHINE mark received such widespread attention that it was the subject of imitation from the outset. E.g., Yahoo! Inc. v. Xie Shuxian, NAF Claim No. FA0806001198791 (July 22, 2008) (transferring <shineyahoo.com>).

Complainant owns the SHINE trademark, which has been registered in countries around the world, including but not limited to U.S. Registration No. 3,843,659 for the SHINE mark, first used in 2008, filed for in 2009, issued in 2010, covering goods and services in International Classes 36 (insurance and financial), 41(education and entertainment), 43 (hotels and restaurants), 44 (medical beauty and agricultural), and 45 (personal).

The YMAIL and ROCKETMAIL Marks

Launched in October 1997, Yahoo! Mail is one of the world's largest, most popular free e-mail services. Yahoo! Mail helps people stay in touch at home, at work, or while traveling for business or pleasure, and is available in over 20 languages. Yahoo! Mail has received numerous awards and recognitions, including the Best of Web award from PC World, and Editors' Choice by both PC Magazine and CNET. In 2008, due to global popularity with more than 260 million users, many desirable email addresses had already been taken for the yahoo.com domain. Therefore, Yahoo! had announced the global availability of two new e-mail domains to give users the chance to register for the e-mail address or Yahoo! ID they had always wanted at ymail.com and rocketmail.com. Yahoo!’s use of the ROCKETMAIL mark goes back to 1997, when it acquired Four11 Corp., an online communications and directory company. RocketMail was ranked the best free e-mail service by C|Net at that time.

Complainant owns the Y! trademark, which has been registered in countries around the world, including but not limited to U.S. Registration No. 2,863,899 for the Y! mark, first used in 1997, filed for in 1998, issued in 2004, covering goods and services in International Classes 35 (advertising and business service), and U.S. Reg. No. 2,638,064 for the Y! mark, first used in 1998, filed for in 1999, and registered in 2002, covering goods and services in Int’l Class 38 (communication services), U.S. Reg. No. 2,088,896 for the Y! mark, first used in 1995, filed for in 1996, and registered in 1997, covering goods and services in Class 42 (scientific and technological services).

Complainant also owns a certificate of registration no. 301049391 in Hong Kong for the mark YMAIL in a wide range of international classes, which issued in 2008.

Complainant owns the ROCKETMAIL trademark, which has been registered in countries around the world, including but not limited to U.S. Registration No. 4,287,128 for the ROCKETMAIL mark, first used in 1997, filed for in January 2008, issued in 2013, covering goods and services in International Classes 38 (electronic mail services).


FACTUAL AND LEGAL GROUNDS

This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).

[a.] Yahoo! has established rights in its YAHOO!, FLICKR, Y!, ROCKETMAIL, and SHINE marks through registration with the USPTO. E.g., Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal U.S. trademark registrations). Yahoo! also has established rights in its YMAIL mark through registration in Hong Kong. Williams-Sonoma, Inc. v. Fees 947704 (Nat. Arb. Forum Apr. 25, 2007) (finding it is irrelevant whether complainant has registered its mark in the country of the respondent’s residence and that it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

From the Whois records, the earliest registration date by Respondent of a disputed domain name confusingly similar to: the FLICKR mark is July 13, 2008 (<flickl.com>), the YAHOO! mark is June 6, 2008 (<loveyahoo.com>), the ROCKETMAIL mark is June 19, 2008 (<eocketmail.com>), the Y!/YMAIL marks is April 23, 2009 (<ymial.com>) , and the SHINE mark is November 27, 2011 (<shineads.com>). All of these dates are subsequent to when Yahoo! first acquired rights in its marks as described above.

“The practice of typosquatting has been consistently regarded in previous UDRP decisions as creating domain names confusingly similar to the relevant mark.” E.g., Tumblr, Inc. v. WhoisGuard Protected/Alex O. Balansag, WIPO Case No. D2013-0244 (April 5, 2013) (<tumlr.com>); Tumblr, Inc., WIPO Case No. D2013-0106.

Respondent’s domains <loveyahoo.com>, <wwwshineyahoo.com>, <yahooarticle.com>, <yahoohine.com>, <yahoophoto.com>, <yahoosine.com>, and <yahoowap.com> are confusingly similar to Yahoo!’s YAHOO! mark. The disputed domain names incorporate the entire mark and differ only by adding generic or descriptive terms, typos of such terms, typos of such marks, by adding the generic top-level domain (‘.com’), or by omitting the period after ‘www’. The omission of the exclamation point in the YAHOO! mark is not relevant. E.g., Yahoo! Inc. v. Fady Alassahd a/k/a Fady Al Assaad (WIPO Case No. DAE2008-001) (Apr. 23, 2008). The incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant's registered mark. E.g., YAHOO! Inc. v. Junlong Zheng c/o OnlineNIC, NAF Claim No. FA 1142567 (‹YAHOOtrips.com›); YAHOO! Inc. et al., v. Alex Vorot et al., NAF Claim No. FA 159547 (‹yahoocalendar.com› and ‹yahoocars.com›, among others).

Respondent’s domains <flciker.com>, <flickl.com>, <flickrcom.com>, <flickx.com>, <fliclr.com>, <flixckr.com>, <flikrr.com>, and <flivkr.com> are confusingly similar to Yahoo!’s FLICKR mark. The disputed domain names differ only insofar as they exploit anticipated typographical errors of the mark or of common misspellings, such as by reversing and/or adding a letter, substituting or omitting a letter based on a keyboard slip, or typing ‘.com’ and leaving out the period.

Respondent’s domains <rcoketmail.com>, <rocketmaail.com>, <roccketmail.com> , <rocketmmail.com>, <rocketmsil.com>, <roxketmail.com> ,<rocektmail.com> , <rockeetmail.com>, <rocketmaail.com>, <rocketmali.com>, <rockketmail.com>, <eocketmail.com>, <roocketmail.com>, <rovketmail.com>, <roxketmail.com>, <orcketmail.com>, <rcoketmail.com>, <rockwtmail.com>, <rocletmail.com>, <roocketmail.com>, <rovketmail.com>, and <roxketmail.com> are confusingly similar to Yahoo!’s ROCKETMAIL mark. The disputed domain names differ only insofar as they exploit anticipated typographical errors, such as by typing the same letter twice, reversing letters, or substituting a letter based on a keyboard slip.

Respondent’s domains <ymaul.com>, <ymal.com>, <ymial.com> and <ymsil.com> are confusingly similar to Yahoo!’s YMAIL and Y! marks. The disputed domain names differ from Yahoo!’s YMAIL mark only insofar as they exploit anticipated typographical errors, such as by substituting or omitting a letter based on a keyboard slip. Furthermore, the disputed domains differ from Yahoo!’s Y! mark only insofar as they leave out the exclamation point and add typographical misspellings of the generic word “Mail.” The exclamation point is routinely discounted for purposes of evaluating confusing similarity. E.g., Yahoo! v. Ratnayake, NAF FA0802001142577 (Nat. Arb. Forum March 24, 2008) (“Because exclamation points are not a permitted character in domain names, the disputed domain names do not include the exclamation point found in Complainant’s mark. The absence of this punctuation, however, does not change the analysis under Policy paragraph 4(a)(i).”) Moreover, the addition of the generic term ‘mail’ does not distinguish the disputed domain names as this term has an obvious relationship to services offered under Complainant’s mark.

Respondent’s domains <wwwshineyahoo.com>, <yahoohine.com>, <yahoosine.com>, <shineyaho.com>, <shineads.com>, are confusingly similar to Yahoo!’s SHINE mark. They either incorporate the entirety of Complainant’s mark and simply add a generic term related to Yahoo!’s business, e.g., Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding mere addition of a generic or descriptive word to a registered mark does not negate a finding of confusing similarity), E.g., Yahoo! v. Carrington et al., FA0308000184899 (Nat. Arb. Forum Oct. 20, 2003) (finding confusing similarity for domain names including <yahooshoping.com> that consisted of the entire YAHOO! mark “along with a word or misspelled word that closely tracks services and features offered by Complainant,” and that “mimic domain names that would likely be held by Complainant.”), or differ only insofar as they exploit anticipated typographical errors of either the mark SHINE or of the mark YAHOO! combined with SHINE.

The practice of typosquatting is designed to take advantage of Internet users' typographical errors, which means the typos of the highly distinctive ROCKETMAIL, YMAIL, YAHOO, SHINE, and FLICKR names must be confusingly similar by design. E.g., Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); Victoria's Secret v. Zuccarini, NAF Claim No. FA0010000095762 (finding that by misspelling words and adding letters to words respondent does not create a distinct mark but, nevertheless, renders the domain name confusingly similar to the complainant's marks).

[b.] The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain names or to use its trademarks. Respondent is not known by the disputed domain names, nor has Respondent acquired any trademark rights in respect of the domain names. Nor is it conceivable that Respondent could have a legitimate interest in Yahoo!’s strong and famous trademarks. E.g., YAHOO! Inc. v. Blue Q Ltd., et al., WIPO Case No. D2011-0702 ('bearing in mind the arbitrary, distinctive and well-known nature of the [YAHOO!] mark in this case... it would indeed be difficult for the Respondent to establish that he has rights or legitimate interests in the disputed domain name which contains the mark YAHOO.')

There is also no legitimate interest to be found in typosquatting. Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding typosquatting provides additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name); Nat'l Ass'n of Prof'l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) ('Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.').

Respondent uses the disputed domain names to host commercial websites that provide competing web portal links to search services, and general advertisement links to a variety of businesses and products, none of which are a bona fide offering of goods or services under the Policy. E.g., Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii)).

[c.] Given the distinctive trademarks at stake, which have a very high grade of recognition on a worldwide basis, it is inconceivable that the disputed domain names had been registered by the Respondent without having in mind the Complainant’s trademarks.

“The sheer number of Domain Name registrations makes it clear that Respondent had prior knowledge of the Complainant and registered the Domain Names with the Complainant specifically in mind.” E.g., Yahoo! Inc. and Overture Services, Inc. v. Registrant a/k/a Gary Lam, et al., NAF Case No. D2004-0896 (Dec. 30, 2004). “Respondent's extensive registration and use of domain names incorporating misspellings of Complainant's trademarks is a further evidence of bad faith, as such actions are not only trading of the goodwill pertaining to the said trademarks, but will also cause harm to the goodwill.”

Respondent is a prolific cybersquatter, which is probative of his state of mind. Looking at his portfolio, there are literally hundreds of infringing domain names. Yahoo! attaches one example of an infringing domain currently registered to the Respondent for each letter of the alphabet. Respondent also has a record of such cybersquatting activities. E.g., Beta Et Companie, WIPO Case No. D2012-1153 (transferring <viedemerde.com> and finding Respondent Duan Xiang Wang engaged in typosquatting); Microsoft Corp, NAF Claim No. FA0906001269201 (transferring <microsoftranslator.com> due to typosquatting by Respondent). This supports that the purpose of registration was for preventing Complainant from reflecting the trademark in a corresponding domain name and that Respondent has engaged in a pattern of such conduct under paragraph 4(b)(ii) of the Policy.

Respondent's typosquatting behavior is, in and of itself, evidence of bad faith. E.g., Canadian Tire Corp. v. domain adm'r no.valid.email @worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding typosquatting to constitute evidence of bad faith); Nat'l Ass‘n of Prof'l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is inherently parasitic and of itself evidence of bad faith.”); Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy paragraph 4(a)(iii)); Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the ‹microssoft.com› domain name as it merely misspelled the complainant's MICROSOFT mark).

Respondent’s registration and use of 32 different domain names that violate Complainant’s rights in its YAHOO!, FLICKR, YMAIL, ROCKETMAIL, and SHINE marks constitute a pattern of bad faith registration. E.g., Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy paragraph 4(b)(ii) by registering multiple domain names that infringe upon others' famous and registered trademarks); Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).

There is no doubt that Respondent seeks to ride on the coattails of Yahoo!’s famous brands in bad-faith intent to profit. For example, on June 19, 2008, Yahoo! announced the availability of @rocketmail.com email addresses, and within less than two weeks, the Respondent registered his first Rocketmail typo (eocketmail.com).

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant has, to the satisfaction of the Panel, shown the Domain Names are identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Names (within the meaning of paragraph 4(a)(ii)of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

In accordance with paragraph 11 of the RUDRP, the Panel can determine the language of the proceeding otherwise having regard to the circumstances of the case. Since the websites the disputed domain names are referring to are also in English as in other cases where the Respondent was a Respondent (e.g. WordPress Foundation v. duanxiangwang, WIPO Case No. D2011-0836), the Panel, having considered the circumstances of this case, determines that English is the language of the proceeding.

The Respondent sent an email in Chinese on June 30, 2013 to the Provider. However, in view of paragraph 8 of the Rules for Uniform Domain Name Dispute Resolution Policy determining that the manner of the communication prescribed in the Provider´s Supplemental Rules shall apply and that in accordance with the respective CAC Supplementary Rules the communication with the Panel and the Provider must be realized via the CAC´s secured on-line platform accessible under the www.adr.eu, the email was accordingly not considered as administrative compliant Response.

1. It is the common view among UDRP panelists that a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name, see Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No.D2006-1043, <edmundss.com>. All disputed domain names are such typosquatting domains and are accordingly confusingly similar to the trademarks of the Complainant.

2. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain names or to use its trademarks. The Respondent is not known by the disputed domain names, nor has the Respondent acquired any trademark rights in respect of the domain names in question.

The Respondent uses the disputed domain names to host commercial websites that provide competing web portal links to search services, and general advertisement links to a variety of businesses and products, none of which are a bona fide offering of goods or services under the Policy.

3. The Panel agrees that the sheer number of Domain Name registrations makes it clear that the Respondent had prior knowledge of the Complainant and registered the Domain Names with the Complainant specifically in mind.

Respondent also has a record of such cybersquatting activities. E.g., Beta Et Companie, WIPO Case No. D2012-1153 (transferring <viedemerde.com> and finding Respondent Duan Xiang Wang engaged in typosquatting); WordPress Foundation v. duanxiangwang, WIPO Case No. D2011-0836, transferring <wirdpress.org>, <wordprees.org>, <wordprss.org> and <fragramcex.com>; CAC 100292, Organisation FragranceX.com vs. Duan XiangWang, <fragramcex.com >, <fragranceex.com> .

This supports the finding that the purpose of the registration was to prevent Complainant from reflecting the trademarks concerned in corresponding domain names and that the Respondent has engaged in a pattern of such conduct under paragraph 4(b)(ii) of the Policy.

The act of “typosquatting” or registering a domain name that is a common misspelling of a mark in which a party has rights has often been recognized as evidence of bad faith registration per se. Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107, see also ESPN, Inc. v. XC2, WIPO Case No. D2005-0444. The Panel agrees to this analysis.

The Respondent is using the disputed domain names to attract Internet users to its websites by creating a likelihood of confusion with Complainant’s marks by hosting commercial websites that provide competing web portal links to search services, and general advertisement links to a variety of businesses and products.

Furthermore, the Respondent has shown a pattern of registering domain names incorporating the marks of third parties.