National Arbitration Forum
DECISION
Yahoo!
Inc. v Bill Skipton d/b/a Cowboy Clothing
Claim
Number: FA0510000575666
PARTIES
Complainant is Yahoo!
Inc. (“Complainant”), represented by David M. Kelly, of
Finnegan Henderson Farabow Garrett & Dunner L.L.P., 901 New York
Avenue NW, Washington, DC 20001-4413. Respondent is Bill Skipton
d/b/a Cowboy Clothing (“Respondent”), 36d George Street, Tamworth,
B79 7LJ, GB.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue
is <yprog.com>, registered with Tucows Inc.
PANEL
The undersigned
certifies that he has acted independently and impartially and to the
best of his knowledge has no known conflict in serving as Panelist in
this proceeding.
Terry F. Peppard as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum electronically on October
12, 2005; the National Arbitration Forum received a hard copy of the
Complaint on October 13, 2005.
On October 12, 2005,
Tucows Inc confirmed by e-mail to the National Arbitration Forum that
the <yprog.com> domain name is registered with Tucows Inc and
that the Respondent is the current registrant of the name. Tucows Inc
has verified that Respondent is bound by the Tucows Inc registration
agreement and has thereby agreed to resolve domain-name disputes brought
by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On October 14, 2005, a
Notification of Complaint and Commencement of Administrative Proceeding
(the “Commencement Notification”), setting a deadline of November 3,
2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative
and billing contacts, and to postmaster@yprog.com by e-mail.
A timely Response was
received and determined to be complete on November 3, 2005.
Complainant timely filed
an Additional Submission on November 8, 2005.
On November 9, 2005, pursuant to
Complainant’s request to have the dispute decided by a
single-member Panel, the National
Arbitration Forum appointed Terry F. Peppard
as Panelist.
RELIEF SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends,
among other things, that:
Complainant, a Delaware
corporation headquartered in Sunnyvale, California, is a global Internet
communications, media and marketing company offering comprehensive
search, directory, information, shopping and other online services to
millions of Internet users daily.
Complainant is the owner
of the famous YAHOO! service marks and trademarks and its abbreviation,
Y!.
The YAHOO! mark has been
in continuous use in commerce since 1994, while the Y! mark has been in
continuous use since at least 1997.
Both marks are and have
been registered with the competent authorities of the European Community
and the United States from the dates indicated.
Respondent registered
the disputed domain name on May 31, 2005.
Respondent uses the web
site associated with the subject domain name to promote the sale of
software designed to hack Complainant’s YAHOO! Messenger software for
the purpose of stealing its users’ names and passwords to facilitate the
distribution to such users of unsolicited commercial e-mail messages,
commonly known as “spam.”
Because Respondent’s
software products are specifically targeted at Complainant’s customers,
there can be no question that Respondent knew of Complainant and its
famous registered marks when it registered the disputed domain name.
The subject domain name
is confusingly similar to Complainant’s YAHOO! mark, and, most
especially, to its Y! mark.
Respondent’s
registration and use of the challenged domain name for the purpose of
marketing software programs intended to facilitate the theft of
Complainant’s customers’ personal information is not a bona fide use of
that name.
Respondent has
registered and is using the subject domain name in bad faith.
B. Respondent
Respondent contends,
among other things, that:
The only similarity
between Complainant’s marks and Respondent’s domain name is the letter
Y.
Complainant has no
exclusive right to the commercial use of the letter Y.
The disputed domain name
cannot be said to trade on the goodwill associated with Complainant’s
marks, or either of them, merely because it begins with the letter Y.
It must be obvious to
any visitor to Respondent’s web site that it is not authorized, endorsed
or sponsored by Complainant.
Although “it sells
programs which would allow others to do so,” Respondent’s web site is
not itself used to send “spam” e-mails or to steal Internet users’
passwords.
C. Additional
Submissions
Complainant’s Additional
Submission alleges, among other things, that:
Confusing similarity is
demonstrated by comparing the subject domain name to the trademark at
issue, independent of any marketing or use considerations which might
appropriately be weighed in the context of a claim for trademark
infringement or unfair competition.
FINDINGS
Complainant has failed
to demonstrate that the <yprog.com> domain name is either
identical or confusingly similar to Complainant’s YAHOO! or Y! marks
sufficient for purposes of Policy ¶ 4(a)(i).
Because proof of either
identity or confusing similarity between the mark in issue and the
contested domain name is essential to Complainant’s claim under Policy ¶
4(a)(i), Complainant cannot succeed on its Complaint.
DISCUSSION
Paragraph 15(a) of the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs
this Panel to “decide a complaint on the basis of the statements and
documents submitted in accordance with the Policy, these Rules and any
rules and principles of law that it deems applicable.”
Paragraph 4(a) of the
Policy requires that the Complainant must prove each of the following
three elements to obtain an order that a domain name should be cancelled
or transferred:
(1)
the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2)
the Respondent has no rights or legitimate interests in respect
of the domain name; and
(3)
the domain name has been registered and is being used in bad
faith.
Identical and/or Confusingly Similar
Analysis of the problem
presented by the instant Complaint may begin with the observation that
Complainant cannot succeed in its contention that Respondent’s <yprog.com>
domain name is either identical or confusingly similar to its YAHOO!
mark. The differences between the mark and domain name are simply too
many and too profound. Moreover, Complainant has cited no authority
which could sustain its contention in this regard, and the Panel is
aware of none. We therefore proceed to examine whether Complainant has
established identity or confusing similarity with regard to its Y! mark.
The question of identity
between the Y! mark and the <yprog.com> domain name may be
dispensed with quickly. Complainant does not contend that the domain
name and the mark are identical. Indeed it could not credibly do so.
Complainant’s Y! mark includes the punctuation usually described as an
exclamation mark, while the domain name does not. The domain name, for
its part, contains the suffix “prog,” while the mark does not. Each
having an element not found in the other, they cannot fairly be said to
be identical. This leaves the question of confusing similarity.
Thus reduced, this
proceeding presents what appears to be a novel proposition, which is
that a single letter of the English alphabet, in this instance the
letter Y, may ground a claim of confusing similarity within the meaning
of Policy ¶ 4(a)(i).
In the absence of
authorities specific to this proposition, the Panel is left to rely on
two core principles. The first is that recently enunciated by the
United States Court of Appeals in Entrepreneur Media, Inc. v. Smith,
279 F.3d 1135 (9th Cir. 2002), where the court said, at 1147:
Similarity of marks or lack thereof are
context-specific concepts. In the Internet context, consumers are aware
that domain names for different Web sites are quite often similar,
because of the need for language economy, and that very small
differences matter.
The second is advanced
in Complainant’s Additional Submission, and may be summarized as follows:
Confusing similarity is demonstrated by
comparing the subject domain name to the trademark at issue, independent
of any marketing or use considerations which might appropriately be
weighed in the context of a claim for trademark infringement or unfair
competition.
On this point, see:
Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000);
see also: Fed. Home Loan Mortgage Corp. v. Blodgett, FA 566605
(Nat. Arb. Forum Nov. 4, 2005).
We weigh each of these
principles separately, starting with the former.
Complainant argues, in
essence, that Y can only stand for Y!. But Y is not Y!. It is no more
than a literal truth that the expressive punctuation for which
Complainant is well known is fully half its mark. And, as was noted in
Entrepreneur Media, supra, small differences matter.
Indeed, without the exclamation mark, Y is just Y. It could as easily
stand for the chemical element yttrium, or instead for YMCA, or,
particularly aptly here, an unknown quantity.
We may note that the
essential problem presented here finds a close parallel in an earlier
panel decision made in the context of a comparison of the phrase “World
Cup” with the abbreviation “WC” contained in two challenged domain names,
<wc2002.com> and <wc02.com>. In an analysis with which we agree, the
panelist there wrote:
Whilst it can be argued that <WC> is an abbreviation of <WORLD CUP>,
this Administrative Panel does not consider that this is the likely
meaning which most people would give to these letters. These letters are
open to being interpreted as meaning any number of things, as well as
meaning nothing at all. There is nothing in the context of the use of
these letters in the domain names that suggests they are an abbreviation
of anything. Even if the context of their use did make clear that the
letters <WC> were an abbreviation, it is quite likely many native
speakers of the English language would consider they were an
abbreviation either for "water closet" (and hence an allusion to "toilet")
or "West Central" (see Concise Oxford English Dictionary, entry for
"WC"), or for "without charge" (see Merriam-Webster’s Collegiate
Dictionary, entry for "WC"). As for how native speakers of other
languages using the Romanised alphabet would most likely interpret these
letters as an abbreviation, this Administrative Panel is unable to
decide. In short, the letters <WC>, even in conjunction with the year
<2002> or the year abbreviation <02>, do not likely suggest <WORLD CUP>,
and hence domain names (14) and (15) are not confusingly similar to any
of the trademarks referred to in paragraph 4.4 above.
ISL Mktg. AG v. Chung,
D2000-0034 (WIPO Apr. 3, 2000).
It bears emphasis that
the reasoning of the decision in ISL Mktg. deals with a
two-letter combination. The force of that reasoning is greatly
multiplied in the case of a mark-domain name contest involving but a
single letter.
It may also be noted
that Complainant’s position in this proceeding is not enhanced by the
presence in Respondent’s domain name of the generic suffix “prog.”
While “prog” might stand for “program,” it does not follow that
“program” would necessarily stand for software program in the minds of
Internet users, even if that is Respondent’s intent. It might as well
suggest a program of entertainment or instruction or other activities.
Indeed it might not stand for program at all, but instead for
“progressive” or any number of other terms.
Thus Complainant’s
contention with regard to the question of confusing similarity is undone
by its own first principle, which requires that the Panel treat this
issue without regard to context. Necessarily this prevents the Panel
from considering under this head such matters as Respondent’s
acknowledged illicit use of the disputed domain name, no matter how
repugnant.
We hasten to say that
this Panel takes no position as to whether a single letter of the
alphabet can ever ground a claim for confusing similarity under the
Policy. We need only decide, as we do, that in the circumstances here
presented, “Y” does not.
For the reasons
indicated, the Panel finds that Complainant has failed to satisfy the
requirements of proof set out in Policy ¶ 4(a)(i).
Rights or Legitimate Interests
In order to prevail in
this proceeding, Complainant must prove to the satisfaction of the Panel
each of the three distinct elements set out in Policy ¶ 4(a)(i)-(iii) (i.e.:
identity or similarity, rights or interests, and bad faith). In light of
the above finding, it is therefore unnecessary for the Panel to address
the issue of rights or interests. Am. Online, Inc. v. GSD Internet,
D2001-0629 (WIPO Jun. 25, 2001).
We may note, however,
that, were it necessary to do so, in light of the fact that Respondent
concedes that its purpose for registering and operating the web site
associated with the subject domain name is to market software which is
used to purloin from Complainant’s web site confidential customer
information in order to facilitate the distribution of spam e-mails to
Complainant’s customers, there is no sense in which this activity
constitutes either a bona fide offering of goods or services or a
fair use of the disputed domain name within the meaning of Policy ¶
4(c). Juno Online Services, Inc., v. Iza, FA 245960 (Nat. Arb.
Forum May 3, 2004).
Accordingly, we would,
if called upon, find that Respondent has no rights to or interests in
the subject domain name for purposes of Policy ¶ 4(a)(ii).
At the same time, we are constrained to observe that Complainant appears
to be using this proceeding to attempt to achieve through the processes
of the Policy an end best accomplished in another forum under the law of
trademark infringement, unfair competition or the like. See, e.g.:
CITGO Petroleum Corp. v. Tercsak, D2003-0003 (WIPO Feb. 28, 2003).
While we would not judge that the Complaint herein amounts to an abuse
of the Policy, it does seem to represent at least a misuse of it, no
matter how sorely-provoked or well-intentioned.
Registration and
Use in Bad Faith
For the reason enunciated immediately above, the Panel need not make any
finding under this heading. Am. Online, supra. However, if the
circumstances were otherwise, we would hold, in keeping with the
reasoning of the panel in Juno Online, supra, that,
without question, the behavior of Respondent admitted here must
constitute bad faith registration and use of the subject domain name
within the meaning of Policy ¶ 4(a)(iii).
DECISION
Complainant having
failed to establish all three elements required under the ICANN Policy,
the Panel concludes that the relief requested must be, and it is hereby,
DENIED.
Terry F.
Peppard, Panelist
Dated: November 23, 2005
