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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Yahoo! Inc v Ijomah [2005] DRS 02431 (18 May 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/02431.html Cite as: [2005] DRS 2431, [2005] DRS 02431

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Yahoo! Inc v Gertrude Ijomah

Nominet UK Dispute Resolution Service

DRS 02431

Yahoo! Inc. v Gertrude Ijomah

Decision of Independent Expert

1. Parties:

Complainant: Yahoo! Inc.

Country: USA

Respondent: Gertrude Ijomah

Country: UK

2. Domain Name:

The domain name in dispute is yahoo-finance.co.uk ("the Domain Name").

3. Procedural Background:
4. 1 The Complaint was received in full (including annexes) by Nominet on 7 March 2005. Nominet validated the Complaint and sent a copy to the Respondent on 10 March 2005, informing the Respondent that it had until 5 April 2005 to lodge a Response.
5. 2 Since no Response was received by the deadline (or at all), the dispute did not proceed to Informal Mediation. On 28 April 2005 the Complainant paid Nominet the required fee to obtain a decision of an Expert pursuant to paragraph 7(a) of the Nominet UK Dispute Resolution Service ("DRS") Policy ("the Policy").
6. 3 Nominet invited me, Anna Carboni, to provide a decision on this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality, Nominet duly appointed me as Expert on 6 May 2005.
7. Additional Formal/Procedural Issues:
8. 1 Since the Respondent has not submitted a Response, I have checked the Complaint file to determine whether there are any exceptional circumstances which should lead to my taking any action other than proceeding to a decision, pursuant to paragraph 15(b) of the DRS Procedure ("the Procedure"). In particular, I have looked at the methods used to notify the Respondent of the Complaint.
9. 2 The details in Nominet's database entry for the Registrant and Administrative Contact for the Domain Name are inter alia as follows:

Contact: Gertrude Ijomah

The same name and postal address are found in the WHOIS search result for the Domain Name.

10. 3 From the Complaint file, it appears that Nominet attempted to notify the Respondent of the Complaint by the following means:

4.3.1 by e-mail to.... (the e-mail address in Nominet's database entry for the Domain Name) and to .....(in accordance with paragraph 2(a)(ii) of the Procedure); and

4.3.2 by post to the contact address given for the Respondent in Nominet's database entry.

These were all appropriate means of communicating the Complaint, as provided for in paragraph 2(a) of the Procedure, and any one of them should have been sufficient.

11. 4 There is nothing on the file to suggest that the e-mail or postal copies were delayed or not delivered. Therefore, I conclude that the Complaint was properly notified to the Respondent and was deemed to have been received by at least the day after the postal copy was sent, i.e. 11 March 2005.
12. The Facts:
13. 1 The Complainant, Yahoo! Inc., is a United States corporation engaged in the business of internet communications, media and commerce on a global basis.
14. 2 The Complainant operates its business under the trading name YAHOO! and variants thereof, inter alia through websites found at www.yahoo.com and www.yahoo.co.uk. YAHOO! has been registered as a trade mark by the Complainant in particular in the US and the European Community, including the UK.
15. 3 The Respondent is an individual named Gertrude Ijonah, whose contact address is in central London, England.
16. 4 The Respondent registered the Domain Name on 6 June 2004.
17. 5 The Domain Name resolves (or at least did resolve in the lead-up to this Complaint) to an active website at www.yahoo-finance.co.uk, which advertises financial services such as personal loans and car finance supplied by various third parties. The name "Yahoo-Finance.co.uk" appears prominently at the top of the first page of the website.
18. The Parties' Contentions:

Complainant

19. 1 The Complainant states that the Domain Name is identical or similar to a name or mark in which it has Rights and that, in the hands of the Respondent, it is an Abusive Registration. The basis for this claim is set out below.
20. 2 The Complainant's business involves the delivery of YAHOO! branded searching, directory, information, communication and shopping services and other online activities to millions of internet users. It does this through its main YAHOO! branded website at www.yahoo.com, which has been active since about January 1995, as well as other YAHOO! branded websites specific to particular regions or countries, such as the YAHOO! UK & Ireland site located at www.yahoo.co.uk, which has been active since about September 1996. The YAHOO! name has been used by the Complainant since 1994.
21. 3 As a measure of the success of the main YAHOO! website, the Complainant points to the fact that in June 2004 more than 146 million active registered members logged onto their personalized YAHOO! accounts, and the website averaged over 2.4 billion page views per day. In a report by Interbrand, published in 2003, the YAHOO! brand was valued at US$3.90 billion and was listed 65^th in a list of 100 global brands which were valued at over US$1 billion. The Complaint exhibits an extract from this report, as published on "Business Week Online", which states that the valuations of the listed brands were based on publicly available marketing and financial data.
22. 4 The Complainant's services include both local and international web directory and search services covering a wide variety of subjects, including music, website design and web hosting services, games, people searches, astrology and horoscopes, clubs, greetings, corporate network software and services, travel-related services, real estate and mortgage information and quotes, movie reviews, news, weather, sports, yellow pages, maps, auctions, message boards, and various types of entertainment. In connection with many of these services, the Complainant uses the YAHOO! brand name in conjunction with the descriptive name of the relevant service. Examples include YAHOO! Shopping, YAHOO! Games, YAHOO! Auctions and YAHOO! Maps.
23. 5 Specifically in relation to finance, the Complainant has for many years offered financial information services under the name YAHOO! and also uses the combined term YAHOO! Finance. Exhibited to the Complaint are extracts from the Complainant's websites at http://finance.yahoo.com (tailored for the US) and http://uk.finance.yahoo.com (tailored for the UK) demonstrating the use of the terms YAHOO! and YAHOO! Finance for the provision over the internet of financial information, for example in relation to investments and loans.
24. 6 The Complainant states that it owns numerous trade mark registrations for the name YAHOO! in the European Community and the United States, and gives details of each, including: Community trade mark ("CTM") no. 693127 claiming priority from 28 May 1997, covering financial services in class 36 and website information services in class 42 in addition to numerous other goods and services in several different classes; and US trade mark no. 1076181, claiming priority from 13 August 1998, covering inter alia financial services in class 36 and electronic commerce services in class 35.
25. 7 The Complainant identifies two previous decisions issued under the Policy and 54 previous decisions issued under the Uniform Domain Name Dispute Resolution Policy in the Complainant's favour.
26. 8 The Respondent registered the Domain Name on 6 June 2004, by which time the Complainant already had its trade mark registrations and domain names incorporating the name YAHOO! and had built up common law rights in respect of the name.
27. 9 The Complainant makes the following comments in relation to the Respondent's use of the Domain Name:

6.9.1 By registering the Domain Name long after the Complainant had used and registered the YAHOO! mark and become internationally famous, and long after the Complainant had used the YAHOO! mark in connection with financial information services, the Respondent has misappropriated the Complainant's goodwill.

6.9.2 The Respondent is using the Domain Name for a directly competing website, which advertises financial services offered by numerous third parties.

6.9.3 When the Respondent's website is viewed on the computer screen, the Domain Name appears in the address line of the browser, while the domain name listed on the website printout is http://www.shoppingonline.gb.com/yahoo-finance, which is the originating URL for the Respondent's website.

6.9.4 A copy of an extract from the Respondent's website is annexed to the Complaint, which shows along the address line: "Yahoo-Finance.co.uk – Your One-Stop Finance Directory Website" and then the URL mentioned above. The term "Yahoo-Finance.co.uk" then appears at the top left of the first page, as clear branding for the website.

28. 10 The Complainant asserts that the Domain Name is similar to the YAHOO! mark because it incorporates the mark in its entirety, combined with the descriptive/generic word "finance". Furthermore, it argues that combining the word "finance" with YAHOO! is not sufficient to distinguish the Domain Name from the YAHOO! mark, since "finance" describes services offered by the Complainant. In fact, the Complainant asserts, this combination increases the similarity because it mimics a name long used by the Complainant to identify the financial portion of its websites (YAHOO! Finance). The Complainant refers to various earlier UDRP decisions in support of these assertions.
29. 11 The Complainant asserts that the Respondent's Domain Name constitutes an Abusive Registration under the DRS because the Respondent registered and uses the Domain Name in a manner that takes unfair advantage of and which is unfairly detrimental to the Complainant's rights in its famous YAHOO! mark, and in particular because:

6.11.1 the Respondent's registration and use of the Domain Name are likely to cause confusion and to deceive consumers into mistakenly believing that the Respondent's Domain Name and her website that offers directly competing services are offered, authorised, or sponsored by the Complainant, or are otherwise affiliated with the Complainant;

6.11.2 the Respondent registered and uses the Domain Name to unfairly disrupt 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;

6.11.3 the Respondent misappropriated the Complainant's goodwill when she registered the Domain Name solely for its value derived from the famous YAHOO! mark.

30. 12 Lastly, the Complainant sets out why the Respondent cannot point to exonerating factors under paragraph 4 of the Policy, as follows:

6.12.1 the Respondent's misappropriation of the famous YAHOO! mark in the Domain Name and use of that name for directly competing services does not constitute a bona fide offering of goods and/or services;

6.12.2 the Respondent has not been commonly known by the Domain Name or legitimately connected with a mark which is identical or similar to the Domain Name;

6.12.3 the use of the Domain Name as a title or trade name on the Respondent's website does not justify the misappropriation of the famous YAHOO! mark; and

6.12.4 the Respondent is not making legitimate non-commercial or fair use of the Domain Name.

31. 13 Accordingly, the Complainant requests the transfer of the Domain Name to itself.

Respondent

32. 14 The Respondent has not filed a Response.
33. Discussion and Findings:

General

34. 1 Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:

(i) it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

(ii) the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

35. 2 This is a straightforward case in which I have concluded that the Complainant succeeds. The summary of the Complaint above sets out clearly the facts and matters on which I have relied in order to reach my decision, and I shall therefore try to avoid too much repetition in this section.

Complainant's Rights

36. 3 Under paragraph 1 of the Policy, "Rights includes, but is not limited to, rights enforceable under English law". Previous cases have established that this broad definition extends to registered trade mark rights and unregistered rights in names and marks, such as rights in passing off in the United Kingdom and similar rights in jurisdictions elsewhere.
37. 4 The Complainant clearly has registered trade mark rights in respect of the word YAHOO!, which directly cover financial services and the provision of website information as well as many other goods and services. Further, it is clear that the Complainant has passing off rights in the United Kingdom in relation to the YAHOO! mark and equivalent common law or unregistered trade mark and/or unfair competition rights in other jurisdictions.
38. 5 Indeed, the evidence that has been presented by the Complainant establishes that the YAHOO! trade mark is extremely well-known on an international basis.
39. 6 The Complainant has also established that it has used the term "YAHOO! Finance" extensively, such that many internet users will associate this term with the Complainant and its business of providing financial information services on the internet. Therefore I conclude that the Complainant also has rights in the term "YAHOO! Finance", though of course it has no exclusivity in relation to the word "Finance" on its own or in connection with other names or marks.
40. 7 The Complainant has not argued that either of the names, YAHOO! and YAHOO! Finance is identical to the Domain Name, but bases its claim on similarity. I have no doubt that both YAHOO! and YAHOO! Finance, in which the Complainant has rights, are similar to the domain name yahoo-finance.co.uk.

Abusive Registration

41. 8 Paragraph 1 of the Policy defines an "Abusive Registration" as:

"a Domain Name which either:

(i) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR

(ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."

42. 9 I must take into account all relevant facts and circumstances which point to or away from the Domain Name being an Abusive Registration.
43. 10 Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration. Those which are brought into play by the Complainant are as follows:

"3(a)(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

(A) …(B)…; or

(C) for the purpose of unfairly disrupting the business of the Complainant;

(ii) Circumstances indicating that the Respondent is using the Domain Name 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;…"

44. 11 On the other hand, I must consider whether there are any factors which demonstrate that the Domain Name is not an Abusive Registration, some examples of which are given in paragraph 4 of the Policy.
45. 12 Dealing with the latter first, the Respondent has not submitted a Response, and therefore we have no explanation from her side as to her justification for adopting the Domain Name. Further, given the strong reputation of the YAHOO! brand and business, it is extremely hard to think of any justification that might apply. I adopt the arguments made by the Complainant in relation to paragraph 4 of the Policy, set out in paragraph 6.12 above.
46. 13 It is clear from the face of the webpages taken from the Respondent's website, which are exhibited to the Complaint, that the Respondent is using the Domain Name to provide similar financial information services to those which the Complainant has supplied for many years under the names YAHOO! and YAHOO! Finance. Given the strong reputation of these names in connection with the Complainant's business, and the lack of any explanation for the Respondent's adoption of a very similar Domain Name to use in connection with her business, I adopt all of the Complainant's arguments set out in paragraph 6.11 above in support of my conclusion that the Respondent registered and uses the Domain Name in a manner that takes unfair advantage of and which is unfairly detrimental to the Complainant's rights in its well-known YAHOO! and YAHOO! Finance marks.
47. 14 On the date of issuing this decision, I have checked the web address incorporating the Domain Name, and have discovered that it no longer resolves to an active website, but resolves to a webpage which states, "yahoo-finance.co.uk - UNDER CONSTRUCTION". This indicates that the Respondent has decided to abandon her use of the Domain Name, having received notice of the Complaint, and serves to confirm my conclusions.
48. Decision:

I find that the Complainant has Rights in respect of names which are similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. I therefore direct that the Domain Name yahoo-finance.co.uk should be transferred to the Complainant.

______________________________

Anna Carboni

Date: 18^th May 2005