WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yahoo! Inc. v. Yahoo Computer Services
Case No. DPH2001-0001
1. The Parties
The Complainant in this administrative proceeding is Yahoo! Inc., a Delaware
corporation with its principal place of business at 3420 Central Expressway, Santa
Clara, California 95051, U.S.A. The Respondent is Yahoo Computer Services, with a
place of business at 101 Zodiac St., Palm Village, Makati, Philippines. Yahoo
Computer Services is a business name registered by Imaginet International Inc. with the
Department of Trade and Industry, Republic of the Philippines on February 25, 1988.
(Exhibit 2, Respondent).
2. The Domain Name(s) and Registrar(s)
The domain names are “yahoo.com.ph” and “yahoo.ph”. The domain names were
registered by Respondent with DotPhone, Inc. on May 9, 1999 and October 21, 1999,
3. Procedural History
On January 19, 2001, the WIPO Arbitration and Mediation Center ("the Center")
received from the Complainant by e-mail a complaint for a decision in accordance with
the dotPHone, Inc Uniform Policy for Domain Name Dispute Resolution ("the Policy").
The Center received a hard copy of the Complaint on January 22, 2001. On January 24,
2001, the Center forwarded an Acknowledgement of Complaint to the Complainant.
On January 25, 2001, the Center forwarded a Request for Registrar’s Verification to
DotPhone. On January 26, 2001, DotPhone confirmed that the domain names
“yahoo.com.ph” and “yahoo.ph” are registered under DotPhone and were acquired by
Yahoo Computer Services on May 9, 1999 and October 21, 1999 respectively. The
domain names are currently connected to active websites. The Center completed its
Administrative Compliance Check on January 26, 2001, and ascertained that the
Complaint was filed in compliance with the requirements of the dotPHone, Inc. Policy,
Rules and the Supplemental Rules and that payment had been properly made to the
On January 26, 2001, the Center forwarded a Notification of Complaint to the
Respondent by e-mail and courier. The Center advised the Respondent that the
Administrative Proceeding was commenced on January 26, 2001, and that a response
was due by February 14, 2001. The Complainant in this proceeding elected for an
Administrative Panel consisting of three panelists. A Response was received and an
Acknowledgement of Respondent's Response was forwarded to the parties on February
A three member Administrative Panel was appointed consisting of Geert Glas, David
Tatham and the Presiding Panelist Ross Carson. The case file was transmitted to the
three panelists on March 1, 2001, and the date of March 15, 2001, was set as the due
date for the decision.
4. Factual Background
Complainant 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, travel-related services, Internet access, e-mail, chat, online games,
sweepstakes and other contests and numerous other services. Yahoo’s web directory
was developed in early 1994 and the site was named YAHOO! in June 1994. The main
YAHOO! site can be accessed at the URL “http:/www.yahoo.com”. At the time of
filing the Complaint Yahoo! had a market capitalization of approximately U.S. $15
billion. In September 2000 the number of “page views” on the YAHOO! website
averaged 780 million per day. As of January 1, 2001, Yahoo! had over 233 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 has sites that are specific to particular countries or regions, such as
“yahoo.com.tw”, “yahoo.com.hk”, “yahoo.co.jp”. Complainant does not currently have
a site directed solely to the Philippines. However Complainant submits that there are
numerous categories in the main YAHOO! directory containing information about the
Philippines. A printout from the YAHOO! directory showing the various Philippines
categories is attached as Exhibit 4. Complainant submits that Philippine Internet users
have been extensively using Yahoo’s network of websites for years. As of January 3,
2001, Yahoo! had over 3,286,700 registered users who identified the Philippines as
their country of residence. Complainant has provided statistics (pages 6-8 of
Complaint) to illustrate the extent of and increase in the number of registered Yahoo!
users from the Philippines over the years 1995 to 2000.
Complainant submits that by virtue of the nature and inherent strength of the YAHOO!
mark as applied to Yahoo!’s array of web-based services; the millions of visitors to the
YAHOO! site from third-party websites; and Yahoo!’s extensive use, promotion and
registration of its YAHOO! mark, the YAHOO! trademark and “yahoo.com” domain
name have become famous. The United States District Court for the Eastern District of
Virginia has specifically held that the Yahoo! trademark is famous. (Yahoo! Inc. v
Buffalo Wu, CA-00-00178-A, memorandum decision at p. 8, copy attached as Exhibit
8 to the Complaint).
Complainant owns a large number of U.S. trademark registrations for the YAHOO!
mark as successor in interest to Yahoo! Inc., a California corporation. (See Exhibit 9 to
the Complaint) registered between 1997 and 2000. Complainant also has six pending
trademark applications in the Philippines filed variously between July 1996 and
February 1999. (See Exhibit 10 to the Complaint.)
More than thirteen UDRP decisions involving the YAHOO! mark have been issued by
WIPO Panels, all in Yahoo’s favor. The Panelists in at least nine of these cases
expressly found the YAHOO! mark to be famous. The Complainant provides a list of
the cases, which can be accessed on the WIPO Arbitration and Mediation Center
website. Included in these cases is Case No. D2000-1050 involving the domain names
“yahooflorida.com” and “yahoousa.com” and D2000-1137 involving the domain names
“newyahoo.com” and “yahoo-usa.com”, in which the panelists ordered transfer of the
domain names to Yahoo.
Yahoo has prevailed in legal actions filed in Israel against an infringer using the
YAHOO-ISRAEL trademark and the domain name yahoo.co.il for computer related
services; in India against a party using the YAHOOINDIA! trademark and the domain
name “yahooindia.com” to identify an online search and directory service; in Mexico
against a company that had registered the domain name “yahoo.com.mx”; in Australia
against a company that had registered and was using the domain name “yahoo.net.au”
for an online search and directory called Yahoo Internet; in Argentina against a party
that registered the domain names “yahooemail.com.ar”, “yahoofree.com.ar” and
“miyahoo.com.ar”, and in Uruguay against a party using the domain name
“yahoo.com.uy” for a website featuring products and information about animals.
Copies of these decisions are attached as Exhibit 8 to the Complaint.
Respondent registered the domain names “yahoo.com.ph” and “yahoo.ph” on May 9,
1999, and October 21, 1999, respectively.
In April 1999, Complainant discovered that Respondent operated a website which
offers computer hardware and software and computer consulting, development and
support services, including web development services under the name YAHOO
COMPUTER SERVICES. Yahoo!’s Philippine counsel sent a demand letter to
Respondent objecting to Respondent’s unauthorized use of the YAHOO! mark. A
response was received on July 15, 1999 advising that Respondent was in the process of
seeking legal advice. Respondent stated that Yahoo Computer Services is a legally
registered name with the Department of Trade and Industry, Republic of the
Philippines. Yahoo!’s counsel sent a second demand letter to Respondent on
September 3, 1999 and received no response. (Exhibit 11 to Complaint)
On September 8, 1999 Yahoo! discovered that Respondent owned the domain name
“yahoo.com.ph” and used the domain name to identify a website bearing the mark
YAHOO COMPUTER SERVICES and offering computer-related services and
software. (Exhibit 12 to Complaint). Yahoo!’s counsel sent a third demand letter to
Respondent on October 28, 1999 and received no response. (Exhibit 13).
In May 2000 Yahoo! discovered that Respondent also owned the domain name
“yahoo.ph”. As of January 3, 2001, the domain names in dispute both connect to a
website bearing the title “Imaginet International, Inc.” and featuring links to various
other websites including “YCS – a division of Imaginet International, Inc.” linking to
Respondent’s YAHOO COMPUTER SERVICES website and also to “YCS.NET –
Guide to the Philippine Islands” and “Other Yahoo’s”.
5. Parties’ Contentions
A. Complainant contends that
a) The disputed domain names fully incorporate Complainant’s valuable and
famous trademark YAHOO! within the second-level domain names “.ph”
and “.com.ph”, and are confusingly similar to Complainant’s YAHOO!
b) Respondent does not have rights or a legitimate interest in the domain
names by virtue of the fact that Complainant’s YAHOO! mark is famous,
and Respondent’s use of the mark is unauthorized.
c) Respondent’s registration and use of the domain names meet the bad faith
requirement described in Paragraph 4(a) of the Uniform Dispute Resolution
Respondent denies the allegations in the Complaint.
Respondent contends that the disputed domain names do not contain the YAHOO!
mark and that the logo and site layouts employed on Respondent’s websites are neither
identical or confusingly similar to Complainant’s trade or services marks.
Respondent contends that it has a right and legitimate interest in the domain names
“yahoo.com.ph” and “yahoo.ph” in the Philippines by virtue of the fact that Yahoo
Computer Services is a legally registered business name in the Philippines. The
Certificate of Registration of Business Name is attached as Exhibit 2 to Response.
Respondent contends that its registration and use of the domain names does not meet
the bad faith requirement described in paragraph 4(a) of the Policy.
Respondent advises that it is a software development and systems integration company,
which provides network, intranet and Internet services covering e-mail, file storage and
retrieval, web server hosing and directory services. Respondent submits that the
services that it offers are so different from Complainant’s services that the public would
not be confused.
Respondent advises that it has three pending “trademark applications in the Philippines
filed in 1999, two of which include, inter alia, the word YAHOO, and all of which are
subsequent to the Philippines trademark applications of Complainant.” (Exhibit 1 to the
Respondent submits financial information showing that its main income is from the sale
of the services of qualified staff to individual projects and the re-sale of hardware and
software resulting from those projects. Respondent submits that its income has only
risen by 1.7% since owning the domain names whereas Complainant’s revenues have
risen by 88.6%. Respondent contends that there is no dilution in value of the
Complainant’s mark or any confusing similarity arising by the Respondent’s holding of
the domain names.
Respondent submits that it is a small company and that it had 1004 hits on the websites
operated under its four domain names “www.ycs.com.ph”, “www.ycs.ph”,
“www.yahoo.com.ph” and “www.yahoo.ph” in the month of January 2001. Respondent
submits that any “reasonable Internet user” in the Philippines seeking the
Complainant’s site is using the “yahoo.com” domain name of the Complainant and not
the domain names of the Respondent and there is no confusing among Internet users or
the general public between Respondent’s domain names and Complainant’s YAHOO!
Respondent submits that its business name Yahoo Computer Services is a legally
registered business name of Imaginet International Inc. Respondent submits that the
domain names “yahoo.com.ph” and “yahoo.ph” are both legally registered domain
names owned by the Respondent and incorporate the “yahoo” element of Respondent’s
legally registered business name, “Yahoo Computer Services”.
Respondent submits that following Complainant’s legal letter giving Respondent five
days to change its registered name, Respondent amended its website by disclaiming
any relationship or affiliation with the Complainant and provided a list of “Other
Yahoos” which includes links to the Complainant’s sites and other sites or registered
companies using the word “yahoo”.
Respondent contends that any other party having rights in the name would have
registered the domain names in dispute prior to Respondent’s registration of the domain
Respondent submits that it not aware of a Philippine operation of the Complainant and
that Complainant does not have a Philippine website.
Respondent submits that its domain names have always been pointed directly at the
Yahoo Computer Services website which is a point of contact for customers wishing to
purchase Respondent’s goods and services. Respondent bank accounts, purchase orders
and invoices are in the name of Yahoo Computer Services. Respondent submits that it
is making legitimate fair use of the domain names without intent for commercial gain to
misleadingly divert customers from the Complainant.
6. Discussion and Findings
The Panel has considered the evidence presented. It is clear that the Complainant has
substantial trademark rights in the mark YAHOO!, and that the domain names in
dispute are confusingly similar to the Complainant’s marks. The domain names in
dispute, “yahoo.ph” and “yahoo.com.ph” incorporate the Complainant’s distinctive
term YAHOO. The only thing that prevents the domain name yahoo.ph from being
identical to Complainant’s mark is the exclamation mark. Each of the two domain
names is confusingly similar to the Complainant’s trademarks.
The Panel agrees with the Complainant that the Respondent does not have any
legitimate rights of interests in the domain names. Respondent’s alleged rights are
based on a Certificate of Registration of Business Name and registration of the domain
names. There is no evidence that registration of a business name with the Department
of Trade and Industry provides the registrant with any exclusive rights with respect to
the business name. The registration of the domain names likewise did not provide the
Respondent with an exclusive right to the use of the domain names. Respondent’s
registration and use of its domain names incorporating part of Respondent’s tradename
were subsequent to Complainant’s trademarks having become well known in the
Philippine Islands. The Respondent has no rights or legitimate interest in the domain
names in dispute.
Lastly, the Panel determines there is clearly bad faith. It is not possible to conceive of a
plausible circumstance in which the Respondent could legitimately use the domain
names yahoo.ph and “yahoo.com.ph”. Telstra Corporation Limited v Nuclear
Marshmallows Case No. D2000-0003, paragraph 7.6. It is inconceivable that the
Respondent could have been unaware of the Complainant’s name and trademark when
Respondent registered the domain names. The fact that Respondent previously
registered the business name Yahoo Computer Services incorporating the distinctive
word Yahoo before registering the domain names in dispute has no bearing on the case.
The domain names have each been registered and are each being used in bad faith
based on evidence and grounds set forth in paragraphs 56 to 59 of the Complaint,
namely that the Respondent registered the domain names to intentionally attract, for
commercial gain, Internet users to its website by creating a likelihood of confusion with
Complainant’s YAHOO! mark as to the source, sponsorship, affiliation and
endorsement of Respondent’s website.
In view of the above, the Panel grants the Complainant’s request for transfer to it of the
domain names “yahoo.ph” and “yahoo.com.ph”.
David Tatham Geert Glas
Date: March 21, 2001