Yahoo! loses bid to terminate registration of 'yahoops.com'
A split panel decided in the Uniform Domain Name Dispute Resolution Policy (UDRP) case of Yahoo! Inc v Net Games Inc that the owner of the domain name 'yahoops.com', used as an online betting site, had a legitimate right to the name and therefore could maintain the registration.
The majority arrived at this decision notwithstanding its recognition that the YAHOO! mark is famous and that the registrant had the mark "in mind" when it chose the 'yahoops.com' name. However, the majority held that:
- the registrant's clear intention to benefit from the fame of Yahoo! was not enough to result in a finding of no legitimate interest and bad faith;
- a legitimate interest was established because the registrant had invested several hundred thousand dollars in the site and there was no reported confusion; and
- credence should be given to the registrant's explanation that 'yahoops' really means 'yes hoops', referring to the betting on basketball games that is available on the site.
The dissenting panellist thought that the registrant's actions were in bad faith, given that the fame of Yahoo! is so overwhelming and undeniable, and that the registrant intended to benefit from that fame.
Indeed, under the majority's decision, if an intentional infringer invests more than a nominal amount of money in its enterprise, but chooses a service that is not directly competitive with the mark owner and thus avoids actual confusion, it could be deemed to have a legitimate interest in the purloined domain name and not to have acted in bad faith. This result seems to turn the underlying principal of the UDRP on its head.
Steven M Weinberg, Greenberg Traurig, LLP, Phoenix
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