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Yahoo! Inc. has won a dispute against Manila-based Yahoo Computer Services (YCS) for registering the domain names "yahoo.com.ph" and "yahoo.ph" with DotPH, Inc., the local administrator of .ph domain names.
Computerworld Philippines learned that on March 21, 2001, the administrative panel of the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center, granted Yahoo!, Inc.´s request for the disputed domain names to be transferred to it.
Yahoo! is a global Internet communications, media, and commerce company based in Santa Clara California. Yahoo!´s services include Web directory and search services.
On the other hand, YCS, a division of Imaginet International, Inc., is a software development and systems integration company that was registered with the Department of Trade Industry (DTI) on Feb. 25, 1998. According to WIPO documents, YCS registered the domain names yahoo.com.ph and yahoo.ph with DotPH, Inc. on May 9, 1999 and October 21, 1999, respectively.
On Sept. 8, 1999, Yahoo! found out that YCS owned the yahoo.com.ph domain name and used it to identify its Web site. Yahoo!´s counsel then sent a demand letter to YCS on Oct. 28, 1999 and received no response. Later, in May 2000, Yahoo! again discovered that YCS also owned the domain name "yahoo.ph" . As of Jan. 3, 2001, the domains names both connected to a Web site bearing the title "Imaginet International, Inc."
Yahoo! argued that the disputed domain names fully incorporate its valuable and famous Yahoo! trademark within the second-level domain names ".ph" and ".com.ph" , and are confusingly similar to the Yahoo! marks.
Yahoo! further argued that YCS does not have rights in the domain name by virtue of the fact that the Yahoo! mark is famous, and that YCS´ use of the mark is unauthorized. Yahoo! also stated that YCS´ registration and use of the domain names meet the bad faith requirement described in Paragraph 4(a) of the Uniform Dispute Resolution Policy (UDRP).
In an interview with Computerworld Philippines, Blair Duncan, chief executive officer of YCS, stressed that they have not been sued for any infringement by anyone, including Yahoo! Inc. "This was a domain name dispute decided on by the WIPO under the UDRP policy," said Duncan. Duncan said that YCS has never offered the domain names for sale. He also added that YCS was never asked to give up the domain names. "The WIPO decision was that the names should be taken from YCS and transferred to Yahoo! Inc. without any compensation to YCS even though the names were legally purchased in the Philippines from DotPh," Duncan said.
Duncan told Computerworld that YCS legally owns the trade name Yahoo Computer Services & YCS and has also applied for the same trademarks. "It was a logical extension of the trade name & trademark to register the relevant domain names yahoo.com.ph and ycs.com.ph, he said. Duncan said that the yahoo.ph and ycs.ph domain names were registered when DotPH announced the new domains and advised all .com.ph domain name holders to register the .ph equivalents to safeguard their domains.Asked if they were aware that they could be sued for infringement, Duncan said that YCS was never advised of this by DotPH. "As legal owners of the trade name in the Philippines, we did not consider this to be a problem as it was used only to promote and support the legally registered local business."
The YCS head said that the administrative panel said that the domains in question caused confusion and disrupted the business of Yahoo!. "Where is the confusion? Where is the conflict?" In the WIPO document, YCS argued that the disputed domain names do not contain the Yahoo! mark and that the logo and site layouts in its Web sites are neither identical nor confusingly similar to Yahoo!, Inc.´s trade or services marks.
Also in the WIPO document, YCS said that its registration and use of the domain names does not meet the bad faith requirement described in paragraph 4(a) of the (UDRP). It added that it is making legitimate fair use of the domain names without intent for commercial gain to divert customers from the Yahoo! Web site.
YCS also argued that Yahoo! does not have a Philippine operation and that it does not have a Philippine Web site. Duncan said that YCS is a software development and systems integration company and does not earn from advertising and sales commissions, which is the case with Yahoo! Duncan said that DotPH made the transfer of the domain names to Yahoo! on the date specified by the WIPO decision, which was on March 21, 2001.
"The rules under which they [DotPH] are authorized to operate leaves them no choice. They are not asked to adjudicate, they are instructed to act," said Duncan. "My personal view on this is I do not agree with a local Internic registrar being authorized to decide on a first come first basis to sell domain names, renew domain names, accept payments for both and then whenever it is told by an ´independent´ international body, to transfer them with no refund or compensation to the original legal owner."
The three-man administrative panel stated that Yahoo!, Inc. has substantial trademark rights in the mark Yahoo!, and that the domain names in the dispute are confusingly similar to the Yahoo! mark. The panel further stated that YCS has no rights or legitimate interest in the domain names in dispute. However, the only thing that prevents the domain name yahoo.ph from being identical to the Yahoo! mark is the exclamation mark.
On March 21, 2001, the panel granted Yahoo!´s request for transfer to it of the domain names yahoo.ph and yahoo.com.ph.
Today, YCS´ Web site can be reached only at www.ycs.com.ph or www.ycs.ph.
Duncan said that three weeks after the WIPO decision, the domain name yahoo.com.ph still does not point to a Yahoo! Philippine site, or in fact to any Web site. "So we can see how urgently Yahoo! needed these domains to stop what they called the dilution of their famous name and their business´."
Source: Financial Times Limited