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Yahoo! Inc success over domain dispute in Thailand

Yahoo!, Inc., known as a web directory and a search engine company, is a global Internet company that offers a wide range of services such as Internet searching and shopping to millions of Internet users worldwide since 1994.

In November 2000, Yahoo!, Inc. discovered domain names registered under Somsak Sookripanich, a Thai national and filed a complaint against Somsak.

Somsak had registered the domain names under numerous registrant names, many which involved slightly misspelled versions of the name of the countries and included the Respondent’s own individual name (both as “Somsak Sookripanich” and “Mr. Somsak Sookripanich”); for example, http://www.yahooth.com, http://www.thyahoo.com, http://www.yahoocamboodia.com, http://www.yahoothailand.com, yahooth.com. The street address listed for each registrant is the same address. The names given as the Administrative and Billing Contact for the majority of the domain name is the same as well.

When Yahoo!’s Thai counsels had sent him a cease and desist letter, Somsak had replied that he would not transfer the domain names without monetary compensation. Even after sending him a cease and desist letter in July 2000, he went on to register additional 75 Yahoo-formative domain names.

Somsak had also advertised for a lawyer to represent him in negotiations of the sale of his Yahoo-formative domain names to Yahoo!. The advertisement reads as follows:

“Wanted: Female lawyer: good at negotiation and sale website yaooth.com (Yahoo Thailand). Yahoo wants it badly to share 50% of benefit”. Following this, Somsak sent emails to Yahoo!’s Thai counsel negotiating the sale of the domain names.

Somsak was clearly a known prolific cybersquatter who register domain names consisting of well-known trademarks. In addition to the Yahoo! marks, he had registered variation of many famous trademarks, trade names and celebrity names as domain names, such as, Loius Vuitton, Dockers, Gucci, Dunhill, McDonald, Pepsi, Guess, Revlon, David Beckham and etc.

Given the uniqueness and the fame of the Yahoo! mark, there was no plausible explanation for the Somsak’s registration of the domain names, other than to trade upon the goodwill and its famous Yahoo! mark. He primarily registered the domain names to sell, rent or otherwise transfer the domain names for valuable consideration. The advertisement for a lawyer, is a clear indication of Somsak’s bad faith.

It was decided, based on the findings, that the disputed domain names were confusingly similar to Yahoo!, Inc., and Somsak had no legitimate rights or interest in the disputed domain name; and that the disputed domain names were registered and are being used in bad faith. Hence all 22 domain names were ordered by Honorable Sir Ian Barker QC of Auckland, New Zealand, appointed by WIPO Arbitration and Mediation Centre, to be transferred to Yahoo!, Inc.

Article was written based on the WIPO Arbitration and Mediation Center’s decision for Case no. D2000-1461

Ref: http://arbiter.wipo.int/domains/decisions/html/2000/d2000-1461.html


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