Internet Trademark Case Summaries
Yahoo! Inc. v. Yahoo Moving & Storage, Inc.
No. C-03-0012 CW (N.D. Cal. May, 28, 2003) (Magistrate Judge’s report and recommendation), (N.D. Cal. Nov. 6, 2003) (order adopting Magistrate Judge’s report and recommendation with modifications)
Plaintiff operates the YAHOO! Internet website and owns the famous YAHOO! trademark. Defendant registered and used the domain names “yahoomoving.com,” “yahoomovers.com,” and “yahoovanlines.com” to promote its “Yahoo Moving & Storage” moving business. Plaintiff sent a cease-and-desist letter to defendant, but defendant refused to comply with plaintiff’s demands and instead offered to sell its business to plaintiff for $5,000,000. Plaintiff sued for cybersquatting, infringement, and dilution. Defendant failed to respond to the complaint, and the court entered default judgment on plaintiff’s claims. The court awarded plaintiff $225,000 in statutory damages ($75,000 per domain name) because it found that “defendant’s conduct in registering and using the domain names in 2001 when plaintiff’s trademarks were well-established and continuing to use plaintiff’s internationally recognized trademark even after it was on actual notice of plaintiff’s interest and in not responding to further correspondence from plaintiff’s counsel was egregious.” The court also found the case to be exceptional and awarded plaintiff $20,000 in attorney’s fees, relying on defendant’s continued use of the YAHOO! trademark after receiving the initial cease-and-desist letter and attempting to extort money from plaintiff by offering to sell its four-employee business with annual sales of only $500,000 for the “excessive price” of $5,000,000. Finally, the court enjoined defendant from using the YAHOO! trademark “or any derivation or combination of words thereof” and ordered the domain-name registrar to transfer the disputed domain names directly to plaintiff.