WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yanmar Co., Ltd v Montevallo Small Engines
Case No. D2007-1350
1. The Parties
The Complainant is Yanmar Co., Ltd, Osaka, Japan represented by Cynthia A. Boeh, United States of America.
The Respondent is Montevallo Small Engines, Alabama, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Go Daddy Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2007. On September 11, 2007, the Center transmitted by email to Go Daddy Inc. a request for registrar verification in connection with the domain name at issue. On September 17, 2007, Go Daddy Inc. transmitted by email to the Center its verification response confirming that the Respondent as indicated in the Complaint was not the registrant of the disputed domain name and provided its contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 25, 2007. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2007. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on October 30, 2007.
The Center appointed Mr. Clive Duncan Thorne as the sole panelist in this matter on November 6, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 compliance of the Rules.
4. Factual Background
In the absence of a Response the facts of which the Complaint is based are those set out by the Complainant in its Complaint. Since the facts are unchallenged the Panel accepts the evidence adduced by the Complainant as true.
According to the Complaint, the Complainant Yanmar Co., Ltd was established in 1912. Its primary business is the production of engines for the marine and industrial environment as well as for industry and agriculture. The company has a worldwide network of technical centers, production plants and sales centers. Products sold under the mark YANMAR are sold worldwide. The Complainant’s sales volumes exceed US$5 billion. The Complaint sets out a list of the Complainant’s associated companies and entities worldwide including in Japan, United States of America, Netherlands, Italy, France, Brazil, Singapore, Indonesia, Thailand and China. Of particular note are the three Japanese companies referred to; Yanmar Marine System Co Ltd, Yanmar Energy System Co. Ltd and Yanmar Agricultural Equipment & Co. Ltd. The name Yanmar is the prominent feature of the companies listed in the Complaint as well as the Complainant’s associated companies and entities located throughout the world.
The Complainant and/or its subsidiaries are the owners worldwide of the trade mark YANMAR for various goods and services registered in many countries. In most countries the Complainant has made and is still making extensive use of the mark YANMAR. Lists of registrations of the trade mark YANMAR and YANMAR device mark are set out in Annexes 4(a), 4(b), 4(c) and 4(d) to the Complaint. It appears that the Complainant has registrations throughout the world. Exhibited at Annex 5 to the Complaint are copies of the certificates for registration of the trade mark YANMAR and YANMAR device mark at the trade mark offices in Switzerland and United States of America.
At Annex 6 to the Complaint is the Company’s brochure. It commences with “Greetings” from the President of the Company Mr. Takehito Yamaoka who makes specific reference to the Complainant as a high-tech market leader in a broad range of fields including “farm machinery”. There is a section of the brochure dealing specifically with agriculture and a photograph of a tractor. There is a statement that “Yanmar makes machines that allow the best application of human skills on the land”. The Panel is satisfied that the Complainant has interests in agricultural machinery.
There is some correspondence between the parties prior to the Complaint. This is set out at Annex 10 to the Complaint beginning with a letter from Yanmar American Corporation to a Mr. Mike Adams of Adams Tractor Company in Montevallo Alabama. It refers to the use of the domain name by Adams Tractor Company and the representation that Adams Tractor is a “Yanmar Dealer”. It confirms that Mr. Adams has apparently agreed to cancel the domain name and also that he should remove references to being an authorised “Yanmar Dealer” from his website and from advertising. There appears to be a connection between the Respondent and Mr. Adams of Adams Tractor Company. The address appears to be the same. Also the disputed domain name is the subject of this Complaint which, appears to be used by Mr. Adams. Further, Adams Tractor Company is registered in the name of the Respondent. In the Panel’s view it is therefore entitled to accept that there is a close connection between Adam’s Tractor Company and the Respondent.
The September 1, 2005 letter does not appear to have been responded to. However, there is a further letter from Yanmar America Corporation dated April 30, 2007, this time addressed to Mr. Mike Adams as the Respondent, referring to a conversation in late August 2005 relating to the continued use of the domain name in dispute. The letter points out that the Respondent is using the domain name in dispute and requests that the domain name be transferred to the Complainant. There does not appear to be a response to this letter.
5. Parties’ Contentions
A. Complainant
1. The Complainant contends that the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has registered rights.
2. The Respondent has no rights or legitimate interests in respect of the domain name.
3. The domain name is registered and is being used in bad faith.
B. Respondent
1. The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or confusingly similar
The Panel is satisfied that the Complainant has registered rights in the mark YANMAR throughout the world. It is therefore satisfied that the Complainant has rights in the trade mark YANMAR.
The Complainant submits the domain name consists of YANMAR as the main part, with “tractors” as a generic word and “.com” as a suffix. It submits that the well-known and distinctive trade mark YANMAR is the most prominent element of these combinations and that this is identical to the Complainant’s trade mark and will undoubtedly create confusion amongst the public. The Panel accepts this submission and also takes into account the Complainants use of the mark YANMAR in relation to agricultural equipment including tractors.
Accordingly, the Panel finds that the domain name is identical or confusingly similar to the trade mark YANMAR in which the Complainant has rights.
B. Rights or Legitimate Interests in respect of the Domain Name
The Complainant relies upon the following:-
(i) That the Respondent has no trade mark rights entitling it to use the mark YANMAR or register the domain name in dispute.
(ii) The Respondent although having used the domain name has not apparently been and is not commonly known by it.
(iii) The Respondent is using a domain name with intent to obtain commercial gain by misleadingly diverting customers or tarnishing the trade mark YANMAR. In particular, the Complainant relies upon the extract from the Respondent’s website which states “Welcome to Montevallo small engines. Used Yanmar Headquarters of the South East”.
Based on the foregoing evidence the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
The Complainant relies within Section 4(b) of the Policy upon the domain name having been registered primarily for the purpose of disrupting the business of a competitor i.e. the Complainant.
It points out that the mark YANMAR used by the Complainant is an invented word and has no ordinary meaning in the English language. It also relies upon the correspondence referred to above including in particular the letter of September 1, 2005 which was not responded to. Moreover, the Complainant points out that its trade mark registrations were obtained prior to the Respondent’s registration of the domain name so that if the Respondent had conducted an initial trade mark search he would have discovered the Complainant’s registered rights. There is evidence that the trade mark YANMAR is well-known all over the world.
Taking all these factors into account and also taking into account the lack of a response, the Panel finds that the Complainant has proved that the domain name was registered and used in bad faith.
It follows that the Complainant has succeeded in proving its Complaint.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Clive Duncan Thorne
Sole Panelist
Dated: November 20, 2007
Full & Egal Universal Law Academy