The Complainant is Yanmar Co., Ltd of Osaka, Japan, represented by Spoor & Fisher Attorneys, South Africa.
The Respondent is Grant Watters of Sandton, South Africa and Dakar, Senegal, represented by Berdou Attorneys, South Africa. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2011. On February 17, 2011, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On February 17, 2011, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 February 23, 2011.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 February 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2011. Following an extension of the due date for Response by request of the Parties, the proceedings were suspended on March 24, 2011 in furtherance to settlement discussions. By request of the Complainant, the proceedings were reinstituted on April 14, 2011, with a recalculated due date for Response of April 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2011.
The Center appointed William R. Towns as the sole panelist in this matter on April 28, 2011. 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 the Rules, paragraph 7. 4. Factual Background
The Complainant is a major engineering company, with worldwide operations involving the manufacture, distribution and servicing of industrial engines, generators and pumps, transmissions, other equipment and spare parts for the agricultural, maritime and construction industries. The Complainant is the owner of numerous national registrations for the mark YANMAR (and other YANMAR-formative marks), including South Africa as well as other jurisdictions around the world.
Founded in 1912 in Japan, the Complainant is best known as the developer of the world’s first commercially viable small diesel engine in 1933, and the diesel engine has remained the core business of the Complainant and its various subsidiaries (collectively “the Yanmar Group”), with offices and divisions in eleven countries and a network of authorized distributors worldwide. The Complainant has been active in South Africa for more than twenty-five (25) years, with local distributors based in Johannesburg (Agrinet) and Cape Town (IMS). The Complainant’s distributors in turn have dealers located throughout the broader South African region.
The Respondent registered the disputed domain name on November 29, 2009. The disputed domain name resolves to a website featuring links such as “Yanmar Product Support – Africa”, “Yanmar Compact Diesel Engines”, “Yanmar Generators”, “Yanmar Mini Excavators”, and “Yanmar Spare Parts”. These links provide contact information for various individuals, including the Respondent, all of whom appear to be associated with a Johannesburg entity known as “Speedease”. The Respondent’s website also contains a link entitled “Yanmar Product Range” to the Complainant’s website at “/en/”. Prior to commencing this proceeding, the Complainant sent several demand letters to the Respondent, without a satisfactory resolution. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name incorporates the YANMAR mark in its entirety and is identical and confusingly similar to the mark, which the Complainant asserts is well-known internationally as well as in South Africa. The Complainant points to worldwide sales of more the USD 4 billion in each of the last five years, including substantial sales in South Africa, and to extensive marketing and advertising activities in South Africa. The Complainant further asserts that the YANMAR mark has come to be exclusively associated with the Complainant and its goods and services.
The Complainant maintains that the Respondent lacks rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent has not been authorized to use the Complainant’s YANMAR mark, but has adopted a domain name that consists solely of the Complainant’s mark, and is using the disputed domain name in a manner to falsely hold itself out to the public as an authorized distributor of the Complainant’s YANMAR branded products. The Complainant contends that the Respondent had previously contacted the Complainant regarding the possibility of becoming an authorized distributor, but has made no effort to take the actions necessary even to be considered by the Complainant for such.
In view of the foregoing, the Complainant maintains that the Respondent cannot claim to be making a bona fide use of the disputed domain name through the unauthorized offering of YANMAR branded goods and services, nor claim to be making a legitimate noncommercial or fair use of the disputed domain name. The Complainant further observes that the Respondent has made no effort on its website to prevent the confusion arising from the Respondent’s use of a domain name that consists solely of the Complainant’s mark in connection with the purported offering of the Complainant’s products or services.
In view of the overall circumstances as reflected in the Complainant, the Complainant considers it an inescapable conclusion that the Respondent was well aware of the Complainant and the Complainant’s trademark rights when registering the disputed domain name. According to the Complainant, no plausible reason for the Respondent’s adoption and use of the disputed domain name exists other than to exploit and profit from the goodwill associated with the Complainant’s mark, by drawing a connection between the disputed domain name and the Complainant’s products and services. In light of this, the Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainant points to the Respondent’s failure to respond to the Complainant’s demand letters as further evidence of such bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations which shall constitute evidence of the registration and use of a domain name in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is identical to the Complainant’s YANMAR mark, in which the Complainant beyond question has established rights. The threshold inquiry under the first element of the Policy is largely framed in terms of whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression. Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011. Based on such a comparison, the Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is identical to the Complainant’s mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain name consists solely of the Complainant’s mark. There is no indication that the Respondent has been commonly known by the disputed domain name, and the Respondent has not been authorized to use the Complainant’s mark. Nevertheless, the disputed domain name is being used to attract Internet users to a website from which the Respondent purports to offer for sale the Complainant’s products and services.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal Response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
As noted above, the Respondent has not been authorized to use the Complainant’s mark, and is there no evidence that the Respondent has been commonly known by the disputed domain name. In view of the undisputed facts and circumstances in the record, the Panel is persuaded that the Respondent most likely registered the disputed domain name in order to trade on the initial interest confusion between the disputed domain name and the Complainant’s mark and divert Internet users to the Respondent’s website. See Aubert International SAS and Aubert France SA v. T Co.,WIPO Case No. D2008-1986 (and decisions cited at paragraph 6.18 therein). Even assuming that the Respondent is a reseller of the Complainant’s products, the Panel nonetheless concludes that the Respondent has not established rights or has a legitimate interest in the disputed domain name under the fair use principles articulated in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (hereinafter “Oki Data”). In Oki Data, the panel concluded that the use of a manufacturer’s trademark as a domain name by even an authorized dealer or reseller could be deemed a “bona fide offering of goods or services” within the meaning of the Policy only if the following conditions are satisfied:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The record before the Panel does not reflect the Respondent’s use of the disputed domain name consistent with the Oki Data fair use standards. It is critical to the establishment of rights or legitimate interests under Oki Data that a reseller make use of the manufacturer’s trademark only insofar as is reasonably necessary, that such use involve only the trademark owner’s products, that the reseller take steps to avoid using the owner’s mark in a manner likely to cause consumer confusion as to source, sponsorship, affiliation or endorsement, and that the reseller’s website effectively and accurately disclose the relationship with the trademark owner.
The record reflects no effort by the Respondent to accurately disclose the relationship with the Complainant. And in the Panel’s opinion, the multiple references to the Complainant’s mark on the Respondent’s website exceed any reasonably necessary use by a purported reseller. Further, there are links on the Respondent’s website to apparently affiliated websites operated by Speedease, where products of manufacturers competing with the Complainant are purportedly offered.
In light of the foregoing, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Nor in view of the foregoing can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names within the meaning of paragraph 4(c)(iii) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel concludes that the Respondent registered and has used the disputed domain name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. See Aubert International SAS and Aubert France SA v. T Co., supra. It is obvious from the relevant circumstances that the Respondent was aware of the Complainant and had the Complainant’s mark in mind when registering the disputed domain name. See Ticketmaster Corporation v. Spider Web Design, Inc.,WIPO Case No. D2000-1551.
The Respondent’s registration and use of the disputed domain name manifests a clear intent to capitalize on or otherwise take advantage of the Complainant’s trademark rights, through the creation of initial interest confusion. The Respondent, as a purported reseller of the Complainant’s products, wholly failed to disclose its relationship with the Complainant, even after clearly being placed on notice by the Complainant on more than one occasion. In view of all of the foregoing, the Panel further concludes that the Respondent is using the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: May 11, 2011
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