Complainant is Cardington Yutaka Technologies Inc. of Cardington, United States of America ("United States"), represented by Tucker Ellis, LLP, United States.
Respondents are Domains By Proxy, LLC of Scottsdale, Arizona, United States / Charles Shepherd of Mansfield, Ohio, United States. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 9, 2014. On August 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 12, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 12, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 13, 2014.
The Center verified that the amended 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 Respondents of the Complaint, and the proceedings commenced on August 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2014. Respondents did not file a formal Response, however, the Center received communications from Respondent Shepherd dated September 2, 2014, September 5, 2014 and September 11, 2014. Respondent Shepherd's communication of September 5, 2014, indicated an interest to transfer the Domain Name.
On September 8, 2014, Complainant filed a Request for Suspension so that the parties may explore the possibility of settlement. The Center granted the requested suspension until October 10, 2014. On that day Complainant filed a "Request for Continuation of Suspension or, In the Alternative, for Installation of Panel to continue settlement discussions with Respondent", which the Center granted until November 9, 2014. On October 25, 2014, Complainant filed a Request to Resume Proceeding. In pertinent part it stated:
Complainant has been in subsequent communication with the Respondent in an attempt to effectuate the transfer of the domain name as the Respondent indicated he would do in his September 5 email to the Legal Case Manager. Unfortunately, the Registrant stated on October 23, 2014 that he would not voluntarily transfer the domain name, stating "I don't care if I take back my word of transferring the domain."
The Center appointed Harrie R. Samaras as the sole panelist in this matter on October 29, 2014. 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
Complainant Cardington Yutaka Technologies Inc., located in Cardington, Ohio, is an automotive parts supplier for Honda of America Manufacturing. Complainant's parent company, Yutaka Giken Co., Ltd. ("Yutaka Giken"), has been using the YUTAKA trademark by itself and in combination with other words – including CARDINGTON – and design elements in the United States since at least as early as 1995. Yutaka Giken owns federal trademark registrations for its YUTAKA mark including United States Registration Nos. 2,280,806 and 3,462,621 ("the YUTAKA Mark"). As per the declaration of Complainant's Vice President, D. R. Pfeiffer ("the Pfeiffer Declaration"), made of record, since about 1995, Complainant has been authorized to use and has been using in interstate commerce the YUKATA Mark alone and in combination with the words "Cardington" and "technologies".
One Respondent in this proceeding is Domains by Proxy, LLC, a Delaware limited liability company. On August 12, 2014, Complainant received a Notice of Change in Registrant Information from the Center identifying Charles Shepherd, as the Registrar-identified registrant of the Domain Name and, thus, the other Respondent. The Domain Name was registered on March 30, 2014. 5. Parties' Contentions A. Complainant
Complainant made the following contentions:
Complainant maintains a website at the domain name , and has been widely known as Cardington Yutaka for many years. Thus, it has developed unregistered or common law trademark rights in YUTAKA and CARDINGTON YUTAKA. In addition to any rights Complainant's parent may have in Japan where it is incorporated, Complainant and its parent possess exclusive rights throughout the United States in the YUTAKA Mark.
The Domain Name incorporates both the YUTAKA and CARDINGTON YUTAKA trademarks in their entirety with no additional content except for the generic Top-Level Domain ("gTLD") ".com". Even if Complainant did not possess unregistered or common law rights in the CARDINGTON YUTAKA mark, the Domain Name would still be confusingly similar to its federally registered trademark for YUTAKA because of the addition of the geographic term "Cardington".
Domains By Proxy, LLC provides the service of cloaking the Domain Name and address of the beneficial owner – here, Respondent Shepherd – until a legal claim or UDRP complaint is asserted. Thus, the Panel does not need to inquire into the rights or legitimate interests of Respondent Domains By Proxy, LLC. Respondent Shepherd has not used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. Nor is he commonly known by the Domain Name as demonstrated by the fact that the website associated with the Domain Name focuses on an individual allegedly named "Tim" and his attempts to seek revenge against two individuals whose names are completely dissimilar to the Domain Name. According to the website, "Tim" is seeking revenge on behalf of his friend Charles Shepherd. In actuality, there is no "Tim," and Charles Shepherd is the author of the website's content. Using "Yukata" and "Cardington Yukata" in their entirety is designed to draw those seeking Complainant's website to Respondent Shepherd's website instead, where Respondent Shepherd has posted libelous and defamatory content of a sexual nature, using a great deal of profanity and otherwise inappropriate language. Because Complainant is widely known as "Cardington Yutaka" its customers and potential customers would naturally expect to find Complainant's website at "www.". Respondent Shepard cannot adopt as a domain name a trademark in its entirety for this purpose, even if it would otherwise qualify as criticism protected by the doctrine of fair use.
Respondent Shepherd is clear on his website that his use of "Cardington Yukata" refers to Complainant. By incorporating the Complainant's trademarks in their entirety, the website at issue is diverting Internet traffic intended for Complainant to Respondent Shepherd's website for the purpose of disrupting Complainant's business. Respondent Shepherd does so by publishing libelous and defamatory content regarding individuals with whom he has some sort of personal grudge. Thus, Complainant's customers who are attempting to reach Complainant are instead taken to this scandalous website. That this is a main purpose of the site is revealed by Respondent Shepherd's bragging that he has achieved an increasingly high-level Google ranking when Complainant's trademarks are searched. Any purported right to criticize claimed by Respondent is seriously undercut by this attempt to divert traffic and by the fact that the Domain Name incorporates Complainant's trademarks in their entirety with no additional content in the Domain Name.
Respondent Shepard's bad faith is further demonstrated by the fact that, when the Center issued the Notice of Change in Registrant Information identifying Charles Shepherd as the underlying registrant, Respondent Shepherd attempted to block access by the Panel to relevant evidence by making the content on the website unavailable to the public. He has also employed "robots.txt" to prevent access to historical content on repositories such as the Internet Archive. B. Respondents
Respondent Shepherd did not reply substantively to Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be 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 in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant relies on both unregistered or common law rights in the YUTAKA and CARDINGTON YUTAKA marks and United States Registrations Nos. 2,280,806 (YUTAKA and design) and 3,462,621 (YUTAKA word mark). With regard to unregistered or common law rights, according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), at paragraph 1.7, to prove such rights: "The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition […]. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required."
In an attempt to prove unregistered or common law rights, the Pfeiffer declaration states in paragraph 5: "[Complainant] has made extensive use of [the YUTAKA Mark] by itself and in combination with the terms CARDINGTON and TECHNOLOGIES. After nearly 18 years of use, [Complainant] has become well known as CARDINGTON YUTAKA." Furthermore, Complainant made of record the following three pieces of evidence: a copy of the Ohio Secretary of State record for Complainant indicating that it was registered in Ohio in 1995 and that the company has an "active" status, a page from Complainant's website dated July 29, 2014, and a copy of the results of a Google search for "Cardington Yutaka" dated July 29, 2014 where Complainant's website appears in the top two hits. This recently dated and limited evidence is not sufficient to prove unregistered or common law rights and it certainly is not coextensive with the statements made by Mr. Pfeiffer relating to Complainants use of the YUTAKA Mark alone and in combination with the words "cardington" and "technologies".
Complainant has also made of record the United States trademark registration documents for United States Registrations Nos. 2,280,806 (YUTAKA and design) and 3,462,621 (YUTAKA word mark). The Panel finds those documents sufficient to establish rights in the YUTAKA Mark. Also, the Panel relies here on the Pfeiffer Declaration for support of Complainant's rights in the YUTAKA Mark, specifically paragraphs 4 and 5 which state in pertinent part: "[Complainant] was founded in 1995 and is a wholly owned subsidiary of Yutaka Giken Ltd., a Japanese Company […]. Since 1995 [Complainant] has been authorized by Yutaka Giken to use its federally registered YUTAKA mark."
The Domain Name incorporates in its entirety Complainant's YUTAKA Mark. Where a domain name incorporates a complainant's mark in its entirety, this is generally sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105. Adding the geographic term "Cardington" to Complainant's YUTAKA Mark does not alleviate the confusion. In fact, it is likely to increase the likelihood of confusion because Complainant is located in Cardington, Ohio.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
It is uncontested that Complainant has not authorized Respondents to use its YUTAKA Mark in connection with Respondent Shepherd's website. Insofar as Complainant has made a prima facie showing that the Respondents lack rights to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding,WIPO Case No. D2004-0261), this shifts the burden to Respondents to demonstrate by concrete evidence that they have rights or legitimate interests in the Domain Name. See, e.g. Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, Respondents may satisfy their burden by demonstrating any of the following: (i) before any notice of the dispute, Respondents' 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) Respondents (as individuals, businesses, or other organizations) have been commonly known by the Domain Name, even if they have acquired no trademark or service mark rights; or (iii) Respondents are 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.
Respondents have provided no evidence to carry their burden. In fact, it is undisputed that Respondent Shepherd registered the Domain Name long after Complainant adopted and used its YUTAKA Mark and obtained its United States trademark registrations for it.
Absent any explanation from Respondents, the Panel can ascribe no motive for Respondent Shepherd's registration and use of the Domain Name except to capitalize on Complainant's trademark rights so that he can express his views about one of Complainant's human resource policies. Under the circumstances, the Panel finds that this cannot confer to Respondents rights or legitimate interests in the domain name.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
Considering (1) Complainant's United States Trademark Registrations for the YUTAKA Mark issued many years before Respondent registered the Domain Name, and (2) that Respondent Shepherd mentions Complainant by name, address, phone number and website domain on the website associated with the Domain Name, the Panel concludes that Respondent Shepherd was aware of Complainant when it registered the Domain Name and describes its business. See Public Storage v. Moving In Ca.com,WIPO Case No. D2009-1373 (a respondent's knowledge of a complainant's trademark when registering a domain name containing that mark often has been found by panels to constitute evidence of bad faith registration).
Lacking any connection to Complainant, it appears that Respondent registered and used a confusingly similar domain name to drive Internet traffic to his website. As indicated previously, absent any explanation from Respondents, the Panel can ascribe no motive for Respondent Shepherd's registration and use of the Domain Name except to capitalize on Complainant's trademark rights so that he can express his views about one of Complainant's human resource policies. Further evidence of Respondent Shepherd's bad faith use is the fact that Respondent first represented unequivocally that he wanted to transfer the Domain Name and then did not, and when the Center issued the Notice of Change in Registrant Information identifying Charles Shepherd as the underlying registrant, Respondent Shepherd appears to have attempted to block access by the Panel to relevant evidence by making the content on the website at the Domain Name unavailable to the public. He also appears to have employed "robots.txt" to prevent access to historical content on repositories such as the Internet Archive.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Complainant.
Harrie R. Samaras
Sole Panelist
Date: November 5, 2014
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