The Complainant is NACCO Materials Handling Group, Inc., of Fairview, Oregon, United States of America, represented by Samuels & Hiebert LLC, United States of America.
The Respondent is Wendy Estrada of Dundas, Minnesota, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with L, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 25, 2015. On November 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 1, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On December 7, 2015, Complainant submitted an amended Complaint to the Center. The Center verified that the amended Complaint (hereafter, simply, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 9, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 30, 2015.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on January 6, 2016. 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 states that it is "the subsidiary and operating company of the independent, public company Hyster-Yale Materials Handling, Inc. ("Hyster-Yale") traded on the New York Stock Exchange under 'HY'," and that it "a global leader in the production of lift trucks and parts, designing, engineering, manufacturing, and selling its products and services under the Yale brand name." Complainant further states that Hyster-Yale employs more than 5,000 people and had annual revenue in 2014 of approximately USD 2.77 billion. Complainant further states that its "lift trucks are sold and distributed through an extensive dealer network that includes over 150 dealers worldwide" and that it "designs and produces its equipment in 19 facilities around the globe".
Complainant further states, and provides evidence to support, that it is the owner of a number of trademark registrations that consist of the word YALE (the "YALE trademark"), including the following:
- U.S. Reg. No. 288,907; first used in commerce on June 25, 1930; registered November 10, 1931; for use in connection with "lift trucks".
- U.S. Reg. No. 3,722,182; first used in commerce in 1961; registered December 8, 2009; for use in connection with "[d]ealerships in the field of land vehicles; dealerships in the field of industrial lift trucks".
Complainant further states, and provides evidence to support, that it is the registrant of the domain name , which was created on December 6, 1994.
Complainant further states "the Disputed Domain Name was previously owned by Complainant, and was only registered by Respondent after Complainant inadvertently allowed the Disputed Domain Name's registration to lapse". The current registration for the Disputed Domain Name indicates that it was created on August 12, 2015. Complainant further states, and provides evidence to support, that Respondent is using the Disputed Domain Name to "redirect Internet users to a website that allegedly helps find a "good home in cheap apartments in Murfreesboro TN [Tennessee, United States]'".
Finally, Complainant states, and provides evidence to support, that it attempted to contact Respondent about the Disputed Domain Name "via post/courier and email", but that all of its communications were returned. 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- Complainant has rights in and to the YALE Trademark as a result of the trademark registrations cited above. Complainant further contends that the Disputed Domain Name is confusingly similar to these trademarks because, inter alia, "[t]he hyphen [in the Disputed Domain Name] does nothing to distinguish the Disputed Domain Name from Complainant's YALE trademark" and "Respondent's addition of the geographically descriptive term "europe" to Complainant's YALE trademark does not distinguish the Disputed Domain Name [from] such trademark" because "Complainant conducts significant business in Europe, and as such, this term is closely associated with Complainant's brand and trademark and only serves to underscore and increase the confusing similarity between the Disputed Domain Name and the Complainant's trademark".
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Respondent is not sponsored by or affiliated with Complainant in any way"; "Respondent is not commonly known by the Disputed Domain Name"; and Respondent's use of the Disputed Domain Name to "exploit […] the fame of the Complainant's trademark to lure Internet users to a website that focuses on apartments in a city in Tennessee […] cannot be considered legitimate in any sense".
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, Respondent registered the Disputed Domain Name"well after Complainant registered its YALE trademark with the USPTO in 1931", which was "after Complainant and its YALE trademark became well-known, as well as after the nearly 15-year period that Complainant held the Disputed Domain Name"; "[b]y registering a domain name that incorporates Complainant's distinctive YALE trademark in its entirety while adding the geographically descriptive term, "europe" (referencing a region in which Complainant maintains a significant presence and does substantial business), Respondent has created a domain name that is confusingly similar to Complainant's trademark, as well as Complainant's domain"; "[a]t the time of registration of the Disputed Domain Name, the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se"; "by using a confusingly similar domain name to link to websites through which Respondent, or individuals or entities potentially associated with Respondent, may commercially profit, the Respondent has demonstrated that it registered and is using the Disputed Domain Name in bad faith"; "[t]he Disputed Domain Name can only be taken as intending to cause confusion among internet users as to the source of the Disputed Domain Name"; and "[t]he Respondent has also ignored or failed to allow for Complainant's attempts to resolve this dispute outside of administrative proceedings". B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainants, it is apparent that Complainants has rights in and to the YALE Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the YALE Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., "yale‑europe"), as it is well-established that the top-level domain (i.e., ".com") may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 ("The applicable top-level suffix in the domain name (e.g., '.com') would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.").
The only differences between the Disputed Domain Name and the YALE Trademark are the addition of a hyphen and the geographic identifier "europe" to the Disputed Domain Name. As numerous previous panels have stated, "punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity". Six Continents Hotels, Inc. v. Helen Siew,WIPO Case No. D2004-0656. Further, "the addition of geographic identifier words […] could not avoid a finding of confusing similarity, but instead, increases the likelihood of confusion between the Domain Names and the Complainant's trademark…." Inter-Continental Hotels Corporation v. Hui Lian Yang/Yang Hui Lian; a/k/a Jian Ren Zhou/Zhou Jian Ren; a/k/a Jian Guo Liu/Liu Jian Guo,WIPO Case No. D2014-0272.
Accordingly, the Panel finds that Complainants have proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Respondent is not sponsored by or affiliated with Complainant in any way"; "Respondent is not commonly known by the Disputed Domain Name"; and Respondent's use of the Disputed Domain Name to "exploit […] the fame of the Complainant's trademark to lure Internet users to a website that focuses on apartments in a city in Tennessee[…] cannot be considered legitimate in any sense".
Under the Policy, "a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP". WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: "(i) circumstances indicating that the respondent has registered or the respondent has 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 that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 the registrant's website or location". Policy, paragraph 4(b).
In this case, Complainant argues that bad faith exists pursuant to paragraphs and 4(b)(iii) and 4(b)(iv), for the reasons set forth above. With respect to paragraph 4(b)(iii), Complainant notably admits that "the Disputed Domain Name's website features content wholly unrelated to Complainant, Yale, or Europe". Accordingly, and without further information about Respondent, it is unclear whether Respondent would be considered a "competitor" of Complainant.
With respect to paragraph 4(b)(iv), however, it is obvious that Respondent's use of the Disputed Domain Name is likely to cause confusion, especially given Complainant's prior use of the Disputed Domain Name, which Complainant admittedly failed to renew. In previous cases, registration of a domain name "virtually immediately after Complainant's registration lapsed" has been found to constitute bad faith, especially where, as here, "any trademark or Internet based search would have easily disclosed Complainant's trademark rights and long-established use" of the relevant trademark. Lifetime Assistance, Inc. v. Domain Asset Holdings, LLC,WIPO Case No. D2011-2137. The fact that Respondent's website associated with the Disputed Domain Name is unrelated to Complainant's goods and services is, as Complainant has noted, irrelevant. For example, in Seiko Epson Corporation and Epson America, Inc. v. Dung Tien, NAF Claim No. 1443653, the panel found bad faith where Respondent used the disputed domain name in connection with a website selling kitchen appliances, kitchen-related goods and outdoor grills, even though the relevant trademark was for use in connection with high-technology products, because "Respondent seeks to benefit from the goodwill that Complainant's mark has garnered".
Accordingly, the Panel finds that Complainant has proven the third element 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.
Douglas M. Isenberg
Sole Panelist
Date: January 11, 2016
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