The Complainant is Yamaha Motor Corporation, U.S.A. of Kennesaw, Georgia, United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, L.L.P., Charleston, South Carolina, United States.
The Respondent is Pearlie Risser, LLC of Las Vegas, Nevada, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2016. On July 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 22, 2016, 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.
The Center verified that 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 July 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2016.
The Center appointed Lynda M. Braun as the sole panelist in this matter on August 26, 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
The Complainant is a wholly owned subsidiary of Yamaha Motor Company, Ltd., t/a Yamaha Hatsudoki Kabushiki Kaisha, a Japanese corporation. The Complainant’s parent corporation, which has authorized the Complainant to proceed in this proceeding, is the holder of various registrations for the trademark YAMAHA on the Principal Register of the United States Patent and Trademark Office, including, among others, U.S. Reg. No. 688,208, dated November 17,1959, in International Class 12 for motorcycles, and U.S. Reg. No. 866,762, dated March 18,1969, in International Classes 7 and 12 for motorboats and parts thereof, and outboard engines (the “YAMAHA Mark”). Since 1977, the Complainant has been authorized to and has continuously used the YAMAHA Mark in commerce in the United States to promote and sell Yamaha motorized products. As a result, the Complainant’s reputation and goodwill has been established as a source of quality products throughout the world and specifically in the United States.
In addition, the Complainant owns multiple domain names that incorporate the YAMAHA Mark, including , and
The Respondent registered the Disputed Domain Name on July 1, 2001. The Disputed Domain Name currently resolves to a parking page website that displays third-party links to other businesses, including competitors of the Complainant. The Disputed Domain Name is listed for sale on the parking page, and can be accessed by clicking on the parking page link to be redirected to Sedo to purchase the Disputed Domain Name for approximately USD 5,500.
On February 26, 2016, the Complainant’s counsel sent a cease and desist letter to the Respondent requesting the transfer of the Disputed Domain Name. The Respondent did not reply to this letter. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
- The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- The Disputed Domain Name was registered and is being used in bad faith; and
The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(i) The Disputed Domain Name 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 Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: First, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the YAMAHA Mark based on both longstanding use as well as its trademark registrations for the YAMAHA MARK. The Disputed Domain Name consists of the YAMAHA Mark followed by the descriptive word “motor”, and followed by the generic Top-Level Domain (“gTLD”) “.com”.
It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive or generic word. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923 (the addition of a descriptive or generic word to a trademark will not avoid a determination that the domain name at issue is confusingly similar). This is especially true where, as here, the descriptive word “motor” is associated with the Complainant and its products. See, e.g., Gateway Inc. v. Domaincar,WIPO Case No. D2006-0604 (finding the domain name confusing similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).
The Disputed Domain Name is nearly identical to the Complainant’s official domain name , except for the hyphen between the words “yamaha” and “motor” in the Complainant’s domain name. However, the absence of a hyphen in the Disputed Domain Name is irrelevant for purposes of the Policy, because the presence or absence of 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 (citing Six Continents Hotels, Inc. v. Georgetown Inc.,WIPO Case No. D2003-0214 (hyphens do not “serve to dispel Internet user confusion here”)); Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281 (“[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY”).
Finally, the addition of a gTLD such as “.com” in a domain name may be technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its YAMAHA Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Name for commercial gain and thus, has no rights or legitimate interests in the Disputed Domain Name.
Moreover, the Respondent’s registration and use of the Disputed Domain Name to resolve to a website with commercial links to third-party advertisements for other products and services, including those of the Complainant’s competitors, does not constitute a bona fide offering of goods or services or noncommercial fair use under the Policy. See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (use of a domain name to post landing pages and pay-per-click links does not confer rights or legitimate interests in that domain name when resulting in a connection to goods or services competitive with those of the trademark holder).
Finally, where a respondent has registered and used a domain name in bad faith (see the discussion below), the respondent cannot for that reason be found to have made a bona fide offering of goods or services.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, bad faith may be found where the Respondent knew or should have known of the registration and use of the Complainant’s Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale,WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name long after the Complainant first used its trademark registration for the YAMAHA Mark.
The longstanding and public use of the YAMAHA Mark would make it disingenuous for the Respondent to claim that he was unaware that the registration of the Disputed Domain Name would violate the Complainant’s rights. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks). Thus, the timing of the Respondent’s registration and use of the Disputed Domain Name indicates that it was made in bad faith.
Second, the Panel finds that the Respondent used the Disputed Domain Name in bad faith by attempting 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 YAMAHA Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s registration and use of the Disputed Domain Name indicates that such registration and use was done for the specific purpose of trading on the name and reputation of the Complainant and its well-known YAMAHA Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law”.).
Moreover, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith registration and use. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the Complainant’s YAMAHA trademark.
Third, the Panel finds that the Respondent’s bad faith can also be inferred from its lack of reply to the cease and desist letter sent by the Complainant’s counsel prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210.
Finally, it appears that the Respondent registered the Disputed Domain Name for the purpose of selling it -- either to the Complainant or another individual visiting the site -- for valuable consideration far in excess of the out-of-pocket costs directly related to the Disputed Domain Name. Such conduct supports a finding of bad faith. See Eastman Sporto Group LLC v. Jim and Kenny,WIPO Case No. D2009-1688 (finding bad faith when the Respondent offered to sell the disputed domain name for an amount far in excess of its costs of registration).
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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.
Lynda M. Braun
Sole Panelist
Date: August 27, 2016
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