The Complainant is Yamaha Motor Corporation, U.S.A. of Kennesaw, Georgia, United States of America (“USA” or “US”), represented by Nelson Mullins Riley & Scarborough, L.L.P., USA.
The Respondent is Domain Admin, Hush Whois Protection Ltd. of Providence, Mahe, Seychelles. 2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH dba (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2018. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 21, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. On June 27, 2018, the Complainant filed an amended Complaint with the Center.
The Center verified that the Complaint, together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2018.
The Center appointed David Stone as the sole panelist in this matter on July 31, 2018. 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 company (founded in 1977) incorporated in the USA and is a wholly owned subsidiary of Yamaha Motor Company Ltd, trading as Yamaha Hatsudoki Kabushiki Kaisa, a company incorporated in Japan (“the Complainant’s Parent”).
The Complainant’s Parent began making motorcycles in Japan under the Yamaha brand as early as 1995. Since its founding in 1977, the Complainant has been authorised to and has used the YAMAHA trade marks. The Complainant’s Parent is the registered owner of a large number of active trade marks comprising the wording “yamaha”, in the USA and elsewhere. These include the following US registrations (the “YAMAHA Trade Marks”):
- YAMAHA: US registration No. 688208, registered on November 17, 1959 in Nice class 12;
- YAMAHA: US registration No. 866762, registered on March 18, 1969 in Nice classes 7 and 12;
- YAMAHA: US registration No. 2017999, registered on November 19, 1996 in Nice class 12; and
- YAMAHA: US registration No. 3889246, registered on December 14, 2010 in Nice classes 4, 7 and 12.
The Complainant is the holder of many active domain names containing the YAMAHA Trade Marks. These domain names include the following:
- registered on January 30, 1997;
- registered on February 19, 2004; and
- registered on December 17, 2001.
Each of the above domain names resolves to the Complainant’s website, through which the Complainant advertises and promotes its products, including, but not limited to, motorcycles, snowmobiles, golf carts,
4-wheel ATVs, and watercraft.
The disputed domain was registered on or about February 13, 2017. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain is either identical or confusingly similar to the YAMAHA Trade Marks, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
First, the Complainant contends that the disputed domain is identical or confusingly similar in that it incorporates, entirely, the YAMAHA Trade Marks. The Complainant maintains that it has been using the YAMAHA Trade Marks for over 40 years and that the mark is a widely known mark (see Yamaha Motor Corporation, USA v. Gioacchino Zerbo,WIPO Case No. D2007-1879). The Complaint notes that the presence of the generic Top-Level Domain (“gTLD”) “.com” has no distinguishing effect and should be ignored when comparing a domain name. The Complainant argues that the addition of descriptive or generic words, such as “motors”, to the YAMAHA Trade Marks in the disputed domain name does not avoid confusing similarity, especially where the additional word relates to the goods for which the mark is used.
Second, the Complainant asserts that the Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not received any permission from the Complainant to register the disputed domain name. There is no evidence that the Respondent is or has been commonly known by the disputed domain name or the YAMAHA Trade Marks. To the best of the Complainant’s knowledge, the Respondent has not made any preparations to use the disputed domain name to provide a bona fide offering of goods or services or for any other legitimate non-commercial purpose. In fact, the disputed domain name resolves to a parked website displaying links to sponsored advertisements, some of which relate to the Complainant’s competitors’ goods. The disputed domain name does not consist solely of dictionary or common words or phrases that support pay-per-click links. The Complainant maintains that such usage is an intentional effort to divert Internet traffic searching for the Complainant and trades on the fame and reputation of the YAMAHA Trade Marks. Furthermore, the Complainant notes that the website to which the disputed domain name resolves is a website that has, in the past, attempted to distribute adware to Internet users’ computers. For those reasons, the Complainant argues, the Respondent has no rights or legitimate interests in the disputed domain name.
Third, the Complainant contends that the Respondent registered, and is using, the disputed domain name in bad faith. The Complainant reiterates that the disputed domain name is virtually identical to the Complainant's YAMAHA Trade Marks and the Complainant’s domain name . The Complainant reiterates that the disputed domain name is used to divert Internet traffic to websites that contain links for sponsored advertisements, some of which relate to the Complainant’s competitors. The Complainant suggests that the YAMAHA Trade Marks were intentionally chosen to prey on the Complainant’s customers searching for the Complainant’s widely-known Yamaha products. Furthermore, the Complainant argues that the disputed domain name creates a likelihood that Internet users will mistakenly believe the disputed domain name is connected or associated with the Complainant and that consumers will, at minimum, be initially confused as to the website’s association with or sponsorship by the Complainant. The Complainant maintains that such initial confusion is sufficient to prove bad faith.
The Complainant also points out that using a domain name for purposes other than hosting a website may constitute bad faith. The Complainant reiterates that the disputed domain name has resolved to a website that attempts to distribute adware, which is deceptive and thus constitutes malicious conduct sufficient to show that the disputed domain name has been registered and used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has standing to bring proceedings, as an exclusive distributor in the USA of products bearing the YAMAHA Trade Marks (see Group Televisa, S.A., Televisa S.A. de C.V., Estrategia Televisa S.A. de C.V. Videoserpel Ltd. V Party Night Inc., a/k/a Peter Carrington,WIPO Case No. D2003-0796) and as a wholly owned subsidiary of the owner of the YAMAHA Trade Marks (see Kao Brands Company, John Frieda, John Frieda Professional Hair Care Inc. v. Evgeniy Sechin,WIPO Case No. D2010-2247). Paragraph 4(a)(i) does not require the Complaint to be the owner of the mark. Therefore, for the present purposes, the Complainant has rights in the YAMAHA Trade Marks.
The presence of the gTLD “.com” is a requirement of registration and does not serve to distinguish a trade mark from a domain name. The disputed domain name is therefore confusingly similar to the YAMAHA Trade Marks. The addition of the word “motors” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” The Panel therefore finds that the condition in paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) as an individual, business or other organisation, the Respondent has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent has been making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Respondent is commonly known by the disputed domain name. Furthermore, intentionally trading on the complainant’s YAMAHA Trade Marks is not bona fide use; see Dial-A-Mattress Operating Corp. v. N, Inc.,WIPO Case No. D2001-0240 and Madonna Ciccone p/k/a Madonna v Dan Parisi and “M”,WIPO Case No. D2000-0847.
The Complainant has not authorised the Respondent to make any use of the disputed domain name, which is confusingly similar to the YAMAHA Trade Marks. This is therefore prima facie evidence that the Respondent has no rights in the disputed domain name. Where there is a prima facie case, the onus is on the Respondent to adduce evidence in rebuttal. By failing to submit a response to this Complaint, the Respondent has failed to rebut this prima facie case, see Spencer Douglass, MGA v Bail Yes Bonding,WIPO Case No. D2004-0261.
The Panel therefore finds that the Complainant has satisfied the condition in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith can be defined as the intention to register and use a domain name in order to:
(i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit;
(ii) prevent the trade mark owner from registering its trade mark in a domain name;
(iii) disrupt the business of a competitor; or
(iv) divert Internet traffic for commercial gain.
The unauthorised use of the YAMAHA Trade Marks is clearly designed to disrupt the Complainant’s business and to mislead and divert Internet traffic for commercial gain. The addition of the word “motors” in the disputed domain name, rather than being a distinguishing feature, creates a specific link to the goods offered by the Complainant thereby increasing the likelihood of confusion that the website at the disputed domain name is associated or sponsored by the Complainant. In the absence of bona fide use of the disputed domain name or any explanation of its intent from the Respondent, it is difficult to see how the registration and use of the disputed domain name can have been in anything other than bad faith.
Therefore, the Panel concludes that the Complainant has satisfied the condition in 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.
David Stone
Sole Panelist
Date: August 9, 2018
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