The Complainant is Yamaha Motor Corporation, U.S.A., United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, L.L.P., United States.
The Respondent is Vladimir Vankov, Bulgaria.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2021. On July 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 28, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 28, 2021.
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 July 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2021.
The Center appointed Andrew F. Christie as the sole panelist in this matter on September 1, 2021. 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 BackgroundThe Complainant, founded in 1977, is a wholly owned subsidiary of Yamaha Motor Company, Ltd., which is a Japanese corporation and the owner of the YAMAHA trademark. Since 1977, the Complainant has been authorized to use, and has continuously used, the YAMAHA trademark in commerce in the United States to promote and sell Yamaha motorized products, including but not limited to motorcycles, snowmobiles, golf carts, 4-wheel ATVs and watercrafts. As of September 2021, the Complainant’s parent company has net sales of over JPY 1,400 billion, with over 65% of sales revenues being derived from motorsports products.
The Complainant’s parent company is the owner of numerous trademark registrations throughout the world, including United States Trademark Registration No. 688208 for the word trademark YAMAHA (registered on November 17, 1959). The Complainant owns and uses multiple domain names that incorporate the YAMAHA trademark, including
The disputed domain name was registered on May 18, 2021. At the time the Complaint was filed, the disputed domain name did not resolve to an active website. The Complainant has provided a screenshot of a mail exchange (“MX”) record lookup, taken on July 1, 2021, showing that email servers were configured for the disputed domain name. The Complainant sent an abuse complaint letter to the Registrar on July 14, 2021, but has not stated if it received any response to it.
5. Parties’ Contentions A. ComplainantThe Complainant contends that it has standing to bring this proceeding because it is the exclusive distributor in the United States of products bearing the YAMAHA trademark.
The Complainant contends that the disputed domain name is confusingly similar to the trademark in which it has rights because: (i) the disputed domain name is comprised of a clearly intentional misspelling of YAMAHA, in which the letter “m” is replaced with the letters “r” and “n”, because the lower case forms of these letters (“rn”) gives the appearance of a lower case letter “m”; (ii) the Respondent has combined this misspelling with the term “motor”, which is directly related to the Complainant’s products offered under the YAMAHA trademark; (iii) a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant trademark; and (iv) the addition of a term to a trademark, and in particular to a well-known trademark, in a domain name does not prevent a finding of confusing similarity under the first element.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondent is not commonly known by the disputed domain name; (ii) the Complainant has not authorized the Respondent to use the Complainant’s famous and world-renowned YAMAHA trademark, and the Respondent is not a licensee of the YAMAHA trademark; (iii) the disputed domain name is undoubtedly confusingly similar to the Complainant’s well-known YAMAHA trademark, and the Respondent is not actively using it; (iv) it is entirely plausible that, because the disputed domain name is currently associated with email servers, it was the Respondent’s intention to confuse or defraud people via a phishing scam associated with the disputed domain name; (v) as the disputed domain name is nearly identical to the Complainant’s
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Complainant’s YAMAHA trademark has been in use for at least the past 66 years and is well-known worldwide as belonging exclusively to the Complainant and its parent company; (ii) the Respondent has no relationship with the Complainant or the YAMAHA trademark; (iii) given the worldwide fame associated with the YAMAHA trademark, there is no explanation for the Respondent’s choice to register the disputed domain name, other than to trade off the goodwill and reputation of the Complainant’s trademark or otherwise to create a false association with the Complainant; (iv) the fact that the disputed domain name does not resolve to an active website and is being passively held does not obviate a finding of bad faith, particularly as the Complainant’s YAMAHA trademark has a strong reputation and is widely known worldwide; (v) a simple Internet search for YAMAHA or YAMAHA MOTOR would have alerted the Respondent to the Complainant’s prior existing rights in the YAMAHA trademark; (vi) the Respondent has made no use of the disputed domain name since registering it, but has associated email servers with it, the purpose of which more likely than not is to facilitate a phishing scam and/or a Business Email Compromise (“BEC”) attack; and (vii) the Respondent knew of, and specifically targeted, the Complainant’s YAMAHA trademark, as evidenced by the purposeful misspelling of “yamaha” wherein the combination of “rn” in “yarnaha” is meant visually to appear to be the letter “m” so as to look like “yamaha” which, when combined with “motor” (being a term intimately related to the Complainant’s business), has the overall effect of appearing to be the Complainant’s own
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Complainant’s StandingThe Complainant is the wholly owned subsidiary of the owner of the trademark on which the Complaint is based, and is an authorized user of that trademark. As explained in section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a trademark owner’s affiliate, such as a subsidiary, is considered to have rights in a trademark under the UDRP for the purposes of standing to file a complaint. Accordingly, the Panel finds that the Complainant has standing to file this Complaint.
B. Identical or Confusingly SimilarOnce the generic Top-Level Domain (“gTLD”) “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark YAMAHA, with the letter “m” replaced by the letters “r” and “n”, followed by a hyphen and the word “motor”. The resulting letter substitution, “rn”, results in a strong visual resemblance to the letter “m”. It is likely that a significant proportion of Internet users will not notice the letter substitution, and so will read the disputed domain name as being the Complainant’s trademark followed by a hyphen and the word “motor”.
In any case, it is clear that this letter substitution is an intentional misspelling of the Complainant’s trademark. The misspelling does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s word trademark. As provided in section 1.9 of the WIPO Overview 3.0, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
C. Rights or Legitimate InterestsThe Respondent is not a licensee of the Complainant, is not otherwise affiliated with the Complainant, and has not been authorized by the Complainant to use its YAMAHA trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name.
The evidence provided by the Complainant shows that the disputed domain name does not resolve to an active website but is configured with MX records that would allow it to be used to send emails that Internet users could well assume, incorrectly, were sent by the Complainant. Given the confusing similarity of the disputed domain name to the Complainant’s trademark and the absence of any relationship between the Respondent and the Complainant, sending emails using the disputed domain name would be neither a bona fide use nor a legitimate noncommercial or fair use of the disputed domain name. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad FaithThe disputed domain name was registered many decades after the Complainant first registered its YAMAHA trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s trademark, given that the trademark has been heavily used and that the disputed domain name contains letter substitutions intended to make the disputed domain name appear to be the trademark.
The fact that it is not clear whether the Respondent has used the disputed domain name does not preclude a finding of bad faith. As section 3.3 of the WIPO Overview 3.0 explains, since inception of the UDRP panelists have found that the non-use of a domain name does not prevent a finding of use in bad faith under the doctrine of passive holding. The factors that panels have considered relevant in determining if a passive holding of a domain name amounts to use in bad faith include the degree of distinctiveness or reputation of the complainant’s mark, the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good faith use, and the implausibility of any good faith use to which the domain name might be put. In this case, the Complainant’s YAMAHA trademark has a very high degree of distinctiveness and reputation, the Respondent has not provided any evidence of actual or contemplated good faith use (indeed, has not submitted any response), and the Panel is unable to conceive of a realistic good faith use to which the Respondent could put the disputed domain name.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
7. DecisionFor 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,
Andrew F. Christie
Sole Panelist
Date: September 15, 2021