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 Domain Admin, Whois protection, this company does not own this domain name s.r.o.， Czech Republic / Hulmiho Ukolen, Poste restante, Finland.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2021. On July 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 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 August 2, 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 August 3, 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 August 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2021.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on September 2, 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 is Yamaha Motor Corporation, U.S.A., subsidiary of the Japanese corporation Yamaha Motor Company, Ltd. and founded in 1977 to promote and sell Yamaha motorized products, including but not limited to, motorcycles, snowmobiles, golf carts, 4-wheel ATVs, and watercrafts. In 1987, the Complainant formed Yamaha Motor Finance Corporation, U.S.A. to provide banking and financial services in the United States to support its customers.
The Complainant owns several trademark registrations in many jurisdictions for the trademark YAMAHA, including the United States trademark registration no. 688208, registered on November 17, 1959, in class 19.
The Complainant also owns and uses several domain names comprising the mark YAMAHA, including
The disputed domain name was registered on June 22, 2017, and resolves to a pay-per-click (“PPC”) website featuring sponsored advertisement links.
5. Parties’ Contentions A. ComplainantThe Complainant argues that the Respondent registered the disputed domain name without its authorization and that the disputed domain name combines the well-known trademark YAMAHA with the terms “motor” and “finance”, two words that are directly related to the Complainant’s products and services. The Complainant also says that the disputed domain name is virtually identical to the corporate name of its subsidiary, Yamaha Motor Finance Corporation, U.S.A.
The Complainant says that its parent company began making motorcycles in Japan under the YAMAHA mark at least as early as 1955 and that YAMAHA has been used worldwide for decades and is famous.
The Complainant alleges that the addition of the terms “motor” and “finance” to the disputed domain name is not sufficient to avoid the confusing similarity with the Complainant’s trademark.
The Complainant mentions that the Respondent was not authorized to use the mark YAMAHA and has no agreement, license or affiliation with the Complainant, and the Respondent is not commonly known by the disputed domain name.
In addition, the Complainant argues that the disputed domain name was registered with the intention to create a likelihood of confusion with the Complainant’s trademark, since it resolves to a PPC webpage containing sponsored links to third-parties websites related to car insurance and car loan services, which confirms the Respondent’s lack of rights or legitimate interests in the disputed domain name, as well as its registration and use in bad faith.
According to the Complainant, the Respondent primary purpose for registering the disputed domain name was to sell it for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. The Complainant argues that the Respondent explicitly offered the disputed domain name for sale, as per the evidence showed in the Complaint.
Finally, the Complainant requests the transfer of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAs per paragraph 4(a) of the Policy, the Complainant must prove that:
(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.
A. Identical or Confusingly SimilarThe evidence demonstrates that the Complainant is the owner of several registrations for the well-known trademark YAMAHA.
The disputed domain name incorporates the Complainant’s trademark YAMAHA in its entirety. Indeed, the addition of terms “motor” and “finance” does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. In this regard, it is the general view among UDRP panels that the addition of merely dictionary, descriptive or geographical words to a trademark in a domain name does not prevent a finding of confusing similarity under the first element of the UDRP (for example, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd,WIPO Case No. D2001-0110).
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate InterestsThere is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the Complainant’s trademark YAMAHA.
There is no evidence that the Respondent is commonly known by the disputed domain name.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made 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. Instead, the Complainant showed evidence that the disputed domain name is being used to mislead Internet users to a PPC page with links redirecting users to services some of which compete with the Complainant, and the Respondent has failed to offer any goods or services on its website other than PPC links to third-party websites.
The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademark, does not correspond to a bona fide use of the disputed domain name under the Policy.
Moreover, noting the construction of the disputed domain name (i.e., virtually identical to the Complainant’s corporate name and incorporating the Complainant’s trademark entirely), the nature of the disputed domain name is such to carry a risk of implied affiliation that cannot confer rights or legitimate interests upon the Respondent. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithThe trademark YAMAHA is registered by the Complainant in several jurisdictions and has been used since a long time. The disputed domain name incorporates the Complainant’s trademark YAMAHA and the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant’s YAMAHA mark is distinctive, widely known, and has also been considered a highly reputed trademark in several jurisdictions around the world. Thus, a domain name that comprises such a well-known mark is suggestive of the registrant’s bad faith. In addition, the Panel notes that the disputed domain name includes terms “motor” and “finance”, which in this case may indeed serve as an additional evidence of the registration of the disputed domain name in bad faith, especially considering that the corporate name of the Complainant’s subsidiary is Yamaha Motor Finance Corporation, U.S.A., and that terms “motor” and “finance” are related to the Complainant’s well-known activities.
In addition to the above, the Complainant has provided evidence in the Complaint that the Respondent registered the disputed domain name with the clear intention of selling it for a high amount, which reinforces the bad faith finding. It is well established that seeking to profit from the sale of a confusingly similar domain name that incorporates a third party’s trademark demonstrates bad faith. See Luigi Lavazza S.p.A. v. Oleg Kinzyabulatov, Private Person, WIPO Case No. D2021-0999.
Therefore, the Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark by misleading Internet users to believe that its website belongs to or is associated with the Complainant.
Moreover, the Respondent has chosen not to respond to the Complainant’s allegations and also ignored the cease and desist letter sent by the Complainant on June 25, 2021.
According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610, “[t]he failure of the Respondent to respond to the Complaint further supports an inference of bad faith”.
The Panel finds that the Respondent’s attempt of taking undue advantage of the trademark YAMAHA for commercial gain as described in paragraph 4(b)(iv) of the Policy has been demonstrated.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., 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,
Mario Soerensen Garcia
Sole Panelist
Date: September 14, 2021