Complainant is Yamaha Motor Corporation, U.S.A., United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, LLP, United States.
Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Lisa Ibarra, “Holiday Inn Greenbelt”, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2021. On November 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 19, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 19, 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 Respondent of the Complaint, and the proceedings commenced on November 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 13, 2021.
The Center appointed Richard G. Lyon as the sole panelist in this matter on December 17, 2021. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 Panel finds that the following facts have been duly supported by documentary evidence submitted with the Complaint.
Complainant is a wholly owned subsidiary of Yamaha Motor Company, Ltd., a Japanese corporation that makes and sells motorcycles, all-terrain vehicles, and similar products worldwide, directly and through subsidiaries and affiliates. The group’s 2021 sales of motorsport products exceeded JPY 900 million. The Japanese parent company owns many trademarks around the world that include as their dominant feature the word “Yamaha” and has used them for decades to promote its products. The parent company has authorized Complainant, its subsidiary, to use and enforce its marks, among them:
- United States Trademark Registration No. 2017999 for YAMAHA, registered on November 19, 1996;
- United States Trademark Registration No. 0688208 for YAMAHA, registered on November 17, 1959; and
- United States Trademark Registration No. 0866762 for YAMAHA, registered on March 18, 1969.
Respondent registered the disputed domain name on October 18, 2021. The following day Respondent received or intercepted an email from one of Complainant’s customers and replied with an email that attempted to divert the customer’s payment from Complainant to Respondent. According to a screenshot submitted with the Complaint Respondent subsequently used the disputed domain name for a pay-per-click website that included links to websites that apparently offered products competitive with those of Complainant; that is the website the Panel encountered when he entered the disputed domain name into his Internet browser.
5. Parties’ Contentions A. ComplainantComplainant contends that the disputed domain name is confusingly similar to its many YAMAHA marks, that Respondent has no right or legitimate interest to the disputed domain name, and that Respondent registered and has used the disputed domain name in bad faith. Certain particulars are discussed in Section 6 below. Complainant asks that the Panel order transfer of the disputed domain name.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsThis is, as Complainant asserts, a typosquatting case. The addition of the second “m” to Complainant’s well-known YAMAHA mark is “a common, obvious, or intentional misspelling of a trademark”. The addition to the term “-motor” does not prevent a finding of confusing similarity. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8 and 1.9. In addition to meeting the criteria necessary to satisfy paragraph 4(a)(i) of the Policy 1 a close imitation of the mark betrays both knowledge of Complainant and its mark and an intention to take advantage of the mark’s value and renown, necessary elements of proof under Policy paragraph 4(a)(ii) and 4(a)(iii). Ibid. (“Under the second and third elements [of the Policy], panels will normally find that employing a misspelling in this way signals an intention on the part of the respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the complainant.”); see also, e.g., Simon & Schuster, Inc. v. Domain Administrator Limited, WIPO Case No. D2008-0278 (“Typosquatting is virtually per se registration and use in bad faith.”)
Here Complainant has furnished clear proof of Respondent’s bad faith activities and lack of a right or legitimate interest in the disputed domain name. There is nothing legitimate about the two uses demonstrated by Complainant, and Respondent has produced no evidence to the contrary. Use of the disputed domain name for an attempted business email compromise (BEC), as documented by Complainant2 is obvious bad faith. As Complainant contends, the examples of bad faith in paragraph 4(b) of the Policy are not exclusive3 and use for deception or possible criminal activity constitutes bad faith under almost any definition of the term. As one challenged activity occurred the day after registration of the disputed domain name, the Panel may - and does - infer bad faith in registration.
Complainant has proven each element of paragraph 4(a) of the Policy.
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
Richard G. Lyon
Sole Panelist
Date: December 27, 2021
1 This conclusion is not altered by the fact that a subsidiary is proceeding as Complainant based upon a mark owned by its parent. See WIPO Overview 3.0, section 1.4; Yamaha Motor Corporation, U.S.A. v. Domain Admin, Hush Whois Protection Ltd.,WIPO Case No. D2018-1359.
2 Amended Complaint, Annex 10.
3 Compare Valero Energy Corporation and Valero Marketing and Supply Company v. Rodney Ballard,WIPO Case No. D2017-0086, in which use of a domain name for a phishing scheme was found to be bad faith.