The Complainant is Yamaha Corporation, Japan, internally represented.
The Respondent is DropCatch.com, TurnCommerc Inc., United States of America (“United States”) / vinicius barbosa dos santos, Brazil.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2021. On December 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 December 10, 2022, 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 December 14, 2022.
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 January 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2022.
The Center appointed Antony Gold as the sole panelist in this matter on February 16, 2022. 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 a large manufacturer of musical instruments which are branded YAMAHA. As part of its activities, the Complainant has developed an extension to the Musical Instrument Digital Interface, generally known by its acronym of MIDI, which is branded as XG. In 2021, the Complainant’s YAMAHA brand was ranked 30th in a table of leading Japanese brands, with a brand value estimated at USD 1.48 billion.
The Complainant owns trade marks for both YAMAHA and XG, including United States Trade Mark, registration number 3,559,368, for YAMAHA, in multiple classes, registered on January 13, 2009, and United States Trade Mark, registration number 2,328,501, for XG (figurative), in classes 9 and 15, registered on March 14, 2000.
The disputed domain name was registered on February 20, 2021. As at the time of filing the Complaint, it resolved to a website hosting pornographic content. It currently resolves to a holding page containing a notice; “yamaha-xg.com is coming soon”1.
5. Parties’ Contentions A. ComplainantThe Complainant refers to its trade marks for YAMAHA and XG, examples of its registrations having been set out above, and says that, as the disputed domain name incorporates the entirety of these marks, the disputed domain name is identical or confusingly similar to trade marks in which it has rights.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no relation to the Complainant or its products or services, nor has it been authorized by it to use any of its trade marks. There is no information which would suggest that the Respondent is known by the name “Yamaha” or “Yamaha XG” nor, so far as the Complainant can establish, has the Respondent registered a trade mark for either of these terms.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Respondent would have been aware as at the date of registration of the disputed domain name of the Complainant’s rights in YAMAHA and XG. The Respondent has used the disputed domain name in order to resolve to an adult website that has no relation to the Complainant or its goods and services. The Respondent is dishonestly using the value of the Complainant’s marks in order to attract Internet users to its website.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsDealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission, as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has provided details of a number of the registered trade marks it owns for YAMAHA and XG, including the registrations in respect of which details have been provided above, which thereby establish its rights in these marks.
As a technical requirement of registration, the Top-Level Domain, that is “.com” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. The disputed domain name comprises the Complainant’s YAMAHA and XG marks in their entirety, separated by a hyphen. The fact that the Complainant’s XG mark is a figurative mark is immaterial for the purposes of the comparison under the first element; see section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Moreover, in this context, the hyphen is of no significance in that it serves simply to separate the Complainant’s two marks, as a space cannot be represented in the Domain Name System; see Averitt Express, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,
WIPO Case No. D2019-0778. In any event, this addition would not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s marks.
The Panel accordingly finds that the disputed domain name is confusingly similar to trade marks in which the Complainant has rights.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
Having regard to the established and widespread use of the Complainant’s trademarks, the disputed domain name has evidently been chosen by the Respondent in order to divert visitors to its website who are likely to have been searching for the Complainant’s website. The earlier use of the disputed domain name to resolve to a website containing pornographic images comprises neither a bona fide offering of goods and services, nor a legitimate noncommercial or fair use of it; see DFDS A/S v. qin xian sheng,
WIPO Case No. D2021-3708. Nor does the current use of the disputed domain name to resolve to a “coming soon” webpage provide the Respondent with rights or a legitimate interest in it; see, for example; Bayerische Motoren Werke AG v. Hao Luc,
WIPO Case No. D2018-1584. Furthermore, there is no evidence that the Respondent is commonly known by the disputed domain name.
The Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name and the burden of production shifts to the Respondent to show that it does; see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455. In the absence of any response from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
The incorporation within the disputed domain name of both the Complainant’s YAMAHA and XG marks, the YAMAHA mark, in particular, having distinctive character, provides a strong indication that the Respondent was aware of the Complainant and its mark as at the date of registration of the disputed domain name and registered it in order to take unfair advantage of the Complainant’s mark in some manner. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith; see, by way of example Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Almantas Kakareka and Hostmaster Oneandone, 1&1 Internet, Inc.,
WIPO Case No. D2007-1833. In the circumstances of this case, the Panel therefore finds the Respondent’s registration of the disputed domain name to have been in bad faith.
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out at paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. It is unclear whether the website to which the disputed domain name formerly resolved was commercial in nature. But, irrespective of whether that is the case, use of the disputed domain name in order to resolve to a pornographic website will tarnish the Complainant’s YAMAHA and XG marks and cause confusion to Internet users who are most likely seeking the Complainant’s products. It therefore comprises bad faith use; see Red Bull GmbH v. Whois Agent, Domain Protection Services, Inc. / esco escortlar, escort sitesi,
WIPO Case No. D2017-1639 and VIVENDI v. Guseva Svetlana,
WIPO Case No. D2018-2631.
The current use of the disputed domain name to resolve to a “coming soon” web page does not prevent a finding of bad faith under the doctrine of passive holding. In this respect, see section 3.3 of the WIPO Overview 3.0, which explains that; “[f]rom the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”. The factors that are typically considered when applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealment of its identity or its use of false contact details and (iv) the implausibility of any good faith use to which the domain name may be put.
Applying these factors to the current circumstances: (i) the Complainant’s YAMAHA mark, in particular, is distinctive and its brand value, as outlined above, suggests it has substantial repute (ii) the Respondent has not provided any evidence of actual or contemplated good faith use of the disputed domain name; (iii) the underlying registrant has sought to conceal its identity through use of a privacy service; and (iv) there is no plausible good faith use to which the disputed domain name could be put by the Respondent. The circumstances of the Respondent’s current non-use of the disputed domain name therefore support a finding of bad faith under the doctrine of passive holding.
The Panel accordingly finds that the disputed domain name was both 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
Antony Gold
Sole Panelist
Date: March 2, 2022
1 As explained at section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. The Panel has accordingly visited the website to which the disputed domain name resolves in order to establish the use which is presently being made of it.