WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yamaha Motor Corporation, USA v. Danny Crescenzi

Case No. D2005-1269

1. The Parties

The Complainant is Yamaha Motor Corporation, USA, Kennesaw, Georgia, United States of America, represented by Dinsmore & Shohl LLP, United States of America.

The Respondent is Danny Crescenzi, Lothian, Maryland, United States of America.

2. The Domain Name and Registrar

The disputed domain name <yamahagolfcart.com> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2005. On December 8, 2005, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On December 8, 2005, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2006.

The Center appointed Bruce E. O’Connor as the Sole Panelist in this matter on January 23, 2006. 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

Given the default of the Respondent, the Panel is entitled to and does draw the inference from that default that all facts alleged in the Complaint are true. See paragraph 14(b) of the Rules.

Yamaha Motor Corporation, USA (“Complainant”) is a wholly owned subsidiary of Yamaha Motor Co., Ltd. of Japan.

The Panel on its own has discovered from the public records of the United States Patent and Trademark Office that the U.S Trademark Registrations cited in the Complaint were assigned from the previous record owner, Yamaha Corporation (whose name is printed on the registration copies of record), to Yamaha Motor Co., Ltd. and that the assignment was recorded on the September 21, 2005. Thus, the Panel will accept that Yamaha Motor Co., Ltd. (“Yamaha parent”) is the owner of these registrations.¹

Of particular interest is U.S. Trademark Registration No. 2,017,999, registered November 19, 1996, and achieving “incontestable” status under the provisions of the U.S. Trademark Act. This registration covers, inter alia, golf carts and structural parts therefor.

The effective date of this registration, November 19, 1996, predates the registration on March 22, 2000 of <yamahagolfcart.com>, the domain name in dispute.

The Panel assumes that Complainant is licensed to use the trademark YAMAHA that is the subject of U.S. Trademark Registration No. 2,017,999, by reason of its relationship as a wholly owned subsidiary of Yamaha parent.

Respondent, through his wholly owned company Metro Golf Cart Rentals, Sales & Service, Inc., from a time unspecified in the Complaint, has been selling golf carts. On March 17, 2003, Respondent’s company and another company purportedly related to Complainant (“Yamaha Golf-Car”) entered into a “Yamaha Golf-Car Company Private Car Service Agreement (the “Agreement”), which entitled Respondent’s company to sell and service golf cars and parts and accessories therefor².

The Agreement included the provision (Section 4.2) that “Dealer agrees that it shall not use or incorporate, in whole or in part, any of Yamaha’s trademarks in any identifier to the public, such as, but not limited to, a name, trade name, or domain name, without the express written permission of Yamaha. Yamaha retains absolute discretion with respect to approving such use”.

Over a period of September 23, 2003 to November 18, 2003, counsel for Complainant communicated by letter, e-mail and telephone with Respondent and his counsel, pointing out Complainant’s trademark rights in YAMAHA. Counsel offered to permit Respondent to continue to own and use the domain name in dispute, by entering into an Addendum to the Agreement, which was to provide that Respondent and his company limit use of the domain name in dispute to the sales and service of Yamaha golf carts only and which would require Respondent to transfer the domain name in dispute to Complainant if and when the relationship between Respondent’s company and Complainant terminated.

On January 21, 2004, counsel for Respondent agreed verbally to the first proviso but not to the second.

On February 23, 2005, counsel for Complainant sent a follow-up letter to counsel for Respondent. Apparently, a user visiting a website using the domain name in dispute was being redirected to another website operated by Respondent’s company, which offered not only YAMAHA golf carts but also golf carts made by another company. Counsel for Respondent repeated the demand made for limitation of use of the domain name in dispute to websites offering only YAMAHA golf carts and transfer of the domain name in dispute to Complainant upon termination of the Agreement.

On March 18, 2005, the Agreement terminated.

Over a period of May 11, 2005 to August 24, 2005, counsel for Complainant demanded transfer of the domain name in dispute. Although a representative of Respondent’s company agreed verbally to the transfer on September 28, 2005, no transfer has yet occurred.

At the present time, the domain name in dispute is not in use, as verified by the Panel on January 29, 2006.

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name in dispute is confusingly similar to Complainant’s trademark YAMAHA.

Complainant contends that registration of the domain name in dispute was unauthorized, and that continued use of the domain name in dispute without the Addendum to the Agreement would be inconsistent with Yamaha’s instructions, and that Respondent has not adequately responded to Complainant’s concerns.

Complainant contends that Respondent has no rights or legitimate interest in the domain name in dispute because Respondent is no longer in a business relationship with Complainant, and has failed to develop the domain name in dispute or any website since his company’s business relationship with Complainant terminated.

Complainant contends that the domain name was registered and is being used in bad faith by Respondent, pointing out that Respondent made no inquiries of Complainant as to whether he was authorized to register or use the domain name in dispute and registered and used the domain name in dispute without prior authorization from Complainant.

As further evidence of bad faith, Complainant contends that Respondent (through his company) used the domain name in dispute to sell products competitive with Complainant’s products, failed to transfer the domain name in dispute to Complainant after his company’s business relationship with Complainant terminated, and used the domain name in dispute subsequent to the termination of that business relationship. Complainant, in a contradictory statement, also contends that Respondent failed to develop or make any use of the domain name in dispute after termination of the businesses relationship.

Finally, Complainant cites three previous WIPO decisions that it believes are on point.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph (4)(a) of the Uniform Domain Name Dispute Resolution Policy (“Policy”) states that the domain name can be transferred where Complainant has established the following:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established its rights in the trademark YAMAHA.

The Panel also finds that the domain name in dispute is confusingly similar to the trademark YAMAHA. Simply adding a generic and non distinctive word to a trademark, as well as a top-level domain, does not result in a combination which avoids confusion. Particularly is this the case where the generic and non distinctive word (“golf cart”) is one of the goods sold under the trademark and covered by a corresponding U.S. Trademark Registration.

The Panel finds that Complainant has met its burden of proof under Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The record is devoid of what transpired with the domain name in dispute from the time of its registration to the time of the Agreement (March 17, 2003). The Panel could speculate that Respondent registered the domain name in dispute with the knowledge or encouragement of Complainant or one of Complainant’s related companies, to establish a basis for an introduction or expansion of Complainant’s golf cart business in the United States of America. But, the plain text of the Agreement and especially Section 4.2 quoted above makes its clear that neither Respondent nor his company had any rights in a domain name including the trademark YAMAHA, and that Agreement accordingly extinguished any bona fide offering of goods or services by Respondent or his company using the domain name in dispute. The Panel also notes that the registration of the domain name in dispute was well after the registration by Complainant of the trademark YAMAHA for the very goods that are included in the domain name in dispute. In the absence of any evidence from Respondent, the Panel finds that the circumstances of paragraph 4(c)(i) are not met.

Regarding paragraph 4(c)(ii), there is no evidence in the record that Respondent has ever been known by the domain name in dispute. Accordingly, the circumstances of paragraph 4(c)(ii) are not found.

Regarding paragraph 4(c)(iii), the Respondent and his company have been engaged in a commercial use of the domain name in dispute, and the products at the website operated by Respondent’s company were clearly and unquestionable being offered for commercial gain. Accordingly, the circumstances of paragraph 4(c)(iii) are not found.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four circumstances in particular, without limitation, that demonstrate evidence of the registration and use of a domain name in bad faith. The circumstances of paragraph 4(b)(iv) appear to be pertinent:

(iii) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

The factor here that is persuasive to the Panel is the offering for sale at the website operated by Respondent’s company of golf carts made or distributed by companies other than the Complainant and its related companies. There can be no clearer evidence of intent to create a likelihood of confusion by using the trademark of one company to sell the products of another. Particularly is this so, where the Complainant, in the Agreement, expressly prohibited the Respondent and his company from using the trademark YAMAHA in any domain name without the permission of Complainant, and expressly requested the Complainant, in correspondence and by email and telephonic communications, to restrict use of the domain name in dispute to the sale of YAMAHA golf carts.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <yamahagolfcart.com> be transferred to the Complainant.

Bruce E. O’Connor
Sole Panelist

Dated: February 6, 2006

¹ The Panel cautions counsel for Complainant to adhere to the standards for evidence to be introduced in any judicial or quasi-judicial proceeding.

² The Panel takes notice that modern companies operate through many different corporate entities and assumes that the Yamaha parent and the other Yamaha companies mentioned in the Complaint have the necessary intercorporate agreements or relationships that permit them to be treated as a single entity for the purpose of this proceeding.