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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yamaha Motor Corporation, USA v. Gioacchino Zerbo

Case No. D2007-1879

1. The Parties

Complainant is Yamaha Motor Corporation, of California, United States of America, represented by Dinsmore & Shohl LLP, of United States of America.

Respondent is Gioacchino Zerbo, of Senna Comasco, Italy.

2. The Domain Name and Registrar

The disputed domain name <yamahagolfcars.com> is registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2007. On December 21, 2007, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On December 21, 2007, Dotster, Inc. transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on December 27, 2007. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on December 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2008. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2008.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on January 24, 2008.

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

All facts stated by Complainant have not been contested by Respondent as Respondent has not submitted a response to the Complaint. Complainant is a United States corporation that is a wholly-owned subsidiary of Yamaha Motor Co. Ltd., a Japanese corporation. Complainant owns several trademark registrations in the United States, such as:

The first of such registrations (No. 2,017,999) expressly includes in the specification of goods “golf carts and structural parts therefore”. Complainant also owns the domain names <yamaha-motor.com> and <yamahagolfcar.com>, among others.

Complainant sent on August 13, 2002 a letter to the registrant of the disputed domain name at that time, asserting its rights and demanding that the then registrant transfer the domain name to Complainant. The disputed domain name was subsequently transferred to another registrant, and Complainant sent a second, similar, letter to the then listed registrant on April 11, 2005. The disputed domain name was subsequently transferred to another registrant, and Complainant sent a third, similar, letter to the new registrant on November 5, 2007. All three Complainant’s letters have never been responded. Few weeks after the third letter, Complainant initiated these proceedings, on December 17, 2007, but, in the meanwhile, the disputed domain name had already been transferred again, this time to the current Respondent.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is conflusingly similar to Complainant’s registered trademark YAMAHA because the domain name consist of Complainant’s trademark with the addition of the generic expression “golf cars”.

Complainant also argues that Respondent has no rights or legitimate interests in the disputed domain name and that Respondent’s purchase, registration and use of the domain name constitutes bad faith and for all such reasons Complainant requests that the disputed domain name be transferred to it.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, Complainant must prove each of the following:

(i) that the domain name registered by Respondent is identical or confusingly similar to the trademarks or service marks in which Complainant has rights; and

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

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

A. Identical or Confusingly Similar

The trademark YAMAHA is a widely known trademark. When a respondent merely adds generic or descriptive terms to an otherwise distinctive and famous trademark, the domain name is to be considered confusingly similar to the registered trademark.

There are numerous WIPO decisions where it was found that the addition of generic terms does not serve to distinguish the domain name from the trademark, but rather, may reinforce the association of Complainant’s trademark with the domain name (see e.g. Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275).

Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s YAMAHA trademark and, thus, the requirement of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

Complainant has never authorized Respondent to make use of the trademark YAMAHA and there is no relationship between the parties. In addition, there is no evidentiary support that Respondent, as an individual, business, or other organization, has been commonly known by the domain name or that it is making a legitimate non-commercial or fair use of the domain name.

In fact, Respondent’s website currently under the disputed domain name only shows a “link farm”, i.e. it hosts a list of sponsored links and it does not present any business run by Respondent.

Respondent has not replied to the Complaint and has not presented any other evidence or elements to justify any rights or legitimate interest in connection with the disputed domain name. Therefore, the Panel has found no indication that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect to the disputed domain name pursuant to Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The mere addition of generic terms to Complainant’s trademark is a first evidence of bad faith as Respondent is clearly trying to lure Internet users which have an interest in Complainant’s activities. In this case it has been proven that Complainant is a manufacturer and seller of “golf cars”, and Respondent is apparently not, so there is no reasonable explanation why Respondent would need to register and use the disputed domain name.

Respondent’s intention to create confusion with Complainant’s activities can be also shown by the fact that Complainant operates the website “www.yamahagolfcar.com”, while the disputed domain name <yamahagolfcars.com>, that simply adds the letter “s” to Complainant’s domain name, is another indication of bad faith.

In this sense, there is little doubt that Respondent intended to earn profit from the confusion created in Internet users, which believe to be accessing Complainant’s website (in this regard, see Molmed S.p.A. v. Prof. Asif Ahmed, WIPO Case No. D2002-0177).

Respondent uses the recognition of Complainant’s trademark to earn profit from web traffic by attracting consumers interested in Complainant’s programs. This practice of misleading the consumers to believe they are accessing Complainant’s site in order to make commercial gain configures bad faith, as decided, among others, in the cases Tia Carrere v. Steven Baxt, WIPO Case No. D2005-1072 and International Organization for Standardization v. International Supplier Operations Audit Services, WIPO Case No. D2002-0460.

The Panel also takes the view that using a widely known trademark without the prior consent of the trademark owner or licensee, in connection with any offering of goods or services, whether or not in direct competition with the trademark owner, is a clear indication of bad faith, as affirmed in other cases, such as AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 and Society for Human Resource Management v. Local Services ICN., WIPO Case No. D2004-0127. In fact, in this case the “link farm” operated by Respondent under the disputed domain name shows Respondent’s bad faith in redirecting users to other sites.

Finally, it should be noted that Respondent has also been the respondent party in three other domain name disputed procedures before the Center, and in all such cases the disputed domain names were transferred to the complainant, which indicates that Respondent is an habitual infringer of third parties’ rights through the registration of domain names (see Microsoft Corporation v. Gioacchino Zerbo, WIPO Case No. D2005-0644; Whirlpool Properties, Inc. and Whirlpool Corporation v. Gioacchino Zerbo, WIPO Case No. D2006-0549 and Premier Farnell PLC v. Gioacchino Zerbo, WIPO Case No. D2007-1208). The pattern of a cybersquatting conduct is also an indication of bad faith as decided in several cases, as e.g. Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560.

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 <yamahagolfcars.com> be transferred to Complainant.

Gabriel F. Leonardos
Sole Panelist

Dated: February 7, 2008