The Complainant is Yamaha Motor Corporation, United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, L.L.P., United States.
The Respondent is Diana Buckner, United States, self-represented.
The disputed domain name <myyamaha.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2020. On April 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 15, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 April 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2020. The Response was filed with the Center on May 9, 2020.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 18, 2020. 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.
On May 19, 2020, the Complainant submitted a Supplemental Filing in reply to the Response, attaching two additional documents for consideration as part of the record.
The Complainant, established in 1977, is a California corporation headquartered in Cypress, California, United States. It is a wholly owned subsidiary of Yamaha Motor Company, Ltd. of Japan, trading as Yamaha Hatsudoki Kabushiki Kaisa. Since 1955, the Yamaha group has produced motorized products, which now include a range of motorcycles, snowmobiles, golf carts, all-terrain vehicles, and watercraft, as well as music and electronic products. The Complainant operates a website at “www.yamaha-motor.com” (since 1997) and holds several other domain names that incorporate the “Yamaha” name, including <yamahamotors.com> and <yamahamotorsports.com>. The group reported worldwide sales of JPY 1,673 billion in 2019, with more than USD 3.4 billion in North America.
The Complainant also operates a member benefits program under the name “My Yamaha”, where users are able to create a profile, build customized webpages, create and save accessorized Yamaha vehicles, coordinate directly with Yamaha dealers, store information regarding the member’s Yamaha vehicle(s), access owner’s manuals, enter sweepstakes, and otherwise interact with the Complainant.
The Complainant’s parent company holds numerous trademark registrations in the United States and other countries, including United States Trademark Registration Numbers 688208 (registered November 17, 1959), 866762 (registered March 18, 1969), and 2017999 (registered November 19, 1996) for YAMAHA as a standard character mark. (Some of these registrations note that “Yamaha” is Japanese for “mountain leaves”.) The Complainant is authorized to use these marks in its business.
The Complaint attaches a DomainIQ Historical WhoIs report showing that the Domain Name was initially registered by Road & Dirt Powerzone, LLC (a Tennessee limited liability company) on June 3, 2002. The Complaint also attaches a record from the Tennessee Secretary of State showing that this company was dissolved in August 2014. The DomainIQ Historical WhoIs report shows a change in registration of the Domain Name on May 11, 2015, from Road & Dirt Powerzone, LLC to the Respondent, along with a change to the current Registrar.
The Respondent states that Road & Dirt Powerzone, LLC was owned by three partners, herself and two others who are now deceased. It was a franchised Yamaha dealership “a/k/a My Yamaha”, located at 16 My Yamaha Drive, Crossville, Tennessee. The Respondent reports that the company used the Domain Name in its business from 2003 to 2013, and the Panel finds that this is supported by archived screenshots from the Internet Archive’s Wayback Machine. The Response recounts that in March 2013, she “consolidated” this business with that of another motorcycle dealer in Crossville, Tennessee, Scott Lansford, Inc., which is wholly owned by the Respondent’s life partner since 2009. The Respondent became vice-president of Scott Lansford, Inc. The Response attaches a purchase agreement between the companies (showing that the transaction was effected for the nominal price of USD 1) and a Yamaha Dealer Change Bulletin dated March 1, 2013, showing the dealer ownership transfer from Road & Dirt Powerzone, LLC “Dba My Yamaha” to Scott Lansford, Inc. “Dba Lansford Yamaha”. The Response also attaches a Yamaha Dealership Credit Application with the same date, showing that Scott Lansford, Inc. listed its website as “www.lansfordkawasaki.com”. The Respondent indicates that these documents were transmitted to the Complainant, which approved the dealership transfer.
The Complainant, with its supplemental filing, furnished two additional documents relating to the dealership transfer. The “Voluntary Termination of Yamaha Dealership Agreement” (“Voluntary Termination”) signed by the Respondent and dated April 11, 2013, listed “My Yamaha” as the dealer and signaled the “immediate” and “mutual” termination of the “relationship” with respect to “all products” and a mutual release from claims and liability (with certain exceptions such as monies then due to Yamaha). The “Operation Outline for Lansford Yamaha” (“Business Plan”), dated March 6, 2013, is signed by Mr. Lansford but names the Respondent as the author. It recounts that the “My Yamaha” dealership “has been established for ten years under the ownership of Diana Buckner. The proposal is a transfer of ownership to Scott Lansford, Inc. (owner of Lansford Kawasaki, Suzuki) in Crossville, TN”. Under the proposal, the Respondent would serve as the office manager of “Lansford Yamaha” at a new location. The section on “Marketing Plans” discusses online marketing but does not mention the Domain Name. Instead, it reports that “[t]he website LansfordYamaha.com has been secured for marketing purposes”.
The Panel notes that the domain name <lansfordyamaha.com> does not resolve to an active website at the time of this Decision. Screenshots archived by the Internet Archive’s Wayback Machine show that it was formerly used to redirect traffic to the Lansford website.
The Complaint attaches screenshots of the website associated with the Domain Name in August 2015, available from the Internet Archive’s Wayback Machine. The Domain Name redirected to the website at “www.lansfordkawasaki.com” (the “Lansford website”), which was headed “Lansford Kawasaki Suzuki Yamaha”. (The Panel finds similar archived screenshots as early as June 2013, shortly after the dealership transfer.) The Lansford website advertised new and used motorcycles, parts, and service for all three brands, as well as others that compete with the Complainant. At the time of this Decision, the Domain Name continues to redirect to the updated Lansford website, which displays the logos of the Complainant and of competitors Kawasaki and Suzuki. The website also advertises BMW, Can-Am, Dodge, Ford, Harley-Davidson, Honda, Polaris, and SSR Motorsports products, all of which compete with the Complainant’s YAMAHA-branded products.
In 2016 the Complainant attempted to purchase the Domain Name from the Respondent for USD 1,000, but the Respondent rejected the offer. Counsel for the Complainant sent the Respondent a cease-and-desist letter by courier on December 19, 2020, citing its trademark rights and demanding transfer of the Domain Name. The Respondent did not reply to this letter.
The Complainant states that it has standing to bring this proceeding because “it is the exclusive distributor in the United States of products bearing the YAMAHA Mark”. The Domain Name “is identical or at least confusingly similar to the YAMAHA Mark”.
The Complainant states that neither the Complainant nor its parent company have authorized the Respondent to use the YAMAHA mark in the Domain Name and asserts that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent cannot rely on the “fair use” defense of a distributor or reseller, because the Respondent is not a distributor and is allowing the Domain Name to be used by a dealer that does not limit use to the Complainant’s products. See Oki Data Americas, Inc. v. ASD, Inc. (“Oki Data”), WIPO Case No. D2001-0903. According to the Complainant, there is no record that it expressly authorized the former dealership to use the Domain Name, but any such authorization ended with the Voluntary Termination of the “My Yamaha” dealership in 2013. The Business Plan submitted for the new dealership owned by Scott Lansford, Inc., with which the Respondent is involved, did not mention the Domain Name but represented instead that a new domain name would be used to promote a YAMAHA dealership at a new location.
The Complainant infers bad faith from the facts that the Complainant’s YAMAHA mark is very well known, the string is identical to the name of the Complainant’s customer benefits program, and the Respondent has from the outset allowed the Domain Name to be used by a dealership that exploits the Domain Name to advertise competing products as well as the Complainant’s. The Complainant also cites as evidence of bad faith the fact that the Respondent has not replied to the Complainant’s cease-and-desist letter.
The Respondent, who is not represented by counsel, does not challenge the Complainant’s trademark rights.
The Respondent argues that there was no effective change in ownership or control of the Domain Name from the time it was created in 2002: “Whether registration has been in the name of Road & Dirt Powerzone, LLC, or the individual name of Diana Buckner, the ownership still resided with the same individual for the duration of the registration(s) of this domain name.”
The Respondent contends that the Complainant approved the Respondent’s use of the Domain Name before the transfer of the dealership in 2013 and then again approved the use of the Domain Name by the new dealer. The Respondent emphasizes that she received no money under the purchase agreement and denies bad faith, “actual or intended”. The Respondent’s argument seems to be that since the Complainant was aware of the Respondent’s trade name and corresponding Domain Name, and saw the domain name used by Scott Lansford, Inc. (<lansfordkawasaki.com>), listed in the dealership transfer documents, the Complainant effectively approved the redirection of the Domain Name to the Lansford website: “Both the domain name www.myyamaha.com and the domain name www.lansfordkawasaki.com have been previously approved to direct Yamaha customers to our business.”
The Respondent also states that the Domain Name was created at least a year before the Complainant launched its “My Yamaha” customer benefits program and was not the reason for choosing the Domain Name.
The Respondent suggests that this may be an appropriate case for a finding of reverse domain name hijacking.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Neither the Policy nor the Rules contemplate amendments to complaints or responses, or supplemental filings, except in response to a deficiency notification or if requested by the Center or the Panel. Supplemental filings are generally discouraged in the interest of conducting expeditious administrative proceedings. UDRP panels generally look for “exceptional circumstances”, such as the discovery of material new evidence or a compelling need to reply to unanticipated arguments, to justify potential delays and burdens on the parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.
In this case, the Complainant submitted a reply on March 19, 2020, to the statements in the Response concerning the continuity of ownership and control of the Domain Name and the Complainant’s supposed authorization of the use of the Domain Name after the transfer of the dealership to Scott Lansford, Inc., attaching two additional documents relating to that transfer. As the documentation relating to the dealership transfer do not expressly address the Domain Name, the Respondent’s arguments are not obvious and could not necessarily have been anticipated.
The Panel finds that the supplemental filing is relevant, contributes to a fuller understanding of material facts, and is not likely to entail prejudice to the parties or substantial delay. Accordingly, the Panel accepts the Complainant’s supplemental filing for consideration in this proceeding.
The Complainant is a wholly-owned subsidiary of the owner of registered YAMAHA trademarks, with exclusive rights to control the distribution of YAMAHA products in the United States, where the Respondent is located. As such, it has standing to pursue relief under the UDRP. See WIPO Overview 3.0, section 1.4. The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. The Domain Name incorporates the YAMAHA mark in its entirety and adds the dictionary word “my”, which is not distinguishing. The generic Top-Level Domain (“gTLD”) “is viewed as a standard registration requirement” and as such is normally disregarded under the first element of the Complaint. Id., section 1.11.2.
The Panel finds, therefore, that the Domain Name is confusingly similar to the Complainant’s registered YAMAHA mark, satisfying the first element of the Complaint.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it 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 or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial 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 Respondent was formerly a principal of a limited liability company, Road & Dirt Powerzone, LLC, that created the Domain Name and used it in its business, a Yamaha dealership called “My Yamaha”. The record does not include a trademark or trade name filing, but the 2013 dealership transfer documents list the dealership name as “My Yamaha”, and the website formerly associated with the Domain Name (the “former My Yahama website”) was headed “My Yamaha”. The Respondent’s former dealership was located at “16 My Yamaha Drive”. Thus, there is evidence that Road & Dirt Powerzone, LLC operated a business commonly known as “My Yamaha” and used the Domain Name in that business. See WIPO Overview 3.0, section 2.3 (“How would a respondent show that it is commonly known by the domain name or a name corresponding to the domain name?”)
But the assets of that business were sold in March 2013, and Road & Dirt Powerzone, LLC was formally dissolved in 2014. The Domain Name has been redirecting to the Lansford website since at least as early as June 2013, and there is no evidence of a business operating under the name “My Yamaha” since the dealership transfer. Based on this record, the Panel finds that when the Respondent changed the Domain Name registration to her own name on May 11, 2015, there was no existing or planned business called “My Yamaha” corresponding to the Domain Name. There does not appear to be such a business, or demonstrable plans for such a business, at the present time, which is the relevant moment for determining if the Respondent has rights or legitimate interests under the Policy, paragraph 4(c). See WIPO Overview 3.0, section 2.11.
Since May 11, 2015, when the Respondent became the registrant of the Domain Name, the Domain Name has been used commercially, but only to redirect users to the Lansford website, a multiproduct website that advertises and sells the products of competitors as well as those of the Complainant. As the Complainant observes, this violates the well-established Oki Data principles to the effect that resellers, distributors, and service providers may make nominative fair use of a manufacturer’s mark in a domain name under certain conditions (assuming this is not prohibited by prior agreement):
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
The Respondent alludes to the Complainant implicitly approving redirection of the Domain Name to the Lansford website, but as discussed further below in connection with the element of bad faith, there is not persuasive evidence of such authorization. What is clear is that the Lansford website does not satisfy the second factor of the Oki Data test, as it advertises sales and service for many products other than those related to the Complainants’ YAMAHA trademarked goods and services. See WIPO Overview 3.0, section 2.8.
This exemplifies the classic “bait and switch” tactic of using a well-known trademark to attract Internet users to a website that sells competing products. It is an issue of fundamental fairness. The trademark holder has the right to control the use of its trademark by resellers, distributors, and others to prevent such exploitation, if it chooses. It may do so by agreement, as noted in the WIPO Overview section cited above. As an example of how this is done, see the Yamaha Trademark Guidelines for dealers of certain Yamaha music products at “www.yamaha.com/paragon/trademarkguidelines”. The parties have not furnished any applicable dealer agreement in this proceeding with guidelines on using YAMAHA trademarks in domain names for motorcycle dealers, so the Panel assesses the Respondent’s claims to legitimacy solely on the basis of the Respondent’s conduct and the Oki Data criteria for fair use. The Panel concludes that the Respondent has not demonstrated rights or legitimate interests in the Domain Name, and that the Complainant prevails on the second element of the Complaint.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
This example of bad faith fits the circumstances here, where the Domain Name has been used since the Respondent registered it in 2015 to redirect Internet users to the Lansford website, advertising multiple products in competition with the Complainant.
The Respondent argues that this use of the Domain Name does not reflect bad faith, because “[b]oth the domain name www.myyamaha.com and the domain name www.lansfordkawasaki.com have been previously approved to direct Yamaha customers to our business”. However, the record does not support this assertion.
The Respondent has not shown that the Complainant authorized the Respondent’s use of the Domain Name by either Road & Dirt Powerzone, LLC or Scott Lansford, Inc. Neither party has submitted evidence about the Complainant’s general policy concerning dealers using the YAMAHA mark in domain names, and there is no evidence of a specific agreement or correspondence regarding this Domain Name. The Domain Name is not mentioned in the documents submitted with the Response or the supplemental filing that relate to the transfer of the dealership in 2013. Whatever explicit or implicit authorization Road & Dirt Powerzone, LLC obtained as a dealership, it ended with the Voluntary Termination in April 2013, which terminated all aspects of the “relationship” between the parties. The company itself was dissolved in 2014, and there was no business that the Respondent owned and no successor business with a name corresponding to the Domain Name in 2015 when the Respondent registered the Domain Name in her own name.
Moreover, the Panel considers that the relevant date for assessing bad faith at the time of registration is May 15, 2015, when the Respondent changed the registration of the Domain Name to her own name. This is not simply a case of a business name change with continuity of ownership and control, as the Respondent suggests. The Domain Name was originally owned by a limited liability company with three owners, which was no longer in business by 2015. The Domain Name had not been used for an active website or a corresponding business name since the dealership was sold in 2013. The Domain Name has never been used since the dealership transfer for a “Lansford Yamaha” dealership; it has only been redirected to the existing website of the acquiring company. The Panel concludes, therefore, that it must treat the Respondent’s registration of the Domain Name on May 11, 2015 as a new registration of the Domain Name, not as the effective continuation of ownership and control dating from the 2002 creation of the Domain Name.
As for redirection of the Domain Name to the Lansford website, there is no evidence that the Complainant ever approved that measure. Scott Lansford, Inc. was not a Yamaha dealer before purchasing the assets of Road & Dirt Powerzone, LLC and applying to the Complainant for transfer of that company’s dealership in March 2013. The Dealer Change Bulletin shows that Scott Lansford, Inc. dealt in Kawasaki and Suzuki products. The Panel notes that this is consistent with what was advertised on the Lansford website through February 2013, as shown in screenshots archived by the Internet Archive’s Wayback Machine. The YAMAHA mark appears on the Lansford website only after the March 2013 dealership transfer. Thus, the Respondent’s statement that “the domain name www.lansfordkawasaki.com” was “previously approved to direct Yamaha customers to our business” must refer to the approval of the dealership transfer. But the documents relating to the dealership transfer do not mention the Domain Name or that it would be used for a website advertising Kawasaki, Suzuki, and other competing products. The only place where the Lansford website is mentioned in the dealer transfer documents is in the dealership credit application, where Scott Lansford, Inc. furnished details about its existing business. This cannot be construed as the Complainant’s approval of any particular plan for how Scott Lansford, Inc. would use the Domain Name after the dealership transfer.
In fact, the Business Plan submitted to the Complainant, which was authored by the Respondent, represented that a new domain name had been secured, <lansfordyamaha.com>, and that this would be used to market the new YAMAHA dealership that would be established at a new location. To the Complainant, this would appear to be anything but a commingling of brands. It appears that, contrary to the Respondent’s representation, there never was a website developed for <lansfordyamaha.com>. That domain name, as well as the Domain Name at issue here, were simply redirected to the Lansford website selling Kawasaki, Suzuki, and other products as well as the Complainants’. The Respondent, as vice-president of Scott Lansford, Inc. and office manager of Lansford Yamaha, remained involved in the dealership and presumably was aware of this use of the Domain Name. Two years later, when the Respondent registered the Domain Name in its own name, the Respondent would know that the Domain Name was still used only to redirect Internet users to the multiproduct website and that the Complainant had never been informed of this; the Respondent itself had written the Business Plan telling the Complainant that a website using a different domain name would be developed for the new “Lansford Yamaha”.
The Panel finds this course of conduct to be misleading and in bad faith. There is no convincing evidence to support the Respondent’s position that the Complainant implicitly authorized the redirection of traffic from the Domain Name to the Lansford website.
The Complainant argues further that the Domain Name intentionally causes likely confusion with its “My Yamaha” customer benefits program. This was not a likely motivation for the original creation of the Domain Name in 2002, which apparently occurred before that program was launched. However, it may have been a factor in the Respondent’s decision to register the Domain Name in 2015 after Road & Dirt Powerzone, LLC was dissolved and its “My Yamaha” dealership had been sold to Scott Lansford, Inc. without preserving the “My Yamaha” name. The Respondent denies such intent, but by May 2015 the Respondent was no longer involved in a business with a corresponding name, and the Respondent, as a long-time YAMAHA dealer, was presumably familiar with the Complainant’s “My Yamaha” customer benefits program. The Panel does not find it necessary to rely on this inference, however, given the findings above.
The fact that the Respondent declined a purchase offer from the Complainant for the Domain Name in 2016 is not dispositive on the issue of bad faith, although the failure to reply to a more recent cease-and-desist letter possibly supports an inferred disregard for the Complainant’s trademark rights, or at minimum a misunderstanding about the ability of the Respondent to use the Domain Name to sell products competing with the Complainant.
In any event, redirecting the Domain Name to a website advertising competing products, which continued before and after registering the Domain Name in the Respondent’s name, suffices to establish bad faith in the registration and use of the Domain Name as defined by the Policy, paragraph 4(b)(iv), as there is no persuasive evidence that this conduct was authorized by the Complainant.
The Panel concludes that the Complainant prevails on the third element of the Complaint.
Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (‘RDNH’) or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Respondent has requested such a finding here.
Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. As the Panel has determined that the Complaint is well-founded, the Respondent’s request is denied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <myyamaha.com> be transferred to the Complainant.
W. Scott Blackmer
Date: May 26, 2020
1 The Panel notes that archived screenshots of the former My Yamaha website show that this website advertised new YAMAHA vehicles but also pictured a variety of used vehicles and advertised, with respect to maintenance services, that “[w]e also work on Harley Davidson, Honda, Kawasaki, and Suzuki!” In addition, the website advertised parts and accessories from a variety of manufacturers in addition to the Complainant. Thus, the former registrant, with which the Respondent was involved, also used the Domain Name in a manner that likely would have failed the Oki Data test. (A search engine query reveals that many authorized YAMAHA motorcycle dealers similarly use the Complainant’s mark in a domain name for a multi-brand website, selling new and used vehicles from several manufacturers and related services; the record does not indicate whether the Complainant has a relevant licensing policy.)
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